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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`CISCO SYSTEMS, INC.,
`APPLE INC.,
`HEWLETT PACKARD ENTERPRISES CO.,
`ARUBA NETWORKS, LLC,
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`Petitioners
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`
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`v.
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`
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`BILLJCO LLC,
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`Patent Owner
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`
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`CASE: IPR2022-00426
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`U.S. PATENT NO. 8,761,804
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`PURSUANT TO 35 U.S.C. § 313 AND 37 C.F.R. § 42.107(a)
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`39963738.1
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`TABLE OF CONTENTS
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`PAGE
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`SECTION 1. INTRODUCTION ............................................................................... 1
`SECTION 2. ALLEGED GROUNDS OF UNPATENTABILITY .......................... 2
`SECTION 3. OVERVIEW OF THE ‘804 PATENT ................................................. 3
`SECTION 4. GROUND 1: RIBAUDO AND LORINCZ FAIL TO RENDER
`OBVIOUS THE CHALLENGED CLAIMS ............................................................. 5
`A.
`[1.9]Neither Himmelstein nor Myr teach or suggest transmitting
`“reference information for further describing the location
`information associated with the sending data processing system”.
` .............................................................................................................. 6
`SECTION 5. GROUND 2 DOES NOT AFFECT THE OTHER
`DEFICIENCIES IN THE PETITION. ....................................................................... 9
`SECTION 6. THE PETITION SHOULD BE DENIED UNDER § 314(A) ............. 9
`A.
`Fintiv Factor 1–Likelihood of Stay .................................................... 10
`B.
`Fintiv Factor 2–Trial Date Versus FWD Due Date ........................... 12
`C.
`Fintiv Factor 3–Investment in the Proceeding ................................... 14
`D.
`Fintiv Factor 4–Overlap of Issues ...................................................... 16
`E.
`Fintiv Factor 5–Identity of Parties ..................................................... 18
`F.
`Fintiv Factor 6–Other Circumstances ................................................ 19
`SECTION 7. CONCLUSION .................................................................................. 20
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`39963738.1
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`SECTION 1. INTRODUCTION
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`Petitioners have not met their burden in demonstrating that U.S. Patent No.
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`8,761,804 (“the ’804 Patent”) is more likely than not invalid, and, as such, institution
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`should be denied.
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`Petitioners’ contention that all claims of the ‘804 Patent are invalid as obvious
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`lacks merit. The Petition is facially defective in that it fails to demonstrate “a
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`reasonable likelihood that the Petitioners would prevail with respect to at least one
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`of the claims challenged in the petition” under 35 U.S.C. § 314(a).
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`Neither the Petition, nor the declaration submitted by Petitioners’ expert,
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`provide an articulated reasoning with a rational underpinning to support a legal
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`conclusion of obviousness. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)
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`(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The Petition lacks cogent
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`reasoning as to why a person of ordinary skill in the art would modify the cited
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`reference in the specific manner that is recited in each of the challenged claims.
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`Petitioners’ expert declaration (EX1004) merely repeats the attorney
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`arguments in the Petition.
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`In summary, the IPR Petition fails to show a reasonable likelihood that at least
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`one of the challenged claims of the ‘804 Patent is unpatentable.
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`Finally, in view of the pending litigation in the Western District of Texas, the
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`Board should exercise its discretion pursuant to 35 U.S.C. § 314(a) and deny review.
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`For all of these reasons, the Board should not institute inter partes review of
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`IPR2022-00426
`Patent No. 8,761,804
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`the ‘804 Patent and should deny the Petition in its entirety.
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`SECTION 2. ALLEGED GROUNDS OF UNPATENTABILITY
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`Petitioners allege the following grounds of unpatentability under 35 U.S.C. §
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`103 against independent claim 1 and dependent claims 10-12 of the ‘804 Patent. Pet.
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`at 3. All are deficient in meeting the challenged claims.1
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` Grounds Reference(s)
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`Challenged Claims
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`1. § 103
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`Himmelstein2 and Myr3
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`1 and 10-12
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`2. § 103
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`Himmelstein, Myr, and Evans4
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`1 and 10-12
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`1 Petitioners assert the claim terms in the Challenged Claims do not require
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`construction for the purpose of evaluating the prior art in the Petition. Pet. at 8-9. If
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`IPR is instituted, Patent Owner will provide appropriate constructions of terms of
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`the ’804 Patent in its Patent Owner Response, and expressly reserves the right to do
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`so.
