UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`PARUS HOLDINGS, INC.,
`Patent Owner.
`
`Case No. IPR2020-00686
`U.S. Patent No. 7,076,431
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.107(a)
`
`

`

`Case No. IPR2020-00686
`Patent No. 7,076,431
`
`I.
`II.
`
`III.
`
`B.
`
`C.
`
`TABLE OF CONTENTS
`Summary of Argument .................................................................................... 1
`The Board Should Deny Institution Under Section 314(a) and PTAB’s
`Precedent-Designated NHK and Fintiv Decisions Because The Parties
`Are Scheduled To Try The Validity Of The Challenged Patent In A
`District Court Jury Trial Two Months Before This IPR Would
`Conclude .......................................................................................................... 4
`A.
`The Parallel District Court Proceeding Between The Parties Is
`Scheduled For Trial Two Months Before The Final Written
`Decision Deadline ................................................................................. 5
`All Six Fintiv Factors Weigh In Favor Of The Board Denying
`Institution ............................................................................................... 7
`1.
`“whether the court granted a stay or evidence exists that
`one may be granted if a proceeding is instituted” ....................... 8
`“proximity of the court’s trial date to the Board’s
`projected statutory deadline for a final written decision” ......... 10
`“investment in the parallel proceeding by the court and
`the parties” ................................................................................ 10
`“overlap between issues raised in the petition and in the
`parallel proceeding” .................................................................. 12
`“whether the petitioner and the defendant in the parallel
`proceeding are the same party” ................................................. 12
`“other circumstances that impact the Board’s exercise of
`discretion, including the merits” ............................................... 13
`Petitioner Apple’s Arguments Against Denial Are Irrelevant
`And Unsupported ................................................................................ 15
`The ’431 Patent .............................................................................................. 22
`A.
`Prior Art Interactive Voice Systems Suffered From Numerous
`Drawbacks ........................................................................................... 22
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`i
`
`

`

`1.
`
`2.
`
`3.
`
`Case No. IPR2020-00686
`Patent No. 7,076,431
`Typical Prior Art Systems For Accessing Web Sites
`Were Not Sufficiently Portable, Comprehensive, And
`Affordable ................................................................................. 22
`Voice Enabled Options Introduced Additional Problems
`and Drawbacks .......................................................................... 23
`Prior Art “Interactive Voice Response” Systems Suffered
`From A Lack Of Fault Tolerance, Limited Webpage
`Resources, And Generic Search Options And Results ............. 24
`The ’431 Patent’s Solution .................................................................. 26
`1.
`Overview Of The ʼ431 Patent’s Voice Browser System .......... 27
`2.
`Sequentially Accessing A Plurality of Pre-selected Web
`Sites ........................................................................................... 30
`The Challenged ’431 Patent Claims .................................................... 33
`C.
`IV. Apple’s Petition & Grounds .......................................................................... 36
`A.
`Ladd ..................................................................................................... 38
`B.
`Kurosawa ............................................................................................. 39
`C.
`Goedken ............................................................................................... 42
`The Petition Should Be Denied Because It Does Not Establish The
`Required Reasonable Likelihood Success ..................................................... 44
`A.
`The Petition Does Not Identify The “at least one instruction set
`for identifying said information to be retrieved” Limitation
`Required In Every Challenged Claim ................................................. 45
`The Petition Does Not Identify The “sequentially access” the
`pre-selected web sites Limitation Required In Every Challenged
`Claim ................................................................................................... 51
`1.
`Goedken does not teach sequentially accessing
`preselected web sites until the requested information is
`found or all pre-selected web sites have been accessed ........... 51
`
`V.
`
`B.
`
`B.
`
`ii
`
`

`

`2.
`
`C.
`
`Case No. IPR2020-00686
`Patent No. 7,076,431
`Kurosawa does not teach sequentially accessing pre-
`selected web sites until the requested information is
`found or all pre-selected web sites have been accessed ........... 52
`The Petition Does Not Establish It Was Obvious To Combine
`Ladd, Kurosawa, and Goedken As Required In All Asserted
`Grounds ............................................................................................... 54
`1.
`A POSITA Would Not Combine Ladd With Kurosawa .......... 54
`2.
`A POSITA Would Not Combine Ladd With Kurosawa
`And Goedken ............................................................................. 59
`VI. Conclusion ..................................................................................................... 61
`
`iii
`
`

