UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`HUAWEI TECHNOLOGIES CO., LTD.,
`Petitioner
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`v.
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`BELL NORTHERN RESEARCH, LLC,
`Patent Owner
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`Case No. IPR2019-01186
`U.S. Patent No. 7,039,435
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`PETITIONER’S PRELIMINARY REPLY
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`HUAWEI TECHNOLOGIES CO., LTD.,
`Petitioner
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`v.
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`BELL NORTHERN RESEARCH, LLC,
`Patent Owner
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`Case No. IPR2019-01186
`U.S. Patent No. 7,039,435
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`PETITIONER’S PRELIMINARY REPLY
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`Proceeding No. IPR2019-01186
`Attorney Docket No: 35548-0101IP1
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`EX1001
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`LIST OF EXHIBITS
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`U.S. Pat. No. 7,039,435 to McDowell et al. (“the ’435 patent”)
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`EX1002
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`File History of the ’435 Patent
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`EX1003
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`Declaration of Jonathan Wells, Ph.D.
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`EX1004
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`Certified English Translation of European Patent Publication
`EP 1091498 (“Baiker”)
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`EX1005
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`U.S. Pat. No. 6,456,856 (“Werling”)
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`EX1006
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`PCT Patent Publication WO 2002/05443 (“Irvin”)
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`EX1007
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`U.S. Pat. No. 6,018,646 (“Myllymäki”)
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`EX1008
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`U.S. Pat. No. 5,390,338 (“Bodin”)
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`EX1009
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`EX1010
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`EX1011
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`EX1012
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`EX1013
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`EX1014
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`EX1015
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`Joint Claim Construction Chart, Worksheet, and Hearing
`Statement in Bell Northern Research, LLC, v. Huawei Device
`(Dongguan) Co., Ltd., Huawei Device (Shenzhen) Co., Ltd.,
`and Huawei Device USA, Inc. (Case No. 3:18-cv-1784)
`(S.D.Cal., filed 4/19/19)
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`U.S. Provisional Patent Application No. 09/612,034 (“Irvin
`Provisional”)
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`Michael Barr, Programming Embedded Systems in C and C++
`(O’Reilly & Associates, 1999)
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`Rudolf F. Graf, Modern Dictionary of Electronics
`(Butterworth-Heinemann, 1999)
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`Harry Newton, Newton’s Telecom Dictionary (Miller Freeman,
`Inc., 1999)
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`Webster’s II New College Dictionary (Houghton Mifflin Co,
`1999)
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`Martin H. Weik, Fiber Optics Standard Dictionary (Chapman
`& Hall, 1997)
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`EX1016
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`European Patent Publication EP 1091498 (“Baiker”)
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`i
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`Proceeding No. IPR2019-01186
`Attorney Docket No: 35548-0101IP1
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`EX1017
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`Webster’s New World College Dictionary (Simon & Schuster,
`1997)
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`EX1018
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`U.S. Pat. No. 6,029,074 (“Irvin ’074”)
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`EX1019
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`EX1020
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`EX1021
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`EX1022
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`EX1023
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`EX1024
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`Defendants’ Joint Opening Claim Construction Brief in Bell
`Northern Research, LLC, v. Huawei Device (Dongguan) Co.,
`Ltd., Huawei Device (Shenzhen) Co., Ltd., and Huawei Device
`USA, Inc. (Case No. 3:18-cv-1784) (S.D. Cal.)
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`Plaintiff’s Opening Claim Construction Brief in Bell Northern
`Research, LLC, v. Huawei Device (Dongguan) Co., Ltd.,
`Huawei Device (Shenzhen) Co., Ltd., and Huawei Device USA,
`Inc. (Case No. 3:18-cv-1784) (S.D. Cal.)
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`Claim Construction Order and Order on Motions for Summary
`Judgment
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`Transcript of June 20, 2019 Hearing in Bell Northern Research,
`LLC, v. Bell Northern Research, LLC, v. Huawei Technologies
`Co., Ltd. et al. (Case No. 3:18-cv-1784) (S.D. Cal.)
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`Order on Request for Pre-Institution Stay of the Litigation
`(August 12, 2019) in Bell Northern Research, LLC, v. Bell
`Northern Research, LLC, v. Huawei Technologies Co., Ltd. et
`al. (Case No. 3:18-cv-1784) (S.D. Cal.)
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`Order on Confirming Settlement and Setting Deadline to File
`Joint Motion for Dismissal (October 24, 2019) in Bell Northern
`Research, LLC, v. Bell Northern Research, LLC, v. Huawei
`Technologies Co., Ltd. et al. (Case No. 3:18-cv-1784) (S.D.
`Cal.)
