UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`ZYXEL COMMUNICATIONS CORPORATION,
`
`Petitioner,
`
`v.
`
`UNM RAINFOREST INNOVATIONS,
`
`Patent Owner.
`_____________________
`Case IPR2021-00734
`
`Patent 8,265,096
`_____________________
`
`PETITIONER ZYXEL COMMUNICATIONS CORPORATION’S REPLY
`TO UNM RAINFOREST INNOVATIONS’ PRELIMINARY RESPONSE
`
`
`
`
`
`
`_____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`ZYXEL COMMUNICATIONS CORPORATION,
`
`Petitioner,
`
`v.
`
`UNM RAINFOREST INNOVATIONS,
`
`Patent Owner.
`_____________________
`Case IPR2021-00734
`
`Patent 8,265,096
`_____________________
`
`PETITIONER ZYXEL COMMUNICATIONS CORPORATION’S REPLY
`TO UNM RAINFOREST INNOVATIONS’ PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`Pursuant
`
`to
`
`the Board’s authorization
`
`(Paper 14 at 3), ZyXEL
`
`Communications Corporation (“ZyXEL” or “Petitioner”) files this reply to UNM
`
`Rainforest Innovations’ Preliminary Response (Paper 12) (“POPR”).
`
`UNM argued that Fintiv Factor 2 weighs against institution because of the
`
`proximity of the trial date in UNM Rainforest Innovations v. ZyXEL Commc’ns
`
`Corp., No. 6:20-cv-00522-ADA (W.D. Tex.) (“the ZyXEL litigation”), which
`
`previously was set for trial in April 2022. POPR at 8. In addition, based solely on
`
`the composition of the Petition’s cover page, UNM argued that it was an “in rem
`
`petition” that “explicitly introduces the issue of patent ownership” and is not
`
`authorized under 35 U.S.C. § 311(A). Id. at 5-6. Both arguments are misplaced—
`
`Fintiv Factor 2 does not weigh against institution, and ZyXEL’s Petition is not an
`
`“in rem petition” and does not fail to satisfy any inter partes requirement. Moreover,
`
`UNM’s already flawed arguments regarding Fintiv Factor 2 have since been entirely
`
`upended because, on July 28, 2021, the District Court stayed the ZyXEL litigation.
`
`In the IPR to which ZyXEL’s Petition seeks joinder, this Board already has
`
`determined that an identical stay entered in the Dell litigation “weigh[ed] against
`
`discretionary denial” of the Qualcomm Petition. Qualcomm Inc., v. UNM Rainforest
`
`Innovations, IPR2021-00375, Paper 14 at 10 (PTAB July 19, 2021).
`
`ARGUMENT
`A. The District Court Case Against ZyXEL Has Been Stayed, And
`Trial May Never Occur
`
`-1-
`
`I.
`
`
`
`
`
`UNM argues that the trial date in the ZyXEL litigation, previously scheduled
`
`to begin on April 4, 2022, “favors denying institution.” POPR at 8. After UNM’s
`
`POPR, however, Judge Albright stayed the Dell litigation based on a lawsuit that
`
`UNM filed in New Mexico state court to determine ownership of the ’326, ’096, and
`
`’204 patents. See June 22, 2021 Text Order in UNM Rainforest Innovations v. Dell
`
`Techs., No. 6:20-cv-00468-ADA granting motion to stay “pending resolution of
`
`patent ownership issues in UNM Rainforest Innovations v. Industrial Technology
`
`Research Institute, et al., case number D-202-CV-2021-02803 in the Second Judicial
`
`District Court of Bernalillo County, New Mexico.” On July 28, 2021, Judge Albright
`
`also stayed the ZyXEL litigation for the same reasons as he stayed the Dell litigation.
`
`See July 28, 2021 Text Order in UNM Rainforest Innovations v. ZyXEL Commc’ns
`
`Corp., No. 6:20-cv-00522-ADA (W.D. Tex.) (staying the ZyXEL litigation
`
`“pending resolution of patent ownership issues” in the New Mexico lawsuit).
`
`UNM just recently filed the New Mexico lawsuit on May 4, 2021. Paper 9
`
`(Petitioner’s Updated Mandatory Notices) at 1. All proceedings in the ZyXEL
`
`litigation are stayed indefinitely, and, if the New Mexico court rules that UNM does
`
`not own the ’096 patent, then a trial will never occur in the ZyXEL litigation. If the
`
`ZyXEL litigation were to emerge from a stay at some unknown time, the case
`
`schedule would need to be reset, leaving complete uncertainty about a trial date.
