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 IPR2020-00319
`Patent 7,039,435
`____________
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S PRELIMINARY
`RESPONSE
`
`

`

`Proceeding No. IPR2020-00319
`Attorney Docket: 18768-0183IP1
`
`EXHIBITS
`
`1009
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`1010
`
`1011
`
`Exhibit Description
`1001
`U.S. Pat. No. 7,039,435 to McDowell et al. (“the ’435 patent”)
`1002
`File History of the ’435 patent
`1003
`Declaration of Matthew C. Valenti, Ph.D.
`1004
`U.S. Pat. No. 6,095,820 (“Luxon”)
`1005
`PCT Patent Publication WO 2002/05443 (“Irvin”)
`1006
`U.S. Pat. No. 6,018,646 (“Myllymäki”)
`1007
`U.S. Pat. No. 6,845,246 (“Steer”)
`1008
`Joint Claim Construction Chart, Worksheet, and Hearing Statement 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., filed 4/19/19)
`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.)
`Claim Construction Order and Order on Motions for Summary Judgment 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.)
`Joint Claim Construction Chart, Worksheet, and Hearing Statement in Bell
`Northern Research, LLC v. LG Electronics Inc., et al. (Case No. 3:18-CV-
`2864 (S.D. Cal.)
`Joint Motion for Entry of Prior Claim Construction Order in Bell Northern
`Research, LLC v. LG Electronics Inc., et al. (Case No. 3:18-CV-2864 (S.D.
`Cal.)
`Order Granting Joint Motion for Entry of Prior Claim Construction Order
`in Bell Northern Research, LLC v. LG Electronics Inc., et al. (Case No.
`3:18-CV-2864 (S.D. Cal.)
`Webster’s II New College Dictionary (Houghton Mifflin Co, 1999)
`Webster’s New World College Dictionary (Simon & Schuster, 1997)
`Harry Newton, Newton’s Telecom Dictionary (Miller Freeman, Inc., 1999)
`
`1012
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`1013
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`1014
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`1015
`1016
`1017
`
`i
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`

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`Proceeding No. IPR2020-00319
`Attorney Docket: 18768-0183IP1
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`Martin H. Weik, Fiber Optics Standard Dictionary (Chapman & Hall,
`1997)
`
`U.S. Pat. No. 6,029,074 (“Irvin ’074”)
`U.S. Provisional Patent Application No. 09/612,034 (“Irvin Provisional”)
`Michael Barr, Programming Embedded Systems in C and C++ (O’Reilly &
`Associates, 1999)
`Rudolf F. Graf, Modern Dictionary of Electronics (Butterworth-
`Heinemann, 1999)
`U.S. Pat. No. 6,456,856 (“Werling”)
`U.S. Pat. No. 6,498,924 (“Vogel”)
`Defendants’ Motion For Summary Judgment On Indefiniteness in Bell
`Northern Research, LLC v. LG Electronics Inc., et al. (Case No. 3:18-CV-
`2864 (S.D. Cal.)
`Claim Construction Order and Order on Motion for Summary Judgment of
`Indefiniteness in Bell Northern Research, LLC, v. LG Electronics Inc. et
`al., 3:18-cv-02864 (S.D. Cal. December 20, 2018)
`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)
`ZTE (USA) Inc. v. Bell Northern Research, LLC, IPR2019-01365, Paper 13
`(PTAB Feb. 11, 2020)
`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.)
`Order Granting Renewed Motion to Stay Pending 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 Inter Partes Review in
`Bell Northern Research, LLC, v. ZTE Corp. et al. (Case No. 3:18-cv-1786)
`(S.D. Cal.)
`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.)
`ii
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`1018
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`1019
`1020
`1021
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`1022
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`1023
`1024
`1025
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`1026
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`1027
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`1028
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`1029
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`1030
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`1031
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`1032
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`1033
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`1034
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`1035
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`1036
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`Proceeding No. IPR2020-00319
`Attorney Docket: 18768-0183IP1
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`Joint Motion to Extend the Case Management Order in Bell Northern
`Research, LLC, v. LG Electronics Inc. et al. (Case No. 3:18-cv-2864) (S.D.
