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`Filed: December 19, 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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`COOLPAD TECHNOLOGIES, INC. AND ZTE (USA), INC.,
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`PETITIONERS,
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`V.
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`BELL NORTHERN RESEARCH, LLC,
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`PATENT OWNER.
`___________________
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`Case No. IPR2019-01365
`U.S. Patent No. 7,039,435
`___________________
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`PATENT OWNER’S PRELIMINARY SUR-REPLY TO
`PETITIONERS’ PRELIMINARY REPLY
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`Petitioner admits that the district court has scheduled the final pretrial
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`conference—meaning that by that point, the parties will have completed all expert
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`discovery, summary judgment briefing, motions in limine, and exhibit and witness
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`lists exchanges—for March 20, 2020 at 2:30 p.m. (Ex. 2001, ¶29.) It strains
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`credibility that the Court, having had the parties be trial-ready by that date, 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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`2007 (SDCA Patent Local Rules) at Patent L.R. 2.1(a)(3).) Twenty-four months
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`from Patent Owner’s original complaint filing is July 31, 2020. (See Pet., 3.)
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`Moreover, the schedule is unlikely to change. Petitioner’s former co-
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`defendant Huawei has already tried—and failed—to modify the schedule. Despite
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`the court’s warning in the scheduling order that “[t]he dates and times set forth
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`herein will not be modified except for good cause shown” (Ex. 2001, ¶30), Huawei
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`filed a request to extend the case deadlines due to anticipated discovery delays.
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`The court denied Huawei’s request for extensions of deadlines, stating that “[a]ll of
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`the current dates and deadlines will remain as set.” (Ex. 2008, 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 shares the
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`Board’s concern regarding parallel proceedings. (See Rep., 1 (quoting district
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`1
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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 26-28.)
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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 the most significant costs of litigating—all
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`costs except for the actual trial expenses, and likely some of those too—will
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`already have been incurred, and the case will be nearly trial ready. This situation is
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`the opposite of “an inexpensive substitute for district court litigation.” Instead, it
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`would derail an already costly process that is near completion.
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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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`Petitioner’s equity argument also finds no basis in fact or law. The ’435
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`patent only has nine claims and Petitioner’s argument that it needed to wait for
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`2
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`final asserted claims in the litigation to file its petition is unpersuasive. Petitioners
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`routinely file petitions challenging all claims in a patent without awaiting district
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`court infringement contentions, which can usually be modified during discovery
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`for “good cause” during litigation. Further, Petitioner’s argument that it delayed
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`filing because “claim construction remained fluid” is not explained. (Rep., 3.) To
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`the extent Petitioner waited to see how the claim construction process played out
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`before deciding to file its “copycat” Petition, that delay does not justify any
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`equitable relief since the petition is “identical” to an earlier filed one. (See Pet., 2.)
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`Finally, Petitioner does not contest that in Fractus the Board considered the
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`posture of the related district court litigation and determined that “granting
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`institution would require the Board to consider the same prior art and essentially
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`identical evidence and arguments already under consideration by the district court”
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`resulting in an inefficient use of Board, judicial, and party resources. ZTE (USA),
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`Inc. v. Fractus S.A., IPR2018-01461, Paper 10 at 17 (PTAB Feb. 28, 2019). As for
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`General Plastics, Petitioner admits that it filed its petition “a month after separate
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`petitioner.” (Rep., 3.) This is indicative of the “abuse of the review process by
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`repeated attacks on patents” concerns expressed in General Plastics, and the reply
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`does nothing to alleviate those worries.
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`Petitioner’s reply does not change the compelling arguments favoring
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`denying institution under § 314(a) or § 325(d).
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`3
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`Respectfully Submitted,
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`/Steven W. Hartsell/
`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: December 19, 2019
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`4
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I certify that I caused to be served on the
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`counsel for Petitioner a true and correct copy of the foregoing Patent Owner’s
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`Preliminary Sur-Reply to Petitioners’ Reply, by electronic means on December 19,
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`2019 at the following addresses of record:
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`Amol A. Parikh
`Charles M. McMahon
`Thomas M. DaMario
`Jiaxiao Zhang
`ZTEBNR-PTAB@mwe.com
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`Dated: December 19, 2019
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`Respectfully Submitted,
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`/Steven W. Hartsell/
`Steven W. Hartsell
`Counsel for Patent Owner
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