`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ZTE (USA) INC.,
`Petitioner
`
`v.
`
`BELL NORTHERN RESEARCH, LLC,
`Patent Owner
`
`Case No. IPR2019-01365
`U.S. Patent No. 7,039,435
`
`PETITIONER’S PRELIMINARY REPLY
`
`
`
`
`
`
`Exhibit
`1001
`1002
`10031
`1004
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`1015
`
`1016
`1017
`1018
`1019
`
`1005
`1006
`1007
`1008
`1009
`
`Description
`U.S. Pat. No. 7,039,435 to McDowell et al. (“the ’435 patent”)
`File History of the ’435 Patent
`Declaration of Dr. Jonathan Wells
`Certified English Translation of European Patent Publication EP
`1091498 by Baiker (“Baiker”)
`U.S. Patent No. 6,456,856 to Werling (“Werling”)
`PCT Patent Publication WO 2002/05443 by Irvin (“Irvin”)
`U.S. Patent No. 6,018,646 to Myllymäki (“Myllymäki”)
`U.S. Pat. No. 5,390,338 to Bodin (“Bodin”)
`Joint Claim Construction Chart, Worksheet, and Hearing Statement in
`Bell Northern Research, LLC, v. ZTE Corporation, ZTE (USA) Inc.,
`and ZTE (TX), Inc. (Case No. 3:18-cv-1786) (S.D. Cal.)
`U.S. Provisional Patent Application No. 09/612,034 by Irvin (“Irvin
`Provisional”)
`Michael Barr, Programming Embedded Systems in C and C++
`(O’Reilly & Associates, 1999)
`Rudolf F. Graf, Modern Dictionary of Electronics (Butter- worth-
`Heinemann, 1999)
`Harry Newton, Newton’s Telecom Dictionary (Miller Freeman, Inc.,
`1999)
`Webster’s II New College Dictionary (Houghton Mifflin Co, 1999)
`Martin H. Weik, Fiber Optics Standard Dictionary (Chapman & Hall,
`1997)
`European Patent Publication EP 1091498 (“Baiker”)
`Webster’s New World College Dictionary (Simon & Schuster, 1997)
`U.S. Patent No. 6,029,074 to Irvin (“Irvin ’074”)
`Defendants’ Joint Opening Claim Construction Brief in Bell Northern
`Research, LLC, v. ZTE Corporation, ZTE (USA) Inc., and ZTE (TX),
`Inc. (Case No. 3:18-cv-1786) (S.D. Cal.)
`
`1 Exhibit 1003 is a verbatim copy of the Declaration of Jonathan Wells submitted on
`behalf of Petitioner Huawei in support of their Petition for Inter Partes Review of
`the 7,039,435 patent in IPR2019-01186.
`
`
`EXHIBIT LIST
`
`ii
`
`
`
`
`
`Exhibit
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`
`
`
`
`Description
`Plaintiff’s Opening Claim Construction Brief in Bell Northern
`Research, LLC, v. ZTE Corporation, ZTE (USA) Inc., and ZTE (TX),
`Inc. (Case No. 3:18-cv-1786) (S.D. Cal.)
`Supplemental Joint Claim Construction Hearing Statement Pursuant to
`P.L.R. 4.2 in Bell Northern Research, LLC, v. ZTE Corporation, ZTE
`(USA) Inc., and ZTE (TX), Inc. (Case No. 3:18-cv-1786) (S.D. Cal.)
`Defendants’ Joint Responsive Claim Construction Brief in Bell
`Northern Research, LLC v. ZTE Corporation, ZTE (USA) Inc., and
`ZTE (TX), Inc. (Case No. 3:18-cv-1786) (S.D. Cal.)
`Plaintiff’s Responsive Claim Construction Brief in Bell Northern
`Research, LLC v. ZTE Corporation, ZTE (USA) Inc., and ZTE (TX),
`Inc. (Case No. 3:18-cv-1786) (S.D. Cal.)