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`2 EX1005.
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`3 EX1006.
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`4 EX1008.
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`SECTION 3. OVERVIEW OF THE ‘804 PATENT
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`IPR2022-00426
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`The ‘804 Patent is titled “System and Method for Location Based Exchanges
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`of Data Facilitating Distributed Locational Applications.” EX1001. The invention
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`“relates generally to location based services for mobile data processing systems, and
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`more particularly to location based exchanges of data between distributed mobile
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`data processing systems for locational applications.” Id. at 1:20-24. The Patent
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`further discloses, “A common connected service is not required for location based
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`functionality and features. Location based exchanges of data between distributed
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`mobile data processing systems enable location based features and functionality in
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`a peer to peer manner.” Id. at 1:24-28.
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`The ‘804 Patent describes the need for a method for “enabling users to get
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`location dependent features and functionality through having their mobile locations
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`known, regardless of whether or not their MS is equipped for being located. Also,
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`new and modem location dependent features and functionality can be provided to a
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`MS unencumbered by a connected service.” EX1001 at 3:44-49. The patent
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`discloses new terminology, system and, method referred to as Location Based
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`Exchange (LBX) which “provide server-free and server-less location dependent
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`features and functionality.” EX1001 at 4:6-8. The ‘804 Patent also discloses that “[i]t
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`is an advantage [] enabling useful distributed applications without the necessity of
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`having a service, and without the necessity of users and/or systems registering with
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`a service. MSs interact as peers in preferred embodiments, rather than as clients to a
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`common service (e.g. internet connected web service).” EX1001at 4:36-41.
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`Representative independent claim 1 of the ‘804 Patent (with relevant portions
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`italicized) recites:
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`1. A method by a sending data processing system, the method
`comprising:
`accessing, by the sending data processing system, identity
`information for describing an originator identity associated with the
`sending data processing system;
`accessing, by the sending data processing system, application
`information for an application in use at the sending data processing
`system;
`accessing, by the sending data processing system, location
`information associated with the sending data processing system;
`accessing, by the sending data processing system, reference
`information for further describing the location information associated
`with the sending data processing system;
`preparing, by the sending data processing system, a broadcast
`unidirectional wireless data record including:
`the identity information for describing the originator
`identity associated with the sending data processing system,
`the application information for the application in use at the
`sending data processing system,
`the location information associated with the sending data
`processing system, and
`the reference information for further describing the
`location information associated with the sending data processing
`system;
`the sending data processing system, a
`maintaining, by
`configuration for when to perform beaconing of the broadcast
`unidirectional wireless data record; and
`transmitting, by the sending data processing system, the
`broadcast unidirectional wireless data record for receipt by a plurality
`of receiving mobile data processing systems in a wireless vicinity of the
`sending data processing system wherein the broadcast unidirectional
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`wireless data record is beaconed by the sending data processing system
`in accordance with the configuration for when to perform beaconing,
`and wherein the broadcast unidirectional wireless data record includes
`at least:
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`the identity information for describing the originator
`identity associated with the sending data processing system
`wherein the identity information is for an alert determined by
`each receiving mobile data processing system of the plurality of
`receiving mobile data processing systems that the each receiving
`mobile data processing system is in the wireless vicinity of the
`sending data processing system,
`the application information for the application in use at the
`sending data processing system,
`the location information associated with the sending data
`processing system to be used by the each receiving mobile data
`processing system for determining their own location relative to
`the location information, and
`the reference information for further describing the
`location information associated with the sending data processing
`system for describing to the each receiving mobile data
`processing system useful information associated with the
`sending data processing system.
`SECTION 4. GROUND 1: RIBAUDO AND LORINCZ FAIL TO RENDER
`OBVIOUS THE CHALLENGED CLAIMS
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`The Petition asserts in Ground 1 that Himmelstein and Myr render obvious
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`each Challenged Claim. Pet. at 19-59. The Petition fails to demonstrate
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`Himmelstein’s disclosure of multiple elements recited by independent claim 1 of the
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`‘804 Patent. Nor have Petitioners demonstrated that it would have been obvious to a
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`POSITA to combine Himmelstein with Myr.
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`As discussed below, Ribaudo does not disclose the following elements recited
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`in the independent claims of the ‘804 Patent:
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` [1.9] “the reference
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`information for further describing
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`the
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`location
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`information associated with the sending data processing system;”
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` [1.11] “wherein the broadcast unidirectional wireless data record is beaconed
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`by the sending data processing system in accordance with the configuration
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`for when to perform beaconing”
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`A.
