UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––
`
`CELLCO PARTNERSHIP
`D/B/A VERIZON WIRELESS (“Verizon”)
`Petitioner
`
`
`v.
`
`HUAWEI DEVICE CO., LTD.
`(“Huawei”)
`Patent Owner
`––––––––––––––
`U.S. Patent No. 8,761,839
`
`“Method And Mobile Terminal For Processing Contacts”
`
`––––––––––––––
`
`Inter Partes Review No. 2020-01117
`
`VERIZON’S PRELIMINARY REPLY
`
`
`
`––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––
`
`CELLCO PARTNERSHIP
`D/B/A VERIZON WIRELESS (“Verizon”)
`Petitioner
`
`
`v.
`
`HUAWEI DEVICE CO., LTD.
`(“Huawei”)
`Patent Owner
`––––––––––––––
`U.S. Patent No. 8,761,839
`
`“Method And Mobile Terminal For Processing Contacts”
`
`––––––––––––––
`
`Inter Partes Review No. 2020-01117
`
`VERIZON’S PRELIMINARY REPLY
`
`
`
`
`
`LIST OF EXHIBITS
`
`Exhibit Description
`Ex. 1001 U.S. Patent No. 8,761,839 to Yang et al.
`Ex. 1002 File History of U.S. Patent No. 8,761,839
`Ex. 1003 U.S. Patent No. 8,611,968 to Yang et al.
`Ex. 1004 File History of U.S. Patent No. 8,611,968
`Ex. 1005 European Patent No. 2,509,390
`Ex. 1006 File History of European Patent No. 2,509,390
`Ex. 1007 Huawei’s Infringement Claim Chart of The ’839 Patent
`Ex. 1008 U.S. Patent Application No. 2010/0062753 (“Wen”)
`Ex. 1009 U.S. Patent Application No. 2010/0146433 (“Murata”)
`Ex. 1010 U.S. Patent Application No. 2009/0271486 (“Ligh”)
`Ex. 1011 International Publication No. WO 2007/063499 (“Diederiks”)
`Ex. 1012 U.S. Patent Application No. 2009/0227296 (“Kim”)
`Ex. 1013 U.S. Patent Application No. 2011/0161076 (“Davis”)
`Ex. 1014 Declaration of Dr. Benjamin B. Bederson
`Ex. 1015 Huawei Technologies Co., Ltd. V. Verizon Communications,
`Inc., 6:20-cv-00090, Dkt. 1 (W.D. Tex. Feb 5, 2020)
`Ex. 1016 Huawei Technologies Co., Ltd. V. Verizon Communications,
`Inc., 6:20-cv-00090, Dkt. 45 (W.D. Tex. May 13, 2020)
`Ex. 1017 DocketNavigator – trial continuance statistics
`Ex. 1018 DocketNavigator – time to milestone statistics (nationwide)
`Ex. 1019 DocketNavigator – time to milestone statistics (WDTX)
`Ex. 1020 EDTX General Order 20-04
`Ex. 1021 Inv. No. 337-TA-1188 Order No. 7
`Ex. 1022 Judge Albright Standing Order Regarding Post-Markman
`Patent Cases (Apr 9, 2020)
`Ex. 1023 Supplemental Order Regarding Court Operations Under The
`Exigent Circumstances Created By The COVID-19 Pandemic
`(W.D. Tex. May 8, 2020)
`Ex. 1024 Judge Albright Standing Order Governing Proceedings (Feb
`26, 2020)
`Ex. 1025 DocketNavigator – Judge Albright patent cases statistics
`
`
`
`i
`
`
`
`
`
`
`Exhibit Description
`Ex. 1026 DocketNavigator – Delaware District patent cases statistics
`Ex. 1027 Curriculum Vitae of Benjamin B. Bederson
`Ex. 1028 B. Bederson et al., “The Craft of Information Visualization:
`Readings and Reflections,” Morgan Kaufmann Publishers Inc.
`(2003).
`Ex. 1029 B. Bederson et al., Pad++: A Zooming Graphical Interface for
`Exploring Alternate Interface Physics, 17-26.
`10.1145/192426.192435 (1994).
`Ex. 1030 P. Curran Email Stipulation (Oct. 27, 2020)
`Ex. 1031 Claim Construction Order, Huawei Technologies Co., Ltd. V.
`Verizon Communications, Inc., 6:20-cv-00090, Dkt. 73 (W.D.
`Tex. Nov. 30, 2020)
`Ex. 1032 Exhibit G to Huawei’s April 22, 2020 Infringement
`Contentions regarding U.S. Patent No. 8,761,839
`Ex. 1033 Tenth Supplemental Order Regarding Court Operations Under
`Exigent Circumstances Created by the COVID-19 Pandemic
`(W.D. Tex. Nov. 18, 2020)
`
`ii
`
`
`
`
`
`
`
`
`
`Pursuant to the Board’s Order of November 12, 2020 (Paper 7), Petitioner
`
`files this Reply to Patent Owner’s Preliminary Response (“POPR,” Paper 6).
