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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
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`GOOGLE LLC,
`Petitioner,
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`v.
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`UNILOC 2017 LLC,
`Patent Owner.
`______________________
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`IPR2020-00115
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`U.S. Patent No. 8,407,609
`______________________
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`PETITIONER’S REQUEST FOR REHEARING
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`TABLE OF CONTENTS
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`IPR2020-00115
`Patent No. 8,407,609
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`Introduction ...................................................................................................... 1
`I.
`Legal Standard ................................................................................................. 1
`II.
`III. Argument ......................................................................................................... 2
`A.
`The Board’s decision deviated from prior Board decisions by
`giving little weight to the inability of the Texas Litigation to
`address the validity of two of the three claims at issue. ........................ 2
`The Board misapprehended the uncertainty surrounding when
`validity will be resolved in the Texas Litigation. .................................. 6
`The Board’s decision undermines Congress’ intent in creating
`IPR. ...................................................................................................... 12
`IV. Conclusion .....................................................................................................15
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`C.
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`B.
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`i
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`Petitioner’s Request for Rehearing
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`IPR2020-00115
`Patent No. 8,407,609
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`I.
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`Introduction
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`Petitioner respectfully submits that, pursuant to 37 C.F.R. § 42.71(d), the
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`Board should revisit and modify its decision to exercise its discretion under 35
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`U.S.C. § 314(a) to deny institution of this proceeding in light of the parallel district
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`court litigation, Uniloc 2017 LLC v. Google LLC, No. 2:18-cv-502 (E.D. Tex.)
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`(“Texas Litigation”).
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`The Board’s decision was based solely on its weighing of the factors
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`articulated in NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8
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`(PTAB Sept. 12, 2018) (precedential). For the reasons discussed below, the
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`Board’s decision “represents an unreasonable judgment in weighing [these]
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`relevant factors.” Palo Alto Networks, Inc. v. Juniper Networks, Inc., IPR2013-
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`00369, Paper 39 at 2-3 (PTAB Feb. 14,2014). Accordingly, Petitioner requests
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`that the Board reweigh the NHK Spring factors and institute this proceeding.
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`II. Legal Standard
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`Under § 42.71(d), this “request must specifically identify all matters
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`[Petitioner] believes the Board misapprehended or overlooked, and the place where
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`each matter was previously addressed in a motion, opposition, or reply.” The
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`Board will review its Decision for abuse of discretion. 37 C.F.R. § 42.71(c). “An
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`abuse of discretion may be indicated if a decision is based on an erroneous
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`interpretation of law, if a factual finding is not supported by substantial evidence,
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`Petitioner’s Request for Rehearing
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`IPR2020-00115
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`or if the decision represents an unreasonable judgment in weighing relevant
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`factors.” Palo Alto Networks, IPR2013-00369, Paper 39 at 2-3.
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`III. Argument
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`The Board’s decision represents an unreasonable judgment in weighing the
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`relevant factors for three reasons. First, the Board deviated from prior Board
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`decisions by giving little weight to the inability of the Texas Litigation to address
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`the validity of two of the three claims at issue. Second, the Board misapprehended
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`and gave too little weight to the uncertainty surrounding when validity will be
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`resolved in the Texas Litigation. And, third, the Board’s decision undermines
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`Congress’ intent in creating IPR.
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`A. The Board’s decision deviated from prior Board decisions
`by giving little weight to the inability of the Texas Litigation
`to address the validity of two of the three claims at issue.
`Unlike in NHK Spring, where the Board determined the parallel district
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`court litigation would “analyze the same issues” as the IPR, here the Texas
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`Litigation cannot and will not analyze the majority of the issues presented in the
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`petition. NHK Spring, Paper 8 at 20; Paper 7 at 2; Paper 6 at 12. This is because,
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`as the Board acknowledged, “only claim 1 is currently at issue in the Texas
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`Litigation,” while “the Petition challenges both independent claim 1 and its
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`dependent claims 2 and 3.” Decision at 9. Nevertheless, the Board denied
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`institution.