`

`Case No. IPR2020-00686
`Patent No. 7,076,431
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Apple Inc., v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (PTAB May 13, 2020) ......................................passim
`Apple Inc., v. Fintiv, Inc.,
`IPR2020-00019, Paper 15 (PTAB May 13, 2020) ......................................... 7, 10
`Koninklijke Phillips N.V. v. Google LLC,
`No. 2019-1177, 2020 U.S. App. LEXIS 2911 (Fed. Cir. Jan. 30,
`2020) ................................................................................................................... 51
`Multimedia Content Management v. Dish Network,
`Civil No. 6:18-CV-00207 (W.D. Tex. May 30, 2019) (J. Albright) .................... 9
`NHK Spring Co., Ltd. V. Intri-Plex Techs., Inc.,
`IPR2018-00752, Paper 8, 20 (PTAB Sept. 12, 2018)..................................passim
`Samsung Elecs. Am., Inc. v. Prisua Eng’g Corp.,
`No. 2019-1169, 2020 U.S. App. 3292 (Fed Cir. Feb. 2, 2020) .......................... 50
`SAS Inst., Inc. v. Iancu,
`138 S. Ct. 1348 (2018) ........................................................................................ 50
`WesternGeco LLC v. ION Geophysical Corp.,
`889 F.3d 1308 (Fed. Cir. 2018) .......................................................................... 21
`Statutes
`35 U.S.C. § 314(a) ............................................................................................passim
`Other Authorities
`S. Rep. No. 110-259 (2008) ..................................................................................... 21
`
`iv
`
`

`

`Case No. IPR2020-00686
`Patent No. 7,076,431
`
`TABLE OF EXHIBITS
`
`Exhibit
`2001
`
`2002
`2003
`2004
`2005
`2006
`
`2007
`2008
`2009
`2010
`2011
`
`2012
`
`Description
`Order Denying Motion to Stay Pending Inter Partes Review, C.A. No.
`6:18-cv-00207-ADA
`Exhibit A3 Ladd Claim Chart 7076431
`Exhibit C Obviousness Claim Chart 7076431 (Corrected)
`Reserved
`Reserved
`Standing Order Regarding Scheduled Hearings in Civil Cases, 6:19-
`cv-00432-ADA
`Claim Construction Order, 1:20-cv-00351-ADA
`Claim Construction Order, 6:19-cv-00532-ADA
`Claim Construction Order, 6:18-cv-00308-ADA
`U.S. Patent No. 6,157,705 (Perrone)
`“instruction set” excerpt from 1997 Novell’s Dictionary of
`Networking
`Defendants’ Opening Claim Construction Brief, 6:19-cv-00432-ADA
`
`v
`
`

`

`Case No. IPR2020-00686
`Patent No. 7,076,431
`
`I.
`
`Summary of Argument
`The Board should deny Apple’s Petition for inter partes review of Parus’s
`
`U.S. Patent No. 7,076,431 for at least two independent reasons:
`
`(1) Apple’s asserted invalidity Grounds will be resolved in a parallel
`
`district court trial between Parus and Apple that is scheduled for two months before
`
`the Board’s deadline for a final written decision in the requested IPR, and the Board
`
`should therefore deny institution under 35 U.S.C. § 314(a) and its Precedential-
`
`designated NHK and Fintiv decisions.1
`
`(2) Apple’s Petition fails to establish the required reasonable likelihood of
`
`success of proving any of the challenged claims unpatentable under any asserted
`
`Ground.
`
`Section 314(a): The ’431 Patent is owned by Parus Holdings, Inc. a leading
`
`pioneer and provider of voice-driven unified communications and voice assistant
`
`solutions, including messaging, voice search, collaboration, presence and real-time
`
`communications for mobile communities and businesses. Parus sued Petitioner
`
`Apple for its infringement of the ’431 Patent in the District Court for the Western
`
`District of Texas.
`
`1 NHK Spring Co., Ltd. V. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8, 20
`(PTAB Sept. 12, 2018) (precedential); and Apple Inc., v. Fintiv, Inc., IPR2020-
`00019, Paper 11 (PTAB May 13, 2020) (precedential)
`
`1
`
`

