UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`QUALCOMM INCORPORATED,
`
`Petitioner,
`
`v.
`
`UNM RAINFOREST INNOVATIONS,
`
`Patent Owner.
`_____________________
`Case IPR2021-00375
`
`Patent No. 8,265,096 B2
`_____________________
`
`PETITIONER’S REPLY TO PATENT OWNER’S
`PRELIMINARY RESPONSE1
`
`
`
`
`
`1 This reply is submitted pursuant to authorization granted by the Board during the
`parties’ May 18, 2021 conference call, as formalized in its May 19, 2021 Order
`(Paper 9).
`
`
`_____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`QUALCOMM INCORPORATED,
`
`Petitioner,
`
`v.
`
`UNM RAINFOREST INNOVATIONS,
`
`Patent Owner.
`_____________________
`Case IPR2021-00375
`
`Patent No. 8,265,096 B2
`_____________________
`
`PETITIONER’S REPLY TO PATENT OWNER’S
`PRELIMINARY RESPONSE1
`
`
`
`
`
`1 This reply is submitted pursuant to authorization granted by the Board during the
`parties’ May 18, 2021 conference call, as formalized in its May 19, 2021 Order
`(Paper 9).
`
`
`
`In its Preliminary Response, UNM argued that Fintiv Factor 6 weighs against
`
`institution because the Petition did not identify ASUSTek Computer Inc.
`
`(“ASUSTek”) and LG Electronics, Inc. (“LG”) as real parties in interest (RPIs).
`
`POPR (Paper 7) at 10. UNM also argued that Fintiv Factor 2 weighs against
`
`institution because of the proximity of the trial date in the Dell litigation. Id. at 6-7.
`
`UNM’s arguments are misplaced—neither of these Fintiv factors weighs against
`
`institution.
`
`I.
`
`ARGUMENT
`A. ASUSTek and LG Are Not RPIs To This Proceeding
`UNM has not presented any evidence to “reasonably bring[] into question the
`
`accuracy of a petitioner’s identification of the real parties in interest.” Worlds Inc. v.
`
`Bungie, Inc., 903 F.3d 1237, 1242 (Fed. Cir. 2018) (“[A] patent owner must produce
`
`some evidence to support its argument that a particular third party should be named
`
`a real party in interest.”). To the contrary, UNM merely identified ASUSTek and
`
`LG as customers of Qualcomm; identified ASUSTek as a defendant in a litigation
`
`involving the ’096 patent; and incorrectly theorized that LG, despite not being a
`
`defendant in any active litigation involving the ’096 patent, somehow was owed an
`
`indemnity obligation from Qualcomm. POPR at 10-11. UNM is incorrect that these
`
`relationships qualify either third party as an RPI.
`
`
`
`-1-
`
`
`
`Neither being a customer nor a co-defendant in a related litigation elevates a
`
`third party to an RPI. Wi-Fi One, LLC v. Broadcom Corp., 887 F.3d 1329, 1337–40
`
`(Fed. Cir. 2018) (finding that D-Link, who was a customer of petitioner and a named
`
`defendant in a related litigation, was not an RPI and affirming the Board’s denial of
`
`requests for RPI discovery); WesternGeco LLC v. ION Geophysical Corp., 889 F.3d
`
`1308, 1321 (Fed. Cir. 2018). Moreover, theoretical, and incorrect, allegations of
`
`indemnity obligations also are insufficient to elevate a third party to an RPI.
`
`WesternGeco, 889 F.3d at 1321 (“ambiguous” indemnity agreement that “did not
`
`show any obligation of ION to defend PGS from a patent infringement lawsuit” did
`
`not give rise to a RPI relationship).
`
`Moreover, neither ASUSTek nor LG exercised or could have exercised any
`
`control over Qualcomm’s petition, neither were involved in the drafting of the
`
`petition, and neither provided any funding therefor. Puzhen Life USA, LLC v. ESIP
`
`Series 2, LLC, IPR2017-02197, Paper 24 at 10 (PTAB Feb. 27, 2019). In contrast,
`
`Qualcomm has indemnity obligations to Dell and has coordinated with Dell and its
`
`subsidiary EMC in defense in the Dell litigation and as it relates to the Petition,
`
`including on the submission of a Sand Revolution-style stipulation that mitigates the
`
`risk of duplicative efforts between the district court and the Board (Petition at 8-9).
`
`Qualcomm thus identified Dell and EMC as RPIs out of an abundance of caution.
`
`B.
`
`The Relative Timing Of The District Court Case And This IPR
`Should Be Given Little If Any Weight
`
`-2-
`
`
`
`UNM argues that the trial date in the Dell litigation, currently scheduled to
`
`begin on November 8, 2021, “strongly favors” the Board exercising its discretion to
`
`deny institution. POPR at 6-7. However, UNM fails to mention that Qualcomm, not
`
`Dell, has filed this IPR, and that Judge Albright’s overbooked trial schedule may
`
`cause the trial date to be rescheduled to a later date.
`
`Judge Albright booked at least three other trial to begin on the same November
`
`8, 2021 date, even though only one trial can be held on that date. FG SRC, LLC2 v.
