UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`HEWLETT PACKARD ENTERPRISE CO.,
`ARUBA NETWORKS, LLC,
`CISCO SYSTEMS, INC.
`APPLE INC.,
`Petitioners,
`
`v.
`
`BILLJCO, LLC,
`Patent Owner.
`
`
`U.S. Patent No. 8,761,804
`
`
`Case: IPR2022-00426
`
`
`
`
`
`
`
`
`PETITIONERS’ REPLY TO PATENT OWNER
`PRELIMINARY RESPONSE TO PETITION
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`HEWLETT PACKARD ENTERPRISE CO.,
`ARUBA NETWORKS, LLC,
`CISCO SYSTEMS, INC.
`APPLE INC.,
`Petitioners,
`
`v.
`
`BILLJCO, LLC,
`Patent Owner.
`
`
`U.S. Patent No. 8,761,804
`
`
`Case: IPR2022-00426
`
`
`
`
`
`
`
`
`PETITIONERS’ REPLY TO PATENT OWNER
`PRELIMINARY RESPONSE TO PETITION
`
`
`
`PETITIONERS’ EXHIBIT LIST
`
`
`Exhibit No. Description
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
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`1013
`
`1014
`
`1015
`
`U.S. Patent No. 8,761,804 (“the ’804 Patent”)
`
`Prosecution History of U.S. Patent No. 8,761,804
`
`Curriculum Vitae of Darrell D.E. Long
`
`Declaration of Darrell D.E. Long, dated January 14, 2022
`
`U.S. Patent No. 7,123,926 (“Himmelstein”)
`
`U.S. Patent Application Publication No. 2003/0014181 (“Myr”)
`
`U.S. Patent No. 6,327,535 (“Evans”)
`
`U.S. Patent No. 8,600,341
`
`Prosecution History of U.S. Patent No. 8,600,341
`
`U.S. Patent Application Publication No. 2007/0030824
`(“Ribaudo”)
`
`BillJCo, LLC v. Apple Inc., Case No. 6:21-cv-528, Apple, Inc.’s
`Opening Claim Construction Brief, Dkt. No. 32 (W.D. Tex. Dec.
`2, 2021)
`
`BillJCo, LLC v. Apple Inc., Case No. 6:21-cv-528, Agreed
`Scheduling Order, Dkt. No. 27 (W.D. Tex. Sept. 11, 2021)
`
`BillJCo, LLC v. Cisco Sys., Inc., Case No. 2:21-cv-181, BillJCo,
`LLC v. Hewlett-Packard Enterprise Co. and Aruba Networks,
`Case No. 2:21-cv-183, Docket Control Order, Dkt. No. 44 (E.D.
`Tex. Oct. 25, 2021)
`
`Dufresne, A., et al., How Reliable are Trial Dates Relied on by
`the PTAB in the Fintiv Analysis? (Oct. 29, 2021)
`
`Fintiv, Inc. v. Apple Inc., Case No. 6:21-cv-926-ADA, Order
`(Oct. 4, 2021)
`
`
`
`ii
`
`
`
`Exhibit No. Description
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
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`1022
`
`1023
`
`1024
`
`1025
`
`BillJCo, LLC v. Cisco Sys., Inc., Case No. 2:21-cv-181, Cisco
`Systems Inc.’s Motion to Transfer Venue, Dkt. No. 36 (E.D.
`Tex. Oct. 11, 2021)
`
`BillJCo, LLC v. Hewlett-Packard Enterprise Co. and Aruba
`Networks, Case No. 2:21-cv-183, Hewlett-Packard Enterprise
`Company’s and Aruba Networks, LLC’s Opposed Motion to
`Transfer Venue to the Northern District of California Under 28
`U.S.C. § 1404, Dkt. No. 34 (E.D. Tex. Oct. 4, 2021)
`
`BillJCo, LLC v. Apple Inc., Case No. 6:21-cv-528, Defendant’s
`Motion to Dismiss Plaintiff’s Claims of Willful Infringement as
`to Each Patents-in-Suit and Plaintiff’s Claims of Indirect
`Infringement as to Each Patents-in-Suit, Dkt. No. 16 (W.D. Tex.
`Aug. 2, 2021)
`
`BillJCo, LLC v. Apple Inc., Case No. 6:21-cv-528, Apple Inc.’s
`Opposed Motion to Transfer Venue Pursuant to 28 U.S.C. §
`1404, Dkt. No. 26 (W.D. Tex. Sept. 10, 2021)
`
`Curriculum Vitae listing Prior Litigation Engagements for
`Darrell D.E. Long
`
`Jackson, C., Radar and LORAN, Popular Electronics (July 1959)
`
`Letter from Krishnan Padmanabhan, dated January 14, 2022
`
`Declaration of Rose Cordero Prey In Support of Motion to
`Appear Pro Hac Vice
`
`Claim Construction Memorandum Opinion and Order, BillJCo,
`LLC v. Hewlett Packard Enter. Co., No. 2:21-cv-00183 (E.D.