`

`Case No. IPR2020-00686
`Patent No. 7,076,431
`In that parallel district court proceeding, Apple has raised the same invalidity
`
`defenses presented in its Petition here, and the Western District of Texas Court has
`
`scheduled the trial on those defenses (and other issues) for July 2021, two months
`
`before any final written decision deadline in the requested IPR.
`
`In light of this earlier trial date to resolve the same issues as those presented
`
`by Apple’s Petition, all six Fintiv factors weigh in favor of denying the present
`
`Petition to serve “the efficiency and integrity of the system.” Apple does not argue
`
`or present any evidence to the contrary. Therefore, the Board should follow its
`
`precedent set in NHK and Fintiv and deny Apple’s Petition under 35 U.S.C. § 314(a).
`
`No Reasonable Likelihood of Success: The Petition’s failure to show the
`
`required reasonable likelihood of success provides another independent reason for
`
`denying institution. The challenged ’431 Patent is directed to an “interactive voice
`
`system” that allows a user to request information from web sites using voice
`
`commands and, in turn, provides retrieved information to the user in audio form.
`
`Each challenged claim is long and detailed, so much so that the Petition fails
`
`to even set forth a single exemplary claim or quote and identify the numerous
`
`limitations in its Grounds and analysis. As a result, the Petition does not even
`
`attempt to identify some of the required limitations in the asserted art, including, as
`
`established below, the claimed “at least one instruction set for identifying said
`
`information to be retrieved” required in each challenged claim.
`
`2
`
`

`

`Case No. IPR2020-00686
`Patent No. 7,076,431
`Moreover, each Ground’s primary reference is Ladd, which was cited during
`
`the prosecution of the ʼ431 Patent and over which the Examiner allowed the
`
`challenged claims. And the Examiner allowed the claims over Ladd with good
`
`reason: Ladd does not teach many of the claimed elements required by each of the
`
`challenged claims. Apple readily admits this throughout its Petition.
`
`Accordingly, in each Ground, Apple resorts to combining Ladd with at least
`
`two (and sometimes more) other references to try to cure Ladd’s many deficiencies.
`
`But even when picking and choosing random aspects from all of these references,
`
`there are still claim limitations admittedly not taught in any of the identified
`
`references, including the limitation found in all challenged claims requiring a
`
`computer configured to “sequentially access” a plurality of pre-selected web sites
`
`until the information requested by a user is found.
`
`And even if the three or four secondary references did fill in the many gaps in
`
`Ladd—which they admittedly do not—the Petition does not provide evidence
`
`supporting a finding that it would have been obvious to combine those three or four
`
`references. Indeed, secondary references Kurosawa and Goedken are used in every
`
`Ground but are irrelevant to Ladd (and the challenged claims) because they do not
`
`even concern voice activated systems. Not only do they concern the wrong fields of
`
`technology, their features, if combined with a voice browsing system like Ladd’s,
`
`3
`
`

`

`Case No. IPR2020-00686
`Patent No. 7,076,431
`would render it useless as a voice browsing system. As a result, there can be no
`
`plausible, let alone compelling, motivation to combine these references.
`
`For each of these reasons, the Board should deny institution.
`
`II.
`
`The Board Should Deny Institution Under Section 314(a) and PTAB’s
`Precedent-Designated NHK and Fintiv Decisions Because The Parties
`Are Scheduled To Try The Validity Of The Challenged Patent In A
`District Court Jury Trial Two Months Before This IPR Would
`Conclude
`In PTAB’s precedential NHK and Fintiv decisions, it:
`
` recognized that it is inefficient and wasteful for PTAB to institute and
`
`conduct an IPR trial if the parties are already scheduled to litigate the
`
`validity of the challenged patent in an Article III district court trial set
`
`to conclude prior to the deadline for a FWD in the requested IPR; and
`
` therefore exercised its discretion under 35 U.S.C. § 314(a) to deny the
`
`Petitions and avoid such inefficiencies and waste.
`
`NHK, Paper 8 at 20; Fintiv, Paper 11, 3-6, Paper 15, 7-8, 17.
`
`As the Board stated in Fintiv, “NHK applies to the situation where the district
`
`court has set a trial date to occur earlier that the Board’s deadline to issue a final
`
`written decision in an instituted proceeding.” Fintiv, Paper 11, 3. That is exactly
`
`the situation here – Apple and Patent Owner are scheduled to try Apple’s same
`
`invalidity claims in a district court jury trial scheduled to end two months before the
`
`Board’s deadline to issue a Final Written Decision in the requested IPR.
`
`4
`
`