`
`Intel Corp., No. 1:20-cv-00834, Dkt. 57 at 1 (W.D. Tex. Feb. 4, 2021) (Order setting
`
`jury trial for Nov. 8, 2021); Theta IP, LLC v. Samsung Elecs. Co., Ltd., No. 6:20-cv-
`
`00160, Dkt. 35 at 3 (W.D. Tex. Nov. 19, 2020) (same); Kuster v. Western Digital
`
`Techs, Inc., No. 6:20-cv-00563, Dkt. 57 at 4 (W.D. Tex. Feb. 9, 2021) (same).
`
`Moreover, Judge Albright has numerous other cases scheduled for trial in Nov. 2021.
`
`Because of the substantial uncertainty surrounding the trial date of the Dell
`
`litigation, the second Fintiv factor is neutral or weighs only slightly against
`
`institution. HP Inc. v. Slingshot Printing LLC, IPR2020-01084, Paper 13 at 9–10
`
`(PTAB Jan. 14, 2021) (Factor 2 neutral despite trial scheduled five months before
`
`final written decision where “the district court’s . . . trial date may slip . . . [b]ecause
`
`the same trial date is set for two cases”); Apple Inc. v. Parus Holdings, Inc.,
`
`IPR2020-00686, Paper 9 at 13 (PTAB Sept. 23, 2020) (Factor 2 neutral in view of
`
`
`2 Counsel for UNM in the Dell litigation represents Plaintiff FG SRC in this case.
`
`-3-
`
`
`
`“the substantial uncertainty in the Texas court’s ‘Predicted Jury Selection/Trial’
`
`date.”); Facebook, Inc. v. USC IP Partnership, L.P., IPR2021-00033, Paper 13 at
`
`11–12 (PTAB Apr. 30, 2021) (granting institution despite scheduled trial date being
`
`five months before statutory FWD deadline and finding factor 2 to only “slightly”
`
`weigh against institution); Samsung Elecs. Co. v. Arbor Global Strategies LLC,
`
`IPR2020-01020, Paper 11 at 10 (PTAB Dec. 2, 2020) (granting institution despite
`
`scheduled trial date being eight months before statutory FWD deadline and finding
`
`Fintiv factor 2 to weigh only “moderately” against institution).
`
`Lastly, even if the Board were to find that the second Fintiv factor weighs in
`
`favor of exercising discretion to deny institution, the Board should decline to
`
`exercise its discretion in view of the other factors that favor institution. See Samsung
`
`Elecs. Co., Ltd. v. Nanoco Techs. Ltd., IPR2021-00182, Paper 17 at 9–10 (PTAB
`
`May 19, 2021) (granting institution despite scheduled trial date being more than
`
`seven months before statutory FWD deadline under similar procedural facts,
`
`including petitioner’s submission of a stipulation); Peag LLC v. Varta Microbattery
`
`GMBH, IPR2020-01212, Paper 8 at 17, 22-23 (PTAB Jan. 6, 2021) (granting
`
`institution despite “seven months” difference).
`
`II. CONCLUSION
`For the foregoing reasons, neither Fintiv factor 2 nor 6 weighs against
`
`institution. Discretionary denial under § 314 is not appropriate.
`
`-4-
`
`
`
`
`
`Dated: May 25, 2021
`
`Respectfully submitted,
`
`/s/ Jonathan I. Detrixhe /
`Lead Counsel
`Jonathan I. Detrixhe (Reg. No. 68,556)
`Reed Smith LLP
`101 Second Street
`Suite 1800
`San Francisco, CA 94105
`Tel: 415.543.8700
`Fax: 415.391.8269
`jdetrixhe@reedsmith.com
`
`Back-up Counsel
`Jonah D. Mitchell (will seek pro hac vice
`admission)
`Christine M. Morgan (will seek pro hac vice
`admission)
`Reed Smith LLP
`101 Second Street
`Suite 1800
`San Francisco, CA 94105
`Tel: 415.543.8700
`Fax: 415.391.8269
`jmitchell@reedsmith.com
`cmorgan@reedsmith.com
`
`Peter J. Chassman (Reg. No. 38,841)
`Reed Smith LLP
`811 Main Street
`Suite 1700
`Houston, TX 77002
`Tel: 713.469.3800
`Fax: 713.469.3899
`pchassman@reedsmith.com
`
`Ismail C. Kuru (will seek pro hac vice admission)
`Reed Smith LLP
`
`-5-
`
`
`
`10 S. Wacker Dr. 40th Floor
`Chicago, IL, 60606
`Tel: 312.207.1000
`Fax: 312.207.6400
`ikuru@reedsmith.com
`
`
`Counsel for Petitioner
`
`
`
`-6-
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e)(4) and 42.25(b), the undersigned certifies
`
`that on May 25, 2021, a complete copy of Petitioner’s Reply to Patent Owner’s
`
`Preliminary Response was filed electronically through the Patent Trial and Appeal
`
`Board’s PTABE2E System and provided, via electronic service, to the Patent Owner
`
`by serving the correspondence address of record.
`
`Dated: May 25, 2021
`
`Respectfully submitted,
`/ Jonathan I. Detrixhe /
`Jonathan I. Detrixhe (Reg. No. 68,556)
`Reed Smith LLP
`101 Second Street
`Suite 1800
`San Francisco, CA 94105
`Tel: 415.543.8700
`Fax: 415.391.8269
`jdetrixhe@reedsmith.com
`
`Counsel for Petitioner
`
`7
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