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`2
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`Petitioner’s Request for Rehearing
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`In this manner, the Board’s decision deviates from prior Board decisions that
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`gave significant weight to whether a district court would address the validity of all
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`claims challenged in an IPR. In Resideo Technologies, Inc. v. Innovation Sciences,
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`LLC, for example, Patent Owner urged the Board to deny institution in light of a
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`district court litigation in which the pre-trial conference was scheduled more than
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`nine months before a Final Written Decision would issue. IPR2019-01306,
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`Paper 19 at 10 (PTAB Jan. 27, 2020). The Board declined, finding “there is not a
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`substantial overlap in the issues” in part because, as in this case, “the district court
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`will not resolve the patentability of most of the claims challenged in the Petition.”
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`Id. at 13. Facebook, Inc.et al. v. Blackberry Ltd., is similar. IPR2019-00899,
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`Paper 15 at 11–12 (PTAB Oct. 8, 2019). There, the Board instituted IPR
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`notwithstanding trial scheduled six months before a Final Written Decision would
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`issue because, as in this case, trial would not resolve the patentability of most of
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`the claims challenged in the IPR. See also Oticon Med. AB v. Cochlear Ltd.,
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`IPR2019-00975, Paper 15 at 23 (Oct. 16, 2019) (precedential) (instituting IPR
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`where it “would not be directly duplicative of the District Court consideration of
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`validity”); Uniden Am. Corp. v. Escort Inc., IPR2019-00724, Paper 6 at 7 (PTAB
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`Sep. 17, 2019) (instituting IPR notwithstanding a district court trial scheduled three
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`months before a Final Written Decision would issue because the IPR challenged
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`claims not at issue in the district court).
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`3
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`Petitioner’s Request for Rehearing
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`In its Preliminary Response, Patent Owner downplayed the divergence of
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`issues between the Texas Litigation and the IPR, calling the grounds challenging
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`dependent claims 2 and 3 only a “minor variation.” Paper 6 at 12. But the Board
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`has never considered claims “minor” merely because they are dependent. In Puma
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`North America, Inc. v. Nike, Inc., for example, the Board instituted IPR because
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`dependent claims challenged in the IPR were not at issue in the district court:
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`“[E]ven if trial in the Litigation were to conclude prior to . . . the Final Written
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`Decision in this proceeding, questions regarding the patentability of the majority of
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`the challenged claims would remain unresolved.” IPR2019-01043, Paper 8 at 9
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`(PTAB Oct. 31, 2019).
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`In contrast to these prior Board decisions, the Board here gave too little
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`weight to the inability of the Texas Litigation to address claims 2 and 3. The
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`Board’s only explanation was that “the Board has already instituted two other inter
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`partes review proceedings that challenge these claims.” Decision at 9. Because
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`Petitioner is not a party to those IPRs, Petitioner can have no input on those IPRs
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`and Petitioner may not be able to enjoy all the benefits they could provide, such as
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`a stay in the Texas Litigation. Most significantly, Petitioner cannot ensure those
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`IPRs will ultimately determine the validity of claims 2 and 3: It is entirely possible
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`that one or both IPRs could be terminated before a Final Written Decision is
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`reached due to a settlement of the petitioners with Patent Owner. Indeed, one
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`petitioner has already indicated that it and Patent Owner “have been seeking to
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`finalize a written settlement agreement.” Uniloc 2017 LLC v. Roku, Inc., Case
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`No. 8:19-cv-00295, Dkt. No. 50 (C.D. Cal. March 27, 2020) (“Joint Status Report
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`Regarding Settlement”). What’s more, those IPRs assert obviousness grounds
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`relying on different prior art references than the anticipation ground asserted by
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`Petitioner. Contrary to the Board’s suggestion, Decision at 9 n.8, anticipation and
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`obviousness are different legal standards, which alone constitutes a “material
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`difference” between this and the other IPRs. Further, while the Board criticized
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`Petitioner for “not explain[ing] the significance of the[] differences” between the
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`prior art references in its petition and the instituted IPRs, id., the Board has its own
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`duty to consider the merits of Petitioner’s grounds in deciding whether to exercise
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`discretionary denial. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5
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`(PTAB Mar. 20, 2020) (“[A]n early trial date should be weighed as part of a
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`‘balanced assessment of all relevant circumstances of the case, including the
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`merits.’”) (quoting Consolidated Trial Practice Guide November 2019). The
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`decision evidences no such consideration. And to the extent the Board’s decision
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`was impacted by the presence of these other IPRs, the Board should have
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`conducted an assessment of the factors governing follow-on petitions articulated in
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`General Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357,
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`Paper 19 (PTAB Sept. 6, 2017) (precedential), at least to explain which of those
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`IPR2020-00115
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`factors, if any, merit a different result here than was reached by the Board in the
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`second-filed IPR. Netflix, Inc. v. Uniloc 2017 LLC, IPR2020-00041, Paper 10
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`(Mar. 25, 2020) (finding none of the seven factors weighed in favor of denial).
