IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`
`TRILLER, INC.
`Petitioner
`
`v.
`
`TIKTOK PTE. LTD.
`Patent Owner
`
`
`
`Case No. IPR2022-00180
`U.S. Patent No. 9,992,322
`Issue Date: June 5, 2018
`
`Title: Method Of Enabling Digital Music Content To Be Downloaded To And
`Used On a Portable Wireless Computing Device
`
`
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`PETITIONER’S REPLY IN FURTHER SUPPORT OF MOTION
`TO SUBMIT SUPPLEMENTAL INFORMATION
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`
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`
`TRILLER, INC.
`Petitioner
`
`v.
`
`TIKTOK PTE. LTD.
`Patent Owner
`
`
`
`Case No. IPR2022-00180
`U.S. Patent No. 9,992,322
`Issue Date: June 5, 2018
`
`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
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`
`
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`
`
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`
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`
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`I.
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`Patent Owner’s Arguments With Respect To The Supplemental
`Declaration As A Whole Should Be Rejected
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`With respect to the declaration as a whole, Patent Owner first argues that
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`“there is currently no paper of record that cites to Dr. Shamos’s supplemental
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`declaration,” that “[i]t is therefore unclear how Triller plans to rely on this
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`additional testimony,” and that this is “unduly prejudicial.” (Opp. 6, 13.) But there
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`will never be a paper of record that cites to supplemental information when the
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`Board is deciding a motion like this; that argument would preclude the filing of
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`any supplemental information. In any event, it is abundantly apparent how Triller
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`plans to rely on the declaration because it identifies the issues and then addresses
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`them. Indeed, Patent Owner’s section-by-section responses to the declaration show
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`that Patent Owner understands how Triller plans to rely on the declaration.
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`Patent Owner also argues that it is prejudiced “by the limited period of mere
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`weeks between potential granting of Triller’s motion and Due Date 1,” stating that
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`at least “about a week” is needed between Dr. Shamos’s deposition and Patent
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`Owner’s Response. (Opp. 6.) But Petitioner timely asked for authorization to file
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`this motion, Patent Owner has had Dr. Shamos’s supplemental declaration since
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`July 1, Dr. Shamos’s deposition is currently scheduled for August 1, and Petitioner
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`recently stipulated to extend the time for submitting Patent Owner’s Response to
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`August 12 (Paper No. 13), so this is not a reason to deny the motion.
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`Patent Owner also argues that granting the motion would not lead to “a
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`1
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`
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`
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`minimum number of depositions.” (Opp. 7.) It is true that there may well be two
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`depositions of Dr. Shamos, but the point is that there are unlikely to be three
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`depositions. The observation of “a minimum number of depositions” in Pacific
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`Market is applicable here for the same reasons it was applicable there because the
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`declaration is being submitted before Dr. Shamos’s first deposition, not after it.
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`II.
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`Patent Owner’s Section-by-Section Arguments Should Be Rejected
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`A. Paragraphs 5-11. With respect to paragraphs 5-11 of the declaration,
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`Patent Owner argues that supplemental information is “not a mechanism to
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`challenge the Board’s claim construction.” (Opp. 7-8.) But the case it cites in
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`support of that argument was one in which the Board’s Institution Decision
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`“disagreed with the expert testimony on certain claim constructions.” Rackspace
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`US, Inc. v. PersonalWeb Techs., LLC, IPR2014-00057, Paper 16, at 6 (PTAB Apr.
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`30, 2014). In other words, the Petitioner had anticipated the issue and addressed it
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`in the petition and accompanying expert declarations. Here, Patent Owner raised a
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`claim construction issue in its POPR that Petitioner did not anticipate.
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`Patent Owner argues that Petitioner should have anticipated the issue and is
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`using a “wait-and-see” approach or deliberately using “a two-stage process.” (Opp.
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`8-9, 3.) Incorrect. As explained in Petitioner’s motion, Petitioner did not anticipate
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`and should not have been expected to anticipate that Patent Owner would argue
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`that the definition for “Software Application” (capitalized) would be applied to
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`2
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`
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`
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`“software application” (lower case). (Mot. 4-5.) Patent Owner suggests that
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`Petitioner will be able to address this claim construction issue in its Reply (Opp. 2,
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`4, 13) and that is true, but Patent Owner has not conceded that Petitioner will be
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`able to make in its Reply an argument based on the contingent testimony in
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`paragraph 11 of the declaration (i.e., that even if Patent Owner’s construction is
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`correct, the claims are still obvious based on the statutory grounds identified in the
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`petition). Thus, Petitioner asks to submit the contingent testimony now.