`

`Case No. IPR2020-00686
`Patent No. 7,076,431
`Fintiv also confirmed prior PTAB decisions identifying the following six
`
`factors that a Board should balance when determining to deny institution under 35
`
`U.S.C. § 314(a) “and NHK due to an earlier trial date:”
`
`1. whether the court granted a stay or evidence exists that one may be
`granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s projected statutory
`deadline for a final written decision;
`3. investment in the parallel proceedings by the court and the parties;
`4. overlap between issues raised in the petition and in the parallel
`proceeding;
`5. whether the petitioner and the defendant in the parallel proceeding
`are the same party; and
`6. other circumstances that impact the Board’s exercise of discretion,
`including the merits.
`Fintiv, Paper 11, 4-5.
`
`As established below, all six factors weigh in favor of denying the present
`
`Petition to serve “the efficiency and integrity and of the system.” Apple does not
`
`argue or present any evidence to the contrary. Instead, Apple ignores these factors
`
`and presents attorney argument that is both off-point and unsupported.
`
`A.
`
`The Parallel District Court Proceeding Between The Parties Is
`Scheduled For Trial Two Months Before The Final Written
`Decision Deadline
`Petitioner Apple challenges the validity of the ʼ431 Patent in a parallel district
`
`court action pending between it and Patent Owner Parus in the District Court for the
`
`5
`
`

`

`Case No. IPR2020-00686
`Patent No. 7,076,431
`Western District of Texas: Parus Holdings Inc. v. Apple Inc., Case No. 6_19-cv-
`
`00432 (the “Parallel Proceeding”).
`
`In the Parallel Proceeding, Apple has raised the same invalidity defenses
`
`presented in its Petition here, and the Western District of Texas Court has scheduled
`
`the trial on those (and other issues) for July 2021. (Ex. 1032, Parus Holdings Inc.
`
`v. Apple Inc. Scheduling Order). This is at least two months before any final written
`
`decision deadline in the requested IPR. Moreover, the Western District of Texas has
`
`not expressed any intent to stay or continue this trial date, and Petitioner Apple does
`
`not argue otherwise. To the contrary, (as discussed below when applying the six
`
`Fintiv factors) the Western District’s established guidelines confirm that it typically
`
`does not enter a stay under the present circumstances.
`
`To this end, the Parallel Proceeding is already well underway. The parties
`
`began producing documents and serving their infringement and invalidity
`
`contentions last year. (Ex. 1032, Parus Holdings Inc. v. Apple Inc. Scheduling
`
`Order). They also have already filed and exchanged claim construction briefs, and
`
`Judge Albright, the presiding judge, is conducting the Markman Hearing in August
`
`2020—even before the deadline for the Board’s institution decision. (Ex. 1032,
`
`Parus Holdings Inc. v. Apple Inc. Scheduling Order). This means the Court will
`
`have already construed claim terms before the Board’s institution decision because
`
`Judge Albright’s practice is to issue claim constructions from the bench at the
`
`6
`
`

`

`Case No. IPR2020-00686
`Patent No. 7,076,431
`conclusion of the Markman hearing. (See, e.g., Ex. 2007, Claim Construction Order
`
`at 1, STC.UNM v. Apple Inc., No. A-20-CV-00351-ADA (W.D. Tex. June 8, 2020);
`
`Ex. 2008, Claim Construction Order at 1, Uniloc 2017 LLC v. Apple Inc., No. W-
`
`19-CV-00532-ADA (W.D. Tex. June 8, 2020); Ex. 2009 Claim Construction Order
`
`at 1, MV3 Partners LLC v. Roku, Inc., No. 6:18-CV-00308-ADA (W.D. Tex. Oct.
`
`2, 2019).). And, by the time the Board issues its decision on whether to institute the
`
`requested parallel IPR, the Parties also will be in the midst of fact discovery.
`
`Thus, the circumstances here are materially the same as those in NHK and
`
`Fintiv. NHK Spring Co., Ltd. V. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8,
`
`20 (PTAB Sept. 12, 2018); Apple Inc., v. Fintiv, Inc., IPR2020-00019, Paper 15
`
`(PTAB May 13, 2020). In each of those precedential decisions, the Board denied
`
`institution under 35 U.S.C. § 314(a) where, as here, the district court action was set
`
`to be tried months before the IPR’s final written decision would have issued, and the
`
`petitioner had raised substantially the same prior art and arguments in both
`
`proceedings.
`
`B.
`
`All Six Fintiv Factors Weigh In Favor Of The Board Denying
`Institution
`Fintiv reiterated and confirmed the PTAB’s earlier identification of the six
`
`factors that a Board should consider when determining “whether efficiency, fairness,
`
`and the merits support the exercise of authority to deny institution in view of an
`
`7
`
`

