UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––
`
`CELLCO PARTNERSHIP
`D/B/A VERIZON WIRELESS (“Verizon”)
`Petitioner
`
`
`v.
`
`HUAWEI TECHNOLOGIES CO., LTD.
`(“Huawei”)
`Patent Owner
`––––––––––––––
`U.S. Patent No. 7,715,832
`
`“Mobile Terminal and a Method for Implementing the Guardianship Function”
`
`––––––––––––––
`
`Inter Partes Review No. 2020-01129
`
`VERIZON’S PRELIMINARY REPLY
`
`06890-00002/12158823.22
`
`
`
`––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––
`
`CELLCO PARTNERSHIP
`D/B/A VERIZON WIRELESS (“Verizon”)
`Petitioner
`
`
`v.
`
`HUAWEI TECHNOLOGIES CO., LTD.
`(“Huawei”)
`Patent Owner
`––––––––––––––
`U.S. Patent No. 7,715,832
`
`“Mobile Terminal and a Method for Implementing the Guardianship Function”
`
`––––––––––––––
`
`Inter Partes Review No. 2020-01129
`
`VERIZON’S PRELIMINARY REPLY
`
`06890-00002/12158823.22
`
`
`
`
`
`LIST OF EXHIBITS
`
`Description
`U.S. Patent No. 7,715,832 to Zhou et al.
`File History of U.S. Patent No. 7,715,832
`U.S. Pat. Pub. No. 2004/0166878 to Erskine et al. (“Erskine”)
`U.S. Pat. Pub. No. 2002/0069259 to Kushwaha et al.
`(“Kushwaha”)
`U.S. Patent No. 7,302,272 to Ackley (“Ackley”)
`U.S. Patent Prov. App. No. 60/481,428 to Ackley (“’428 Ackley
`Provisional”)
`U.S. Patent No. 6,889,207 to Slemmer et al. (“Slemmer”)
`U.S. Pat. Pub. No. 2004/0219928 to Deeds (“Deeds”)
`U.S. Pat. Pub. No. 2005/0070315 to Rai (“Rai”)
`U.S. Pat. Pub. No. 2002/0183051 to Poor et al. (“Poor”)
`Huawei’s June 8, 2020 First Amended Infringement Contentions
`Cover Pleading
`Huawei Technologies, Co, Ltd. v. Verizon Communications, Inc.,
`No. 6:20-CV-00090, Dkt. 1 (W.D. Tex.) (“Complaint”)
`Huawei’s June 8, 2020 First Amended Infringement Claim Chart
`for the ’832 Patent
`Huawei Technologies, Co, Ltd. v. Verizon Communications, Inc.,
`No. 6:20-CV-00090, Dkt. 30 (W.D. Tex.)
`DocketNavigator – time to milestone statistics (nationwide)
`DocketNavigator – time to milestone statistics (WDTX)
`Judge Albright Standing Order Regarding Post-Markman Patent
`Cases (Apr 9, 2020)
`Supplemental Order Regarding Court Operations Under The
`Exigent Circumstances Created By The COVID-19 Pandemic
`(W.D. Tex. May 8, 2020)
`Judge Albright Standing Order Governing Proceedings (Feb 26,
`2020)
`DocketNavigator – Judge Albright patent cases statistics
`DocketNavigator – Delaware District patent cases statistics
`DocketNavigator – trial continuance statistics
`
`Exhibit
`Ex. 1001
`Ex. 1002
`Ex. 1003
`Ex. 1004
`
`Ex. 1005
`Ex. 1006
`
`Ex. 1007
`Ex. 1008
`Ex. 1009
`Ex. 1010
`Ex. 1011
`
`Ex. 1012
`
`Ex. 1013
`
`Ex. 1014
`
`Ex. 1015
`Ex. 1016
`Ex. 1017
`
`Ex. 1018
`
`Ex. 1019
`
`Ex. 1020
`Ex. 1021
`Ex. 1022
`
`
`
`i
`
`
`
`
`
`
`Description
`John Graham-Cumming, The Network is the Computer,
`CLOUDFLARE (July 11, 2019, 6:00 AM), available at
`https://blog.cloudflare.com/the-network-is-the-computer/
`UNIX Programmer’s Manual, 4.2 Berkeley Software Distribution,
`Volume 2c, Virtual VAX-11 Version, UNIV. OF CA., BERKELEY
`(Aug. 1983), available at
`http://www.bitsavers.org/pdf/stanford/stanford_4.2_BSD_manual/
`4.2_BSD_Vol_2C.pdf
`Dell Remote Access Controller 4 User’s Guide, DELL (july 2004),
`available at
`https://web.archive.org/web/20041130205952/http://support.dell.c
`om/support/edocs/software/smdrac3/drac4/en/UG/drac4ug.pdf
`Ad-aware Professional, INTERNET ARCHIVE (May 12, 2004),
`available at
`http://web.archive.org/web/20040521095410/http://www.lavasoft.
