UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC, SAMSUNG ELECTRONICS CO., LTD., SAMSUNG
`ELECTRONICS AMERICA, INC., LG ELECTRONICS INC., and LG
`ELECTRONICS U.S.A., INC.,
`Petitioners,
`
`v.
`
`PARUS HOLDINGS, INC.,
`Patent Owner.
`
`Case No. IPR2020-00846
`U.S. Patent No. 7,076,431
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.107(a)
`
`

`

`Case No. IPR2020-00846
`Patent No. 7,076,431
`
`I.
`II.
`
`III.
`
`B.
`
`2.
`
`3.
`
`TABLE OF CONTENTS
`Summary of Argument .................................................................................... 1
`The Board Should Deny Institution Because the Parties Are
`Scheduled to Try the Validity of the Challenged Patent in a District
`Court Jury Trial Before The Requested IPR Would Conclude ....................... 4
`A.
`The Parallel District Court Proceeding Between The Parties Is
`Scheduled For Trial Three Months Before The Final Written
`Decision Deadline ................................................................................. 6
`All Six Fintiv Factors Weigh In Favor Of The Board Denying
`Institution ............................................................................................... 8
`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” ................................................................................ 12
`“overlap between issues raised in the petition and in the
`parallel proceeding” .................................................................. 13
`“whether the petitioner and the defendant in the parallel
`proceeding are the same party” ................................................. 15
`“other circumstances that impact the Board’s exercise of
`discretion, including the merits” ............................................... 15
`The ’431 Patent .............................................................................................. 16
`A.
`Prior Art Interactive Voice Systems Suffered From Numerous
`Drawbacks ........................................................................................... 17
`1.
`Typical Prior Art Systems For Accessing Web Sites
`Were Not Sufficiently Portable, Comprehensive, And
`Affordable ................................................................................. 17
`
`4.
`
`5.
`
`6.
`
`i
`
`

`

`IV.
`
`2.
`
`3.
`
`2.
`
`B.
`
`Case No. IPR2020-00846
`Patent No. 7,076,431
`Voice Enabled Options Introduced Additional Problems
`and Drawbacks .......................................................................... 18
`Prior Art “Interactive Voice Response” Systems Suffered
`From A Lack Of Fault Tolerance, Limited Webpage
`Resources, And Generic Search Options And Results ............. 19
`The ’431 Patent’s Solution .................................................................. 21
`1.
`Overview Of The ʼ431 Patent’s Voice Browser System .......... 22
`2.
`Sequentially Accessing A Plurality of Pre-selected Web
`Sites ........................................................................................... 25
`The Challenged ’431 Patent Claims .................................................... 28
`C.
`The Petition Should Be Denied Because It Does Not Establish the
`Required Reasonable Likelihood Success ..................................................... 31
`A.
`Grounds 1-4 ......................................................................................... 31
`1.
`The Asserted References ........................................................... 33
`a.
`Kovatch ........................................................................... 33
`b.
`Neal ................................................................................. 37
`The Missing Limitations ........................................................... 39
`a.
`“at least one instruction set for identifying said
`information to be retrieved” ........................................... 39
`“said instruction set comprising: a plurality of pre-
`selected web site addresses” ........................................... 42
`“sequentially access” the pre-selected web sites ............ 45
`i.
`Neal does not teach sequentially accessing
`pre-selected web sites until the requested
`information is found or all pre-selected web
`sites have been accessed ....................................... 46
`
`b.
`
`c.
`
`ii
`
`

`

`B.
`
`Case No. IPR2020-00846
`Patent No. 7,076,431
`The Petition Does Not Establish It Was
`Obvious To Combine Kovatch and Neal As
`Required In Grounds 1-4 ...................................... 47
`Grounds 5 & 6 ..................................................................................... 50
`1.
`The Asserted Art ....................................................................... 50
`2.
`Grounds 5 & 6 Are Assertions Of § 112 Written
`Description Invalidity ............................................................... 51
`The Petition’s Written Description Assertions Are
`Baseless ..................................................................................... 52
`a.
`Ground 5: Both the ’431 Patent and Its Identical
`Parent Application Provide The Necessary Written
`Description For Claim 9 ................................................. 52
`Ground 6: Both the ’431 Patent and Its Identical
`Parent Application Provide The Necessary Written
`Description For Claim 14 ............................................... 54
`Conclusion ..................................................................................................... 56
`
`3.
`
`b.
`
`ii.
`
`iii
`
`V.
`
`

`

`Case No. IPR2020-00846
`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, 11
`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
`Statutes
`35 U.S.C. § 103 ........................................................................................................ 31
`35 U.S.C. § 112 .................................................................................................. 51, 52
`35 U.S.C. § 314(a) ............................................................................................passim
`Other Authorities
`37 C.F.R. §42.24(d) ................................................................................................. 58
`
`iv
`
`

