`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`FACEBOOK, INC., INSTAGRAM, LLC, AND WHATSAPP INC.
`Petitioner
`
`v.
`
`BLACKBERRY LIMITED
`Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2019-00924
`Patent 8,209,634
`
`
`
`
`
`
`
`
`
`PATENT OWNER BLACKBERRY LIMITED’S
`PRELIMINARY SUR-REPLY
`
`
`
`Case IPR2019-00924
`Attorney Docket No: 21828-0047IP1
`
`EXHIBITS
`Declaration of Rajeev Surati, Ph.D.
`
`Corrected Final Ruling on Claim Construction/Markman
`Hearing, BlackBerry Limited v. Snap Inc., Case Nos. CV 18-
`1844-GW & 18-2693-GW (C.D. Cal. April 5, 2019)
`(“Markman Order”)
`Defendant’s Notice and Motion to Stay Pending Inter Partes
`Review, BlackBerry Limited v. Facebook, Inc. et al., Case Nos.
`2:18-cv-01844-GW & 2:18-cv-02693-GW (C.D. Cal. April 16,
`2019)
`
`Minutes of Status Conference, Initial Thoughts re Joint Report,
`BlackBerry Limited v. Facebook, Inc. et al., Case Nos. 2:18-cv-
`01844-GW & 2:18-cv-02693-GW (C.D. Cal. April 22, 2019)
`
`Notice Withdrawing Pre-Institution Motion to Stay In View of
`Court’s Guidance, BlackBerry Limited v. Facebook, Inc. et al.,
`Case Nos. 2:18-cv-01844-GW & 2:18-cv-02693-GW (C.D.
`Cal. April 26, 2019)
`
`Minutes of Order In Chambers, Trial Schedule, BlackBerry
`Limited v. Facebook, Inc. et al., Case Nos. 2:18-cv-01844-GW
`& 2:18-cv-02693-GW (C.D. Cal. May 15, 2019)
`
`BlackBerry Limited’s Final Election of Asserted Claims,
`BlackBerry Limited v. Facebook, Inc. et al., Case Nos. 2:18-cv-
`01844-GW & 2:18-cv-02693-GW (C.D. Cal. May 31, 2019)
`
`Defendant’s Final Election of Asserted Prior Art, BlackBerry
`Limited v. Facebook, Inc. et al., Case Nos. 2:18-cv-01844-GW
`& 2:18-cv-02693-GW (C.D. Cal. June 14, 2019)
`
`RESERVED
`
`RESERVED
`
`ii
`
`
`
`EX2001
`
`
`
`EX2002
`
`EX2003
`
`EX2004
`
`
`
`
`EX2005
`
`
`EX2006
`
`
`EX2007
`
`
`EX2008
`
`
`EX2009
`
`EX2010
`
`
`
`
`
`EX2011
`
`
`EX2012
`
`Case IPR2019-00924
`Attorney Docket No: 21828-0047IP1
`Order Modifying Scheduling Order BlackBerry Limited v.
`Facebook, Inc. et al., Case Nos. 2:18-cv-01844-GW & 2:18-cv-
`02693-GW (C.D. Cal. July 12, 2019)
`
`Order Denying Renewed Motion for Stay, The California
`Institute of Technology v. Broadcom Ltd. et al., Case No. 2:16-
`cv-03714-GW (C.D. Cal. October 5, 2017)
`
`
`
`iii
`
`
`
`
`
`§ 325(d): Nothing in Facebook’s Reply disputes the critical facts on page 28
`
`Case IPR2019-00924
`Attorney Docket No: 21828-0047IP1
`
`of the POPR demonstrating the meaningful overlap between the Examiner’s
`
`“Canfield Considered” grounds (which were withdrawn) and the Petition’s
`
`“Canfield” grounds. Facebook’s Reply merely repeats the same §325(d)
`
`arguments previously raised in the Petition. The Reply again attempts to rely on
`
`one purported difference between “Canfield” and “Considered Canfield,” but this
`
`line of argument overlooks that both Canfield and Considered Canfield are directed
`
`to numbers of instant messaging “sessions” and both include scenarios in which a
`
`single correspondent would “start and stop” a number of sessions. As a result,
`
`both Canfield and Considered Canfield suffer from the same shortcoming
`
`identified during original prosecution that led the Examiner to withdraw such
`
`grounds for rejection. See POPR, 28; EX1013, 814; 678 (“a single correspondent
`
`can initiate an unlimited number of new IM sessions”). Nothing in the Reply
`
`identified new teachings of Canfield that address this pertinent reasoning in the
`
`prosecution history, and the fact that Canfield and Considered Canfield may
`
`describe different numbers of “sessions” is immaterial to this shared deficiency.
`
`The Petition relies on Canfield’s number of sessions—just like the Examiner relied
`
`on Considered Canfield’s number of sessions—and Petitioner has failed in its
`
`burden to demonstrate why Canfield is not cumulative. See POPR, 28.