`Cal.)
`Order on Motion to Stay in Finjan, Inc. v. ESET, LLC et al. (Case No. 3:17-
`cv-00183) (S.D. Cal.)
`Order Lifting Stay in Nuvasive, Inc. v. Alphatec Holdings, Inc. (Case No.
`3:18-cv-347) (S.D. Cal.)
`Order Granting Motion to Stay and Setting Schedule in Warsaw
`Orthopedic, Inc. et al. v. Nuvasive, Inc. (Case No. 3:12-cv-2738) (S.D.
`Cal.)
`Order on Nuvasive’s Motion to Stay in Warsaw Orthopedic, Inc. et al. v.
`Nuvasive, Inc. (Case No. 3:12-cv-2738) (S.D. Cal.)
`Order of the Chief Judge No. 18, “Suspension of Jury Trials and Other
`Proceedings During the COVID-19 Public Emergency,” Mar. 17, 2020
`(S.D. Cal.)
`
`iii
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`
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`1037
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`1038
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`1039
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`1040
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`1041
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`1042
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`
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`Proceeding No. IPR2020-00319
`Attorney Docket: 18768-0183IP1
`I. The Board Should Decline BNR’s NHK Arguments
`BNR focuses on “efficiency” arguments because LG’s Petition makes the
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`unpatentability of the ’435 patent evident. Since “the strength of the merits on the
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`present record outweighs relatively weaker countervailing considerations of
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`efficiency,” Illumina, Inc. v. Natera, Inc., IPR2019-01201, Paper 19, 8 (PTAB
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`Dec. 18, 2019), the Board should reject BNR’s NHK-based argument.
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`But even if the Board entertains BNR’s appeal to efficiency, BNR’s NHK
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`argument omits several relevant facts in the POPR (§ VIII.A), all of which counsel
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`against discretionary denial under § 314(a) and NHK.
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`Notably, BNR fails to mention that the Board has already denied its
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`“advanced stage of litigation” arguments in three highly-similar IPRs that stem
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`from other BNR-initiated litigations and that all were at more advanced stages
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`than the LG litigation. (EX1027, 7-8; EX1028, 7-8; EX1029, 9-10.) In these other
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`litigations, Coolpad and ZTE filed three IPRs (IPR2019-01319, -01320, -01365)
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`against BNR’s asserted patents. Although the district court was less than 2
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`months from holding the final pretrial conference and an eventual trial, (EX1030,
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`8; EX1031, 8), the Board rejected BNR’s NHK argument and instituted these IPRs,
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`reasoning that trial was uncertain given the judge’s request to stay informed of the
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`IPR status and her statement that, “[e]ven though we have done claim construction,
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`I’m rather loathe to go on parallel tracks with the Patent Office.” (EX1032,
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`1
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`Proceeding No. IPR2020-00319
`Attorney Docket: 18768-0183IP1
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`120:25-121:12 (emphasis added); EX1027, 7-8; EX1028, 7-8; EX1029, 9-10.)
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`Post-institution developments proved the Board to be prescient. Shortly
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`after institution, Judge Bencivengo—who is the same judge presiding over the LG
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`litigation—stayed the litigations against ZTE and Coolpad. (EX1033, EX1034.)
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`In her stay order, the district court judge reasoned that “institut[ion] ... will
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`substantially impact the scope of this case and streamline this litigation,” and
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`that “[d]espite the advanced nature of this case, this step [to stay] will resolve an
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`important aspect of the case and narrow the issues for a jury trial, and may avoid
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`disparate invalidity findings in the co-pending cases.” (EX1033, 2-3 (emphasis
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`added).) Her decision to stay the cases against ZTE and Coolpad is consistent with
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`her practice and track record of staying “advanced” cases upon IPR institution.
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`(EX1038 (Finjan); EX1039 (Nuvasive); EX1040-EX1041 (Warsaw).)