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`ii
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`Proceeding No. IPR2019-01186
`Attorney Docket No: 35548-0101IP1
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`The Board’s exercise of discretion under §314(a) or §325(d) is not warranted
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`here. First, Patent Owner’s statement that “it is a near certainty” the jury trial will
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`conclude before any Final Written Decision here is not accurate. POPR, 25. The
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`parties in the three separate litigations filed by Patent Owner were tentatively
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`scheduled for a “final pretrial conference” in March 2020, but no trial date is actually
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`scheduled and it is not clear what the sequence of these trials will be. The court
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`plainly explained why during a recent hearing:
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`THE COURT: Keep me informed if any [IPRs] get instituted. Even
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`though we have done claim construction, I’m rather loathe to go on
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`parallel tracks with the Patent Office. Because things happen in IPR,
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`even if the patents come back, sometimes there’s clarifications about
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`scope and meaning that might require I reconsider my claim
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`construction. And I think we’re, both the Patent Office and the district
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`courts, playing on the same standards these days, and so it’s much more
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`persuasive to me to hear what people, who actually know what this
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`stuff means, think about it. So if they get instituted, let me know and
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`we’ll keep that in mind. Otherwise, we will just keep going.
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`EX1022, 120-21 (emphasis added). Then, shortly before the POPR was filed, the
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`court again clarified the trial date has “not been set.” EX1023, 4. The court’s
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`reasoning for this reminder was clear:
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`PTAB decisions to institute on all the submitted patents will greatly
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`impact the scope of this case. Even decisions to institute on less than
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`all the patents have significant potential to streamline this litigation.
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`1
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`Proceeding No. IPR2019-01186
`Attorney Docket No: 35548-0101IP1
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`Id. at 4-5 (emphasis added). All of this important context, which distinguishes the
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`present case from NHK, was omitted from the POPR. The district court’s position
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`was plain. Contrary to the POPR’s statement, it is not a “near certainty” that the jury
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`trial will conclude before the Board’s Final Written Decision here.1
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`Second, equitable circumstances support instituting trial here. Patent Owner
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`never alleged infringement of the ’435 patent until months after its initial complaint
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`(Pet., 3), so the Petition here was filed efficiently and promptly—less than seven
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`month after the amended complaint. Importantly, Petitioner here did not delay—
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`filing less than 8 weeks after the end of Patent Owner’s ability to change the asserted
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`claims in the litigation (with its April 19, 2019 amended disclosure). Petitioner had
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`no assurance from Patent Owner that the asserted claims would remain fixed until
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`April 19, 2019, and such timing should not serve to prejudice Petitioner here.
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`Next, regarding the POPR’s arguments about “antedating” the prior art
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`1 Also, the litigation schedule was recently modified in an October 24, 2019 order
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`confirming an agreement in principle on settlement of the litigation. EX1024, 1.
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`According to that order “all other pending dates before Magistrate Judge Barbara
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`L. Major are hereby vacated. Any matters currently before the District Judge shall
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`remain in effect pending notice from that court.” Id. The parties have until
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`November 20, 2019 to submit a joint motion for dismissal of the litigation.
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`2
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`Proceeding No. IPR2019-01186
`Attorney Docket No: 35548-0101IP1
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`(POPR, 56-63), the alleged antedating evidence is insufficient as a matter of law.
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`First, the POPR’s arguments regarding Irvin are flawed and omit vital facts known
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`to both parties. There is no dispute that the text of Irvin’s specification is identical
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`to that of the Irvin Provisional, which predates even the earliest conception date
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`alleged by Patent Owner. EX1003, ¶81 (confirming that the disclosures are
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`“substantially similar”). Indeed, both parties were aware that the only difference
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`between the specifications was that Irvin has formal drawings while those same
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`drawings were informal/handwritten in the Irvin Provisional. Compare EX1006, 3-
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`12, FIGS. 1-10, with EX1010, 4-17, FIGS. 1-10. This critical fact is omitted from
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`the POPR. The POPR’s silence regarding any meaningful difference between Irvin
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`and the Irving Provisional is telling—there is none.
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`Notably, Irvin’s filing date (June 2001) is earlier than the filing date of the
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`’435 patent (Sep. 2001), and thus the Petition (pp. 5-6) satisfied the burden of
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`production of demonstrating that Irvin was a §102(e) reference (even without the
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`Irvin Provisional). Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375,
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`1379-80 (Fed. Cir. 2015); Apple v. Opentv, Inc., IPR2015-00969, Paper No. 8, 13
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`(Sept. 23, 2015). Now, even if Patent Owner’s new allegations of an earlier
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`conception date were applied, such argument fails because the alleged conception
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`date (February 2001) is still long after Irvin’s priority date (July 2000)—the filing
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`date of the Irvin Provisional. Again, there is no dispute that at least one claim of
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`3
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`Proceeding No. IPR2019-01186
`Attorney Docket No: 35548-0101IP1
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`Irvin is supported by the Irvin Provisional (Pet., 5-7), and thus Irvin must be treated
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`according to its effective filing date in July 2000. Dynamic Drinkware, 800 F.3d at
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`1379-80. This is especially true where there is no dispute that all portions of Irvin
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`cited in the Petition are identically found in the Irvin Provisional. EX1003, ¶81.