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`For these reasons, Petitioner requests the Board give more weight to the
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`inability of the Texas Litigation to address two of the three challenged claims.
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`B.
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`The Board misapprehended the uncertainty surrounding
`when validity will be resolved in the Texas Litigation.
`Even if the Texas Litigation could resolve the validity of all the challenged
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`claims—it cannot—the Board’s analysis misapprehended the uncertainty
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`surrounding when that resolution will occur.
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`First, while the Board’s analysis focused on the trial date in the Texas
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`Litigation, the Board should instead have compared the statutory deadline for the
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`Final Written Decision to the anticipated date of a final judgment in the Texas
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`Litigation. A Final Written Decision is a final, appealable, judgment on validity.
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`A comparable final, appealable, judgment on validity will not be reached in the
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`Texas Litigation on the trial date but only once post-trial activity concludes and a
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`final judgment is entered. See Apple, Paper 11 at 15 n.30 (observing that an IPR
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`could be terminated under 37 C.F.R. § 42.72 when “a final judgment [was] entered
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`on the patentability issues in the parallel proceeding”) (emphasis added).
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`Post-trial activity is unpredictable and can take months or even years. See,
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`6
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`Petitioner’s Request for Rehearing
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`IPR2020-00115
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`e.g., Kaist IP US LLC v. Samsung Elecs. Co., Ltd., Case No. 2:16-cv-01314-JRG,
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`Dkt. 678 (E.D. Tex. Mar. 20, 2020) (final judgment entered twenty months after a
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`jury verdict); Optis Wireless Technology v. Huawei Technologies Co., Case No.
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`2:17-cv-00123-JRG, Dkt. 374 (E.D. Tex. Mar. 18, 2019) (final judgment entered
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`almost seven months after jury trial). In the Eastern District of Texas, for example,
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`while the average time to a jury trial is two years and four months, the average
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`time to post-trial activities like damages (two years and eleven months) and
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`attorney fees (two years and eight months) are longer. Docket Navigator, Analysis
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`of Patent Litigation in the Eastern District of Texas at 4 (available at
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`https://brochure.docketnavigator.com/edtx-analysis/). As at least one PTAB judge
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`has recognized, this means the Final Written Decision may well precede a final
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`judgment in the district court, notwithstanding an early trial date. Sand Rev’n II,
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`LLC v. Cont’l Intermodal Group-Trucking LLC, IPR2019-01393, Paper 12 at 20
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`(Feb. 5, 2020) (DeFranco, J., dissenting) (“[T]hat a jury trial may occur in the
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`district court before any Final Decision would be due here does not guarantee the
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`entry of final judgment by the district court before the time of any Final Decision
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`. . . , as the district court litigation may still need to continue with a damages trial
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`and post-trial motions.”) And unlike the Final Written Decision, which will
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`certainly issue by the statutory deadline, a final judgment in the Texas Litigation is
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`not bound by any deadlines. This weighs in favor of instituting the IPR. See
`7
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`Petitioner’s Request for Rehearing
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`IPR2020-00115
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`Unified Patents, Inc. v. MV3 Partners LLC, IPR2019-00474, Paper 24 at 10
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`(declining to terminate institution on rehearing because “the Scheduling Order
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`includes no deadlines for post-trial proceedings leading to a final judgment before
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`the Board’s statutory deadline.”)
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`The trial date itself is similarly uncertain. As Petitioner highlighted to the
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`Board, Patent Owner moved to extend discovery deadlines by two months. Paper
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`7 at 3-4. (The district court has since addressed some of those extensions, but has
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`not yet issued an Amended Docket Control Order addressing all of them. Uniloc
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`2017 LLC v. Google LLC, Case No. 2:18-cv-00493, Dkt. No. 218 n.1 (E.D. Tex.
