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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`
`META PLATFORMS, INC.,
`Petitioner
`
`v.
`
`THALES VISONIX, INC.,
`Patent Owner
`
`
`U.S. PATENT NO. 6,922,632
`
`Case IPR2022-01304
`
`
`PETITIONER’S REPLY
`TO PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`Petitioner’s Reply
`
`
`IPR2022-01304
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`I.
`FINTIV DOES NOT SUPPORT DENIAL...................................................... 1
`II.
`III. CONCLUSION ................................................................................................ 5
`
`
`
`
`
`i
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`
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`Petitioner’s Reply
`
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`IPR2022-01304
`
`PETITIONER’S UPDATED EXHIBIT LIST
`
`Description
`
`Exhibit
`No.
`1001 U.S. Patent No. 6,922,632
`
`Previously
`Filed
`X
`
`1002
`
`File History of U.S. Patent No. 6,922,632
`
`1003 U.S. Patent No. 7,725,253
`
`1004
`
`File History of U.S. Patent No. 7,725,253
`
`1005 Declaration of Dr. Ulrich Neumann in Support of Inter
`Partes Review of U.S. Patent No. 6,922,632
`
`1006 Curriculum Vitae of Dr. Ulrich Neumann
`
`1007 Welch, G. et al., “High-Performance Wide-Area
`Optical Tracking” (2001)
`
`1008 Welch, G. et al., “SCAAT: Incremental Tracking with
`Incomplete Information” (1997)
`
`1009 Welch G. “SCAAT: Incremental Tracking with
`Incomplete Information” PhD Thesis, University of
`North Carolina (1996)
`
`1010 U.S. Patent No. 5,615,132
`
`1011 U.S. Patent No. 5,307,289
`
`1012 Gentex’s Amended Preliminary Infringement
`Contentions and corresponding Exhibits 4 and 5 (’632
`and ’253 infringement charts)
`
`1013 Azuma, R. “Predictive Tracking for Augmented
`Reality” PhD Thesis, University of North Carolina
`(1995)
`
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`ii
`
`
`
`Petitioner’s Reply
`
`
`IPR2022-01304
`
`Description
`
`Exhibit
`No.
`1014 You, S. and Neumann, U. “Orientation Tracking for
`Outdoor Augmented Reality Registration.” (1999)
`
`1015 Carlson, Neal A. and Berarducci, Michael P.
`“Federated Kalman Filter Simulation Results.”
`Navigation. Vol. 41, Issue 3 at 297-322. (Fall 1994)
`
`1016 Reitmayr, Gerhard and Schmalstieg. “An Open
`Software Architecture for Virtual Reality Interaction”
`VRST ’01 (November 2001)
`
`1017 Barfield, W. “Fundamentals of Wearable Computers
`and Augmented Reality” (2001)
`
`1018 Declaration of Rachel J. Watters regarding Welch, G.
`et al., “High-Performance Wide-Area Optical
`Tracking” (2001)
`
`1019 Declaration of Scott Delman regarding Welch, G. et al.,
`“SCAAT: Incremental Tracking with Incomplete
`Information” (1997)
`
`1020 Declaration of Dr. James L. Mullins regarding Welch
`G. “SCAAT: Incremental Tracking with Incomplete
`Information” PhD Thesis, University of North Carolina
`(1996)
`
`1021 Declaration of Scott Delman regarding Reitmayr,
`Gerhard and Schmalstieg. “An Open Software
`Architecture for Virtual Reality Interaction” VRST ’01
`(November 2001)
`
`1022 U.S. Patent No. 5,807,284
`
`1023 U.S. Patent No. 5,991,085
`
`iii
`
`Previously
`Filed
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`X
`
`
`
`Petitioner’s Reply
`
`
`IPR2022-01304
`
`1026
`
`Description
`
`Exhibit
`No.
`1024 Chen, Steven C. and Lee, Kang. “A mixed-mode smart
`transducer interface for sensors and actuators”, Sound
`& Vibration, 32(4), 24-27 (April 1998)
`
`1025 Hoff, William and Vincent, Tyrone. “Analysis of Head
`Pose Accuracy in Augmented Reality”, IEEE
`Transactions on Visualization and Computer Graphics,
`Vol. 6, Issue 4, October – December 2000.
`
`Zetu, Dan et al., “Extended-Range Hybrid Tracker and
`Applications
`to Motion and Camera Tracking in Manufacturing
`Systems,” IEEE Transactions on Robotics and
`Automation, Vol. 16, Issue 3, June 2000
`
`1027 Declaration of Rachel J. Watters regarding Chen,
`Steven C. and Lee, Kang. “A mixed-mode smart
`transducer interface for sensors and actuators.” Sound
`& Vibration, 32(4), 24-27 (April 1998)
`
`1028 Declaration of Gordon MacPherson regarding Hoff,
`William and Vincent, Tyrone. “Analysis of Head Pose
`Accuracy in Augmented Reality”, IEEE Transactions
`on Visualization and Computer Graphics, Vol. 6, Issue
`4, October – December 2000.
