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`Filed: November 12, 2019
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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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`HUAWEI TECHNOLOGIES CO., LTD.,
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`PETITIONER,
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`V.
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`BELL NORTHERN RESEARCH, LLC,
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`PATENT OWNER.
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`___________________
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`Case No. IPR2019-01186
`U.S. Patent No. 7,039,435
`___________________
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`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY
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`I.
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`THE DISTRICT COURT CASE SCHEDULE
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`Contrary to the Petitioner’s assertion, there is nothing “tentative” about the
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`district court’s schedule for the related actions. There is a date certain set for every
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`pre-trial deadline, including the pre-trial conference, which is confirmed—not
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`“tentatively scheduled” (see Rep., 1)—for March 20, 2020 at 2:30 p.m. (Ex. 2001,
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`¶29.) It strains credibility that the Court, having had the parties submit final exhibit
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`lists, witness lists, and all other submissions for the case to be trial-ready, would
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`then wait ten months or more to actually conduct the trial. Lest there be any doubt,
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`the default scheduling rules in the Southern District of California for patent cases
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`call for “[a] trial date…within twenty-four (24) months for complex cases.” (Ex.
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`2002 (SDCA Patent Local Rules) at Patent L.R. 2.1(a).) Twenty-four months from
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`Patent Owner’s complaint filing is August 1, 2020. (See Pet., 2.)
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`Moreover, the remaining presently scheduled litigation deadlines are
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`unlikely to change. Petitioner already tried—and failed—to modify the schedule.
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`Despite the court’s warning in the scheduling order that “[t]he dates and times set
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`forth herein will not be modified except for good cause shown” (Ex. 2001, ¶30),
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`Petitioner filed a request to extend the case deadlines due to anticipated discovery
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`delays resulting from Petitioner’s status on the “Entity List” for the U.S.
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`government’s export ban. (Ex. 2003, at 9.) The court granted relief that the parties
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`agreed upon—permission to conduct limited discovery after the fact discovery
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`1
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`deadline—but denied Petitioner’s request to generally extend deadlines, stating,
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`“[a]ll of the current dates and deadlines will remain as set.” (Ex. 2004, at 2.)
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`Petitioner misconstrues the district court’s comments on PTAB proceedings.
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`First, as Petitioner’s first block quote shows, in June of 2019, the court shared the
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`Board’s concern regarding parallel proceedings. (See Rep., 1 (quoting district
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`court’s statement asking first whether any IPRs had been instituted and then stating
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`“I’m rather loathe to go on parallel tracks with the Patent Office.”) The Board’s
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`analogous statements in NHK in very similar circumstances are precisely why
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`Patent Owner seeks denial of the Petition under § 314(a). (See POPR at 25-28.)
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`While the court stated that it would “consider the efficiencies of proceeding”
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`(Rep., 2) if an IPR is instituted, it is highly probable that the court would consider
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`it efficient to continue to trial when some of the most significant costs of
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`litigating—fact and expert discovery—will already have been incurred, and the
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`case will be nearly trial ready. This situation is the opposite of “an inexpensive
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`substitute for district court litigation.” Instead, it would derail a process that is near
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`completion and has already expended substantial party and district court resources.
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`The overlap and redundancy of this proceeding with the related litigation is
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`confirmed through Petitioner’s expert technical reports served in the related
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`litigation on October 11, 2019. Petitioner confirmed it intended to rely in the
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`litigation on the same expert (Dr. Wells) to include the same prior art anticipation
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`2
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`and obviousness opinions and arguments as those identified as Grounds 1-6 in this
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`proceeding. (Compare Petition at 5 with Ex. 2005 at 487-545). Accordingly, rather
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`than an “inexpensive alternative” to district court litigation, this proceeding, if
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`instituted, would duplicate the related district court litigation.
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`Second, nowhere does NHK state that the Board should consider the district
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`court’s views on IPRs in exercising its discretion under § 314(a). Such a holding
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`would lead to wild inconsistencies, depending on the views of which judge
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`happened to preside over a related litigation, rather than objective facts such as the
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`case schedule and overlap between the two tracks—which is what NHK focuses
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`on. See NHK Spring Co., Ltd. v. Intri-Plex Technologies, Inc., IPR2018-00752,
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`Paper No. 8 at 19-20 (PTAB Sept. 12, 2018).
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`Third, Petitioner attempts to cast doubt on the “near certainty” that any jury
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`trial in the related litigation would conclude long before any Final Written
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`Decision in these proceedings, if instituted, by pointing out that the parties reached
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`an agreement in principle with respect to the litigation. (Rep. at 2, n.1). More
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`importantly, Huawei agreed to move to terminate its pending inter partes reviews
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`against Patent Owner as part of the settlement. Accordingly, in any event,
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`institution should be denied because either (i) without a final settlement, these
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`proceedings will duplicate the related litigation, or (ii) with a final settlement,
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`Huawei agreed to move to terminate its pending IPRs against Patent Owner.