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`Mar. 27, 2020) (referencing the Texas Litigation)). But the Board misapprehended
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`the uncertainty surrounding the trial date in the Texas Litigation.
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`In particular, the Board erroneously assumed that “[e]ven if the district court
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`were to delay its schedule by two months, the trial would still precede our final
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`written decision by more than five months.” Decision at 7 n. 7. It is not
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`reasonable to assume that a two-month shift in discovery deadlines will cause a
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`corresponding two-month shift in the trial date, as trial dates depend on the district
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`court’s availability. See, e.g., Mylan Pharms. Inc. v. Sanofi-Aventus Deutschland
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`GmbH, IPR2018-01670, Paper 19 (Apr. 3, 2019) (instituting IPR notwithstanding
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`parties’ desire to conclude a district court trial by a certain date because scheduling
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`8
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`IPR2020-00115
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`the trial was “subject to the Court’s availability”).1 A two-month delay in
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`discovery deadlines could easily result in a much greater delay to a trial date.
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`As the Board has acknowledged, there is much “uncertainty associated with
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`litigation trials,” and this remains even once a trial has been scheduled. Mylan,
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`Paper 19 at 10 n.3. As in the Texas Litigation, a common source of that
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`uncertainty is extensions in discovery deadlines, which other Board decisions have
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`acknowledged. In Residio, for example, the Board declined to exercise
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`discretionary denial because extensions in discovery deadlines showed the district
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`court schedule was not “firmly set” and “the schedule continue[d] to change.”
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`1 See also E.D. Texas General Order 20-03 (available at http://www.txed. uscourts.
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`gov/sites/default/files/goFiles/GO%2020-03%20%20COVID-19_signed.pdf)
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`(postponing all jury trials in the Eastern District of Texas scheduled before May 1,
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`2020); E.D. Texas General Order 20-09 (available at http://www.txed. uscourts.
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`gov/sites/default/files/goFiles/GO%2020-09%20Extension%20and%20
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`Modification%20of%20Prior%20GOs_signed.pdf) (extending General Order 20-
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`03 to May 31, 2020); Judge Gilstrap Standing Order (available at http://www.txed.
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`uscourts. gov/sites/default/files/judgeFiles/COVID19%20Standing%20Order.pdf)
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`(stating court is “open to requests for extensions,” including “multiple requests,” to
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`accommodate COVID-19 disruptions).
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`Paper 19 at 11. The same is true here. Indeed, no Amended Docket Control Order
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`has yet issued from the district court, leading to even greater uncertainty, as there
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`is no operative schedule for fact witness depositions, expert reports, dispositive
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`motions and so on—all of which will necessarily impact many milestones leading
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`up to and likely including the trial date. Further, the district court has currently
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`scheduled trials in at least nine of the cases that Patent Owner has brought against
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`Petitioner to start on the same day as the Texas Litigation. Uniloc 2017 LLC v.
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`Google LLC, Case Nos. 2:18-cv-00491, Dkt. 101 (E.D. Tex. Oct. 11, 2019); 2:18-
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`cv-00492, Dkt. 98 (E.D. Tex. Oct. 15, 2019); 2:18-cv-00493, Dkt. 100 (E.D. Tex.
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`Oct. 11, 2019); 2:18-cv-00496, Dkt. 98 (E.D. Tex. Oct. 15, 2019); 2:18-cv-00497,
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`Dkt. 101 (E.D. Tex. Oct. 11, 2019); 2:18-cv-00499, Dkt. 96 (E.D. Tex. Oct. 11,
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`2019); 2:18-cv-00502, Dkt. 92 (E.D. Tex. Oct. 15, 2019) (the Texas Litigation);
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`2:18-cv-00503, Dkt. 95 (E.D. Tex. Oct. 11, 2019); 2:18-cv-00504, Dkt. 89 (E.D.
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`Tex. Oct. 15, 2019). It is not possible for all these trials to start that day.