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`[1.9]Neither Himmelstein nor Myr teach or suggest transmitting
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`“reference information for further describing the location information
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`associated with the sending data processing system”. Petitioners argue at
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`page 32 that:
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`the ’804 Patent describes location reference information field 1100f
`when describing its Whereabouts Data Record (WDR) 1100. EX1001,
`60:65-67:45; EX1004, ¶77. The ’804 Patent further states with
`reference to location reference info field 1100f that “MS heading,
`yaw, pitch and roll, or accelerometer values are maintained therein.”
`See, e.g., EX1001, 61:19-21. Accordingly, the ’804 Patent teaches
`that the claimed “reference information for further describing the
`location information associated with the sending data processing
`system” may comprise heading or accelerometer values. EX1004,
`¶77.
`However, Petitioners’ attempted gloss ignores the actual words of the claim,
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`namely, that the “reference information” is “for further describing the location
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`information associated with the sending data processing system”.
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`It is axiomatic that, “The written description part of the specification itself
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`IPR2022-00426
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`does not delimit the right to exclude. That is the function and purpose of claims.”
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`Markman v. Westview Instruments, Inc., 52 F.3d 967, 979-80 (Fed. Cir. 1995)
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`(“Occasionally the disclosure will serve as a dictionary for terms appearing in the
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`claims”). See also, Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005),
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`citing Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111,
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`1115 (Fed. Cir. 2004) (“It is a bedrock principle of patent law that the claims of a
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`patent define the invention to which the patentee is entitled the right to exclude.”).
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`Thus, it is improper to consider the generic disclosure of “location reference
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`information field 1100f” from the specification, as the claims do not merely recite
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`“location reference information” (or “reference information”). Instead, the
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`independent claims recite specific “reference information for further describing the
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`location information associated with the sending data processing system”.
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`Once properly construed, it is clear that that acceleration (or deceleration)
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`value of Himmelstein cited by Petitioners is not “for further describing [...]
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`location information”. The acceleration of a vehicle in Himmelstein does not
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`“further describ[e]” its “location”. The vehicle is in the exact same location
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`whether it is increasing speed, slowing down, maintaining a steady speed (whether
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`zero or non-zero).
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`Petitioners do not cite Myr as teaching or suggesting reference information
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`and Myr is silent regarding this feature.
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`B.
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`[1.11] Neither Himmelstein nor Myr teach or suggest transmitting
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`“wherein the broadcast unidirectional wireless data record is beaconed
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`by the sending data processing system in accordance with the
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`configuration for when to perform beaconing,”.
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`The Petition admits that “Himmelstein does not specifically disclose that its
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`system has a configuration for periodically beaconing its signal.” Dkt. 0004 at 20.
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`See also, id. at 21 (“there is no discussion of whether the signal is continuously or
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`periodically beaconed out.”)
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`Instead, the Petition cites Myr as allegedly teaching this feature. However,
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`Myr does not disclose periodic beaconing. Neither cited ¶ [0069] nor associated
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`Fig. 1 provides any teaching or suggestion of periodic beaconing as recited in the
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`independent claims.
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`Cited ¶ [0092] is closer, but is best understood as describing the receipt of
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`data from “the cell phone network operator”, who “collect[s] and transmit[s] cell
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`phone position data” as discussed in the previous ¶ [0091].
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`SECTION 5. GROUND
`2 DOES NOT AFFECT THE OTHER
`DEFICIENCIES IN THE PETITION.
`As discussed above, neither Himmelstein nor Myr teach or suggest
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`IPR2022-00426
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`ransmitting “reference information for further describing the location information
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`associated with the sending data processing system”.
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`Petitioners do not rely on Evans as teaching this feature.
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`Accordingly, Ground 2 does not overcome this deficiency in the Petition set
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`forth above requiring denial of institution.
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`SECTION 6. THE PETITION SHOULD BE DENIED UNDER § 314(A)
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`Litigations involving the parties are pending in the Western District of Texas
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`(“WDTX”) -- BillJCo v. Apple Inc., Case No. 6:21-cv-00528-ADA (“WD
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`Litigation”) -- and in the Eastern District of Texas (“EDTX”) – BillJCo. v. Cisco
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`Systems, Inc., Case No. 2:21-cv-00181-JRG (“Lead ED Case”)5 and BillJCo v.