`
`I.
`
`SAND REVOLUTION II
`Sand Revolution II, LLC v. Continental Intermodal Group – Trucking LLC
`
`found the Fintiv factors to weigh against discretionary denial under circumstances
`
`similar to this case (post-Markman parallel proceeding before Judge Albright in
`
`WDTX), and the same analysis applies here. See IPR2019-01393, Paper 24 at 4-14
`
`(June 16, 2020) (informative) (“Sand”); see also Google LLC v. Parus Holdings,
`
`Inc., IPR2020-00846, Paper 9 at 9-22 (Oct. 21, 2020) (“Parus”).
`
`Factor 1 is Neutral (Possibility of a Stay) – Patent Owner (“PO”) speculates
`
`about Judge Albright staying the litigation based on rulings in different cases with
`
`different facts. POPR at 3-6. Factor 1 is neutral without “specific evidence” relating
`
`to this case. Sand at 7 (finding Factor 1 neutral given only generalized evidence that
`
`WDTX routinely denies stays); Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15
`
`at 12 (May 13, 2020) (informative). Further, PO argues Petitioner somehow delayed
`
`because PO provided infringement claim charts for this patent, among hundreds of
`
`others, before litigation began. The Board has rejected similar arguments. Nvidia
`
`Corp. v. Invensas Corp., IPR2020-00603, Paper 11 at 24 (Sept. 3, 2020) (“Nvidia”).
`
`Factor 2 Favors Institution (Proximity of Trial Date to FWD) – It would
`
`be error to “rely[] too heavily on the scheduled trial date” because “scheduled trial
`
`
`
`1
`
`
`
`
`
`dates are often subject to change.” In re: Apple, Inc., No. 2020-135, slip op. at 16 &
`
`n.5 (Fed. Cir. Nov. 9, 2020). And WDTX has “not historically resolved cases so
`
`quickly” as its “fast-paced schedule” might suggest. Id. Even if the WDTX trial
`
`commences on October 4, 2021, the FWD in this case would trail by only 3.5
`
`months. In Sand, the “relative close proximity” of a trial date scheduled 5 months
`
`before the FWD deadline “weigh[ed] marginally in favor of not exercising discretion
`
`to deny institution” given the district court’s own recognition of a “continuing degree
`
`of … uncertainty of the court’s schedule.” Sand at 8-10 (emphasis added). Similar
`
`uncertainty surrounds the trial date here. EX2009 at 158:20-159:10.
`
`Indeed, as the Board noted in Parus, the courts in WDTX have issued ten
`
`monthly suspension orders suspending trials during the COVID pandemic, with the
`
`latest suspending all WDTX trials through the end of 2020 (EX1033), creating a
`
`significant backlog of over 500 active patent cases, which is “persuasive evidence
`
`that delays are possible.” Parus at 13-14.
`
`Factor 3 Favors Institution (Investment in Parallel Proceedings) – Sand
`
`emphasized this factor focuses on the investment “in the merits of the invalidity
`
`positions.” Sand at 10. Here, as in Sand, “much of the district court’s investment
`
`relates to ancillary matters untethered to the validity issue itself.” Id. at 11. Further,
`
`the proper question is what investment is made as of the institution decision. Nvidia
`
`at 21. While Markman has occurred and final infringement contentions will be
`
`
`
`2
`
`
`
`
`
`served before institution, fact discovery will be ongoing, expert invalidity reports
`
`will not be due for 3.5 months, and substantive motion practice will not have started.
`
`See EX2010; Sand at 11. Indeed, Patent Owner recently objected to Petitioner’s
`
`invalidity-focused interrogatories in the litigation as “premature” because “[e]xpert
`
`discovery has not yet begun.”
`
`Factor 4 Favors Institution (Overlapping Issues) – In response to PO’s
`
`argument in the POPR, Petitioner served PO’s litigation counsel with a stipulation
`
`that Petitioner “will not pursue in the parallel district court proceeding (WDTX-6-
`
`20-cv-00090) the prior art obviousness combinations on which trial is instituted for
`
`the claims on which trial is instituted.” EX1030. In Sand and Parus, an almost
`
`identical stipulation was found to effectively address the risk of duplicative efforts.
`
`Sand at 11-12; Parus at 19-20.1 Moreover, in the litigation, the parties agreed to
`
`“significantly narrow[] the number of claims asserted” for trial, making it likely the
`
`district court will not address all issues of invalidity in the Petition. EX2010 at 2.