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`A delay in the trial date would not be unusual, as more than 40% of trials are
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`delayed by four months or more. Apple Inc. v. Fintiv, Inc., IPR2020-00019,
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`Ex. 1035 (PTAB Mar. 27, 2020). This uncertainty, properly apprehended, should
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`have led the Board to decline discretionary denial, as it has in prior Board
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`decisions. See, e.g., Avi Networks, Inc. v. Citrix Sys., Inc., IPR2019-00845,
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`Paper 19 at 6–7 (PTAB Oct. 1, 2019) (no discretionary denial where district court
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`schedule was “dynamic” due to extensions to discovery deadlines); Amazon.com,
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`Inc. v. CustomPlay, LLC IPR2018-01496, Paper 12 at 9 (Mar. 7, 2019) (no
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`discretionary denial where district court had recently granted a motion to extend
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`deadlines for discovery).
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`In addition, there is further uncertainty over the trial date because the
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`Eastern District of Texas may not be a proper venue for trial, as Petitioner has
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`argued in a motion pending before the district court. Uniloc 2017 LLC v. Google
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`LLC, Case No. 2:18-cv-00493, Dkt. No. 100 (E.D. Tex. Oct. 23, 2019). In another
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`matter where Petitioner filed a similar motion challenging venue, the Federal
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`Circuit recently held that the Eastern District of Texas is not a proper venue for
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`patent cases filed against Petitioner. See In re Google, 949, F.3d 1338, 1347 (Fed.
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`Cir. 2020). 2 This decision may result in Petitioner’s pending motion to transfer
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`the Texas Litigation being granted, resulting in a new trial date altogether.
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`For these reasons, Petitioner requests that the Board give more weight to the
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`uncertainty surrounding resolution of validity in the Texas Litigation.
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`2 Respondent Super Interconnect Technologies, LLC, has filed a Petition for
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`Rehearing or Rehearing En Banc to which Petitioner will respond this week. In re
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`Google LLC, Case No. 19-126, Dkt. Nos. 37 (Fed. Cir. Mar. 16, 2020), 47 (Fed.
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`Cir. Apr. 15, 2020).
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`IPR2020-00115
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`C. The Board’s decision undermines Congress’ intent in
`creating IPR.
`Congress intended IPRs as “a timely, cost-effective alternative to litigation.”
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`77 F. Reg. 48680-01 (Aug. 14, 2012). The Board’s decision to deny Petitioner use
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`of that alternative based on the progress of the Texas Litigation undermines
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`Congress’ intent by ignoring both the framework Congress envisioned and the
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`realities of district court litigation Congress recognized.
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`As the one-year time bar of 35 U.S.C. § 315(b) reflects, “Congress
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`contemplated that many reviews would be instituted where progress had been
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`made in the parallel litigation.” Precision Planting, LLC v. Deere& Co., IPR2019-
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`01044, Paper 17 at 17 (PTAB Dec. 2, 2019). The Board has recognized that “[t]he
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`inter partes review system set up by Congress provides for instituting an inter
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`partes review, notwithstanding an eighteen month lead time in the district courts.”
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`Id. at 18 (citing 35 U.S.C. § 315(b)). “[A]ny analysis [by the Board] on whether to
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`exercise [its] discretion to deny under § 314(a) should be conducted with that
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`reality in mind.” Id. The Board’s analysis here was not.
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`For example, the Board cited in favor of denial that “[t]he district court has
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`invested time and resources in the Texas Litigation.” Decision at 7. But this will
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`be true in any case in which a petitioner files near the end of the one-year period
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`allowed by § 315(b). As the Board has observed, “Congress recognized that an
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`instituted IPR proceeding and the associated litigation may involve some amount
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`of duplicative efforts,” and this alone will not merit discretionary denial. Avi,
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`Paper 19 at 6.
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`As another example, the Board ignored many realities of the Texas
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`Litigation. For instance, despite Patent Owner’s then-pending motion for a two-
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`month extension of discovery deadlines, the Board assumed that “expert discovery
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`will close in approximately six weeks.” Decision at 7. The district court’s
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`extension of the discovery deadlines all but ensures this will not come to pass.
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`Uniloc 2017 LLC v. Google LLC, Case No. 2:18-cv-00493, Dkt. No. 218 n.1 (E.D.