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`Notably, the opposition does not dispute the proposition repeatedly
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`advanced in Petitioner’s motion that “allowing this testimony does not change the
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`statutory grounds presented in the petition.” (Mot. 5, 7, 8.) Nor does the opposition
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`dispute the oft-stated proposition that allowing the Supplemental Declaration now
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`will allow Patent Owner to have “the opportunity to provide testimony from its
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`own expert witness in response to [Dr. Shamos’s] testimony as part of its Patent
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`Owner Response.” (Mot. 6, 7, 9, 13, 15.) Thus, it appears that Patent Owner’s
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`reason for opposing this motion is to attempt to preclude Petitioner from ever
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`making the contingent obviousness argument. The outcome of this proceeding
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`should not turn on whether Petitioner was able to anticipate in its petition every
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`argument Patent Owner might make. Petitioner should be able to submit the
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`contingent testimony now in the absence of any confirmation that it will be
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`allowed with the Reply. The Board must allow “rebuttal evidence…as may be
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`3
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`
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`
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`required for a full and true disclosure of the facts.” 5 U.S.C. § 556(d).
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`B. Paragraphs 12-13. With respect to paragraphs 12-13, Patent Owner
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`argues that Petitioner “should have anticipated” that Patent Owner would argue
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`that the claimed “software application” could not be a browser but must be a
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`dedicated application. (Opp. 10.) But for all the reasons that argument was rejected
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`in the Institution Decision, it should not have been anticipated. Once again, it
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`appears that Patent Owner’s motivation is to preclude Petitioner from ever making
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`a contingent argument (i.e., that even if the “software application” must be a
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`dedicated application, there is still obviousness based on the statutory grounds
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`identified in the petition). For all the reasons the contingent testimony in paragraph
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`11 should be allowed, the contingent testimony in paragraph 13 should be allowed.
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`C. Paragraphs 18-19. With respect to paragraphs 18-19, Patent Owner
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`argues that “Triller cannot possibly show ‘why the supplemental information could
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`not have been filed with the Petition’” because Petitioner asserted inherency in the
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`Petition. (Opp. 12.) But the relevant inquiry is not whether the supplemental
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`information “could not have been filed” but whether it “reasonably could not have
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`been submitted” or whether Petitioner “should not have been expected to
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`anticipate” Patent Owner’s arguments. Med-El Elektromedizinische Gerate v.
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`Advanced Bionics AG, IPR2020-00190, Paper 24 at 5 (PTAB Aug. 10, 2020);
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`Redline, 811 F.3d at 443. In any event, Petitioner could not have filed this
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`4
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`
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`supplemental testimony with the petition because it did not anticipate (and should
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`not have been expected to anticipate) that Patent Owner would argue that the
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`“cellular telephone” in Abrams might have wired connections that could be used
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`for Abrams’ functions. Once again, it appears that Patent Owner’s motivation is to
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`preclude Petitioner from making a contingent argument (i.e., that even if there is
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`no inherency, there is still obviousness based on the statutory grounds identified in
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`the petition). Indeed, Patent Owner expressly states that this is “an impermissible
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`changing of the evidence and arguments.” (Opp. 12-13; see also id. 9, 11.) It is not.
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`It is only a contingent response to an unanticipated argument to which Petitioner
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`should be able to respond. 5 U.S.C. § 556(d). The statutory grounds remain the
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`same based on the same art and a POSITA’s knowledge. For all the reasons
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`contingent testimony should be allowed, so should the testimony in paragraph 19.
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`D. Paragraphs 14-16, 20-25, 26-75. With respect to declaration paragraphs
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`14-16 and 26-75 (“Category 3”), Patent Owner does not dispute that it has the
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`burden of production to point to disclosure of claimed subject matter in a priority
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`document. Technology Licensing, 545 F.3d at 1326-29. Petitioner will be entitled
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`to respond with its Reply to the passages which the Patent Owner Response cites to
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`meet that burden. Petitioner will also be able to provide the testimony found in
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`paragraphs 20-25 (“Category 2”) in connection with its Reply. In a search for truth,
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`Patent Owner’s attempt to prevent Petitioner from doing so now is telling.
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`5
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`
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`Dated: July 14, 2022
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`
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`
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`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
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`Attorneys for Petitioner Triller, Inc.
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`6
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6, I hereby certify that on this 14th day of July,
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`2022, I caused the foregoing Petitioner’s Reply In Further Support of Its
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`Motion to Submit Supplemental Information to be served by electronic mail on
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`the following counsel of record for Patent Owner:
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`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: IPR50048-0016IP1@fr.com
`PTABInbound@fr.com
`
`/Chad Nydegger/
`Chad E. Nydegger, Reg. No. 61,020
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