IPR2021-01459
`U.S. Patent 8,489,599
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`TWITTER, INC.,
`Petitioner
`
`v.
`PALO ALTO RESEARCH CENTER INC.,
`Patent Owner
`______________________
`Case IPR2021-01459
`Patent 8,489,599
`______________________
`
`PETITIONER’S EXPLANATION OF PARALLEL PETITIONS
`
`
`
`
`
`
`
`
`U.S. Patent 8,489,599
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`TWITTER, INC.,
`Petitioner
`
`v.
`PALO ALTO RESEARCH CENTER INC.,
`Patent Owner
`______________________
`Case IPR2021-01459
`Patent 8,489,599
`______________________
`
`PETITIONER’S EXPLANATION OF PARALLEL PETITIONS
`
`
`
`
`
`
`
`
`
`IPR2021-01459
`U.S. Patent 8,489,599
`
`I.
`
`EXPLANATION
`Petitioner is requesting inter partes review challenging claims 1, 4, 6, 7, 9-
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`12, 15, 17-19, 22, 24, and 25 of U.S Patent No. 8,489,599 in two concurrently-filed
`
`inter partes review petitions (IPR2021-01458 and IPR2021-01459). Pursuant to
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`the July 2019 Update to the USPTO Trial Practice Guide, Petitioner submits this
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`explanation of the differences between the petitions and ranking of the petitions for
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`the Board’s consideration.
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`The Trial Practice Guide recognizes that “there may be circumstances in
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`which more than one petition may be necessary.” (USPTO Trial Practice Guide
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`(November 2019) p. 59.) And the Board has found challenges involving a “large
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`number of claims” as well as “limitations using means-plus-function claim lan-
`
`guage” among the situations justifying parallel petitions. DJI Europe B.V. v.
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`Daedalus Blue LLC, IPR2020-01475, Pap.14 at 9-10 (Feb. 12, 2021). In the dis-
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`trict court litigation related to this proceeding, Patent Owner has asserted claims 1,
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`4, 6, 7, 9-12, 15, 17-19, 22, 24 and 25—precisely the claims covered across Twit-
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`ter’s two ’599 petitions.
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`The first petition (IPR2021-01458) challenges claims 1, 4, 6, 7, 9-12, 15, 17-
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`18, which are all method or computer readable storage medium claims, and the
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`claims challenged in that petition include two independent claims, claims 1 and 12.
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`1
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`
`
`IPR2021-01459
`U.S. Patent 8,489,599
`The claims in the first Petition are lengthy: independent claims 1 and 12 each con-
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`tain nine limitations, and some dependent claims add multiple limitations, such as
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`claims 2 and 13, which each contain an additional six limitations.
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`The second petition (IPR2021-01459) challenges claims 19, 22, 24, and 25,
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`which are apparatus claims. Claim 19 may be argued to contain up to three means-
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`plus-function (“mechanism configured to”) limitations, and the other three claims
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`depend from claim 19. To the extent it is determined that any of these “mechanism
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`configured to” limitations are means-plus-function, they are indefinite because the
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`specification does not disclose the corresponding structure, and the IPR on those
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`claims (the second petition, IPR2021-1459) should not be instituted. Patent Owner
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`has not yet asserted that these claims are written in means-plus-function form, and
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`Petitioner has thus addressed these claims accordingly. However, if the Board
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`were to determine that these claims are, in fact, means-plus-function claims, they
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`would be indefinite, and this could deprive Petitioner of the opportunity to chal-
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`lenge the remaining litigated claims before the Board. Accordingly, Petitioner has
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`separated these claims into a stand-alone petition, and respectfully requests that the
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`Board accept Petitioner’s filing here of two petitions to address the risk it may be
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`determined that a petition including Claim 19 and its dependents cannot be insti-
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`tuted for this reason. Petitioner also requests a second petition due to the number
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`2
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`
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`IPR2021-01459
`U.S. Patent 8,489,599
`and length of the independent claims, especially claim 19. Comparison and rank-
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`ing per claim of the two petitions, which address different claims, is provided in
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`the following table:
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`
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`IPR2021-01458
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`IPR2021-01459
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`Claims Challenged
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`1, 4, 6, 7, 9-12, 15, 17-18 19, 22, 24, 25
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`Potential Means-Plus-
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`Function Limitations
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`Prior Art
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`Ranking
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`
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`N/A
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`“an input mechanism
`configured to”; “a receiv-
`ing mechanism config-
`ured to”; “a content de-
`livery mechanism config-
`ured to”
`PALLAS, Yau, and Kim PALLAS, Yau, and Kim
`
`#1
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`#2
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`These petitions are not cumulative challenges. Not only do they address dif-
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`ferent types of claims—namely method claims and computer-readable storage me-
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`dium claims in the first petition, and apparatus claims in the second petition—but
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`the second petition also includes claims that may be asserted to be means-plus-
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`function limitation, which (as discussed above) presents separate and distinct is-
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`sues pertaining to, among other things, claim construction. The rankings above re-
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`flect Petitioner’s request that the first Petition be given priority. To the extent both
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`are instituted, Petitioner is amenable to joining the two petitions to eliminate any
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`duplicative work that might be caused by having two petitions.
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`3
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`
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`IPR2021-01459
`U.S. Patent 8,489,599
`
`August 31, 2021
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`
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`Respectfully submitted:
`
`/J. Steven Baughman/
`J. Steven Baughman
`
`
`
`4
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`
`
`IPR2021-01459
`U.S. Patent 8,489,599
`
`CERTIFICATE OF SERVICE
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`Pursuant to PO’s agreement to accept electronic service, the undersigned
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`hereby certifies that a copy of the following document has been served in its en-
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`tirety on the patent owner as provided in 37 CFR §42.105:
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`PETITIONER’S EXPLANATION OF PARALLEL PETITIONS
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`The copy has been served on August 31, 2021 by causing the aforemen-
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`tioned document to be electronically mailed to the following attorneys of record
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`for patent owner listed below:
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`Litigation Address:
`
`Correspondence Address: PARK, VAUGHAN, FLEMING &
`DOWLER LLP
`A. Richard Park
`Richard@parklegal.com
`Daniel E. Vaughn
`dan@parklegal.com
`Hoyt A. Fleming
`hoyt@parklegal.com
`
`By Electronic Mail
`MCKOOL SMITH
`James Quigley
`jquigley@McKoolSmith.com
`Ashley Moore
`amoore@McKoolSmith.com
`Alexandra Easley
`aeasley@mckoolsmith.com
`
`PARC_Twitter-
`IPRs@McKoolSmith.com
`
`By Electronic Mail
`
`i
`
`
`
`IPR2021-01459
`U.S. Patent 8,489,599
`PAUL, WEISS, RIFKIND, WHARTON &
`GARRISON LLP
`/Sayem Osman/
`Sayem Osman
`
`Dated: August 31, 2021
`
`
`
`
`ii
`
`
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