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`Hewlett Packard Enterprise Company, Aruba Networks, LLC, Case No. 2:21-cv-
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`00183-JRG (“Member ED Case”) (ED litigations, collectively “ED Litigation”) (all
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`three litigations collectively “Litigations”).6 Patent Owner contends that, in view of
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`the pending litigations, the Fintiv factors enumerated below weigh in favor of
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`5 The Cisco case was settled and dismissed on April 14, 2022.
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`6 Petitioners will be referred to hereafter as “Apple,” “Cisco,” “HPE,” and
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`“Aruba,” respectively.
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`discretionary denial. Apple Inc. v. Fintiv, IPR2020-00019, Paper 11, 5-6 (PTAB
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`IPR2022-00426
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`Mar. 20, 2020) (precedential).
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`Preliminarily, Petitioners asserted that motions to transfer to the Northern
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`District of California had been filed in both the Lead ED Case and in the Member
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`ED Case. Pet. at 66. Both motions were denied on February 16, 2002. EX2001.
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`Petitioners also asserted that a motion to transfer to the Northern District of
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`California had been filed in the WD Litigation (Pet. at 68); it was denied on February
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`24, 2022. EX2002 (Public Version).7 The relevant districts for consideration of the
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`Fintiv factors, thus, are the WDTX and the EDTX.
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`A. Fintiv Factor 1–Likelihood of Stay
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`Petitioners advised that no stay had been requested in the Litigations. Pet.
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`at 65. Petitioners contended that, since a motion to stay had not been filed in the
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`Litigations, the Board should not infer the outcome of such a motion. Pet. at 65.
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`Patent Owner counters that, if no motions to stay are filed, no stay can be likely so
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`this factor weighs strongly in favor of denial. Even if motions to stay in view of an
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`IPR are filed in the Litigations, however, a stay(s) is not likely.
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`7 Apple filed a petition for writ of mandamus regarding the venue decision in
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`the Court of Appeals for the Federal Circuit on March 30, 2022. Patent Owner
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`responded April 14, 2022. Apple filed its reply on April 25, 2022.
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`A stay is not likely to be granted on a contested motion in the WD Litigation.
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`As the “LegalMetric District Report Texas Western District Court in Patent Cases,
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`January, 2017–September, 2021” (EX2003) reveals, stays pending an IPR were
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`granted in the WDTX only 36.4% of the time during the five-year reporting period.
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`Id., p.3. The percentage is even lower for the judge assigned to the WD Litigation,
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`Judge Albright. His stay grant rate is only 28.6%. Id., pp. 70-71. It is more than 70%
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`likely that a stay will not be granted in the WD Litigation if an IPR is instituted.
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`Nor is a stay likely to be granted on a contested motion in the ED Litigation.
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`As the “LegalMetric District Report Texas Eastern District Court in Patent Cases,
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`January 2017–September 2021” (EX2004) reveals, stays pending an IPR were
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`granted in the EDTX only 27.2% of the time during the five-year reporting period.
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`Id., p.3. The percentage is even lower for the judge assigned to the ED Litigation,
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`Judge Gilstrap. His stay grant rate is only 17.1%. Id., p. 93. It is more than 80%
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`likely that a stay will not be granted in the ED Litigation if an IPR is instituted.
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`Patent Owner advises, however, that following a joint motion to dismiss with
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`prejudice filed by Patent Owner and defendant Cisco, the Court issued an order on
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`April 14, 2022, granting the joint motion dismissing the claims of both parties with
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`prejudice. EX2005.
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`Fintiv Factor 1 weighs strongly in favor of discretionary denial.
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`B.
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`IPR2022-00426
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`Fintiv Factor 2–Trial Date Versus FWD Due Date
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`Petitioners asserted that a Final Written Decision (“FWD”) would issue in this
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`proceeding in July 2023. Pet. at 65. Petitioners observed that jury selection (trial) is
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`scheduled for February 13, 2023, “or as soon as practical [sic]” in the WD Litigation.
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`Pet. at 65, citing EX1012. This date is about five months before an FWD would
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`issue in this proceeding. Petitioners also observed that the Court in the WD
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`Litigation noted that it would revisit the jury selection (trial) date at the conclusion
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`of the claim construction hearing. Pet. at 65. Regardless, that date has not changed.
