`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`
`TRILLER, INC.
`Petitioner
`
`v.
`
`TIKTOK PTE. LTD.
`Patent Owner
`
`
`
`Case No. IPR2022-00179
`U.S. Patent No. 9,648,132
`Issue Date: May 9, 2017
`
`Title: Method Of Enabling Digital Music Content To Be Downloaded To And
`Used On a Portable Wireless Computing Device
`
`
`
`
`
`PETITIONER’S REPLY IN FURTHER SUPPORT OF MOTION
`TO SUBMIT SUPPLEMENTAL INFORMATION
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`I.
`
`Patent Owner’s Arguments With Respect To The Supplemental
`Declaration As A Whole Should Be Rejected
`
`With respect to the declaration as a whole, Patent Owner first argues that
`
`“there is currently no paper of record that cites to Dr. Shamos’s supplemental
`
`declaration,” that “[i]t is therefore unclear how Triller plans to rely on this
`
`additional testimony,” and that this is “unduly prejudicial.” (Opp. 6, 13.) But there
`
`will never be a paper of record that cites to supplemental information when the
`
`Board is deciding a motion like this; that argument would preclude the filing of
`
`any supplemental information. In any event, it is abundantly apparent how Triller
`
`plans to rely on the declaration because it identifies the issues and then addresses
`
`them. Indeed, Patent Owner’s section-by-section responses to the declaration show
`
`that Patent Owner understands how Triller plans to rely on the declaration.
`
`Patent Owner also argues that it is prejudiced “by the limited period of mere
`
`weeks between potential granting of Triller’s motion and Due Date 1,” stating that
`
`at least “about a week” is needed between Dr. Shamos’s deposition and Patent
`
`Owner’s Response. (Opp. 6.) But Petitioner timely asked for authorization to file
`
`this motion, Patent Owner has had Dr. Shamos’s supplemental declaration since
`
`July 1, Dr. Shamos’s deposition is currently scheduled for August 1, and Petitioner
`
`recently stipulated to extend the time for submitting Patent Owner’s Response to
`
`August 12 (Paper No. 13), so this is not a reason to deny the motion.
`
`Patent Owner also argues that granting the motion would not lead to “a
`
`1
`
`
`
`
`
`minimum number of depositions.” (Opp. 7.) It is true that there may well be two
`
`depositions of Dr. Shamos, but the point is that there are unlikely to be three
`
`depositions. The observation of “a minimum number of depositions” in Pacific
`
`Market is applicable here for the same reasons it was applicable there because the
`
`declaration is being submitted before Dr. Shamos’s first deposition, not after it.
`
`II.
`
`Patent Owner’s Section-by-Section Arguments Should Be Rejected
`
`A. Paragraphs 5-11. With respect to paragraphs 5-11 of the declaration,
`
`Patent Owner argues that supplemental information is “not a mechanism to
`
`challenge the Board’s claim construction.” (Opp. 7-8.) But the case it cites in
`
`support of that argument was one in which the Board’s Institution Decision
`
`“disagreed with the expert testimony on certain claim constructions.” Rackspace
`
`US, Inc. v. PersonalWeb Techs., LLC, IPR2014-00057, Paper 16, at 6 (PTAB Apr.
`
`30, 2014). In other words, the Petitioner had anticipated the issue and addressed it
`
`in the petition and accompanying expert declarations. Here, Patent Owner raised a
`
`claim construction issue in its POPR that Petitioner did not anticipate.
`
`Patent Owner argues that Petitioner should have anticipated the issue and is
`
`using a “wait-and-see” approach or deliberately using “a two-stage process.” (Opp.
`
`8-9, 3.) Incorrect. As explained in Petitioner’s motion, Petitioner did not anticipate
`
`and should not have been expected to anticipate that Patent Owner would argue
`
`that the definition for “Software Application” (capitalized) would be applied to
`
`2
`
`
`
`
`
`“software application” (lower case). (Mot. 4-5.) Patent Owner suggests that
`
`Petitioner will be able to address this claim construction issue in its Reply (Opp. 2,
`
`4, 13) and that is true, but Patent Owner has not conceded that Petitioner will be
`
`able to make in its Reply an argument based on the contingent testimony in
`
`paragraph 11 of the declaration (i.e., that even if Patent Owner’s construction is
`
`correct, the claims are still obvious based on the statutory grounds identified in the
`
`petition). Thus, Petitioner asks to submit the contingent testimony now.
`
`Notably, the opposition does not dispute the proposition repeatedly
`
`advanced in Petitioner’s motion that “allowing this testimony does not change the
`
`statutory grounds presented in the petition.” (Mot. 5, 7, 8.) Nor does the opposition
`
`dispute the oft-stated proposition that allowing the Supplemental Declaration now
`
`will allow Patent Owner to have “the opportunity to provide testimony from its
`
`own expert witness in response to [Dr. Shamos’s] testimony as part of its Patent
`
`Owner Response.” (Mot. 6, 7, 9, 13, 15.) Thus, it appears that Patent Owner’s
`
`reason for opposing this motion is to attempt to preclude Petitioner from ever
`
`making the contingent obviousness argument. The outcome of this proceeding
`
`should not turn on whether Petitioner was able to anticipate in its petition every
`
`argument Patent Owner might make. Petitioner should be able to submit the
`
`contingent testimony now in the absence of any confirmation that it will be
`
`allowed with the Reply. The Board must allow “rebuttal evidence…as may be
`
`3
`
`
`
`
`
`required for a full and true disclosure of the facts.” 5 U.S.C. § 556(d).