`Tex. Mar. 14, 2021)
`
`Defendants Cisco Sys., Inc.’s Hewlett Packard Enter. Co.’s and
`Aruba Networks LLC’s Mot. for Leave to Amend Invalidity
`Contentions, No. 2:21-cv-00181-JRG, Dkt. 94 (filed Feb. 25,
`2022)
`
`
`
`iii
`
`
`
`Exhibit No. Description
`
`1026
`
`1027
`
`Defendants Hewlett Packard Enter. Co’s and Aruba Networks,
`LLC’s Mot. to Leave to Amend Invalidity Contentions, No.
`2:21-cv-00181, Dkt. 104 (filed Mar. 21, 2022).
`
`May 26, 2022 Order Granting Apple Inc.’s Petition for Writ of
`Mandamus
`
`
`
`
`
`iv
`
`
`
`
`
`This Reply addresses Patent Owner’s arguments about the application of
`
`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (Mar. 20, 2020) (precedential)
`
`to this proceeding and was authorized by the Board by email on May 20, 2022.
`
`Several allegations made by Patent Owner (“BillJCo”) warrant reply because
`
`BillJCo’s characterization of the facts is flawed and subsequent developments show
`
`that Fintiv is no basis to deny the Petition.
`
`I.
`
`THE BOARD SHOULD REFUSE TO SPECULATE ABOUT
`WHETHER THE LITIGATIONS MIGHT BE STAYED AND THE
`APPLE LITIGATION WAS TRANSFERRED AND THE TRIAL
`DATE WAS VACATED (FINTIV FACTORS 1 & 2)
`Patent Owner asks the Board to speculate about the likelihood of a stay being
`
`granted based on statistics, but there is no concrete evidence before the Board about
`
`the likelihood of stay in these cases and on these facts. POPR, 10-11. Given the lack
`
`of evidence for or against a stay being granted, this factor is neutral not “strongly in
`
`favor of discretionary denial” as BillJCo contends, POPR, 11. See Dell Techs. Inc.
`
`v. WSOU Investments, LLC d/b/a Brazos Licensing and Dev., IPR2021-00272, Paper
`
`13, 7-8 (Jul. 1, 2021) (declining to speculate how a judge would rule on a motion to
`
`stay). The Board should decline to speculate about what might happen in the
`
`litigations as it has in the past. See Apple Inc. v. BillJCo, LLC, IPR2022-00129, Paper
`
`7 at 6-7 (PTAB May 23, 2022).
`
`The speculative nature about what may or may not happen is amplified further
`
`by Apple’s granted petition for writ of mandamus, which has vacated the trial date
`
`1
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`
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`and changed the Fintiv calculation entirely. See POPR, 10 n.7; EX1027. Because the
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`Federal Circuit ordered BillJCo’s case against Apple to be transferred after the
`
`POPR was filed (EX1030), the facts continue to evolve in a manner that cuts heavily
`
`against discretionary denial. Indeed, there is no competing trial date for Petitioner
`
`Apple to weigh in the Fintiv analysis.
`
`II. BILLJCO FAILS TO TIE VARIOUS INVESTMENTS IN THE
`COPENDING LITIGATIONS TO ISSUES OF INVALIDITY RAISED
`IN THE IPRS (FINTIV FACTOR 3)
`To suggest a heavy investment by the Court and parties in the concurrent
`
`litigations, BillJCo identifies “motions to transfer,” a “motion to dismiss,” and
`
`“claim construction orders” to suggest that the Court and parties have made
`
`substantial investments in the litigation. POPR, 14-15. But, BillJCo has not tied these
`
`litigation investments to validity. And, they cannot be cleanly tied to any investment
`
`in the invalidity case.
`
`In applying Fintiv factor 3, the germane question is how much investment has
`
`been made in litigating the “validity issue itself.” See Sand Revolution II, LLC v.
`
`Continental Intermodal Group – Trucking LLC, IPR2019-01393, Paper 24, 11-12
`
`(Jun. 16, 2020) (informative). Here, the lion’s share of investments identified by
`
`BillJCo have no bearing on validity.