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`Petitioners further observed that jury selection in the ED Litigation is currently
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`scheduled for August 8, 2022, citing EX1014. Pet. at 66. This date is almost a year
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`before an FWD would issue in this proceeding.
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`Petitioners also asserted that, in view of several potential occurrences, it is
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`likely that the trial court proceedings in the Litigations would not be complete until
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`at or about the same time an FWD is due. Pet. at 67. Accordingly, Petitioners asserted
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`that this factor does not support discretionary denial. Patent Owner contends that the
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`actual occurrences favor discretionary denial.
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`A review of the Agreed Scheduling Order confirms that the Court and parties
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`have kept to the scheduling order fairly closely in the WD Litigation. EX1012.
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`Indeed, although the Markman hearing was held on February 22, 2022 instead of
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`February 10, 2022 (to accommodate Petitioner’s counsel’s schedule), a Claim
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`Construction Order was initially issued February 24, 2022 (EX2006), followed by a
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`second Claim Construction Order issued on March 23, 2022 (EX2007). Judge
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`Albright’s average time to a claim construction decision is 12.1 months from the
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`date of filing of a case, which is May 25, 2021 for the WD Litigation. EX2003
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`(LegalMetric for WDTX); EX2008 (Complaint). Judge Albright, thus, is about three
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`months ahead of schedule with his claim construction decision.
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`The facts specific to the ED Litigation are even more favorable for
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`discretionary denial of institution. As Petitioners noted, jury selection in the ED
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`Litigation is scheduled to commence August 8, 2022 (EX1013, Docket Control
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`Order). Pet. at 66. That date was not changed in the First Amended Docket Control
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`Order, dated January 4, 2022. EX2018. That date is almost a full year before an
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`FWD would issue in this proceeding. Even if, as Petitioners suggest is possible, the
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`trial date is delayed, it is not likely to be delayed for six months, much less longer.
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`Indeed, a review of EX2018 confirms that the Court and parties have kept to
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`the scheduling order in the ED Litigation. The claim construction hearing was held
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`on the docketed date -- February 17, 2022 (EX2018), and a Claim Construction
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`Memorandum Opinion And Order was filed March 14, 2022. EX2009. Judge
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`Gilstrap’s average time to a claim construction decision is 14.8 months from the date
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`of filing of a case, which is May 25, 2021 for the ED Litigation. EX2004
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`(LegalMetric for EDTX); EX2019 and EX2020 (Complaints). Judge Gilstrap, thus,
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`is about four months ahead of schedule with his claim construction decision.
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`Further, both parties filed their motions to compel discovery by the March 21, 2022
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`deadline. EX2010 (BillJCo’s Motion to Compel, redacted copy, filed March 23,
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`2022); EX2011 (Defendants HPE and Aruba Networks, LLC’s Motion to Compel
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`Discovery, redacted copy, filed March 23, 2022).
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`Patent Owner advises, however, that the Court ordered mediation between
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`Patent Owner and HPE and Aruba, and assigned a mediator, on April 14, 2022.
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`EX2023. The parties were ordered to mediate promptly. EX2023. Patent Owner
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`contends that mediation can further expedite the trial.
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`Fintiv Factor 2 weighs strongly in favor of discretionary denial.
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`C. Fintiv Factor 3–Investment in the Proceeding
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`The Petition was filed on January 14, 2022, almost eight months after
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`Petitioners were served in the Litigations. Apple was served on May 28, 2021.
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`EX2012. Cisco was served on May 26, 2021 EX2013. HPE was served on May 28,
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`2021 EX2014. Aruba was served on May 28, 2021 EX2015.
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`Petitioners noted that motions to transfer had been filed in the Litigations, but
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`that the Courts had not yet ruled on the motions. Pet. at 68. As noted above,
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`Petitioners’ motions to transfer venue were denied. EX2001; EX2002.
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`Petitioners also noted that Apple had filed a motion to dismiss in the WD
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`Litigation, but that it had not yet been decided. Pet. at 68. Apple’s motion to dismiss
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`has now been decided – it was granted-in-part and denied-in-part. The Court granted
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`Apple’s motion to dismiss Patent Owner’s contributory infringement and pre-suit
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`indirect and willful infringement claims, but will permit Patent Owner to amend its
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`complaint to re-plead these claims before June 2, 2002. EX2022 (Order). The Court,
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`however, denied Apple’s motion to dismiss Patent Owner’s post-suit indirect and
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`willful infringement claims. EX2022.
