UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS INC.,
`Petitioner
`
`v.
`
`BELL NORTHERN RESEARCH, LLC,
`Patent Owner.
`____________
`
`Case IPR2020-00108
`U.S. Patent No. 8,416,862
`____________
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S PRELIMINARY
`RESPONSE
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS INC.,
`Petitioner
`
`v.
`
`BELL NORTHERN RESEARCH, LLC,
`Patent Owner.
`____________
`
`Case IPR2020-00108
`U.S. Patent No. 8,416,862
`____________
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S PRELIMINARY
`RESPONSE
`
`
`
`
`
`EXHIBITS
`
`Proceeding No. IPR2020-00108
`Attorney Docket: 18768-0186IP2
`
`EX1001
`
`U.S. Pat. No. 8,416,862 to Aldana et al. (“the ’862 patent”)
`
`EX1002
`
`Prosecution History of the ’862 patent (Serial No. 11/237,341)
`
`EX1003
`
`Declaration of Dr. Jonathan Wells
`
`EX1004
`
`U.S. Pat. No. 7,236,748 to Li et al. (“Li-748”)
`
`EX1005
`
`U.S. Pub. No. 2008/0108310 to Tong et al. (“Tong”)
`
`EX1006
`
`U.S. Pat. No. 7,312,750 to Mao et al. (“Mao”)
`
`EX1007
`
`U.S. Pub. No. 2006/0092054 to Li et al. (“Li-054”)
`
`EX1008
`
`Yang et al., Reducing the Computations of the Singular Value
`Decomposition Array Given by Brent and Luk, SIAM J. MATRIX
`ANAL. APPL., Vol. 12, No. 4, pp. 713-725, Oct. 1991 (“Yang”)
`
`EX1009
`
`U.S. Pat. No. 7,710,925 to Poon (“Poon”)
`
`EX1010
`
`EX1011
`
`EX1012
`
`EX1013
`
`U.S. Provisional Application Serial No. 60/673,451 (“’451
`provisional”)
`
`U.S. Provisional Application Serial No. 60/698,686 (“’686
`provisional”)
`
`U.S. Provisional Application Serial No. 60/614,621 (“’621
`Provisional”)
`
`U.S. Provisional Application Serial No. 60/619,461 (“’461
`Provisional”)
`
`i
`
`
`
`
`EX1014
`
`EX1015
`
`EX1016
`
`EX1017
`
`EX1018
`
`EX1019
`
`Proceeding No. IPR2020-00108
`Attorney Docket: 18768-0186IP2
`
`U.S. Patent Application Serial No. 11/168,793 (“’793 application”)
`
`Plaintiff Bell Northern Research, LLC’s Patent Rule 3-1 and 3-2
`Disclosure of Asserted Claims and Infringement Contentions Against
`the Huawei Defendants 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.)
`
`Defendants’ Invalidity Contentions 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.)
`
`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.)
`
`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.)
`
`Defendants’ Memorandum of Points and Authorities in Support of
`Their Joint Motion for Summary Judgement on Indefiniteness 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.)
`
`ii
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`
`
`
`EX1020
`
`Proceeding No. IPR2020-00108
`Attorney Docket: 18768-0186IP2
`
`Transcript of Claim Construction Hearing, Day Two, Volume Two,
`Pages 1-122 in Bell Northern Research, LLC, v. Huawei Technologies
`CO., LTD., Huawei Device (Hong Kong) CO., LTD., and Huawei
`Device USA, Inc. (Case No. 3:18-cv-1784) (S.D.Cal.)
`
`EX1021
`
`Declaration of Jacob Munford
`
`EX1022
`
`EX1023
`
`Coolpad Tech., Inc. et al. v. Bell Northern Research, LLC, IPR2019-
`01319, Paper 19 (PTAB Jan. 29, 2020)
`
`Coolpad Tech., Inc. et al. v. Bell Northern Research, LLC, IPR2019-
`01320, Paper 18 (PTAB Jan. 29, 2020)
`
`EX1024
`
`ZTE (USA) Inc. v. Bell Northern Research, LLC, IPR2019-01365,
`Paper 13 (PTAB Feb. 11, 2020)
`
`EX1025 Order of Transfer in Bell Northern Research, LLC, v. LG Electronics,
`Inc. et al. (Case No. 3:18-cv-2864) (S.D.Cal.)