`
`-2-
`
`
`
`Because of this complete uncertainty as to whether or when a trial will ever
`
`occur in the ZyXEL litigation, Fintiv factor 2 weighs against exercising discretion
`
`to deny institution. See Qualcomm Inc., v. UNM Rainforest Innovations, IPR2021-
`
`00375, Paper 14 at 10 (PTAB July 19, 2021) (based on the stay of the Dell litigation
`
`in view of UNM’s filing of the New Mexico state court case, finding that “the
`
`considerations of the second Fintiv factor weigh against discretionary denial”); see
`
`also Shenzhen Carku Tech. Co., Ltd. v. Noco Co., IPR2020-00944, Paper 20 at 58-
`
`60 (PTAB Nov. 12, 2020) (“The proximity factor in Fintiv, on its face, asks us …
`
`not to speculate as to trial dates that are still to-be-determined …. [Fintiv factor 2]
`
`weighs strongly against exercising discretion to deny the Petition.”).
`
`B.
`
`ZyXEL’s Petition Is Not An “In Rem Petition,” And ZyXEL Has
`Not Raised An Ownership Issue In This Proceeding
`Based solely on ZyXEL’s styling of the cover page of its Petition,1 UNM
`
`argues that ZyXEL’s Petition is an “in rem petition” that somehow “does not satisfy
`
`the inter partes requirement” and that it “explicitly introduces the issue of patent
`
`ownership in this forum.” POPR at 5-6. Neither argument has merit.
`
`ZyXEL’s Petition does not seek in rem review. To the contrary, the cover page
`
`clearly states that it is a petition for “INTER PARTES REVIEW.” Pet. (Paper 1) at
`
`
`1 In this filing, Petitioner has adopted the format of the caption encouraged by the
`
`Board in the Notice of Filing Date. Paper 4 at 2.
`
`-3-
`
`
`
`caption. And, the header of the pages in the Petition is titled as “Petition for Inter
`
`Partes Review of ’096 Patent (IPR2021-00734).” The Petition identifies UNM as
`
`the current assignee of record for the ’096 patent (id. at 2), and the Petition complied
`
`with the obligation to serve the correspondence address of record for the ’096 patent
`
`(id. at 75). Furthermore, UNM has been an active participant in this IPR proceeding,
`
`having filed its Mandatory Notices, Opposition to ZyXEL’s Motion for Joinder, and
`
`Preliminary Response, as well as participating in two hearings before the Board.
`
`UNM’s argument that ZyXEL’s Petition initiated an in rem proceeding is absurd.
`
`While ownership of the patent is in dispute, as UNM plainly admitted by filing
`
`the additional lawsuit seeking a declaration that it actually owns the patents that it
`
`has asserted in the ZyXEL litigation, nothing in ZyXEL’s Petition sought to have
`
`the Board rule on patent ownership, and, as ZyXEL stated in its reply in support of
`
`its motion for joinder, ZyXEL “does not seek to have the Board decide the issue of
`
`ownership of the ’096 patent.” Paper 8 at 1 (emphasis in original). Despite this clear
`
`statement, UNM argues, without support, that the caption to ZyXEL’s Petition
`
`somehow “requir[es] the PTAB to rule on [the] issue [of patent ownership].” POPR
`
`at 6. Again, UNM’s argument is baseless.
`
`II. CONCLUSION
`For the foregoing reasons, denial under §§ 311 or 314 is not appropriate.
`
`
`
`-4-
`
`
`
`Dated: August 17, 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
`10 S. Wacker Dr. 40th Floor
`Chicago, IL, 60606
`
`-5-
`
`
`
`Tel: 312.207.1000
`Fax: 312.207.6400
`ikuru@reedsmith.com
`
`Martha Hopkins (Reg. No. 46,277)
`Law Offices of S.J. Christine Yang
`17220 Newhope Street
`Suites 101-102
`Fountain Valley, CA 92708
`Tel: 714-641-4022
`Fax: 714-641-2082
`mhopkins@sjclawpc.com
`
`Victoria Hao (Reg. No. 47,630)
`Law Offices of S.J. Christine Yang
`17220 Newhope Street
`Suites 101-102
`Fountain Valley, CA 92708
`Tel: 714-641-4022
`Fax: 714-641-2082
`vhao@sjclawpc.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 August 17, 2021, a complete copy of Petitioner ZyXEL Communications
`
`Corporation’s Reply To UNM Rainforest Innovations’ Preliminary Response was
`
`filed electronically through the Patent Trial and Appeal Board’s PTABE2E System
`
`and provided, via electronic service, to UNM Rainforest Innovations by serving the
`
`correspondence address of record as follows:
`
`Jay P. Kesan (jay@jaykesan.com)
`
`Alfonso G. Chan (achan@shorechan.com)
`
`
`
`
`
`
`Dated: August 17, 2021
`
`Respectfully submitted,
`/s/ 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-
`
`
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