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 IPR2019-00924
`Patent 8,209,634
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`PETITIONER’S PRELIMINARY REPLY1
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`1 This Reply was authorized by the Board’s order dated August 20, 2019 (Paper 11).
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`FACEBOOK, INC., INSTAGRAM, LLC and WHATSAPP INC.,
`Petitioner,
`
`v.
`
`BLACKBERRY LIMITED,
`Patent Owner
`
`
`
`Case IPR2019-00924
`Patent 8,209,634
`
`PETITIONER’S PRELIMINARY REPLY1
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`1 This Reply was authorized by the Board’s order dated August 20, 2019 (Paper 11).
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`Petitioner’s Preliminary Reply
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`Petitioner respectfully requests that the Board decline to exercise its discretion
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`to deny institution under § 325(d) or 314(a).
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`§ 325(d): The Petition provided a detailed explanation and analysis of the
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`differences between Canfield and Considered Canfield. (Petition at 17-22; Ex. 1007;
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`see also Ex. 1002, ¶¶51-58.) Canfield provides a critical disclosure missing from
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`Considered Canfield – a number of IM sessions (including old and new sessions)
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`that have new messages. (Petition at 22.) Patent Owner does not dispute that only
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`Canfield – and not Considered Canfield – discloses such a number.
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`Patent Owner instead asserts that both Canfield and Considered Canfield are
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`deficient because both deal with “sessions” and not “correspondents.” (POPR at 26-
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`27.) But the Petition explained that it would have been obvious that a number of IM
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`sessions can represent a number of correspondents. (Petition at 38-41.) Critically,
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`the Examiner would not have come to this key understanding based on Considered
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`Canfield. Because Considered Canfield only counted new sessions with unread
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`messages, it reported an incomplete and inaccurate count. (Id. at 20-22.) This
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`enabled the applicants to tell the Examiner (in an elaborate chart and discussion) that
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`the number of sessions with unread messages in Considered Canfield did not match
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`the number of correspondents with unread messages. (Id. at 21.) Given that the
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`numbers were different, the Examiner was understandably steered away from seeing
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`that the distinction between IM sessions and correspondents was an illusory one in
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`-1-
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`Petitioner’s Preliminary Reply
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`that case. But Canfield in the Petition yields the exact same number. (Id. at 22.)
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`Nor is there merit to the conclusory argument that Ording is cumulative of
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`Wagner. See Comcast Cable Commc’ns, LLC v. Veveo, Inc., Case IPR2019-00239,
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`Paper 15 at 11 (PTAB July 5, 2019) ([I]it is axiomatic that references used to
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`examine the patentability of and the references presented in a Petition challenging
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`the same patent will have some similarities.”). Patent Owner omits the fact that
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`Wagner’s filing date was less than six months before the ’634 provisional
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`application. Applicants during prosecution warned that they “expressly reserve[d]
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`all right to establish prior invention in order to establish that Wagner is not valid
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`prior art against … the claims presented herein.” (Ex. 1025, Response to Office
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`Action at 24.) Because Ording pre-dates Wagner by more than three years, it is far
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`less susceptible than Wagner to a swear behind attempt.
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`§ 314(a): Prior to this Petition and IPR2019-00925, filed on the same day, no
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`other petitions had been filed Petitioner or anyone else. The second-filed Petition in
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`IPR2019-00925 explained why two petitions were filed.2 (Petition (IPR2019-
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`00925) at 5-6.) The timing of the Petition filing was also appropriate under the
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`2 Because the petition in IPR2019-00925 was filed after the Petition here, the
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`Petitioner will address the parallel petition considerations in the July 2019 Trial
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`Practice Guide in its Preliminary Reply in IPR2019-00925, also filed today.
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`-2-
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`Petitioner’s Preliminary Reply
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`circumstances. This timing not only enabled Petitioner to address recent claim
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`construction issues raised by Patent Owner, but allowed it to address the court’s
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`April 1, 2019 tentative Markman order. (Petition at 9-13.) As a result, the Petition
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`was more thorough than would have been possible even a couple months earlier.
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`The state of the district court proceeding does not support discretionary denial
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`under § 314 or NHK Spring v. Intri-Plex Techs., Case IPR2018-0072 (PTAB Sept.
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`12, 2018). Because the Petition here challenges claims 1, 4-7, 10-13 and 16-18,
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`while only claim 4 remains in the district court case (Ex. 2007 at 3), the district court
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`case will not resolve the invalidity challenges presented here. “[D]iffering claim
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`sets 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). Second, the NHK petitioner did not
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`disclose any intention to seek a stay of the litigation. Here, Petitioner intends to
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`renew its request for a stay based on the result of the institution decisions. Thus, the
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`trial date in the district court proceeding is far from set in stone. But even if the trial
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`date does not change, given the circumstances here, denial of institution would be
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`unwarranted. See RTI Surgical, Inc. v. LifeNet Health, Case IPR2019-00571, Paper
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`20 at 2-3, 8 (PTAB Aug. 12, 2019) (instituting IPR of patent after district court
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`litigation and Federal Circuit affirmance given absence of showing that Patent Office
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`or courts had considered cited prior art).
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`-3-
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`Petitioner’s Preliminary Reply
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`Dated: August 23, 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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`-4-
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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 (No.
`1025) and related documents, are being served via electronic mail on the 23rd day
`of August, 2019, upon counsel of record for the Patent Owner as follows:
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`James M. Glass
`Ogi Zivojnovic
`QUINN EMANUEL URQUHART &
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`SULLIVAN LLP
`qe-blackberry-ipr@quinnemanuel.com
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`Michael T. Hawkins
`Kenneth W. Darby
`Kim Leung
`Craig A. Deutsch
`Nicholas Stephens
`IPR21828-0045IP1@fr.com
`PTABInbound@fr.com
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`DATED: August 23, 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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