UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`QUALCOMM INCORPORATED,
`Petitioner,
`v.
`UNM RAINFOREST INNOVATIONS,
`Patent Owner.
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`PTAB Case No. IPR2021-00375
`Patent No. 8,265,096 B2
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`SUR-REPLY
`IN SUPPORT OF PATENT OWNER’S
`PRELIMINARY RESPONSE TO PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 8,265,096 B2
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`Paper No. 12
`Filed: June 1, 2021
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`QUALCOMM INCORPORATED,
`Petitioner,
`v.
`UNM RAINFOREST INNOVATIONS,
`Patent Owner.
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`
`
`PTAB Case No. IPR2021-00375
`Patent No. 8,265,096 B2
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`SUR-REPLY
`IN SUPPORT OF PATENT OWNER’S
`PRELIMINARY RESPONSE TO PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 8,265,096 B2
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`Paper No. 12
`Filed: June 1, 2021
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`Pursuant to the Board’s May 19, 2021 ORDER (Paper 9), Petitioner and
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`Patent Owner were granted a reply and sur-reply limited to Fintiv Factors 2 and 6.
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`I.
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`FINTIV FACTOR 2 (TRIAL DATE PROXIMITY)
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`The Dell trial is in Nov. 2021. EX2006. The Board’s institution and final
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`written decisions here are due in July of 2021 and 2022, respectively. Even the
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`institution decision would barely beat the Dell trial, and the final written decision
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`cannot be expected until a full eight months afterwards. Further, third party
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`ZyXEL’s request to join this IPR and also introduce a new issue, i.e., Patent
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`Owner’s ownership—if granted—would be highly likely to further delay this IPR.
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`IPR2021-00734, Papers 3 and 7 (joinder motion and response).
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`Further, the WDTX, and particularly Judge Albright, does not easily move
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`trial dates. Indeed, he has once already refused to move this trial date. Compare
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`id. with EX2005. Further, Judge Albright “is fully open and equipped to safely
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`conduct jury trials in the COVID-19 pandemic.” Ecofactor, Inc, v. Vivint, Inc.,
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`6:20-cv-00080 (Order dated Apr. 16, 2021) (W.D. Tex.) (Alan D. Albright).
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`Finally, Petitioner deceptively argues that “Judge Albright booked at least
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`three other trial [sic] to begin on the same November 8, 2021 date, even though
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`only one trial can be held on that date.” Reply at 3. First, courts set trials on the
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`same date because many cases settle “on the courthouse steps.” Thus, on any
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`given trial date, five to ten cases may be scheduled. Most are resolved. Indeed,
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`1
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`one of Petitioner’s three cases set for that date has already been dismissed. FG
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`SRC, LLC2 v. Intel Corp., No. 1:20-cv-00834, Dkt. 76 (W.D. Tex. Apr. 6, 2021)
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`(stipulation of dismissal). The second case has been stayed. Kuster v. Western
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`Digital Techs, Inc., No. 6:20-cv-00563, Text Order issued Mar. 12, 2021 (W.D.
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`Tex.) (granting joined motion to stay). Finally, the third case recognized that “the
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`parties feel[] that they have a need for more time and perhaps new schedule and/or
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`deadlines.” Theta IP, LLC v. Samsung Elecs. Co., Ltd., No. 6:20-cv-00160, Dkt.
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`80 (W.D. Tex. May 26, 2021). Thus, the Dell litigation is literally the only case
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`ready to proceed to trial on Nov. 8, 2021.
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`Petitioner’s other citations are highly distinguishable. First, in HP v.
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`Slingshot, this factor was neutral despite a five-month delay only because the
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`“Western District of Texas [had] issued a suspension order every month for the
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`past nine months suspending all trials.” HP Inc. v. Slingshot Printing LLC,
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`IPR2020-01084, Paper 13 at 10 (PTAB Jan. 14, 2021). This order is no longer in
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`effect and the court “is fully open and equipped to safely conduct jury trials in the
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`COVID-19 pandemic.” Ecofactor, Inc, v. Vivint, Inc., 6:20-cv-00080 (Order dated
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`Apr. 16, 2021) (W.D. Tex.) (Alan D. Albright). Next, in Apple Inc. v. Parus
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`Holdings, Inc., the Board found this factor to be neutral despite a two-month delay
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`because the WDTX scheduling order—also issued during the trial suspension
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`period—explicitly stated that the “jury selection/trial date” was “predicted” and,
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`2
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`thus, uncertain. Apple Inc. v. Parus Holdings, Inc., IPR2020-00686, Paper 9 at 11
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`(PTAB Sept. 23, 2020). No such uncertainty exists here because the suspension
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`has been lifted. Next, in Facebook, Inc. v. USC IP Partnership, L.P., the court
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`held this factor only “slightly” in favor of denial of institution because “the case
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`[was] still at a relatively early stage, with fact discovery having begun less than
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`two months ago and not set to close until [three months after the institution
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`decision.]” Facebook, Inc. v. USC IP Partnership, L.P., IPR2021-00033, Paper 13
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`at 12 (PTAB Apr. 30, 2021). Here, fact discovery closes even before the
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`institution decision is likely to be rendered (July 16 versus July 22). EX2006.