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`Petitioners stated that the Courts had not issued any substantive ruling related
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`to the ‘804 patent. Pet. at 68. This statement is no longer correct. Both Courts have
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`issued claim construction orders construing three claim terms of the ‘804 patent.
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`EX2006; EX2007.
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`Further, discovery is progressing in the Litigations. In the WD Litigation, the
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`parties have already begun fact discovery (opened February 15, 2022) and served
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`initial disclosures per Rule 26(a) (February 15, 2022). See EX1012. In the ED
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`Litigation, the parties have already completed fact discovery and filed motions to
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`compel discovery (March 21, 2022) and completed expert discovery (April 25,
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`2022). See EX2018.
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`It is not likely that an institution decision will issue before the end of July
`
`2022, which means an FWD will not issue before July 2023. The parties’ and the
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`Courts’ investment in the Litigations is substantial already. Their investments will
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`be even more substantial before an FWD issues.
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`39963738.1
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`15
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`Fintiv Factor 3 weighs strongly in favor of discretionary denial.
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`IPR2022-00426
`Patent No. 8,761,804
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`D. Fintiv Factor 4–Overlap of Issues
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`Petitioners asserted that, if trial is instituted, the issues in the Litigations will
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`be narrowed due to the estoppel provisions of 35 U.S.C. § 315(e)(2). Pet. at 69. The
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`estoppel provisions of 35 U.S.C. § 315(e)(2) do not arise upon institution, however.
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`The estoppel provisions do not arise until an FWD is issued. Id.
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`Petitioners then stated that, if the Board institutes trial, they will cease
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`asserting the prior art obviousness combinations on which trial is instituted for the
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`claims on which trial is instituted in the Litigations, while trial is instituted. See
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`EX1022. Petitioners cite Sand Revolution II, LLC v. Continental Intermodal Group-
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`Trucking LLC, IPR2019-01393, Paper 24 11-12 (PTAB June 16, 2020) for allegedly
`
`holding that a similar stipulation weighs against discretionary denial. Pet. at 69.
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`Petitioners presented this stipulation to Patent Owner in writing on January 14, 2022.
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`EX1022. Notably, there is no temporal limitation in the stipulation, i.e., “while trial
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`is instituted.” Petitioners’ assertion, however, does not weigh against discretionary
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`denial.
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`The Petitioners’ stipulation is quite limited in scope. The Board views
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`stipulations like Petitioner’s as only mitigating concerns of duplicate efforts and of
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`potentially conflicting decisions “to some degree.” See Apple Inc. v. Seven Networks,
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`39963738.1
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`16
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`LLC, IPR2020-00180, Paper 12, at 15 (PTAB Aug. 14, 2020). Such a stipulation,
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`IPR2022-00426
`Patent No. 8,761,804
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`
`
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`then, may slightly favor institution.
`
`Under the present facts, however, discretionary denial should be favored.
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`Petitioners asserted only two bases for challenging validity in their Petition, and
`
`relied upon only three references -- Himmelstein, Myr, and Evans -- in two
`
`combinations. Pet. at 7-8. Contrastingly, Petitioners initially relied upon over three
`
`times the references and at least 30 times the bases for challenging invalidity in the
`
`Litigations.
`
`In the WD Litigation, Apple originally cited six primary references and 11
`
`total references, including Himmelstein and Myr, and enumerated numerous single-
`
`, two-, and three-reference bases, for a total of 63 bases for challenging validity.
`
`These bases included one of the two bases relied upon in the Petition. Defendant
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`Apple Inc.’s Preliminary Invalidity Contentions, EX2016, pp 54-57.
`
`In its final validity contentions, Apple dramatically increased its bases for
`
`challenging validity. Indeed, over 350 bases, comprising two-, three-, and four-
`
`reference combinations, based upon the Himmelstein reference alone were asserted.
`
`This number represents greater than a 35-fold increase as compared to Apple’s
`
`preliminary invalidity contentions for just one reference (10 bases were asserted
`
`previously). Apple also added three new references as primary references, and made
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`39963738.1
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`17
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`references that were previously only secondary references primary references, for a
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`IPR2022-00426
`Patent No. 8,761,804
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`total of 14 primary references, in numerous combinations. EX2021, pp 183-412.