`
`First, the motion to transfer relates to the appropriate forum to resolve
`
`BillJCo’s infringement case. Second, the motion to dismiss relates to infringement
`
`2
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`
`
`
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`issues as BillJCo admits. POPR, 14-15 (motion related to indirect and willful
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`infringement). Neither of these issues bear on validity. Third, the two claim
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`construction orders submitted by BillJCo show little movement on the question of
`
`validity. Of the three terms presented to Judge Albright from the ’804 patent, every
`
`one of them received a construction of “[p]lain and ordinary meaning.” EX2006, 2-
`
`3; see also EX2007, 2-3. The three terms presented to Judge Gilstrap for construction
`
`received the same construction—“[p]lain and ordinary meaning.” See EX1024, 18.
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`This does not reflect a substantial investment related to advancing the invalidity
`
`case. Cf. BillJCo, IPR2022-00129, Paper 7 at 8 (finding Fintiv factor 3 weighed
`
`against discretionary denial when district court construed 2 of 3 terms as having their
`
`“[p]lain and ordinary meaning”).
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`Therefore, even with the relatively advanced stage of the HPE case, the case
`
`against Apple trails substantially behind and will continue to do so in light of the
`
`transfer order. The investment in invalidity is not sufficient to warrant denying
`
`institution.
`
`III. BILLJCO MISAPPREHENDS PETITIONERS’ STIPULATION AND
`THE OVERLAP OF ISSUES CONSIDERATIONS (FINTIV FACTOR
`4)
`BillJCo’s arguments regarding the potential overlap of issues are incorrect and
`
`do not warrant denial of the Petition under Fintiv. First, BillJCo incorrectly contends
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`that “there is no temporal limitation in the stipulation” by Petitioners regarding their
`
`3
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`
`
`
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`prior art defenses in the copending litigations. POPR, 16. That is wrong. Petitioners’
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`stipulation says “in the event that the PTAB institutes and IPR based on the
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`Petition, Defendants will not seek resolution in the Litigation of any ground of
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`invalidity pursued in the instituted Petition.” EX1022 (emphasis added). Thus, there
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`is a “temporal limitation” that is triggered upon institution. This stipulation seeks “to
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`avoid multiple proceedings addressing the validity of the” challenged claims “based
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`on the instituted grounds in the Petition.” Id. Contrary to BillJCo’s suggestion the
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`stipulation is not lacking a “temporal limitation.”
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`Second, BillJCo focuses on the wrong issues when it contends that the
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`“stipulation is quite limited in scope” when compared to other prior art that is being
`
`raised in the litigations. POPR, 16-18. Indeed, the argument it makes is nonsensical.
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`BillJCo complains that there are too many prior art references asserted in the
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`litigation. But, it makes no case for why a discretionary denial of the Petition for
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`inter partes review would alleviate that issue. In fact, if trial is instituted on the
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`Petition, then BillJCo will not need to address the grounds presented in the Petition
`
`moving forward in light of Petitioners’ stipulation. BillJCo even admits that the
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`Petition is narrowly focused. POPR, 17 (Petition has “only two bases for challenging
`
`validity” and “only three references” (emphasis original)). And, BillJCo fails to
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`account for the fact that a number of the theories presented in the co-pending
`
`litigations—including those that are subject to motions to amend invalidity
`
`4
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`
`
`
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`contentions—are based on systems that cannot be presented in inter partes review
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`in any event. EX1025, 6 (“[T]he prior art systems that Defendants seek to add are
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`twenty to thirty years old.”); EX1026, 1 (“Defendants . . . seek leave to amend their
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`Invalidity Contentions to add one prior art system . . . .”).
`
`IV. CONCLUSION
`For the foregoing reasons and for those further explained in the Petition, the
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`Board should exercise its discretion to resolve Petitioners’ unpatentability
`
`challenges by instituting trial and deciding the case on the merits.
`
`
`
`Date: May 31, 2022
`
`
`
`
`
`Respectfully submitted,
`GREENBERG TRAURIG, LLP
`
`
`By: /Andrew R. Sommer/
`
`
`Andrew R. Sommer (Reg. No. 53,932)
`Greenberg Traurig, LLP
`1750 Tysons Boulevard
`McLean, VA 22102
`T: (703) 749-1370
`sommera@gtlaw.com
`
`Counsel for Petitioners
`
`5
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`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a true and correct copy of this Reply and any
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`new exhibits have been electronically served on the Patent Owner by emailing the
`
`following addresses:
`
`
`Date: May 31, 2022
`
`brian.michalek@saul.com
`joseph.kuo@saul.com
`brian.landry@saul.com
`IPGroupMailbox@saul.com
`
`
`
`
`
`/Andrew R. Sommer/
`Andrew R. Sommer (Reg. No. 53,932)
`Greenberg Traurig, LLP
`1750 Tysons Boulevard
`McLean, VA 22102
`T: (703) 749-1370
`sommera@gtlaw.com
`
`1
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