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`Finally, in Samsung Elecs. Co. v. Arbor Global Strategies LLC, the Board found
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`this factor moderately in favor of denial in light of an 8-month delay between trial
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`and IPR only because “the District Court is likely to allow Petitioner to refile a
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`motion for stay and may grant a stay.” Samsung Elecs. Co. v. Arbor Global
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`Strategies LLC, IPR2020-01020, Paper 11 at 10 (PTAB Dec. 2, 2020). Qualcomm
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`has provided no evidence demonstrating that a stay would be likely here, and the
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`cases cited in Patent Owner’s preliminary response affirmatively demonstrate the
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`opposite. (Paper 8 at 5).
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`Petitioner’s remaining citations are: (1) outside of the scope of the reply, as
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`they relate to other Fintiv factors, and (2) both in support of Fintiv factor 2 being
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`strongly in favor of denial based on the eight month delay. Reply at 3 (citing
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`3
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`Samsung Elecs. Co., Ltd. v. Nanoco Techs. Ltd., IPR2021-00182, Paper 17 at 9–10
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`(PTAB May 19, 2021) (Factor 2 favors denial due to seven month delay between
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`trial and IPR); Peag LLC v. Varta Microbattery GMBH, IPR2020-01212, Paper 8
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`at 17, 22-23 (PTAB Jan. 6, 2021) (same)). Fintiv factor 2 unquestionably strongly
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`favors denying institution because the Dell litigation is virtually guaranteed to
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`conclude 8 months before this IPR, and there is no reasonable likelihood of a stay.
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`II. FINTIV FACTOR 6
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`Qualcomm admits that Dell and EMC are RPIs because they are customers
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`named as defendants in a related district court action in the Western District of
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`Texas. Paper 1 at 3. Further, Qualcomm admits that it “has indemnity obligations
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`to Dell and has coordinated with Dell and its subsidiary EMC in defense of the
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`Dell litigation.” Reply at 2. Qualcomm further acknowledges “ASUSTek and LG
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`as customers of Qualcomm” who are similarly situated as Dell and EMC, and that
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`both are also named as a defendant in related district court actions. Notably,
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`Qualcomm does not deny that its customer agreements with ASUSTek and LG
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`contain indemnity provisions akin to its agreements with Dell and EMC. At a
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`minimum, Qualcomm should provide its indemnity agreements with ASUSTek
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`and LG to substantiate its argument that ASUSTek and LG are not similarly
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`situated as Dell and EMC. Evaluation of Fintiv factor 6 requires corroboration of
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`Qualcomm’s say-so by review of its ASUSTek and LG indemnity agreements.
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`4
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`Dated: June 1, 2021
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`Respectfully submitted,
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`/s/ Jay P. Kesan
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`Jay P. Kesan, Reg. No. 37,488
`Cecil E. Key
`DIMUROGINSBERG, PC
`DGKEYIP GROUP
`1750 Tyson’s Blvd. Suite 1500
`Tysons Corner, VA 22102
`jkesan@dimuro.com
`ckey@dimuro.com
`Telephone: (703) 289-5118
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`Ari Rafilson, Reg. No. 58,693
`SHORE CHAN LLP
`901 Main Street, Suite 3300
`Dallas, TX 75202
`arafilson@shorechan.com
`Telephone: (214) 593-9110
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`Attorneys for Patent Owner
`UNM RAINFOREST INNOVATIONS
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`5
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. §§ 42.6(e)(4) and 42.25(b), the undersigned certifies
`that on June 1, 2021, a complete copy of Patent Owner UNM Rainforest
`Innovations’ Sur-Reply In Support Of Patent Owner’s Preliminary Response To
`The Petition for Inter Partes Review of U.S. Patent No. 8,265,096 B2 was filed
`electronically through the Patent Trial and Appeal Board’s PTABE2E System and
`provided, via electronic service, to the Petitioner by serving the correspondence
`address of record.
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`Dated: June 1, 2021
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`/s/ Jay P. Kesan
`Jay P. Kesan
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`6
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