`

`Case No. IPR2020-00846
`Patent No. 7,076,431
`
`TABLE OF EXHIBITS
`
`Exhibit
`2001
`
`2002
`2003
`2004
`2005
`2006
`2007
`2008
`2009
`2010
`2011
`
`Description
`Order Denying Motion to Stay Pending Inter Partes Review, C.A.
`No. 6-18-cv-00201
`Exhibit A9 Kovatch Claim Chart 7076431
`Exhibit C Obviousness Claim Chart 7076431 (Corrected)
`Reserved
`Reserved
`Standing Order Re Scheduled Hearings in Civil Cases, 19-cv-00432
`Claim Construction Order, 1-20-cv-00351
`Claim Construction Order, 6-19-cv-00532
`Claim Construction Order, 6-18-cv-00308
`U.S. Patent No. 6,157,705 (Perrone)
`Defendants’ Corrected Invalidity Contentions, 6-19-cv-00432
`
`v
`
`

`

`Case No. IPR2020-00846
`Patent No. 7,076,431
`
`I.
`
`Summary of Argument
`The Board should deny the Petition for inter partes review of Parus’s U.S.
`
`Patent No. 7,076,431 for at least two independent reasons:
`
`(1)
`
`Petitioners’ asserted invalidity Grounds will be resolved in a parallel
`
`district court trial between Petitioners and Parus that is scheduled for three 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)
`
`the 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 Petitioners for
`
`their 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
`
`

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`Case No. IPR2020-00846
`Patent No. 7,076,431
`In that parallel district court proceeding, Petitioners have raised the same
`
`invalidity defenses presented in their Petition here, and the Western District of Texas
`
`Court has scheduled the trial on those defenses (and other issues) for July 2021,
`
`three 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 Petitioners’ Petition, all six Fintiv factors weigh in favor of denying the present
`
`Petition to serve “the efficiency and integrity of the system.” Petitioners do not
`
`argue or present any evidence to the contrary; indeed, although PTAB issued Fintiv
`
`a month before Petitioners filed the Petition, the Petition does not acknowledge or
`
`address Fintiv and the six factors set forth therein. Therefore, the Board should
`
`follow its precedent set in NHK and Fintiv and deny Petitioners’ 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.
`
`Grounds 1-4 rely primarily on Kovatch, which discloses an Interactive Voice
`
`Response (“IVR”) system similar to U.S. Patent No. 6,157,705 (“Perrone”), which
`
`was cited during the prosecution of the ’431 Patent and over which the Examiner
`
`2
`
`

`

`Case No. IPR2020-00846
`Patent No. 7,076,431
`allowed the challenged claims. Importantly, the Examiner allowed the claims over
`
`Perrone with good reason: Perrone, like any other IVR system such as Kovatch,
`
`does not teach many of the claimed elements required by each of the challenged
`
`claims. Petitioners readily admit this throughout their Petition.
`
`Accordingly, in Grounds 1-4, Petitioners resort to combining Kovatch with at
`
`least one (and sometimes up to three) other references to try to cure Kovatch’s many
`
`deficiencies. 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:
`
` “at least one instruction set for identifying said information to be
`retrieved;”
` “said instruction set comprising: a plurality of pre-selected web site
`addresses, each said web site address identifying a web site
`containing said information to be retrieved;” and
` 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.”
` (E.g., Ex. 1001, claim 1).
`
`The remaining Grounds 5 (against dependent claim 9) and 6 (against
`
`dependent claim 14) likewise do not establish a likelihood of success. These
`
`Grounds assert that the limitations of these claims lack written description in the
`
`3
`
`

`

`Case No. IPR2020-00846
`Patent No. 7,076,431
`’431 Patent’s specification. This written description argument is baseless because
`
`the required written description is in fact found in the ’431 Patent’s specification.
`
`For each of these reasons, the Board should deny institution.
`
`II.
`
`The Board Should Deny Institution Because the Parties Are Scheduled
`to Try the Validity of the Challenged Patent in a District Court Jury
`Trial Before The Requested IPR Would Conclude
`The Board should deny institution under § 314(a) and PTAB’s Precedent-
`
`designated NHK and Fintiv decisions because Parus and the Petitioners are
`
`scheduled to try the validity of the challenged patent in a district court jury trial
`
`before the deadline for a Final Written Decision in the requested IPR. The Petition
`
`acknowledges this earlier trial date but fails to address or distinguish PTAB’s six
`
`Fintiv factors confirming that the institution should be denied.
`
`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.
`
`4
`
`