`

`Case No. IPR2020-00686
`Patent No. 7,076,431
`earlier trial date in the parallel proceeding.” Fintiv, Paper 11, 5-6. The Fintiv
`
`decision also noted that “in evaluating the factors, the Board takes a holistic view.”
`
`Here, however, the Board need not consider whether some factors are more
`
`important than others in this specific situation because all six Fintiv factors confirm
`
`that the Board should deny institution. Apple’s Petition does not dispute that these
`
`factors weigh in favor of denying institution under 35 U.S.C. § 314(a) and NHK. In
`
`fact, Apple does not even address or acknowledge these factors or NHK.
`
`1.
`
`“whether the court granted a stay or evidence exists that
`one may be granted if a proceeding is instituted”
`Factor one favors denying the Petition in light of the earlier-scheduled district
`
`court trial. The Western District of Texas has not entered a stay and it has given no
`
`indication that it would enter a stay if the requested IPR were instituted. And,
`
`critically, Apple does not argue or present any evidence to the contrary.
`
`Apple cannot make such argument. This is because the test applied by the
`
`District Court for the Western District of Texas establishes that the Court typically
`
`does not stay trials in these circumstances. The Court and presiding Judge considers
`
`three questions to assess stay requests in view of an Inter Partes Review: (1) whether
`
`the stay will unduly prejudice the nonmoving party, (2) whether the case is in an
`
`advanced stage, and (3) whether a stay will likely result in simplifying the case. (See,
`
`e.g., Ex. 2001, Order Denying Motion to Stay Pending Inter Partes Review,
`
`8
`
`

`

`Case No. IPR2020-00686
`Patent No. 7,076,431
`Multimedia Content Management v. Dish Network, Civil No. 6:18-CV-00207 at 2
`
`(W.D. Tex. May 30, 2019) (J. Albright) (“Multimedia”).) All three factors confirm
`
`that the Court likely will not stay the Parallel Proceeding.
`
`For question (1), the Court and presiding Judge have held that this question
`
`weighs against a stay where, as here, the trial date is scheduled before an anticipated
`
`final written decision. (Id. at 4).
`
`Question (2)—whether the action is in an advanced stage—also weighs
`
`against a stay: by the time an institution decision is even entered, the parties will
`
`have already served infringement and invalidity contentions, will have completed
`
`the claim construction discovery and briefing, and will be in the midst of fact
`
`discovery. Moreover, the Court itself will have already committed considerable time
`
`and resources to advancing this parallel proceeding, including conducting a
`
`Markman hearing and issuing its constructions of disputed claims from the bench
`
`during that hearing.
`
`Finally, for question (3), there is no argument or evidence that a stay will
`
`likely result in simplifying the case – there will not be a final written decision prior
`
`to the trial, and thus the parties and the Court would proceed with all outstanding
`
`issues, including the invalidity defenses raised by Apple in both this IPR and the
`
`Western District of Texas.
`
`9
`
`

`

`Case No. IPR2020-00686
`Patent No. 7,076,431
`“proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision”
`Factor two also weighs in favor of denying institution, and Apple does not
`
`2.
`
`argue otherwise. To the contrary, Apple acknowledges that the trial date is
`
`scheduled for July 2021, which is a full two months before the deadline for a final
`
`written decision in the requested IPR.
`
`These circumstances are the same as in Fintiv, where the trial was scheduled
`
`to begin two months before the final written decision was due. Under those identical
`
`circumstances, the Board found that this factor weighed in favor of denying
`
`institution. (IPR2020-00019 Paper 15, 13). These circumstances also are the exact
`
`opposite of what Fintiv identified as those in which “the Board may be less likely to
`
`deny institution under 35 U.S.C. 314(a) based on district court trial timing,” i.e.,
`
`where “the district court has set a date after the Board’s deadline to issue a final
`
`written decision.” (Paper 11, 3)(emphasis in original).
`
`3.
`
`“investment in the parallel proceeding by the court and the
`parties”
`Factor three further weighs in favor of denial, and Apple does not deny or
`
`contest that, by the time the Board issues its decision on institution, the parties and
`
`the Court will have already expended considerable resources in advancing the
`
`Parallel Proceeding.
`
`10
`
`