`
`Factor 5 is Neutral (Overlapping Parties) – While Petitioner is the
`
`defendant in the litigation, the Board in Parus explained that this factor “could weigh
`
`
`1 Petitioner’s waiver “mitigates any concerns of duplicative efforts between the
`
`district court and the Board.” Sotera Wireless, Inc. v. Masimo Corp., IPR2020-
`
`01019, Paper 12, 18-19 (PTAB Dec. 1, 2020) (precedential).
`
`
`
`3
`
`
`
`
`
`either in favor of, or against, exercising discretion to deny institution, depending on
`
`which tribunal was likely to address the challenged patent first.” Parus at 21.
`
`Factor 6 Favors Institution (Other Considerations) – Despite PO’s
`
`mischaracterizations, the Petition’s strong arguments favor institution. Sand at 13.
`
`II.
`
`PETITIONER’S ALLEGED INCONSISTENT 112(6) POSITIONS
`In Section VI of its POPR, PO argues that the Petition is “defective” because
`
`Petitioner argued in the litigation that claim limitations 1a and 15e (the “setting” and
`
`“set” limitations) are means-plus-function limitations subject to 112(6).
`
`But there is no inconsistency here. At the time of the Petition, the parties in
`
`the WDTX case had not even exchanged proposed terms for construction,.
`
`Petitioners had not formulated the 112(6) indefiniteness positions for claims 1a and
`
`15e it raised in the WDTX case at the time of the Petition and could not have
`
`included them. 37 CFR 42.104(b)(3) therefore does not apply.
`
`Moreover, while PO is correct that Petitioner did argue that limitations 1a and
`
`15e were subject to 112(6) in the WDTX case, PO downplays that Judge Albright
`
`rejected those arguments and construed both claim terms to have their plain
`
`meaning. EX1031, 13-14. Thus, both this IPR and the district court case are now
`
`proceeding under identical constructions, not inconsistent ones.
`
`PO also argues that Petitioner is taking an inconsistent position because it may
`
`subsequently appeal the WDTX decision. POPR, 20. PO argues an unknown. 112(6)
`
`
`
`4
`
`
`
`
`
`is not now at issue in either the WDTX case or here.
`
`III. PO’S INCONSISTENT POSITIONS
`In Section VII of the POPR, PO argues that the Petition fails to establish that
`
`limitations 1a and 15e are met, requiring an “express disclosure of how Wen’s
`
`system performs the ‘setting’ action in Element 1[a].” POPR, 25-26.
`
`The high standard of disclosure that PO requires with respect to the validity
`
`of limitations 1a and 15e is entirely inconsistent with PO’s broad approach to
`
`infringement of that same limitation in the WDTX case. There, PO argued in its
`
`infringement contentions that a single picture along with a video statement that “All
`
`of your current calls are displayed as bubbles on the top of your screen” is sufficient
`
`to establish infringement by Verizon’s One Talk product. EX1032, 2. In other words,
`
`PO imposes a high bar on limitations 1a and 15e for validity while simultaneously
`
`employing a low bar for the same limitations for infringement.
`
`PO’s own authority dictates that it is a serious issue when a party “takes
`
`conflicting positions between this proceeding and the related district court
`
`litigation.” OrthoPediatrics Corp. v. K2M, Inc., IPR2018-01548, Paper 9 at 10
`
`(PTAB March 1, 2019). PO already picked its lane when it advocated for a broad
`
`infringement read. PO should not be permitted to reverse course in this IPR and be
`
`rewarded for its inconsistent positions across proceedings.
`
`
`
`
`
`5
`
`
`
`
`
`Date: December 21, 2020
`
`
`
`
`
`
`
`
`
`By: /s/ James M. Glass
`James M. Glass
`QUINN EMANUEL URQUHART &
`SULLIVAN LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`Email: jimglass@quinnemanuel.com
`Phone: 212-849-7142
`Fax: 212-849-7100
`
`Counsel for Petitioner Cellco
`Partnership d/b/a Verizon Wireless
`
`6
`
`
`
`
`
`CERTIFICATE OF SERVICE (37 C.F.R. §§ 42.6(E), 42.105(A))
`The undersigned hereby certifies that the foregoing document was
`
`served on Patent Owner by email on all counsel of record.
`
`
`
`Date: December 21, 2020
`
`
`
`
`
`
`
`By: /s/ James M. Glass
`James M. Glass
`QUINN EMANUEL URQUHART &
`SULLIVAN LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`Email: jimglass@quinnemanuel.com
`Phone: 212-849-7142
`Fax: 212-849-7100
`
`Counsel for Petitioner Cellco
`Partnership d/b/a Verizon Wireless
`
`
`
`
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