`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`RFCYBER CORP.,
`Patent Owner.
`
`
`Patent No. 9,240,009
`Filing Date: January 16, 2012
`Issue Date: January 19, 2016
`
`
`
`
`
`Inventors: Liang Seng Koh, Hsin Pan, and Xiangzhen Xie
`Title: MOBILE DEVICES FOR COMMERCE OVER UNSECURED
`NETWORKS
`
`
`__________________________________________________________________
`
`PATENT OWNER’S SURREPLY
`
`Case No. IPR2021-00956
`
`__________________________________________________________________
`
`
`
`
`INTRODUCTION
`Google’s Reply does not identify any developments in the District Court
`
`IPR2021-00956
`PATENT NO. 9,240,009
`
`
`I.
`
`
`Litigation that would tilt the Fintiv analysis towards institution. In a case like this
`
`one, where the nearly all substantive work will be complete before the Board’s
`
`Institution Decision, Google’s belated stipulation is not enough to justify institution.
`
`II. THE DISTRICT COURT’S TRIAL DATE IS EIGHT MONTHS
`BEFORE THE PROJECTED STATUTORY DEADLINE FOR A
`FINAL WRITTEN DECISION
`As noted in Patent Owner’s POPR, the District Court in the Texas Action has
`
`
`
`scheduled trial for March 2022. POPR at 20-21. The projected statutory deadline
`
`for this proceeding is in November 2022, eight months later. Id. This factor thus
`
`weighs heavily in favor of discretionary denial. E.g., Google LLC v. Ecofactor, Inc.,
`
`IPR2021-00488, Paper No. 12, at 11-12 (P.T.A.B. Aug. 11, 2021) (“Ecofactor”)
`
`(trial date six months ahead of Final Written Decision deadline weighed in favor of
`
`denying institution).
`
`
`
`Google’s only response is to speculate, again, that the case may be transferred
`
`or stayed pending resolution of Google’s motion to transfer. Reply at 4-5. As
`
`explained in the POPR, the Court is unlikely to grant Google’s Motion. POPR at
`
`20-21. In any event, the Board considers “trial dates that have been set in parallel
`
`litigations,” and speculative delays are not relevant to this factor. E.g., Ecofactor,
`
`IPR2021-00488, Paper No. 12, at 11-12 (finding factor weighed in favor of
`
`1
`
`
`
`
`discretionary denial and noting “Because the trial in the District Court proceeding is
`
`IPR2021-00956
`PATENT NO. 9,240,009
`
`scheduled more than six months before the due date for the Final Written Decision,
`
`even if there are some delays, the District Court proceeding is likely to result in a
`
`trial verdict in advance of our statutory due date.”).
`
`III. THE PARTIES HAVE INVESTED HEAVILY IN THE
`DISTRICT COURT PROCEEDINGS AND WILL HAVE
`INVESTED EVEN MORE BY THE INSTITUTION DECISION
`Google argues that this factor weighs against denial because, in Google’s
`
`
`
`view, little work will have been completed relating to validity. Reply at 2-4. Google
`
`is wrong.
`
`
`
`The parties have already invested heavily in validity issues. As discussed in
`
`the POPR, the parties have invested heavily in claim construction issues and
`
`discovery, including discovery related to validity. POPR at 21-23.
`
`
`
`Moreover, by the time of the Board’s Institution Decision, the parties and the
`
`District Court will have invested far more. Fact discovery will be complete, and
`
`expert discovery will be nearly so. Id. The parties will have served both opening
`
`and rebuttal expert reports on validity and infringement and will be in the midst of
`
`expert depositions and preparing dispositive motions. Id. In similar circumstances,
`
`the Board has held that this factor strongly favors denying institution. E.g., Cisco
`
`Sys., Inc. v. Estech Sys., Inc., IPR2021-00333, Paper No. 12 at 10-11 (P.T.A.B. Jul.
`
`7, 2021).
`
`2
`
`
`
`Google’s cited cases dealt with far different situations. In Huawei Techs. Co.,
`
`IPR2021-00956
`PATENT NO. 9,240,009
`
`
`
`
`v. WSOU Invs., LLC, the Board found this factor to weigh in favor of institution
`
`when fact discovery and expert discovery would not be complete until four and six
`
`months after the institution decision, respectively. IPR2021-00229, Paper 10 at 11-
`
`13 (P.T.A.B. Jul. 1, 2021). Similarly, in Apple, Inc. v. Koss Corp., at the time of the
`
`institution decision, “fact discovery ha[d] just begun, final infringement and
`
`invalidity contentions are not yet due, and expert discovery is months away.”