`
`B. Paragraphs 12-13. With respect to paragraphs 12-13, Patent Owner
`
`argues that Petitioner “should have anticipated” that Patent Owner would argue
`
`that the claimed “software application” could not be a browser but must be a
`
`dedicated application. (Opp. 10.) But for all the reasons that argument was rejected
`
`in the Institution Decision, it should not have been anticipated. Once again, it
`
`appears that Patent Owner’s motivation is to preclude Petitioner from ever making
`
`a contingent argument (i.e., that even if the “software application” must be a
`
`dedicated application, there is still obviousness based on the statutory grounds
`
`identified in the petition). For all the reasons the contingent testimony in paragraph
`
`11 should be allowed, the contingent testimony in paragraph 13 should be allowed.
`
`C. Paragraphs 18-19. With respect to paragraphs 18-19, Patent Owner
`
`argues that “Triller cannot possibly show ‘why the supplemental information could
`
`not have been filed with the Petition’” because Petitioner asserted inherency in the
`
`Petition. (Opp. 12.) But the relevant inquiry is not whether the supplemental
`
`information “could not have been filed” but whether it “reasonably could not have
`
`been submitted” or whether Petitioner “should not have been expected to
`
`anticipate” Patent Owner’s arguments. Med-El Elektromedizinische Gerate v.
`
`Advanced Bionics AG, IPR2020-00190, Paper 24 at 5 (PTAB Aug. 10, 2020);
`
`Redline, 811 F.3d at 443. In any event, Petitioner could not have filed this
`
`4
`
`
`
`
`
`supplemental testimony with the petition because it did not anticipate (and should
`
`not have been expected to anticipate) that Patent Owner would argue that the
`
`“cellular telephone” in Abrams might have wired connections that could be used
`
`for Abrams’ functions. Once again, it appears that Patent Owner’s motivation is to
`
`preclude Petitioner from making a contingent argument (i.e., that even if there is
`
`no inherency, there is still obviousness based on the statutory grounds identified in
`
`the petition). Indeed, Patent Owner expressly states that this is “an impermissible
`
`changing of the evidence and arguments.” (Opp. 12-13; see also id. 9, 11.) It is not.
`
`It is only a contingent response to an unanticipated argument to which Petitioner
`
`should be able to respond. 5 U.S.C. § 556(d). The statutory grounds remain the
`
`same based on the same art and a POSITA’s knowledge. For all the reasons
`
`contingent testimony should be allowed, so should the testimony in paragraph 19.
`
`D. Paragraphs 14-16, 20-25, 26-75. With respect to declaration paragraphs
`
`14-16 and 26-75 (“Category 3”), Patent Owner does not dispute that it has the
`
`burden of production to point to disclosure of claimed subject matter in a priority
`
`document. Technology Licensing, 545 F.3d at 1326-29. Petitioner will be entitled
`
`to respond with its Reply to the passages which the Patent Owner Response cites to
`
`meet that burden. Petitioner will also be able to provide the testimony found in
`
`paragraphs 20-25 (“Category 2”) in connection with its Reply. In a search for truth,
`
`Patent Owner’s attempt to prevent Petitioner from doing so now is telling.
`
`5
`
`
`
`
`
`Dated: July 14, 2022
`
`
`
`
`
`Respectfully submitted.
`
`By /Chad Nydegger/
` Chad E. Nydegger, Reg. No. 61,020
` Brian N. Platt, Reg. No. 62,249
` David R. Todd, Reg. No. 41,348
` WORKMAN NYDEGGER
`60 East South Temple, Suite 1000
`Salt Lake City, UT 84111
`Telephone: 801-533-9800
`Facsimile: 801-328-1707
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Attorneys for Petitioner Triller, Inc.
`
`6
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6, I hereby certify that on this 14th day of July,
`
`2022, I caused the foregoing Petitioner’s Reply In Further Support of Its
`
`Motion to Submit Supplemental Information to be served by electronic mail on
`
`the following counsel of record for Patent Owner:
`
`W. Karl Renner, Reg. No. 41,265 (email: renner@fr.com)
`Dan Smith, Reg. No. 71,278 (email: dsmith@fr.com)
`Patrick J. Bisenius, Reg. No. 63,893 (email: bisenius@fr.com)
`Craig A. Deutsch, Reg. No. 69,264 (email: deutsch@fr.com)
`Kim H. Leung, Reg. No. 64,399 (email: leung@fr.com)
`FISH & RICHARDSON P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 202-783-5070
`Fax: 877-769-7945
`Additional Email Addresses: IPR50048-0015IP1@fr.com
`PTABInbound@fr.com
`
`/Chad Nydegger/
`Chad E. Nydegger, Reg. No. 61,020
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`