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 IPR2019-00925
`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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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FACEBOOK, INC., INSTAGRAM, LLC and WHATSAPP INC.,
`Petitioner,
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`v.
`
`BLACKBERRY LIMITED,
`Patent Owner
`
`
`
`Case IPR2019-00925
`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 § 314(a) and under the Trial Practice Guide (July 2019).
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`§ 314(a): Prior to the filing of this Petition and IPR2019-00924, filed on the
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`same day, no other petitions had been filed by Petitioner or anyone else. The timing
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`of the Petition was also appropriate; it enabled Petitioner to address recent claim
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`construction issues raised by Patent Owner, and the court’s April 1, 2019 tentative
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`Markman order. (Petition at 9-13.) As a result, the Petition was more thorough than
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`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).
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`Second, the Board in NHK found it significant that the IPR petition relied on
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`the same prior art and arguments as the district court. NHK Spring, at 19-20. But
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`here, the prior art references cited in the IPR grounds are different from those relied
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`on in the district court litigation. (Ex. 1125 at 4.)
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`-1-
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`Petitioner’s Preliminary Reply
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`Third, the NHK petitioner did not disclose any intention to seek a stay of the
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`litigation. Here, Petitioner intends to renew its request for a stay based on the results
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`of the institution decisions. Thus, the trial date in the district court proceeding is far
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`from set in stone. But even if the trial date does not change, given the circumstances
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`here, denial of institution would be unwarranted. See RTI Surgical, Inc. v. LifeNet
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`Health, Case IPR2019-00571, Paper 20 at 2-3, 8 (PTAB Aug. 12, 2019) (instituting
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`IPR of patent after district court litigation and Federal Circuit affirmance given
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`absence of showing that Patent Office or courts had considered cited prior art).
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`Parallel Petition Considerations: The Petitioner filed the present Petition
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`and the one in IPR2019-00924 prior to the July 2019 Trial Practice Guide. The
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`Petition here nevertheless explained why two petitions were filed, and why the two
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`were neither cumulative nor redundant of one another. (Petition, at 5-6.) Although
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`Patent Owner now only asserts claim 4, this narrowing did not take place until well
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`after the filing of the IPR petitions, thus requiring that Petitioner address more
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`claims. Petitioner explained that condensing the grounds from both petitions “into
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`a single IPR petition within the word limits, while possible, would have resulted in
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`a reduction in the thoroughness of analysis.” (Petition, at 5.)
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`Nevertheless, if the Board is only inclined to institute one IPR petition,
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`Petitioner requests that it consider the present petition before IPR2019-00924, in
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`order to conserve resources of the Board. Patent Owner in IPR2019-00924 has
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`-2-
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`Petitioner’s Preliminary Reply
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`argued that a prior reference cited there implicates § 325(d). Petitioner is mindful
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`that addressing those arguments (even though Petitioner does not agree with them)
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`will consume resources of the Board. Because Patent Owner makes no § 325(d)
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`arguments here, an institution decision would present fewer issues.
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`But Petitioner believes substantive differences justify consideration and
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`institution here and in IPR2019-00924. The two petitions differ with respect to the
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`key claimed feature – a numeric character representing a count of different
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`messaging correspondents. (Petition at 5-6.) This feature was the sole ground for
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`allowing the claims. (Id. at 13 (citing Ex. 1113 at 0826).) The Petition in IPR2019-
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`00924 relies on Canfield, which discloses a number of IM sessions (old and new)
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`with new messages, a number that can represent a number of correspondents. Patent
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`Owner primarily argues that a count of IM sessions in Canfield is different from a
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`count of messaging correspondents. But here, primary reference Abiko discloses a
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`count of senders, so the IM session issue is not presented here. (Petition, at 35-37.)
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`Accordingly, the primary attack raised by Patent Owner here is whether a motivation
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`of combine exists (which it does). But on the other side, the Canfield reference in
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`IPR2019-00924 presents fewer motivation to combine issues because there are fewer
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`references. In either case, the references in the two petitions address this critical
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`limitation using different techniques. Consideration and institution of both IPR
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`petitions is therefore respectfully requested.
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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 exhibit (No.
`1125) 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
`IPR21828-0048IP1@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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