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`Case No. IPR2020-00846
`Patent No. 7,076,431
`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 – Petitioners and Patent Owner are scheduled to try Petitioners’
`
`same invalidity claims in a district court jury trial scheduled to end three months
`
`before the Board’s deadline to issue a Final Written Decision in the requested IPR.
`
`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.” Petitioners do not
`
`5
`
`

`

`Case No. IPR2020-00846
`Patent No. 7,076,431
`argue or present any evidence to the contrary. Instead, Petitioners ignore these
`
`factors and present attorney argument that is both off-point and unsupported.
`
`A.
`
`The Parallel District Court Proceeding Between The Parties Is
`Scheduled For Trial Three Months Before The Final Written
`Decision Deadline
`Petitioners challenge 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
`
`Western District of Texas: Parus Holdings Inc. v. Apple Inc., Case No. 6:19-cv-
`
`00432 (the “Parallel Proceeding”).
`
`In the Parallel Proceeding, Petitioners have raised essentially 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. 1016,
`
`Parus Holdings Inc. v. Apple Inc. Scheduling Order). This is at least three 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 Petitioners do 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. 1016, Parus Holdings Inc. v. Apple Inc. Scheduling
`
`6
`
`

`

`Case No. IPR2020-00846
`Patent No. 7,076,431
`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—before the deadline for the Board’s institution decision. (Ex. 1016, 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 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.
`
`7
`
`

`

`B.
`
`Case No. IPR2020-00846
`Patent No. 7,076,431
`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
`
`earlier trial date in the parallel proceeding.” Fintiv, Paper 11, 5-6. These factors are
`
`not new. The Fintiv decision also noted that “in evaluating the factors, the Board
`
`takes a holistic view.” 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. Petitioners’ Petition does not dispute
`
`that these factors weigh in favor of denying institution under 35 U.S.C. § 314(a) and
`
`NHK. In fact, Petitioners do not even address or acknowledge these factors or the
`
`Fintiv decision.
`
`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, Petitioners do not argue or present any evidence to the contrary.
`
`Petitioners 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
`
`8
`
`

`

`Case No. IPR2020-00846
`Patent No. 7,076,431
`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,
`
`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.
`
`9
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`

`

`Case No. IPR2020-00846
`Patent No. 7,076,431
`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 Petitioners in both this IPR and
`
`the Western District of Texas.
`
`Rather than addressing this factor, the Petition simply asserts that courts in
`
`general “have the ability to stay their proceedings.” (Pet., 72). But the question is
`
`not whether the Court has the ability to stay the Parallel Proceedings, it is “whether
`
`the court granted a stay or evidence exists that one may be granted if a proceeding
`
`is instituted.” The Petition does not demonstrate 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 nor given any indication
`
`that it will, for some reason, stray from its typical practice and stay the litigation if
`
`an IPR is instituted.
`
`2.
`
`“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 Petitioners do not
`
`argue otherwise. To the contrary, Petitioners acknowledge that the trial date is
`
`scheduled for July 2021, which is a full three months before the deadline for a final
`
`written decision in the requested IPR.
`
`10
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`Case No. IPR2020-00846
`Patent No. 7,076,431
`These circumstances are similar as in Fintiv, where the trial was scheduled to
`
`begin two months before the final written decision was due. Under those similar
`
`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).
`
`The Petition does not address this factor but instead just generally observes
`
`that “district courts often extend or accelerate deadlines and modify case schedules
`
`for myriad reasons.” (Pet., 72). But this observation does not address that the trial
`
`is in fact scheduled for three months before any anticipated FWD, nor does the
`
`Petition cite to any evidence showing that Judge Albright has any intention of
`
`moving the trial date until after the FWD deadline. To the contrary, Judge Albright
`
`has indicated that all cases are to proceed on schedule. (Ex. 2006, Standing Order
`
`Regarding Scheduled Hearings in Civil Cases in Light of Chief Judge Garcia’s
`
`March 24 Amended Order, Parus Holdings Inc. v. Apple Inc., No. WA:19-CV-
`
`00432-ADA (Mar. 24, 2020) (“All hearings for civil cases on the Waco division’s
`
`docket will continue as scheduled, but will occur telephonically.”).).
`
`11
`
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`

`Case No. IPR2020-00846
`Patent No. 7,076,431
`“investment in the parallel proceeding by the court and the
`parties”
`Factor three further weighs in favor of denial, and Petitioners do not deny or
`
`3.
`
`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.
`
`The Petition does no more than simply conclude without explanation or
`
`evidence that the “parallel litigation is in its infancy and not at an advanced state.”
`
`(Pet., 72). This unsupported assertion not only ignores the issue presented by this
`
`factor—the amount of investment by the court and the parties in the Parallel
`
`Proceeding—it simply is not true. As detailed above, the Parallel Proceeding is far
`
`from in its infancy. 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. (Ex. 1016, 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
`
`12
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`