`

`Case No. IPR2020-00686
`Patent No. 7,076,431
`For example, by the time of the institution decision deadline, the parties will
`
`have already completed all claim construction discovery and briefing, and the Court
`
`will have already held its Markman hearing and issued its constructions on disputed
`
`claim terms from the bench. (Ex. 1032, Parus Holdings Inc. v. Apple Inc.
`
`Scheduling Order). In addition, the parties have already spent considerable
`
`resources and time preparing and serving their infringement contention and
`
`invalidity contentions, as well as the associated document productions. Id.
`
`The parties also have extensively briefed and argued motions to dismiss, and
`
`the district court has ruled on those motions. The parties have likewise invested
`
`significant time and resources briefing venue-related issues at the district court, and
`
`Patent Owner anticipates that those motions will be argued (and potentially decided)
`
`before the decision to institute issues. By the time the decision to institute has issued,
`
`the parties also will be in the middle of conducting extensive fact discovery. Id.
`
`And, of course, by the time any Final Written Decision would issue in the
`
`requested IPR, the Court and the parties will have expended the time, money and
`
`resources necessary to completely litigate and conduct a jury trial on the entire
`
`parallel litigation. Of course, that jury will assess and resolve the very same
`
`invalidity defenses that Apple now asks the Board to rule on two months later.
`
`11
`
`

`

`Case No. IPR2020-00686
`Patent No. 7,076,431
`“overlap between issues raised in the petition and in the
`parallel proceeding”
`Factor four also weighs in favor of denying the Petition. Apple does not
`
`4.
`
`dispute that there is complete overlap between the invalidity issues raised in the
`
`Petition and in the Parallel Proceeding in the Western District of Texas. (See
`
`Petition, 7-9). Nor could it, because it is asserting the same exact prior art references
`
`in the Parallel Proceeding as it is in the Petition Grounds.
`
`Specifically, just as Apple asserts in its Grounds that the challenged claims
`
`are obvious in light of Ladd, Kurosawa, Goedken, Madnick, Houser, and Rutledge,
`
`it asserts the same in the Parallel Proceeding. For example, just as in the Grounds,
`
`in Apple’s Invalidity Contentions in the Parallel Proceedings, it asserts that Ladd is
`
`a primary reference that “discloses and/or renders obvious” the ʼ431 Patent. See Ex.
`
`2002 Ex A3 Ladd Claim Chart 7076431. Further, just like here, in Apple’s Invalidity
`
`Contentions, it likewise asserts that Kurosawa, Goedken, Madnick, Houser, and
`
`Rutledge are secondary references that may be combined with Ladd to “disclose
`
`and/or render obvious” the ʼ431 Patent. Ex. 2003 Ex C Obviousness Claim Chart
`
`7076431 (Corrected).
`
`5.
`
`“whether the petitioner and the defendant in the parallel
`proceeding are the same party”
`Factor five indisputably weighs in favor of a denial. Petitioner and Defendant
`
`are the same party in both proceedings—Apple.
`
`12
`
`

`

`Case No. IPR2020-00686
`Patent No. 7,076,431
`“other circumstances that impact the Board’s exercise of
`discretion, including the merits”
`Finally, factor six also confirms that the Board should deny the Petition. As
`
`6.
`
`established herein, the Petition’s Ground are particularly weak and do not justify
`
`instituting on the merits. But “a full merits analysis is [not] necessary to evaluate
`
`this factor” because even “if the merits of the grounds raised in the petition are a
`
`closer call, then that fact has favored denying institution when other factors favoring
`
`denial are present.” (Fintiv, Paper 11, 15).
`
`Here, the Grounds are a far cry from a close call. The challenged claims are
`
`all long and detailed, so much so that the Petition fails to even set forth a single
`
`exemplary claim or quote and identify the numerous limitations in its Grounds and
`
`analysis. As a result, the Petition does not even attempt to identify some of the
`
`required limitations in the asserted art, including the claimed “at least one instruction
`
`set for identifying said information to be retrieved” required in each challenged
`
`claim.
`
`The nature of the invention and the large number of limitations in each
`
`challenged claim also mean that the Petition resorts to (1) relying on a primary
`
`reference (Ladd) that the PTO already considered during the prosecution of the ʼ431
`
`Patent and that admittedly is missing a host of limitations required by each
`
`challenged claim; and (2) trying to cobble together the numerous missing limitations
`
`13
`
`