`Redline Comparison of this Petition and Petition filed in IPR2019-
`01186 (“Huawei IPR”)
`Claim Construction Order and Order on Motions for Summary
`Judgment in Bell Northern Research, LLC, v. ZTE Corporation, ZTE
`(USA) Inc., and ZTE (TX), Inc. (Case No. 3:18-cv-1786) (S.D. Cal.)
`Transcript of June 20, 2019 Hearing in Bell Northern Research, LLC,
`v. Bell Northern Research, LLC, v. ZTE Corporation, ZTE (USA) Inc.,
`and ZTE (TX), Inc. (Case No. 3:18-cv-1786) (S.D. Cal.)
`Order on Request for Pre-Institution Stay of the Litigation (August
`12, 2019) in Bell Northern Research, LLC, v. ZTE Corporation, ZTE
`(USA) Inc., and ZTE (TX), Inc. (Case No. 3:18-cv-1786) (S.D. Cal.)
`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.)
`
`
`
`ii
`
`
`
`
`
`The Board’s exercise of discretion under §314(a) or §325(d) is not warranted
`
`here. First, Bell Northern Research, LLC’s (“BNR”) assertion that “it is a near
`
`certainty” the jury trial will conclude before any Final Written Decision (Paper 8
`
`(“POPR”) at 26) admits that the actual trial date is not finalized. A “final pretrial
`
`conference” is scheduled for March 2020 but, unlike in NHK, no trial date is
`
`actually scheduled.
`
`Second, the district court has expressed numerous times that it very much
`
`respects and wishes to hear the Patent Office’s opinion on the patent and claims:
`
`THE COURT: Keep me informed if any [IPRs] get instituted. Even
`though we have done claim construction, I’m rather loathe to go on
`parallel tracks with the Patent Office. Because things happen in IPR,
`even if the patents come back, sometimes there’s clarifications about
`scope and meaning that might require I reconsider my claim
`construction. And I think we’re, both the Patent Office and the district
`courts, playing on the same standards these days, and so it’s much more
`persuasive to me to hear what people, who actually know what this
`stuff means, think about it. So if they get instituted, let me know and
`we’ll keep that in mind.
`Ex. 1026 at 120–21 (emphasis added). Therefore, the parties have known that the
`
`court is “loathe” to continue the litigation if the IPRs are instituted because the
`
`court finds it “much more persuasive” to hear what the Board thinks about the
`
`prior art and claims. Id. Before BNR’s POPR was filed, the court again clarified
`
`the trial date has “not been set.” Ex. 1027 at 4. The court’s reasoning was clear:
`
`
`
`1
`
`
`
`
`
`
`
`“PTAB decisions to institute on all the submitted patents will greatly impact the
`
`scope of this case. Even decisions to institute on less than all the patents have
`
`significant potential to streamline this litigation.” Id. at 4–5 (emphasis added). The
`
`district court denied Petitioners’ stay request without prejudice and instructed the
`
`parties “to bring the PTAB decisions on institution promptly to the Court’s
`
`attention. Defendants may renew the requests for stay if institutions are granted, at
`
`which time the Court will consider the efficiencies of proceeding.” Id. (emphasis
`
`added). This important context, which distinguishes NHK and E-One, was known
`
`to BNR but omitted from their POPR. Institution would not derail the court, but
`
`help avoid any technical switches.
`
`The district court’s statements were plain. It is not a “near certainty” that the
`
`jury trial will conclude before the Board’s Final Written Decision. If the Board
`
`denies institution and never assesses the merits of the petitioned grounds, the
`
`Board will deprive the district court of its opportunity to “consider the efficiencies”
`
`to be gained from a stay of litigation (id.), and frustrates the AIA’s purpose to
`
`“ultimately reduce litigation costs” and “create[] an inexpensive substitute for
`
`district court litigation.” See 157 Cong. Rec. S5319 (Sept. 6, 2011) (Sen. Kyl).