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`LG will move for a stay upon institution, and the likelihood of a stay is even
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`greater here given the earlier stage of the LG litigation. Indeed, while the ZTE
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`and Coolpad litigations were less than 2 months from the final pretrial conference
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`when the Board instituted their IPRs, (EX1027-EX1029, EX1030-EX1031,
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`EX1033-EX1034), LG’s litigation is at an earlier stage: the institution decision is
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`due over five months before the current final pretrial conference. (EX2017, 2.)
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`In addition to her willingness to stay advanced cases, Judge Bencivengo
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`also has a track record of granting partial stays in cases with already set trial dates.
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`2
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`Proceeding No. IPR2020-00319
`Attorney Docket: 18768-0183IP1
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`(EX1038-EX1040). For example, in Finjan, Inc. v. ESET, LLC, 2018 WL
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`2095734 (S.D. Cal. May 7, 2018), she stayed litigation with respect to the single
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`patent in the IPR proceeding despite an already-set February 2019 trial date, while
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`allowing other patents (not subject to IPR) in the same litigation to proceed.
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`(EX1038.) Given her practice, it is not surprising that she has asked BNR and
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`LG—as she did with Coolpad and ZTE—to keep her informed “of what’s going
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`on in the Patent Office” with respect to LG’s IPRs. (EX1035, 77:6-22; EX1036.)
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`Even without a stay, the trial date in the LG litigation is uncertain given the
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`ongoing COVID-19 pandemic and its effects on earlier events in the litigation.
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`(EX1037; EX1042.) For example, if the parties cannot take depositions before the
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`current close of fact discovery, all of the subsequent dates—including trial—will
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`need to be delayed. As BNR recognized, the “situation is uncertain” and could
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`“necessitate pushing off a trial scheduled for December.” (EX1037, 6.) Hence,
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`merely because a trial date has been set does not mean it will occur on schedule.
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`The uncertainty of a trial date in this case is thus at least commensurate with the
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`Coolpad and ZTE IPRs. Such uncertainty was simply not present in NHK,
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`Samsung, E-One, or other cases cited in the POPR. (EX1027-EX1029.)
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`In sum, the district court judge’s track record of staying litigations at an
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`advanced stage and/or with trial dates, and the uncertainty of the trial date in view
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`of the pandemic, counsel against discretionary denial under § 314(a) and NHK.
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`3
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`Proceeding No. IPR2020-00319
`Attorney Docket: 18768-0183IP1
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`II. The Board Should Decline BNR’s General Plastic Arguments
`The POPR’s General Plastic arguments (§ VII.B) misstate the law and facts
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`in this case, and also ignore the Petition’s discussion of this issue. (Pet., § X.A.)
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`First, BNR’s unsupported allegations of gamesmanship regarding the
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`timing of this IPR, (POPR, 31, 34, 37-38), ignore that BNR’s own delay in finally
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`electing the asserted claims of the ’435 patent in the LG litigation affected the
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`timing of LG’s IPR. (Pet., 63, 67.) As stated in the Petition, “it was only [on]
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`October 4, 2019 when BNR made its final election of asserted claims against
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`Petitioner—a matter of days before it filed its POPR in IPR2019-01186 on October
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`11, 2019 (the POPR in IPR2019-01365 is nearly identical to the earlier POPR).”
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`Preparing and filing an IPR petition within a few weeks after BNR’s final election
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`of asserted claims is particularly reasonable. (Id.)
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`Second, BNR’s assertion that this IPR challenges the “same claims” as the
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`Huawei and ZTE IPRs, (POPR, 32-33, 39), disregards that BNR strategically
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`chose to assert a number of overlapping claims against LG. More importantly,
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`BNR fails to recognize this IPR challenges an additional claim—specifically,
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`claim 8—beyond those challenged in the other IPRs. (Pet., 63, 65, 67.) As a result
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`of this additional claim, the group of challenged claims here is different from those
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`challenged in the Huawei and ZTE IPRs. This fact weighs against discretionary
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`denial. Mercedes-Benz USA, LLC v. Carucel Investments, L.P., IPR2019-01404,
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`4
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`Proceeding No. IPR2020-00319
`Attorney Docket: 18768-0183IP1
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`Paper 12, 10 (finding that claims “challenged here but not in [earlier IPRs] weighs
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`against discretionary denial”). And exercising discretionary denial would unfairly
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`prejudice LG, which is a different entity from Huawei and ZTE. (Pet., 63, 65, 67.)