`
`IPR2021-00381, Paper No. 15 at 16-17 (P.T.A.B. Jul. 2, 2021). Finally, in Sand, the
`
`Board again noted that “fact discovery is still ongoing, expert reports are not yet due,
`
`and substantive motion practice is yet to come.” Sand Revolution II, LLC v. Cont’l
`
`Intermodal Group-Trucking LLC, IPR2019-001393, Paper No. 24 at 10-11
`
`(P.T.A.B. Jun. 16, 2020). Even then, the Board did not find that this factor weighed
`
`against denying institution. Id. at 11.
`
`
`
`Google also suggests that it was diligent in filing its Petition roughly nine
`
`months after it was served with the complaint in the District Court Litigation because
`
`it filed the Petition one week after being served with RFCyber’s infringement
`
`contentions. Reply at 4. But the Petition challenges every claim of the ’009 Patent;
`
`this is not a situation where Google carefully chose which claims to challenge based
`
`on infringement contentions. Google’s alleged diligence is thus of little weight.
`
`
`
`Accordingly, this factor weighs strongly in favor of denying institution.
`
`3
`
`
`
`
`IV. GOOGLE’S BELATED STIPULATION DOES NOT JUSTIFY
`INSTITUTION
`Google submitted a stipulation with its Reply. Google does not explain why
`
`
`
`IPR2021-00956
`PATENT NO. 9,240,009
`
`it did not provide a stipulation with its Petition. In any event, Google’s stipulation
`
`does not justify ignoring the Fintiv factors and instituting trial on this Petition.
`
`
`
`As discussed above, all other factors weigh in favor of denying institution. In
`
`similar circumstances, where trial is long before the Final Written Decision date and
`
`the parties will have completed or nearly completed discovery at institution, the
`
`Board has denied institution. E.g., Cisco, IPR2021-00333, Paper No. 12 at 12-13.
`
`Accordingly, the Board should disregard Google’s stipulation and deny institution.
`
`V. ALL OTHER FACTORS FAVOR DENYING INSTITUTION
`
`Google makes no argument in its Reply as to Fintiv Factor 1 (evidence that a
`
`stay will be granted) and Factor 5 (that Petitioner is the Defendant in the District
`
`Court Litigation). Accordingly, as explained in the POPR, these factors weigh in
`
`favor of denying institution.
`
`
`
`Factor 6 (other circumstances) also weighs in favor of denying institution.
`
`Google argues that the public is best served by determining validity as soon as
`
`possible because “RFCyber separately asserted the same patent against three
`
`additional defendants over the course of a year.” Reply at 5. Other proceedings are
`
`not relevant to the Fintiv factors, which consider “all relevant circumstances of the
`
`4
`
`
`
`
`case.” Apple Inc. v. Fintiv, Inc., IPR2019-00019, Paper No. 11 at 5 (P.T.A.B. Mar.
`
`IPR2021-00956
`PATENT NO. 9,240,009
`
`20, 2020) (precedential) (emphasis added). Unrelated proceedings against other
`
`defendants are not circumstances of this case.
`
`
`
`In any event, the quickest path to a determination of validity is through the
`
`District Court trial, which will conclude eight months before the Final Written
`
`Decision date in this proceeding. Google does not explain how the Board’s
`
`November 2022 decision would be more efficient than the District Court’s March
`
`2022 decision on the same issues.
`
`
`
`Google does not address the POPR’s discussion of this factor. POPR at 24-
`
`25. Accordingly, Factor 6 weighs in favor of denying institution.
`
`
`VI. CONCLUSION
`
`For the reasons discussed above and in the POPR, the Board should deny
`
`institution.
`
`
`
`
`Dated: September 22, 2021
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/Vincent J. Rubino, III /
`Vincent J. Rubino, III (Reg. No. 68,594)
`
`5
`
`
`
`
`
`CERTIFICATE OF SERVICE
`A copy of RFCYBER CORP.’S SURREPLY has been served on Petitioner’s
`
`IPR2021-00956
`PATENT NO. 9,240,009
`
`counsel of record as follows:
`
`Andrew S. Ehmke
`Email: andy.ehmke.ipr@haynesboone.com
`Michael S. Parsons
`Email: michael.parsons.ipr@haynesboone.com
`Vinu Raj
`Email: vinu.raj.ipr@haynesboone.com
`Scott T. Jarratt
`Email: scott.jarratt.ipr@haynesboone.com
`Jonathan R. Bowser
`Email: jon.bowser.ipr@haynesboone.com
`Stephanie Sivinski
`Email: stephanie.sivinski.ipr@haynesboone.com
`HAYNES AND BOONE, LLP
`2323 Victory Avenue, Suite 700
`Dallas, Texas 75219
`
`Attorneys for Google LLC
`
`
`September 22, 2021
`
`
`
`By:
`
`/Vincent J. Rubino, III /
`Vincent J. Rubino, III (Reg. No. 68,594)
`FABRICANT LLP
`411 Theodore Fremd Avenue, Suite 206 South
`Rye, New York 10580
`Tel. 212-257-5797
`Fax. 212-257-5796
`
`
`
`
`
`
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