`
`EX1026 Order of Transfer in Bell Northern Research, LLC, v. ZTE Corp. et al.
`(Case No. 3:18-cv-1786) (S.D.Cal.)
`
`EX1027
`
`EX1028
`
`EX1029
`
`Scheduling Order in Bell Northern Research, LLC, v. ZTE Corp. et al.
`(Case No. 3:18-cv-1786) (S.D.Cal.)
`
`Scheduling Order in Bell Northern Research, LLC, v. Coolpad
`Technologies, Inc. et al. (Case No. 3:18-cv-1783) (S.D.Cal.)
`
`Transcript of Claim Construction Hearing in Bell Northern Research,
`LLC, v. Coolpad Technologies, Inc. et al. (Case No. 3:18-cv-1783)
`(S.D.Cal.)
`
`iii
`
`
`
`
`EX1030
`
`EX1031
`
`Proceeding No. IPR2020-00108
`Attorney Docket: 18768-0186IP2
`
`Order Granting Renewed Motion to Stay Pending in Inter Partes
`Review in Bell Northern Research, LLC, v. Coolpad Technologies,
`Inc. et al. (Case No. 3:18-cv-1783) (S.D.Cal.)
`
`Order Granting Renewed Motion to Stay Pending in Bell Northern
`Research, LLC, v. ZTE Corp. et al. (Case No. 3:18-cv-1786)
`(S.D.Cal.)
`
`EX1032
`
`Transcript of Claim Construction Hearing in Bell Northern Research,
`LLC, v. LG Electronics, Inc. et al. (Case No. 3:18-cv-2864) (S.D.Cal.)
`
`Joint Notice of Proposed Scheduling Order and Notice Regarding
`Inter Partes Reviews in Bell Northern Research, LLC, v. LG
`Electronics, Inc. et al. (Case No. 3:18-cv-2864) (S.D.Cal.)
`
`Joint Motion to Extend the Case Management Order in Inter Partes
`Reviews in Bell Northern Research, LLC, v. LG Electronics, Inc. et
`al. (Case No. 3:18-cv-2864) (S.D.Cal.)
`
`EX1033
`
`EX1034
`
`
`
`
`
`iv
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`Proceeding No. IPR2020-00108
`Attorney Docket: 18768-0186IP2
`
`Patent Owner (“BNR”) omits several relevant details from Section VIII of
`
`the Preliminary Response (“POPR”), all of which direct the Board to refuse to
`
`discretionarily deny institution under § 314(a) and NHK.
`
`Specifically, BNR fails to mention that the Board has already denied its
`
`“advanced stage of litigation” arguments in three highly-similar IPRs stemming
`
`from other BNR-initiated litigations, which were at more advanced stages than
`
`the LG litigation. EX1022, 7-8; EX1023, 7-8; EX1024, 9-10. As background,
`
`BNR sued Coolpad and ZTE (as well as other defendants), and four months later
`
`sued Petitioner (“LG”) in the same court. Pet., 1-2. Each of these litigations is
`
`before the same judge. EX1025-EX1026. Collectively, Coolpad and ZTE filed
`
`three IPRs (IPR2019-01319, -01320, -01365) against BNR’s asserted patents.
`
`Although the district court was less than 2 months away from holding the final
`
`pretrial conference in the Coolpad and ZTE litigations (EX1027, 8; EX1028, 8),
`
`the Board instituted each of these IPRs. EX1022-EX1024. The Board
`
`distinguished these cases from NHK because of the uncertainty the trials would
`
`occur given the judge’s request to remain informed of the IPR status and
`
`statement that, “[e]ven though we have done claim construction, I’m rather
`
`loathe to go on parallel tracks with the Patent Office.” EX1029, 120:25-121:12
`
`(emphasis added); EX1022, 7-8; EX1023, 7-8; EX1024, 9-10.
`
`The Board was correct that Coolpad and ZTE trials were uncertain
`
`1
`
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`
`
`Proceeding No. IPR2020-00108
`Attorney Docket: 18768-0186IP2
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`because, after institution of the IPRs, the district court stayed both litigations.
`
`EX1030, EX1031. The court reasoned that “[t]he PTAB’s decision to institute
`
`on the two remaining patents will substantially impact the scope of this case and
`
`streamline this litigation,” and that “[d]espite the advanced nature of this case,
`
`this step [to stay] will resolve an important aspect of the case and narrow the
`
`issues for a jury trial, and may avoid disparate invalidity findings in the co-
`
`pending cases.” EX1030, 2-3 (emphasis added).