`
`§ 314(a): Likewise, the Reply never disputes the critical facts explained on
`
`
`
`1
`
`
`
`Case IPR2019-00924
`Attorney Docket No: 21828-0047IP1
`pages 21-22 of the POPR nor the consistencies with the E-One case. By waiting
`
`nearly a year to file its Petition, Facebook has acted against the interests of
`
`efficiency. Congress intended the PTAB to implement IPR proceedings to
`
`“ultimately reduce litigation costs” and “create[] an inexpensive substitute for
`
`district court litigation”—not for insuring a defendant’s second chance at invalidity
`
`positions after the costly litigation ends. See 157 Cong. Rec. S5319 (Sept. 6, 2011)
`
`(Sen. Kyl). The PTAB is not Facebook’s insurance policy.
`
`The Reply alleged that Facebook “intends” to renew its request for a stay, but
`
`noticeably absent is the proposed date for this alleged motion. Reply, 3. The Reply
`
`also ignored that the institution decisions for all IPRs at issue in the concurrent
`
`litigation are not likely to be received until November 2019 (e.g., refer to IPR2019-
`
`00923)—only five months before the trial date. Facebook never cites to a single
`
`C.D. Cal. decision granting a stay based upon an IPR instituted only five months
`
`before the trial date. Facebook’s “intention” to seek a stay is nothing more than an
`
`invitation for the Board to speculate about a change to the district court trial date.
`
`See Amazon.com, Inc. v. Customplay, LLC, IPR2018-001498, Paper 13, 10 (PTAB
`
`March 14, 2019) (“We decline to speculate about whether the district court is likely
`
`to postpone the current trial date…”). Critically, Facebook never addressed the fact
`
`that Judge Wu warned Facebook that the court may “deny the stay even if an IPR
`
`has been granted ... if a party has dallied in filing the IPR request.” POPR, 21 (citing
`
`
`
`2
`
`
`
`Case IPR2019-00924
`Attorney Docket No: 21828-0047IP1
`EX2004, 2). That Facebook “dallied” is hardly in question. POPR, 20-21. Indeed,
`
`by the time of any institution decision here, fact discovery will have been completed,
`
`and the parties will be exchanging expert reports. See EX2011, 1-2. The same
`
`district court previously denied a renewed motion to stay in view of instituted IPRs
`
`based on similar facts, finding that “significant litigation activity” had already
`
`occurred. See EX2012, 2-3.
`
`Facebook attempts to downplay its delay by suggesting that the twelve
`
`originally asserted claims were somehow too numerous to challenge before being
`
`narrowed further. Reply, 3. But an IPR challenge against twelve claims is not
`
`burdensome, and it is telling that the Petition ultimately challenged the twelve claims
`
`because Facebook alleged they were “substantially similar.” See Pet., 8. Facebook’s
`
`credibility here is lacking. Moreover, Facebook’s arguments about “differing” claim
`
`sets and the 3Shape case are misplaced. Reply, 3. Facebook’s reliance on the
`
`3Shape decision conveniently ignores that the panel gave weight to “the lack of
`
`preclusive effect of any ITC determination of invalidity,” which is certainly not
`
`applicable here. 3Shape A/S v. Align Tech., IPR2019-00160, Paper 9, 39 (PTAB
`
`June 11, 2019). Also, any claim asserted in the district court is part of the claim set
`
`challenged in the Petition, so any PTAB trial will result in a final written decision
`
`that “second guesses” the district court’s final judgment months after the jury trial.
`
`Facebook’s delayed timing maximized the unfairness and inefficiencies here.
`
`
`
`3
`
`
`
`Case IPR2019-00924
`Attorney Docket No: 21828-0047IP1
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
` /Michael T. Hawkins/
`Michael T. Hawkins
`Reg. No. 57,867
`
`
`
`
`
`
`
`
`
`Date: August 28, 2019
`
`
`Customer Number 26191
`Fish & Richardson P.C.
`Telephone: (612) 337-2569
`
`
`
`
`
`
`
`
`4
`
`
`
`Case IPR2019-00924
`Attorney Docket No: 21828-0047IP1
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR §§ 42.6(e)(4) and 42.205(b), the undersigned certifies that
`
`on August 28, 2019, a complete and entire copy of this Patent Owner BlackBerry
`
`Limited’s Preliminary Sur-Reply and supporting exhibits were provided via
`
`electronic service, to the Petitioner by serving the correspondence address of record
`
`as follows:
`
`Heidi L. Keefe
`Andrew C. Mace
`Mark R. Weinstein
`Yuan Liang
`Cooley LLP
`Attn: Patent Group
`1299 Pennsylvania Ave, NW, Suite 700
`Washington, DC 20004
`Email: hkeefe@cooley.com
`Email: amace@cooley.com
`Email: mweinstein@cooley.com
`Email: yliang@cooley.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Jessica K. Detko/
`
`Jessica K. Detko
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(612) 337-2516
`
`5
`
`
`
`
`
`
`
`
`
`
`
`
`