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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`PATENT OWNER BLACKBERRY LIMITED’S
`PRELIMINARY SUR-REPLY
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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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`PATENT OWNER BLACKBERRY LIMITED’S
`PRELIMINARY SUR-REPLY
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`Case IPR2019-00925
`Attorney Docket No: 21828-0048IP1
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`EXHIBITS
`Declaration of Rajeev Surati, Ph.D.
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`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”)
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`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)
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`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)
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`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)
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`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)
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`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)
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`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)
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`RESERVED
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`RESERVED
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`ii
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`EX2001
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`EX2002
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`EX2003
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`EX2004
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`EX2005
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`EX2006
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`EX2007
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`EX2008
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`EX2009
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`EX2010
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`EX2011
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`EX2012
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`Case IPR2019-00925
`Attorney Docket No: 21828-0048IP1
`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)
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`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)
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`iii
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`§ 314(a): The Reply never disputes the critical facts explained on pages 21-
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`Case IPR2019-00925
`Attorney Docket No: 21828-0048IP1
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`23 of the POPR nor the consistencies with the E-One case. Facebook waited
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`nearly a year to file its IPR Petition, did so using apparent “different” grounds that
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`Facebook admittedly does not deem worthy of submitting to the jury, and now
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`demands the Board proceed with a trial that will be grossly inefficient. Reply, 1
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`(“grounds are different from those”). Congress intended the PTAB to implement
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`IPR proceedings to “ultimately reduce litigation costs” and “create[] an
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`inexpensive substitute for district court litigation”—not for insuring a defendant’s
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`backup grounds to be resolved only after the costly litigation ends. 157 Cong. Rec.
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`S5319 (Sept. 6, 2011) (Sen. Kyl). The PTAB is not Facebook’s insurance policy.
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`The Reply alleged that Facebook “intends” to renew its request for a stay, but
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`noticeably absent is the proposed date for this alleged motion. Reply, 2. The Reply
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`also ignored that the institution decisions for all IPRs at issue in the concurrent
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`litigation are not likely to be received until November 2019 (e.g., refer to IPR2019-
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`00923)—only five months before the trial date. Facebook never cites to a single
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`C.D. Cal. decision granting a stay based upon an IPR instituted only five months
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`before the trial date. Facebook’s “intention” to seek a stay is nothing more than an
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`invitation for the Board to speculate about a change to the district court trial date.
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`See Amazon.com, Inc. v. Customplay, LLC, IPR2018-001498, Paper 13, 10 (PTAB
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`March 14, 2019) (“We decline to speculate about whether the district court is likely
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`1
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`Attorney Docket No: 21828-0048IP1
`to postpone the current trial date…”). Critically, Facebook never addressed the fact
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`that Judge Wu warned Facebook that the court may “deny the stay even if an IPR
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`has been granted ... if a party has dallied in filing the IPR request.” POPR, 22 (citing
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`EX2004, 2). That Facebook “dallied” is hardly in question. POPR, 21-22. Indeed,
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`by the time of any institution decision here, fact discovery will have been completed,
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`and the parties will be exchanging expert reports. See EX2011, 1-2. The same
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`district court previously denied a renewed motion to stay in view of instituted IPRs
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`based on similar facts, finding that “significant litigation activity” had already
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`occurred. See EX2012, 2-3.
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`Facebook attempts to downplay its delay by suggesting that the twelve
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`originally asserted claims were somehow too numerous to challenge before being
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`narrowed further. Reply, 1. But an IPR challenge against twelve claims is not
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`burdensome, and it is telling that the Petition ultimately challenged the twelve claims
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`because Facebook alleged they were “substantially similar.” See Pet., 9. Facebook’s
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`credibility here is lacking. Moreover, Facebook’s arguments about “differing” claim
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`sets and the 3Shape case are misplaced. Reply, 1. Facebook’s reliance on the
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`3Shape decision conveniently ignores that the panel gave weight to “the lack of
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`preclusive effect of any ITC determination of invalidity,” which is certainly not
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`applicable here. 3Shape A/S v. Align Tech., IPR2019-00160, Paper 9, 39 (PTAB
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`June 11, 2019). Also, any claim asserted in the district court is part of the claim set
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`Attorney Docket No: 21828-0048IP1
`challenged in the Petition, so any PTAB trial will result in a final written decision
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`that “second guesses” the district court’s final judgment months after the jury trial.
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`NHK makes clear that inefficient use of the Board’s resources due to the
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`advanced stage of parallel litigation is an additional factor in favor of denying
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`institution. See POPR, 21-23. Facebook’s attempt to limit NHK to “the same prior
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`art and arguments as the district court” ignores the subsequent E-One case. Id.
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`Additionally, Facebook’s argument that the “IPR grounds are different” (p. 1) is an
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`admission that Facebook raised second-rate grounds in the Petition while
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`presumably preserving its strongest invalidity arguments for the jury trial.
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`Facebook’s tactic only maximizes the unfairness and inefficiencies here.
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`Parallel Petition Considerations: “Based on the Board’s prior experience,
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`one petition should be sufficient to challenge the claims of a patent in most
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`situations,” and two petitions “should be rare.” See Trial Practice Guide, July 2019
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`Update, 26. Facebook attempts to justify its duplicative filing strategy on the
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`number of asserted claims (Reply, 3), but this is not such a “rare” case. Twelve
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`asserted claims is not a “large number,” particularly given Facebook’s
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`acknowledgement that groups of these claims are “substantially similar.” See Pet.,
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`9. Nothing in the Reply explains why the overlapping grounds, which address the
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`same claims with the same primary reference (and some of the same secondary
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`references), outweigh the inefficiencies/costs of a second proceeding. Pet., 14-15.
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`Case IPR2019-00925
`Attorney Docket No: 21828-0048IP1
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`Respectfully submitted,
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` /Michael T. Hawkins/
`Michael T. Hawkins
`Reg. No. 57,867
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`Date: August 28, 2019
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`Customer Number 26191
`Fish & Richardson P.C.
`Telephone: (612) 337-2569
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`Case IPR2019-00925
`Attorney Docket No: 21828-0048IP1
`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4) and 42.205(b), the undersigned certifies that
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`on August 28, 2019, a complete and entire copy of this Patent Owner BlackBerry
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`Limited’s Preliminary Sur-Reply and supporting exhibits were provided via
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`electronic service, to the Petitioner by serving the correspondence address of record
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`as follows:
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`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
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`/Jessica K. Detko/
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`Jessica K. Detko
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(612) 337-2516
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