`

`Case No. IPR2020-00686
`Patent No. 7,076,431
`from a host of disparate secondary references, requiring combinations of three or
`
`four references in a contrived attempt to reach the claimed subject matter.
`
`But even when picking and choosing random aspects from all of these
`
`references, there are still claim limitations not taught in any of the identified
`
`references, including (as discussed below) the following limitation found in all
`
`challenged claims:
`
`said computer further configured to access at least one of said plurality
`of web sites identified by said instruction set to obtain said information
`to be retrieved, said computer configured to first access said first web
`site of said plurality of web sites and, if said information to be retrieved
`is not found at said first web site, said computer configured to
`sequentially access said plurality of web sites until said information to
`be retrieved is found or until said plurality of web sites has been
`accessed … .
`(ʼ431 Patent, claim 1).
`
`And even if the six references relied on in the Petition could be randomly
`
`combined to arrive at the claimed inventions (and, because of the missing
`
`limitations, they cannot), the Petition provides no basis for concluding that such a
`
`combination would have been obvious to a POSITA. For example, while the
`
`claimed invention and the primary Ladd reference both concern a voice browsing
`
`system, the other references (such as Kurosawa and Goedken) do not. As explained
`
`in further detail below, not only do they concern the wrong fields of technology,
`
`14
`
`

`

`Case No. IPR2020-00686
`Patent No. 7,076,431
`their features, if combined with a voice browsing system like Ladd’s, would render
`
`it useless as a voice browsing system.
`
`C.
`
`Petitioner Apple’s Arguments Against Denial Are Irrelevant And
`Unsupported
`Thus, all of the factors confirmed and applied in Fintiv, both individually and
`
`as a whole, weigh in favor of the Board denying Apple’s Petition in light of the
`
`earlier-scheduled trial date in the Parallel Proceeding. Apple nonetheless argues that
`
`it would “be improper” to deny institution because of the earlier trial date in the
`
`Parallel Proceeding in the Western District of Texas. But Apple does not address or
`
`refute any of the Fintiv factors, nor does it even attempt to distinguish this situation
`
`from that in the precedential NHK decision. Tellingly, Apple does not even
`
`acknowledge or cite NHK.
`
`Instead, Apple relies on the following paragraph, comprising arguments that
`
`wholly fail to address the Fintiv factors, that wholly fail to distinguish this case for
`
`NHK, and that are nothing more than unsupported attorney speculation:
`
`(1) the trial date may be continued; (2) even if trial is not continued, the
`Copending Litigation may continue beyond a final written decision
`here for any number of reasons, including lengthy post-trial motions;
`(3) the Copending Litigation may be stayed pending IPR; (4) the
`district court has not resolved the parties claim construction disputes
`(and may not fully do so prior to any trial); (5) validity issues in the
`Copending Litigation will be decided based on the clear and convincing
`standard, which is higher than the preponderance of the evidence
`standard that applies in IPR such that, even if a jury was presented with
`the same evidence, it would not resolve the issue of whether the claims
`
`15
`
`

`

`Case No. IPR2020-00686
`Patent No. 7,076,431
`are unpatentable under the preponderance of the evidence standard that
`applies in IPR; and (6) denying institution would be inconsistent with
`Congressional intent in establishing IPRs.
`(Pet., 7-8).
`
`Patent Owner Parus addresses each of these six speculative and unsupported
`
`reasons in turn.
`
`(1) “the trial date may be continued”: This supposed reason does not address
`
`the letter or spirit of any of the relevant factors confirmed in Fintiv. The question is
`
`not whether the Court may do something to affect the earlier trial date, it is “whether
`
`the court granted a stay or evidence exists that one may be granted if a proceeding
`
`is instituted.” Apple does not argue that the Western District of Texas Court has
`
`granted a stay or that there is any evidence that it is likely to do so. There is no such
`
`evidence. The Texas Court has not entered a stay—let alone given any indication
`
`that it will, for some reason, stray from its typical practice and stay the litigation if
`
`an IPR is instituted.
`
`Apple also provides no evidence to support