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`In the ED Litigation, Cisco, HPE, and Aruba originally cited ten primary
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`references, including Himmelstein and Myr, and enumerated numerous single-, two-
`
`and three-reference bases, for a total of 108 bases for challenging validity. These
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`bases included one of the two bases relied upon in the Petition. Defendants’
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`Preliminary Invalidity Contentions, EX2017, pp 29-34. Cisco, HPE, and Aruba have
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`since filed two motions seeking to add additional references and additional bases for
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`challenging validity. Patent Owner has opposed both.
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`If all three actions proceed simultaneously, not only is efficiency decreased,
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`but also the possibility of conflicting decisions is increased, assuming that all bases
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`of invalidity asserted by Petitioners in the Litigations are of equal merit. It is possible
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`that the claims challenged in the Petition could be determined to be valid over the
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`art relied upon in the Petition, but invalid over art relied upon in the Litigations.
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`Fintiv Factor 4 weighs in favor of discretionary denial.
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`E.
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`Fintiv Factor 5–Identity of Parties
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`The Litigations involve the same parties. Petitioners asserted that this factor
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`should not be a basis for denying institution. Pet. at 69. In Apple v. Seven Networks,
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`however, the Board found that, when the parties are the same, Fintiv factor 5
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`39963738.1
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`18
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`weighed slightly in favor of the Patent Owner. Apple Inc. v. Seven Networks, LLC,
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`IPR2022-00426
`Patent No. 8,761,804
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`IPR2020-00180, Paper 12, at 16 (PTAB Aug. 14, 2020).
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`Fintiv Factor 5 weighs in favor of discretionary denial.
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`F.
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`Fintiv Factor 6–Other Circumstances
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`Unlike the situation in Apple v. Seven Networks, the number of prior art
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`challenges has not been limited in the Litigations. Id., at 16. Indeed, many more
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`references and bases for challenging the claims of the ‘804 Patent were raised in the
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`Litigations than in the Petition, and Cisco, HPE, and Aruba are trying to add even
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`more. Also unlike the situation in Apple v. Seven Networks, then, an IPR will not
`
`provide the parties with an in-depth analysis of the ‘804 Patent, nor a full record that
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`will enhance the integrity of the patent system. Id., at 19.
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`Petitioner made a weak showing on the merits. Patent Owner has pointed out
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`weaknesses in the Petition, on three separate bases, regarding each of the challenged
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`independent claims. Therefore, the merits, taken as a whole, do not favor Petitioner
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`and instead also weigh in favor of discretionary denial.
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`Fintiv factor 6 weighs in favor of discretionary denial.
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`39963738.1
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`19
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`SECTION 7. CONCLUSION
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`IPR2022-00426
`Patent No. 8,761,804
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`For the above reasons, the Petition is deficient and institution of the IPR
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`should be denied.
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`Dated: April 26, 2022
`
`
`Mailing address for all correspondence:
`Saul Ewing Arnstein & Lehr LLP
`Centre Square West
`1500 Market Street, 38th Floor
`Philadelphia, PA 19102-2186
`
`
`/s/ Brian R. Michalek
`Brian R. Michalek (Reg. No. 65,816)
`Saul Ewing Arnstein & Lehr LLP
`161 North Clark Street, Suite 4200
`Chicago, IL 60601
`Tel: (312) 876-7151
`brian.michalek@saul.com
`
`Joseph M. Kuo (Reg. No. 38,943)
`Saul Ewing Arnstein & Lehr LLP
`161 North Clark Street, Suite 4200
`Chicago, IL 60601
`Tel: (312) 876-7151
`joseph.kuo@saul.com
`
`Brian Landry (Reg. No. 62,074)
`Saul Ewing Anrstein & Lehr LLP
`131 Darmouth Street, Suite 501
`Boston, MA 02116
`Tel: (617) 912-0969
`Brian.Landry@saul.com
`
`Counsel for Patent Owner, BillJCo,
`LLC
`
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`39963738.1
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`20
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`Patent Owner’s Exhibit List
`
`2001 Order (denying the Motion to Transfer Venue of Defendants Hewlett
`Packard Enterprise Co., Aruba Networks LLC, and Cisco Systems, Inc.),
`filed February 16, 2022 (Eastern District of Texas)
`
`2002 Memorandum Opinion & Order Denying Defendant Apple Inc.’s Motion
`to Transfer Venue Pursuant to 28 U.S.C. § 1404(a) [ECF No. 26] (Public
`Version), filed February 24, 2022 (Western District of Texas)
`
`2003 LegalMetric District Report Texas Western District Court in Patent
`Cases, January, 2017–Sept
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