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`3
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`
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`II. THE EXAMINER’S REVIEW OF IRVIN AND THE DATE OF THE
`REFERENCE
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`Petitioner asserts that the Board should disregard that Irvin was considered
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`by the Examiner. But Irvin was not “merely” cited in an IDS. (Rep. 5). As
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`discussed in the POPR at 36-39, Irvin was individually identified in its own
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`separate IDS, and in conjunction with the Examiner’s review and consideration of
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`Irvin, the examiner specifically emphasized that that none of the prior art
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`(including Irvin, which he had just reviewed) disclosed the “transmit
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`power…based on [the] network adjusted power…and proximity transmit power
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`level” limitation—precisely what Petitioner now argues Irvin discloses.
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`Petitioner does not dispute the authority cited at pp. 41-43 of the POPR that
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`written support for solely a single claim is insufficient to prove an earlier effective
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`prior art date for a specific reference. Yet that is all Petitioner has attempted to
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`show—that claim 1 is supported by the provisional. The only other evidence
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`Petitioner has submitted is a conclusory expert declaration that the respective
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`disclosures within Irvin and its provisional are “substantially similar.” Petitioner
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`cites no authority to support their position that specifications in the Irvin
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`provisional that are merely substantially similar—whatever that may mean—are
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`sufficient to provide the necessary written support for everything in Irvin relied
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`upon in the Petition. Petitioner’s unfounded claims about what Patent Owner
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`knows or should know are irrelevant to Petitioner’s failure to meet its burden here.
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`4
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`III. THE EVIDENCE OF ANTEDATING
`Petitioner’s attack of the disclosures in the inventor’s conception document
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`(Ex. 2031) are unavailing. Petitioner focuses on a single claim element, i.e.,
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`network adjusted power level as a function of a position to a communication tower.
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`(Rep. 4). While the inventor deposition testimony it points to suggests that the
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`precise words of this claim element are not in this document, the inventor testified
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`this limitation was otherwise described in the document. (Ex. 2026, 215:7-217:5).
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`This is analogous to situations where a claim is supported by the disclosure of a
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`specification even if the exact words are not used. See Blue Calypso, LLC v.
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`Groupon, Inc., 815 F.3d 1331, 1345 (Fed. Cir. 2016) (“when examining the written
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`description for support for the claimed invention . . . the exact terms appearing in
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`the claim ‘need not be used in haec verba.’”) (citations omitted.).
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`Petitioner calls this inquiry a “fact issue.” As an initial matter, there are a
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`plethora of other reasons for denying institution that do not rest upon antedating.
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`But also, critically, merely asserting something is a fact issue, without necessary
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`evidence to create a disputed fact is insufficient to meet Petitioner’s burden. See,
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`British Airways Bd. v. Boeing Co., 585 F.2d 946, 952 (9th Cir. 1978) (Attorney
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`argument not evidence and cannot create a factual dispute); Invitrogen Corp. v.
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`Clontech Labs., Inc., 429 F.3d 1052, 1068 (Fed. Cir. 2005) (unsubstantiated legal
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`argument on technical evidence no substitute for substantiated expert testimony.)
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`5
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`Respectfully Submitted,
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`/Alexander E. Gasser/
`Steven W. Hartsell (Reg. No. 58,788)
`SKIERMONT DERBY LLP
`1601 Elm St., Ste. 4400
`Dallas, Texas 75201
`P: 214-978-6600/F: 214-978-6601
`Lead Counsel for Patent Owner
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`Alexander E. Gasser (Reg. No. 48,760)
`Sarah E. Spires (Reg. No. 61,501)
`SKIERMONT DERBY LLP
`1601 Elm St., Ste. 4400
`Dallas, Texas 75201
`P: 214-978-6600/F: 214-978-6621
`Back-Up Counsel for Patent Owner
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`Dated: November 12, 2019
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`6
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`CERTIFICATE OF SERVICE
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`I certify that I caused to be served on the counsel for Petitioner a true and
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`correct copy of the foregoing Sur-Reply to Petitioner’s Preliminary Reply, by
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`electronic means on November 12, 2019 at the following addresses of record:
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`Respectfully Submitted,
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`/Alexander E. Gasser/
`Alexander E. Gasser (Reg. No. 48,760)
`Back-Up Counsel for Patent Owner
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`Michael T. Hawkins
`Craig Deutsch
`Sangki Park
`Christopher Hoff
`Jason W. Wolff
`Kim Leung
`Jennifer Huang
`IPR35548-0101IP1@fr.com
`hawkins@fr.com
`PTABInbound@fr.com
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`Dated: November 12, 2019
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`7
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