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`Worse yet, the “antedating” evidence belies Patent Owner’s position. For
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`example, Patent Owner’s cited evidence fails to identify conception of the claim
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`element of the “network adjusted power level as a function of a position to a
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`communications tower,” and thus is legally deficient in antedating Baiker and Irvin
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`for this additional reason. Medtronic, Inc. v. Troy R. Norred, IPR2014-00110, Paper
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`46, 9-11 (Apr. 23, 2015). (“insufficient to describe each element of the claims.”);
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`NHK Seating of America, Inc. , v. Lear Corp., IPR2014-01200, Paper 29, 12-16 (Feb.
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`2 2016) (“fails to demonstrate [inventor’s] conception of every feature.”). Fatally,
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`the POPR never identifies where this critical element can be found in the “Invention
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`Submission” form cited in the POPR because the inventor that created the
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`document—Mr. Mooney—admitted that it is not there: “I don’t believe there’s
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`anything in here addressing that.” EX2026, 217 (emphasis added), 215 (“Yeah. I
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`do not believe it mentions that.”). Moreover, the inventors indicated they have no
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`recollection of conception beyond that “Invention Submission” form. EX2026,
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`176:14-18 (“I do not have any other recollections.”); EX2028, 85:6-16 (“I don’t
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`remember specifically really anything about -- about times or dates other than
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`4
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`Proceeding No. IPR2019-01186
`Attorney Docket No: 35548-0101IP1
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`looking at the submission form.”). Likewise, the inventors also admitted other claim
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`elements are absent from the “Invention Submission” form. See, e.g., EX2028,
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`254:10-255:1; 258:18-259:7. These plain deficiencies in the “antedating” evidence
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`fall short of the legal requirements. Moreover, the testimony (cited above) only
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`highlights the underlying factual disputes here regarding the alleged conception date,
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`which must be resolved in favor of Petitioner at this stage. 37 CFR § 42.108(c).
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`Lastly, the POPR argues that §325(d) discretion should be exercised here
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`merely because Irvin was cited in an IDS. POPR, 37. The Petition accurately noted
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`that Irvin “was before the Examiner” but “was not addressed in an office action and
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`is not cumulative to art applied in prosecution of the ’435 patent.” Pet., 7. The Board
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`routinely declines to exercise discretion based on a prior art reference merely cited
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`in an IDS, and the POPR identifies no reason to depart here from this consistent
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`reasoning of earlier Board decisions. See, e.g., Digital Check Corp. v. E-Imagedata
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`Corp., IPR2017-00178, Paper 6, 12-13 (April 25, 2017); Vizio, Inc. v. Nichia Corp.,
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`IPR2017-00551, Paper 9, 7-8 (July 7, 2017). The straightforward element-by-
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`element analysis of Irvin in the Petition (pp. 38-48) and the Wells declaration
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`highlight which portions of Irvin were overlooked during prosecution, and nothing
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`in the prosecution history analyzes Irvin in a manner that overlaps with the Petition.
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`For these reasons, the Becton, Dickenson factors weigh against exercising §325(d)
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`discretion. See IPR2017-01586, Paper 8, 17-28 (Dec. 15, 2017); Pet., 7.
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`5
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`Proceeding No. IPR2019-01186
`Attorney Docket No: 35548-0101IP1
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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: November 5, 2019
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`Customer Number 26191
`Fish & Richardson P.C.
`Telephone: (612) 337-2569
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`6
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`Proceeding No. IPR2019-01186
`Attorney Docket No: 35548-0101IP1
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4) and 42.205(b), the undersigned certifies
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`that on November 5, 2019, a complete and entire copy of this Petitioner’s
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`Preliminary Reply and supporting exhibits were provided via electronic service, to
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`the Patent Owner by serving the correspondence address of record as follows:
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`Steven W. Hartsell
`Alexander E. Gasser
`Paul J. Skiermont
`Sadaf R. Abdullah
`Mieke K. Malmberg
`SKIERMONT DERBY LLP
`1601 Elm Street, Suite 4400
`Dallas, Texas 75201
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`E-mail: BNR_SDTeam@skiermontderby.com
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` /Diana Bradley/
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`Diana Bradley
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(858) 678-5667
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`7
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