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`Third, the POPR’s argument about LG and Huawei being represented by
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`the same law firm, (POPR, 33, 37-38), is a red-herring. As a factual matter, unlike
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`its competitor Huawei which is based in China, LG is a separate and different
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`company based in South Korea that has its own personnel, that is facing different
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`potential liability based on different accused products, and that has different
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`motivations from Huawei. As a legal matter, BNR’s argument contravenes the
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`Board’s prior rulings that the same counsel representing multiple parties against
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`the same plaintiff/patent owner does not create a close relationship between the
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`parties that would favor discretionary denial. See Unified Patents Inc. v. Sound
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`View Innovations, LLC, IPR2018-00096, Paper 11, 11-13 (PTAB Apr. 18, 2018)
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`(finding that, even with common counsel, “[petitioner] is unquestionably not ‘the
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`same petitioner’ as [the earlier petitioner]” and, as a result, “we do not agree that
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`the first General Plastic factor supports denial of the Petition”).
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`Fourth, BNR’s allegations of road mapping, (POPR, 34-37), is pure
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`conjecture. With respect to the Huawei IPR which was terminated before
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`institution due to settlement, BNR does not identify any deficiencies in the Huawei
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`petition that LG remedied. All that BNR has done is to point out similarities and
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`5
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`Proceeding No. IPR2020-00319
`Attorney Docket: 18768-0183IP1
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`differences, and that is not enough. See United Fire Protection Corp. v.
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`Engineered Corrosion Solutions, LLC, IPR2018-00991, Paper 10, 14 (PTAB Nov.
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`15, 2018) (requiring a showing of “how the [second petition] was tailored to try to
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`overcome the deficiencies” of the earlier petition). The same is true for the ZTE
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`IPR proceeding, with BNR failing to identify any deficiencies that LG supposedly
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`remedied. BNR cannot provide such identification because the Board instituted
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`the proceeding after LG filed its IPR petition. (EX1029.) As a result, LG could
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`not have used the Board’s decision as a “roadmap.” In any case, it is unclear how
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`the LG IPR purportedly cures any deficiencies in the ZTE IPR, given that the
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`Board did not identify any deficiencies when it instituted the ZTE IPR. Rather
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`than suggesting road mapping, LG’s deviation from the Huawei and ZTE petition
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`is evidence of an independent party presenting its own independent assessment of
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`what it considers to be the best unpatentability grounds.
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`Accordingly, discretionary denial of institution is not warranted here. The
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`Board should proceed with evaluating and instituting this IPR on the merits.
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`6
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`Dated: April 15, 2020
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`(Control No. IPR2020-00319)
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`Proceeding No. IPR2020-00319
`Attorney Docket: 18768-0183IP1
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`Respectfully submitted,
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`
`
`/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
`Counsel for Petitioner
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`7
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`
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`Proceeding No. IPR2020-00319
`Attorney Docket: 18768-0183IP1
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e), the undersigned certifies that on April 15,
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`2020, a complete and entire copy of this Petitioner’s Reply to Patent Owner’s
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`Preliminary Response and its exhibits were provided via email, to the Patent
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`Owner by serving the correspondence address of record as follows:
`
`Steven W. Hartsell
`Alexander E. Gasser
`Joseph M. Ramirez
`Paul J. Skiermont
`Sadaf R. Abdullah
`Steven J. Udick
`Skiermont Derby LLP
`1601 Elm Street, Suite 4400
`Dallas, TX 75201
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`Mieke K. Malmberg
`Skiermont Derby LLP
`800 Wilshire Boulevard, Suite 1450
`Los Angeles, CA 90017
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`Email: BNR_SDTeam@skiermontderby.com
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`/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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