`Case No. IPR2020-00846
`Patent No. 7,076,431
`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. That jury will assess and resolve the same invalidity defenses that
`
`Petitioners now ask the Board to rule on three months later.
`
`4.
`
`“overlap between issues raised in the petition and in the
`parallel proceeding”
`Factor four also weighs in favor of denying the Petition. Petitioners do not
`
`dispute that there is nearly complete overlap between the invalidity issues raised in
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`the Petition and in the Parallel Proceeding in the Western District of Texas. (See
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`Petition, 70-72). Nor could they, because they are raising the same invalidity issues
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`in the Parallel Proceeding as they are in the Petition Grounds.
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`For example, as to Grounds 1-4, just as Petitioners assert in these Grounds
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`that the challenged claims are obvious in light of Kovatch, Neal, Chakrabarti, and
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`DeSimone, they assert the same in the Parallel Proceeding. For example, just as in
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`these Grounds, in Petitioners’ Invalidity Contentions in the Parallel Proceedings,
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`Patent No. 7,076,431
`they assert that Kovatch is a primary reference that discloses and/or renders obvious”
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`the ’431 Patent. See Ex. 2002 Ex A9 Kovatch Claim Chart 7076431. Further, just
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`like here, in Petitioners’ Invalidity Contentions, it likewise asserts that Neal,
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`Chakrabarti, and DeSimone are secondary references that may be combined with
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`Kovatch to “disclose and/or render obvious” the ’431 Patent. Ex. 2003 Exhibit C
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`Obviousness Claim Chart 7076431 (Corrected).
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`And Petitioners raise the same issues in Grounds 5 and 6 (against claims 9 and
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`14 respectively) as they have in the Parallel Proceedings. Grounds 5 and 6 are based
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`on Petitioners’ (incorrect) argument that the elements of claims 9 and 14 lack written
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`description in the ’431 specification and are obvious in light of secondary references
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`Chakrabarti and DeSimone. Petitioners have raised the same issues in the Parallel
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`Proceedings, where they likewise assert that the elements of claims 9 and 14 are
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`obvious in light of these same references and lack written description in ’431
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`Patent’s specification. (Ex. 2011 2020-03-14 Defendants’ Corrected Invalidity
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`Contentions).
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`The Petition’s unexplained and unsupported conclusion that “it will be
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`unknown whether the district court will consider the same validity issues until well
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`after an institution decision is due” simply ignores that Petitions have in fact already
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`raised the same validity issues in their invalidity contentions in the Parallel
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`Proceedings. (Pet., 72).
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`Patent No. 7,076,431
`“whether the petitioner and the defendant in the parallel
`proceeding are the same party”
`Factor five indisputably weighs in favor of a denial. Petitioners and
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`5.
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`Defendants are the same party in both proceedings—Google LLC, Samsung
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`Electronics Co., Ltd., Samsung Electronics America, Inc., LG Electronics, Inc., and
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`LG Electronics U.S.A., Inc..
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`6.
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`“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
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`established herein, the Petition’s Grounds are particularly weak and do not justify
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`instituting on the merits. But “a full merits analysis is [not] necessary to evaluate
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`this factor” because even “if the merits of the grounds raised in the petition are a
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`closer call, then that fact has favored denying institution when other factors favoring
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`denial are present.” (Fintiv, Paper 11, 15).
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`Here, the Grounds are a far cry from a close call. For example, as explained
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`below, numerous limitations required by all of the challenged claims are not
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`disclosed in any of the references asserted in Grounds 1-4, including
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` “at least one instruction set for identifying said information to be
`retrieved;”
` “said instruction set comprising: a plurality of pre-selected web site
`addresses, each said web site address identifying a web site
`containing said information to be retrieved;” and
` said computer further configured to access at least one of said
`plurality of web sites identified by said instruction set to obtain said
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`Patent No. 7,076,431
`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.”
` (E.g., Ex. 1001, claim 1).
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`Grounds 5 (against dependent claim 9) and 6 (against dependent claim 14)
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`likewise do not justify instituting on the merits. As discussed below, these Grounds
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`assert that the limitations of these claims lack written description in the ’431 Patent’s
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`specification. This written description argument is baseless because the required
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`written description is in fact found in the ’431 Patent’s specification.
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`Thus, all of the Fintiv factors, both individually and as a whole, weigh in favor
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`of the Board denying the Petition in light of the earlier-scheduled trial date in the
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`Parallel Proceeding. And although the Petitioners had every opportunity to address
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`Fintiv and these factors, the Petition