`
`Institution by the Board would fulfill Congress’s intent to provide such substitute.
`
`Fourth, equity supports instituting trial. BNR did not allege infringement of
`
`the ’435 patent until October 18, 2018 (POPR at 26; Pet. at 3), and the Petition was
`
`
`
`2
`
`
`
`
`
`
`
`efficiently prepared and filed three months before Petitioner’s statutory deadline,
`
`before the district court ruled on claim construction, and only about a month after
`
`separate petitioner, Huawei, filed IPR2019-01175.2 Petitioner had no assurance of
`
`which claims BNR would assert until April 19, 2019, and claim construction
`
`remained fluid through June 20, 2019. Such timing should not prejudice Petitioner.
`
`Lastly, BNR misapplies §314(a), §325(d), Fractus, and Gen. Plastic. It is
`
`irrelevant whether the Petition “relied on ‘substantially the same’ prior art,
`
`arguments, and expert testimony as in the district court” (POPR at 28). The
`
`standard is whether “the petition…shows that there is a reasonable likelihood that
`
`the petitioner would prevail,” and the Director “may take into account whether the
`
`same or substantially the same prior art or arguments were presented previously to
`
`the Office” (Fractus at 2, quoting §314(a), §325(d), emphasis added). Fractus was
`
`denied for “arguments…presented previously to the Office during reexamination
`
`proceedings,” which is different than the situation here (see, e.g., Petition at 7, 38–
`
`48). Gen. Plastic decried “repeated litigation” which Petitioner certainly has not
`
`done.3 BNR’s POPR differs from the assertions in its district court reports, and
`
`Petitioner would respond accordingly. Thus, the Becton, Dickinson factors weigh
`
`against exercising §325(d) discretion.
`
`2 BNR and Huawei submitted a Joint Motion to Terminate, Paper 13, Dec. 6, 2019.
`
`
`
`3 The related LG and Samsung district court cases remain pending.
`
`
`
`3
`
`
`
`
`
`
`
`Date: December 12, 2019
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Amol A. Parikh/
`Amol A. Parikh (Reg. 60,671)
`amparikh@mwe.com
`Charles M. McMahon (Reg. 44,926)
`cmcmahon@mwe.com
`Thomas M. DaMario (Reg. 77,142)
`MCDERMOTT WILL & EMERY
`444 West Lake Street, Suite 4000
`Chicago, IL 60606-0029
`T: 312-372-2000
`F: 312-984-7700
`
`Jiaxiao Zhang (Reg. 63,235)
`jiazhang@mwe.com
`MCDERMOTT WILL & EMERY
`18565 Jamboree Road, Suite 250
`Irvine, CA 92612
`T: 949-757-6398
`
`Attorneys for Petitioner
`
`
`
`4
`
`
`
`
`
`
`
`CERTIFICATE OF COMPLIANCE
`
`I hereby certify that this brief complies with the type-volume elements of 37
`
`C.F.R. § 42.24(b), because it contains 778 words, and excluding the parts of the
`
`brief exempted by 37 C.F.R. § 42.24(a)(1).
`
`
`
`
`
`
`
`
`
`
`
`
`/Amol A. Parikh/
`Amol A. Parikh
`
`1
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I certify that I sent a copy of Petitioner’s Preliminary Reply and Exhibits
`
`1026-1028 via email on December 12, 2019 to the following counsel of record:
`
`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
`Tel: (214) 978-6600
`Fax: (214) 978-6601
`BNR_SDTeam@skiermontderby.com
`
`Mieke K. Malmberg
`SKIERMONT DERBY LLP
`800 Wilshire Boulevard, Suite 1450
`Los Angeles, CA 90017
`Tel: (213) 788-4500
`Fax: (213) 788-4545
`
`/Amol A. Parikh/
`Amol A. Parikh
`
`
`
`2
`
`
`
`
`
`
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
