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`Filed: March 27, 2020
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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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`LG ELECTRONICS INC.,
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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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`Case No. IPR2020-00108
`U.S. Patent No. 8,416,862
`___________________
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`PATENT OWNER’S PRELIMINARY SUR-REPLY TO
`PETITIONERS’ PRELIMINARY REPLY
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`Petitioner’s preliminary reply draws a deeply flawed comparison between
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`this Petition and different IPR proceedings where BNR urged discretionary denial
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`under § 314(a) and the Board instituted review. In those other proceedings,
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`because there was no trial date and the district court said it might consider a stay,
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`the Board held “it is not clear that the district court litigation will have concluded
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`by the time our final decision is due.” (Ex. 1022, p. 8; Ex. 1023, p. 8.) The clarity
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`the Board sought there exists here and discretionary denial under § 314(a) is
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`warranted for every reason such discretion exists.
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`Petitioner admits, as it must, that there is a fixed December 2020 trial date in
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`the district court. (Paper 11 (“Reply”), 2.) The Board’s precedential § 314(a)
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`opinions repeatedly emphasize the importance of a date certain for trial. In NHK
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`Spring Co., Ltd. v. Intri-Plex Technologies, Inc. the Board denied institution under
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`§ 314(a), citing the duplicative art and arguments and a fixed trial date that would
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`be complete before any final written decision. IPR2018-00752, Paper No. 8 at 19-
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`20 (PTAB Sept. 12, 2018). Recently, in Oticon Medical AB v. Cochlear Ltd., the
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`Board instituted over a § 314(a) challenge, distinguishing it from NHK because “a
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`trial in [Oticon] would not be directly duplicative of the District Court action. Nor
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`is there a trial date set at the District Court.” IPR2019-00975, Paper No. 15, 23-24
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`(PTAB Oct. 16, 2019). As shown in NHK and Oticon, a fixed trial date that would
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`be complete before any final written decision strongly favors denying institution.
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`
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`1
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`
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`Petitioner tries to characterize the fixed trial date present here and in NHK as
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`“at least as uncertain” as the total absence of a trial date per Oticon and BNR’s
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`other IPRs upon which Peitioner relies. (Reply, 2.) Petitioner also suggests the
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`ongoing COVID-19 pandemic renders the trial date uncertain. It cites a joint
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`motion the parties filed to extend certain deadlines due to COVID-19. There,
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`Petitioner alone sought an extension of the trial date. (Reply, 3 (citing EX1034).)
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`After Petitioner filed its Reply, the district court rejected Petitioner’s request to
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`continue the trial and confirmed the December 2020 trial date. (Ex. 2024, 2.)
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`Petitioner speculates about whether and under what conditions the district court
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`might vacate the scheduled trial date it recently confirmed and institute a stay.
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`(Reply, 1-3.) The Board does not make decisions under § 314(a) based on idle
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`speculation. IPR proceedings are intended to be cost-effective alternative to patent
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`litigation. When they will not be and institution proceeds, it undermines the AIA’s
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`purpose and intent—and when forced into parallel duplicative proceedings it
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`inflicts meaningful cost on the parties, the courts, and the Board. Petitioner’s
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`musing about what might happen is contrary to NHK and Oticon, which require
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`tight focus on known, objective facts. See NHK, IPR2018-00752, Paper No. 8, 19-
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`20; Oticon, IPR2019-00975, Paper No. 15, 23-24.
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`Petitioner also fails to acknowledge or disclose to the Board that in the prior
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`litigation, the district court did not even consider a stay until each asserted patent
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`2
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`
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`was instituted. (See Ex. 2023, 2.) That will not happen here. Petitioner challenged
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`four asserted litigation patents (all in the pre-instituion decision phase), but
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`declined to challenge a fifth litigation patent (now time-barred). See IPR2020-
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`00318 (Patent No. 7,957,450), IPR2020-00330 (Patent No. 6,549,792). For that
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`reason, Petitioner cannot argue to the district court that a stay of the litigation is
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`warranted based on all asserted patents instituted, which makes a stay less likely.
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`Finally, Petitioner protests its “invalidity contentions are not finalized, as LG
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`may further ‘supplement or modify’ them, including using ‘system’ and
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`‘knowledge of prior use’ art unavailable in IPRs,” citing to Uniden Am. Corp. v.
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`Escort Inc., IPR2019-00724, Paper No. 6 (Reply, 3) (emphasis added). Petitioner
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`offers no hints about what prior art “system” or “knowledge of prior use” it may
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`supplement. But trial is in 9 months. Court-authorized supplementation is more
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`unlikely than likely. Whatever agreement between the parties in Uniden, there is
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`no such party agreement here. Petitioner already amended invalidity contentions
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`post-Markman and they are final. Petitioner does not dispute they are duplicative
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`of the grounds here. LG is not entitled to freely supplement or modify its invalidity
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`contentions at this late date except “upon a timely motion showing good cause.” It
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`has not done so. (Ex. 2025, S.D. Cal. L.P.R. 3.6(b)(3).) Petitioner’s duplicative
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`invalidity arguments here and in district court—together with trial completing well
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`before the final written decision deadline—strongly favors discretionary denial.
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`3
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`
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`Dated: March 27, 2020
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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)
`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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`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 March 27,
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`2020 at the following addresses of record:
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`Respectfully Submitted,
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`/Steven W. Hartsell/
`Steven W. Hartsell
`Counsel for Patent Owner
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`Timothy W. Riffe
`Christopher C. Hoff
`R. Andrew Schwentker
`PTABInbound@fr.com
`IPR18768-0186IP2@fr.com
`riffe@fr.com
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`Dated: March 27, 2020
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