`
`Although the district court has set a trial date in the LG litigation, as the
`
`POPR identified, trial is at least as uncertain here as in the Coolpad and ZTE
`
`cases. First, the LG litigation involves the same judge as the Coolpad and ZTE
`
`cases, who is “loathe to go on parallel tracks with the Patent Office,” has a track
`
`record of staying “advanced” cases upon IPR institution against BNR’s patents,
`
`and has made specific requests, similar to those made in the Coolpad and ZTE
`
`cases, to remain informed of the status of LG’s IPRs. EX1029, 120:25-121:12;
`
`EX1030, 2-3; EX1031; EX1032, 77:6-22 (judge wanting to be “aware of what’s
`
`going on in the Patent Office” with regard to LG IPRs); EX1033.
`
`Second, when the Board instituted the Coolpad and ZTE IPRs, those
`
`litigations were at more advanced stages than the LG litigation will be when the
`
`Board issues its institution decision in this IPR and when LG requests a stay in
`
`the district court. Specifically, the Coolpad and ZTE IPRs were instituted and
`
`2
`
`
`
`
`
`Proceeding No. IPR2020-00108
`Attorney Docket: 18768-0186IP2
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`those litigations were stayed less than 2 months before the final pretrial
`
`conference. EX1022-EX1024, EX1027-EX1028, EX1030-EX1031. In contrast,
`
`the institution decision in this IPR is due May 21, 2020, which is more than 6
`
`months before the final pretrial conference in the LG litigation on Nov. 30, 2020.
`
`EX2006, 8. Additionally, the ongoing COVID-19 pandemic has made the trial
`
`date set by the scheduling order even more uncertain. EX1034.
`
`The uncertainty that trial will occur in this case is at least commensurate
`
`with the Coolpad and ZTE IPRs. Such uncertainty was simply not present in the
`
`NHK, Samsung, or E-One cases the POPR relied upon. EX1022-EX1024.
`
`This case is also similar to Uniden Am. Corp. v. Escort Inc., IPR2019-
`
`00724, Paper 6, 4-10 (PTAB Sept. 17, 2019), where the Board refused to
`
`discretionarily deny institution because overlapping invalidity grounds had not
`
`been finalized. See also Lee Specialties, Inc. v. FHE USA LLC, IPR2019-01366,
`
`Paper 13, 9-11 (PTAB Feb. 10, 2020). Similarly, LG’s litigation invalidity
`
`contentions are not finalized, as LG may further “supplement or modify” them,
`
`including using “system” and “knowledge of [prior] use” art unavailable in IPRs.
`
`EX2021, 2, 13-18. Also, experts have not been identified and expert discovery
`
`has not started, which may further change litigation invalidity grounds. EX2006.
`
`Accordingly, the discretionary denial of institution is not warranted here.
`
`The Board should proceed with evaluating and instituting this IPR on the merits.
`
`3
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`Dated: March 23, 2020
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`(Control No. IPR2020-00108)
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`Proceeding No. IPR2020-00108
`Attorney Docket: 18768-0186IP2
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`Respectfully submitted,
`
`
`
`
`
`/Timothy W. Riffe/
`Timothy W. Riffe
`Reg. No. 43,881
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-626-5070, F: 877-769-7945
`
`Attorneys for Petitioner
`
`4
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`Proceeding No. IPR2020-00108
`Attorney Docket: 18768-0186IP2
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`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR §§ 42.6(e), the undersigned certifies that on March 23,
`
`2020, a complete and entire copy of this Petitioner’s Reply to Patent Owner’s
`
`Preliminary Response and its exhibits were provided via email to the Patent Owner
`
`by serving the email correspondence address of record as follows:
`
`Steven W. Hartsell
`Alexander E. Gasser
`Paul J. Skiermont
`Sadaf R. Abdullah
`Steven J. Udick
`Skiermont Derby LLP
`1601 Elm Street
`Dallas, TX 75201
`
`Mieke K. Malmberg
`Skiermont Derby LLP
`800 Wilshire Boulevard, Suite 1450
`Los Angeles, CA 90017
`
`Email: BNR_SDTeam@skiermontderby.com
`
`
`
`
`
`
`
`
`/Edward G. Faeth/
`Edward G. Faeth
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(202) 626-6420
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