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`Tex. Mar. 27, 2020) (referencing the Texas Litigation). The Board similarly
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`assumed that “a jury trial will begin in less than five months” but, as discussed
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`above, the discovery deadline extensions, the significant uncertainty of trial
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`schedules, and the recent In re Google decision all strongly suggest this will
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`change as well. Decision at 7.
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`The Board’s analysis should have balanced the realities—including the
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`uncertainties—of the Texas Litigation with Congress’ desire for “a timely, cost-
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`effective alternative to litigation.” Instead, the Board discounted these
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`uncertainties and denied Petitioner use of this alternative. As previous cases have
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`shown, the Board’s predictions could easily prove wrong. As one example, the
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`trial in the district court case running parallel to NHK Spring was ultimately
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`Petitioner’s Request for Rehearing
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`delayed by six months. Intri-Plex Techs. v. NHK Int’l Corp., 3:17-cv-01097-EMC,
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`Dkt. No. 175 (N.D. Cal. Feb. 22, 2019). The Texas Litigation could be similarly or
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`even longer delayed. Either way, IPR will no longer be available to Petitioner.
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`The Board’s decision also undermines Congress’ intent to give district
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`courts the discretion to prevent duplicative proceedings by issuing stays. As the
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`Board has observed:
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`There is no per se rule against instituting an inter partes review when
`any Final Decision may issue after a district court has addressed the
`patentability of the . . . claims. Nor should there be. Instituting under
`such circumstances gives the district court the opportunity, at its
`discretion, to conserve judicial resources by staying the litigation until
`the review is complete, thus satisfying the AIA’s objective of
`providing “an effective and efficient alternative to litigation.” . . .
`NHK Spring does not persuade us otherwise.
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`Intuitive Surgical, Inc. v. Ethicon LLC, IPR2018-01703, Paper 7 at 12 (Feb. 19,
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`2019) (quoting Gen. Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaishi, IPR2016-
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`01357, Paper 19 at 16–17 (Sep. 6, 2017) (precedential)).
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`By denying institution of IPR here, the Board has usurped the district court’s
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`opportunity to decide, in its discretion, whether to stay the Texas Litigation3 and
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`3 In the last year, stays pending IPR have been granted (in the vast majority with no
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`opposition from Patent Owner) in twenty-six district court cases (seven in the
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`14
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`Petitioner’s Request for Rehearing
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`let validity be resolved through this “effective and efficient alternative.”
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`For these reasons, Petitioner requests that the Board give more weight to
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`Congress’ intent to provide “a timely, cost-effective alternative to litigation.”
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`IV. Conclusion
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`Petitioner respectfully requests that the Board reweigh the NHK Spring
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`factors in light of the above and modify its decision not to institute this proceeding.
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`Date: April 27, 2020
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`Respectfully submitted,
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`/Erika H. Arner/
`Erika H. Arner,
`Reg. No. 57,540
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`Eastern District of Texas) brought by Patent Owner. In only one was a stay denied
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`following institution of an IPR. Uniloc 2017LLC v. Samsung Elecs. Am., Inc.,
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`Case No. 2:19-cv-00259, Dkt. No. 55 (Mar. 24, 2020). The Board was wrong to
`
`conclude that, because “[t]here is no evidence that the district court has granted (or
`
`would grant) a stay” here, NHK Spring Factor 1 favors denial. Decision at 7.
`
`There is also no evidence that the district court would not. The absence of
`
`evidence renders this factor neutral at best.
`
`15
`
`
`
`
`Petitioner’s Request for Rehearing
`
`
`
`IPR2020-00115
`Patent No. 8,407,609
`
`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that the foregoing
`
`PETITIONER’S REQUEST FOR REHEARING was served on April 27, 2020,
`
`via email directed to counsel of record for Patent Owner at the following:
`
`Ryan Loveless
`ryan@etheridgelaw.com
`Brett Mangrum
`brett@etheridgelaw.com
`James Etheridge
`jim@etheridgelaw.com
`Jeffrey Huang
`jeff@etheridgelaw.com
`
`Dated: April 27, 2020
`
`By: /Lisa C. Hines/
`Lisa C. Hines
`Litigation Legal Assistant
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
`
`16
`
`Petitioner’s Request for Rehearing
`
`
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