`nu:80/
`SpyCop Corporate Version 4.0, INTERNET ARCHIVE (Feb. 5,
`2002), available at
`https://web.archive.org/web/20020205155626/http://spycop.com/s
`pycop-corporate-product.htm
`Webroot Spy Sweeper Enterprise, INTERNET ARCHIVE (June 12,
`2004), available at
`https://web.archive.org/web/20040612123924/http://www.webroo
`t.com/wb/products/spysweeper/enterprise.php
`Peri Tarr et al., Workshop on Multi-Dimensional Separation of
`Concerns in Software Engineering, 26 ACM SIGSOFT Software
`Engineering Notes (2001), no. 1, at 78
`Pad++ Reference Manual, Version 0.9, UNIV. OF MD., available
`at https://www.cs.umd.edu/hcil/pad++/documentation/doc-
`0.9/reference-09-whole-1.html
`U.S. Pat. No. 5,590,347 (“D’Souza”)
`U.S. Pat. No. 76,266,761 (“Levine”)
`WIPO 2003/098908A1 to Wesby et al. (“Wesby”)
`Curriculum Vitae of Dr. Benjamin B. Bederson
`Declaration of Dr. Benjamin B. Bederson
`P. Curran Email Stipulation (Oct. 27, 2020)
`
`Exhibit
`Ex. 1023
`
`Ex. 1024
`
`Ex. 1025
`
`Ex. 1026
`
`Ex. 1027
`
`Ex. 1028
`
`Ex. 1029
`
`Ex. 1030
`
`Ex. 1031
`Ex. 1032
`Ex. 1033
`Ex. 1034
`Ex. 1035
`Ex. 1036
`
`
`
`ii
`
`
`
`
`
`
`Exhibit
`Ex. 1037
`
`Description
`Tenth Supplemental Order Regarding Court Operations Under
`Exigent Circumstances Created by the COVID-19 Pandemic
`(W.D. Tex. Nov. 18, 2020)
`
`
`
`iii
`
`
`
`
`
`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 4-7. 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 (EX1037), 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.” EX1036. 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, Parus explains that this factor “could weigh either in
`
`
`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
`
`
`
`
`
`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. ALLEGED 112(6) LIMITATIONS IN CLAIMS 1-4
`In Section IV.A of its POPR, PO accuses Verizon of failing to provide
`
`constructions for two terms that PO claims are subject to 112(6): “second module
`
`configured for” and “first module configured for.” These terms are found in claims
`
`1-4, which are not asserted in the WDTX litigation.
`
`Verizon did not propose constructions for these terms because they are not
`
`subject to 112(6). They do not use the word “means,” and thus 112(6) presumptively
`
`does not apply. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir.
`
`2015) (en banc); TEK Global, S.R.L. v. Sealant Sys. Int’l, Inc., 920 F.3d 777, 785-
`
`86 (Fed. Cir. 2019); see also Uniloc USA, Inc. v. Autodesk, Inc., No. 2:15-CV-1187-
`
`JRG-RSP, 2016 WL 3647977, at *5 (E.D. Tex. July 7, 2016). The burden of
`
`rebutting that presumption falls on the party asserting that 112(6) applies, and PO
`
`has not overcome it. Williamson, 792 F.3d at 1348.
`
`There is no question that had Petitioner argued in its brief that 112(6) applied
`
`to these terms that PO would now be arguing that it does not. In the WDTX case,
`
`PO argued that the phrases “input analyzing module,” “first forwarding module,”
`
`
`
`4
`
`
`
`
`
`and “forwarding module” were all not subject to 112(6). EX2015, 4-8 (“an input
`
`analyzing module”), 8-11 (“a first forwarding module”), 15-20 (“forwarding
`
`module”). There is no meaningful distinction between the module terms PO argued
`
`were not covered by 112(6) in the WDTX case and the module terms in claims 1-4.
`
`As yet another example, another claim in the WDTX case included the
`
`language “wherein the processors are configured to.” PO argued that this language
`
`did not invoke 112(6) either, alleging that a POSITA would “read this configured
`
`processor as a structure” because the “claim language further specifies the detail for
`
`each of the operations which the processor is configured to perform.” POPR, 42-44
`
`(citing Free Stream Media Corp. v. Alphonso Inc., 2017 WL 1165578 at *62-63
`
`(E.D. Tex. Mar. 29, 2017) (holding “instructions . . . executed using the processor
`
`configured to” not subject to § 112 ¶ 6 because “[b]y reciting the objectives of the
`
`‘instructions ... configured to,’ and how the code operates within the context of the
`
`claimed invention, the claim language connotes sufficiently definite structure to one
`
`of skill in the art.”); Cypress Lake Software, Inc. v. Samsung Elecs. Am., Inc., 382
`
`F. Supp. 3d 586, 655-56 (E.D. Tex. 2019) (holding “processor configured for...”
`
`terms not subject to § 112 ¶ 6 because “the claim language provides a description of
`
`how the processor is specifically programmed to operate” and “further describes the
`
`structural interactions of the processor [and other components].”). By that same
`
`logic, 112(6) does not apply.
`
`
`
`
`
`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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