Petitioner’s Preliminary Reply
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FACEBOOK, INC., INSTAGRAM, LLC and WHATSAPP INC.,
`Petitioner,
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`v.
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`BLACKBERRY LIMITED,
`Patent Owner
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`Case IPR2019-00923
`Patent 7,372,961
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`PETITIONER’S PRELIMINARY REPLY1
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`1 This Reply was authorized by the Board’s email dated September 12, 2019.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FACEBOOK, INC., INSTAGRAM, LLC and WHATSAPP INC.,
`Petitioner,
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`v.
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`BLACKBERRY LIMITED,
`Patent Owner
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`
`
`Case IPR2019-00923
`Patent 7,372,961
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`PETITIONER’S PRELIMINARY REPLY1
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`1 This Reply was authorized by the Board’s email dated September 12, 2019.
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`Petitioner’s Preliminary Reply
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`Patent Owner’s discretionary denial arguments boil down to the assertion that
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`a court trial is currently scheduled to take place before a Final Written Decision in
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`this IPR. As explained below, NHK and subsequent decisions that followed it have
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`not found it proper to deny institution based solely on this factor.
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`Before addressing the traditional § 314(a) factors, Petitioner notes that the
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`present IPR petition presents unique considerations that set it apart from IPR
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`proceedings that have no immediate implications outside the parties. Here, Patent
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`Owner has represented that the ’961 patent covers industry standard techniques and
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`software currently used by countless third party websites and servers. For example,
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`BlackBerry’s claims against Petitioner (and against Avaya in a prior suit)2 alleged
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`that the open-source cryptographic software known as “OpenSSL” infringes the
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`patent. (Ex. 1033, at 0031-0036.) As BlackBerry recently argued in the court case:
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`The ’961 patent’s solution for addressing the security flaw was
`therefore adopted by many in the industry, including as part of the
`popular and commercially successful OpenSSL software library, and
`aspects of the ’961 patented techniques were further included in the
`ANSI X9.62 standard (the de facto financial industry cryptographic
`standard) and the IEEE P1363a standard. As an example, OpenSSL,
`which copied the inventions of the ’961 patent, has been noted by
`industry experts as being “by far the most widely deployed, freely
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`2 Blackberry Ltd. v. Avaya Inc., No. 3:16-cv-02185-G (N.D. Tex. July 27, 2016).
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`-1-
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`Petitioner’s Preliminary Reply
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`available implementation of [the SSL and TLS protocols].”
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`(Ex. 1037 at 003 (citation omitted).) BlackBerry’s view that the alleged invention
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`is infringed by software that is “popular and commercially successful,” “de facto…
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`standard” and “widely deployed,” id., all but guarantees future infringement suits –
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`and future IPR petitions. The interest in careful scrutiny of the invalidity challenges
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`presented here thus extends far beyond Petitioner. Denial under § 314(a) would be
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`contrary to the AIA’s design to “improve patent quality and limit unnecessary and
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`counterproductive litigation costs.” (07/2019 Trial Practice Guide Update, at 23.)
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`And none of the other considerations under § 314(a) and NHK apply here. For
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`example, NHK denied institution primarily based on § 325(d), and identified the
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`state of the parallel litigation as merely an “additional factor.” NHK Spring v. Intri-
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`Plex Techs., Case IPR2018-0072, Paper 8 at 20 (PTAB Sept. 12, 2018); Samsung
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`Elecs. v. Immersion Corp., Case IPR2018-01469, Paper 10 at 19-20 (PTAB Mar. 7,
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`2019) (“[NHK] was decided chiefly on § 325(d)”). Patent Owner made no argument
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`here regarding § 325(d). See NHK at 18; see also Comcast Cable Commc’ns, LLC
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`v. Rovi Guides, Inc., Case IPR2019-00231, Paper 14 at 11 (PTAB May 20, 2019)
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`(declining to deny under § 314(a) where “there [was] no contention that the instant
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`obviousness challenges were previously considered by the Office or by any court.”).
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`The timing of the filing of the IPR Petition was also appropriate, as it enabled
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`Petitioner to account for the court’s construction of the disputed term “reducing mod
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`-2-
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`Petitioner’s Preliminary Reply
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`q” in its April 1, 2019 Tentative Claim Construction Ruling. (Ex. 1035 at 041.) The
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`Petition here also challenges claims 1-2, 5, 15-16, 19, 23-24, and 27, while only
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`claim 2 remains asserted in the litigation. (Ex. 1038 at 003.) “[D]iffering claim sets
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`is a factor that weighs against exercise of … discretion under § 314(a) to deny
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`institution based on [parallel litigation].” 3Shape A/S v. Align Tech., Case IPR2019-
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`00160, Paper 9 at 39 (PTAB June 11, 2019). In addition, NHK found it significant
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`that the IPR petition relied on the same prior art and arguments as the court action.
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`NHK at 19-20. But here, the references are not the same. (Ex. 1039 at 003.) For
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`example, the references cited in this IPR to disclose the alleged point of novelty –
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`Rose (Ex. 1006) and Menezes (Ex. 1005) – were not cited during prosecution and
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`are not relied upon in the litigation to show invalidity. (Petition at 5-6.)
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`Moreover, the NHK petitioner did not disclose any intention to seek a stay of
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`the court proceeding. Here, Petitioner intends to renew its request for a stay,
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`particularly considering that three IPR petitions challenging other patents asserted
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`against Petitioner were recently instituted. See IPR2019-00528 (Paper 8), IPR2019-
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`00516 (Paper 7), IPR2019-00706 (Paper 9). Thus, the trial date in the district court
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`is not set in stone. But even if the trial date does not change, institution would be
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`warranted. See RTI Surgical, Inc. v. LifeNet Health, Case IPR2019-00571, Paper 20
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`at 2-3, 8 (PTAB Aug. 12, 2019) (instituting IPR after court litigation and Federal
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`Circuit affirmance because Patent Office and courts had considered cited prior art).
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`Petitioner’s Preliminary Reply
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`Dated: September 17, 2019
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`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington, DC 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
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`By:
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`Respectfully submitted,
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`/ Heidi L. Keefe /
`Heidi L. Keefe
`Reg. No. 40,673
`Counsel for Petitioner
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`CERTIFICATE OF SERVICE
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`I hereby certify, pursuant to 37 C.F.R. § 42.6, that a complete copy of the
`attached PETITIONER’S PRELIMINARY REPLY, including all exhibits (Nos.
`1037-1039) and related documents, are being served via electronic mail on the 17th
`day of September, 2019, upon counsel of record for the Patent Owner as follows:
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`Michael T. Hawkins
`IPR21828-0046IP1@fr.com
`hawkins@fr.com
`Kenneth W. Darby
`Kim Leung
`Craig A. Deutsch
`Nicholas Stephens
`PTABInbound@fr.com
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`James M. Glass (Reg. No. 46,729)
`Ogi Zivojnovic (Reg. No. 69,516)
`QUINN EMANUEL URQUHART &
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`SULLIVAN LLP
`qe-blackberry-ipr@quinnemanuel.com
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`DATED: September 17, 2019
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`-1-
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` / Heidi L. Keefe /
`Heidi L. Keefe
`Reg. No. 40,673
`COOLEY LLP
`1299 Pennsylvania Ave. NW,
`Suite 700
`Washington, D.C. 20004
`Tel: (650) 843-5001
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