`
`1029 Declaration of Gordon MacPherson regarding Zetu,
`Dan et al., “Extended-Range Hybrid Tracker and
`Applications
`to Motion and Camera Tracking in Manufacturing
`Systems,” IEEE Transactions on Robotics and
`Automation, Vol. 16, Issue 3, June 2000
`
`1030 U.S. Patent No. 5,592,401
`
`Previously
`Filed
`X
`
`X
`
`X
`
`X
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`X
`
`X
`
`X
`
`iv
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`
`
`Petitioner’s Reply
`
`
`IPR2022-01304
`
`Description
`
`Exhibit
`No.
`1031 Case Management and Pretrial Order, Dkt. 116, Gentex
`Corporation et al. v Meta Platforms, Inc. et al.
`(October 18, 2022)
`
`Previously
`Filed
`
`
`v
`
`
`
`Petitioner’s Reply
`
`I.
`
`INTRODUCTION
`Petitioner Meta Platforms, Inc. (“Meta” or “Petitioner”) files this reply to the
`
`IPR2022-01304
`
`preliminary response (“POPR”) filed by Thales Visionix, Inc. (“Thales”), as
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`authorized and consistent with the Board’s January 20, 2023 and February 1, 2023
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`emails. The Petition explains why the Board should not use its discretion to deny
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`institution of trial under Fintiv. As discussed in more detail below, in order to further
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`reduce any overlap in issues addressed in this IPR and the parallel district court
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`litigation, Meta will file a stipulation in the district court that it will not pursue any
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`invalidity challenges that were actually raised in the Petition if an IPR trial is
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`instituted.
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`II. FINTIV DOES NOT SUPPORT DENIAL
`As an initial matter, the Director’s Interim Procedure for Discretionary
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`Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June
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`21, 2022) (“Vidal Memo”) reflects why the Board should reject Thales’
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`discretionary denial arguments. The Petition presents compelling evidence of
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`unpatentability. And applying the guidance provide by the Vidal Memo, the median
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`time from filing (i.e., transfer) to trial data (2 years and 7.6 months) for the Northern
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`District of California reflects that trial should not be expected until February 2025,
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`well after the March 2024 final written decision due date for this IPR. For these
`
`reasons, and further in light of a Sand Revolution type of stipulation, the Fintiv
`
`1
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`
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`Petitioner’s Reply
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`factors do not support denial.
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`IPR2022-01304
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`Factor 1 (Stay): Meta will move to stay the parallel district court case if the
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`Board institutes IPR, and the Northern District of California, including the presiding
`
`judge, regularly grants such motions. See, e.g., BillJCo, LLC v. Apple Inc., No. 4:22-
`
`cv-03201-YGR, Dkt. 122 (N.D. Cal. Sept. 8, 2022) (“Several factors strongly
`
`support the issuance of a stay: no trial schedule has been set in this case, discovery
`
`prior to the case being transferred into this district was limited to jurisdictional
`
`issues, … and a decision from the PTAB would simplify the issues”); Fujinomaki v.
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`Google, LLC, No. 3:16-cv-03137-JD, Dkt. 249 (N.D. Cal. March 27, 2017) (“In light
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`of the IPR instituted by the PTAB, the case is stayed”). Thus, Factor 1 remains
`
`neutral at this time, but would weigh against exercising discretion to deny institution
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`if the motion to stay is granted.
`
`Factor 2 (Proximity of Trial Dates): Thales’ trial schedule-based arguments
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`lack merit because the district court has not set a trial date. Thales’ reliance on the
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`original filing date of the complaint in the Western District of Texas is misplaced.
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`What is of upmost importance here is the likelihood that trial in the Northern District
`
`of California will postdate a final written decision in this IPR. In order to make that
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`determination, the Vidal Memo instructs to consider the median time to trial data for
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`the district court. Here, the expected trial date would be no earlier than February
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`2025, while a final written decision will have been entered the year prior. Thus,
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`2
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`
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`Petitioner’s Reply
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`Factor 2 weighs against exercising discretion to deny institution.
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`IPR2022-01304
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`Factor 3 (Investment in Parallel Proceedings): While the parties and the
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`Court have undertaken some activities since the case was transferred to the Northern
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`District of California in July 2022, the most burdensome parts of the case still
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`remain. Fact discovery is not scheduled to close until May 2023, and expert
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`discovery has yet to begin. See Gentex Corp. v. Meta Platforms, Inc., No. 4:22-cv-
`
`03892-YGR (“Gentex v. Meta”), Case Management and Pretrial Order, Ex. 1031;
`
`see also Cywee Grp. Ltd. v. Samsung Elecs. Co., No. 2:17-CV-00140-WCB-RSP,
`
`2019 U.S. Dist. LEXIS 144149, at *20 (E.D. Tex. Feb. 14, 2019) (“the most
`
`burdensome parts of the case—filing and responding to pretrial motions, preparing
`
`for trial, going through the trial process, and engaging in post-trial motions
`
`practice—all lie in the future”). The Court has not issued any claim construction
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`rulings and there is no indication when such rulings will be forthcoming. Thus,
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`Factor 3 weighs against exercising discretion to deny institution.
`
`Factor 4 (Overlap): If an IPR is instituted, Meta will file a stipulation
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`indicating that it will not pursue in the parallel litigation the actual grounds raised in
`
`this IPR. Although not as broad as a Fintiv type stipulation, the Board has
`
`concluded—subsequent to the Vidal Memo—that a Sand Revolution type stipulation
`
`effectively addresses the risk of duplicative efforts. Apple Inc. v. Aire Technology
`
`Limited, No. IPR2022-01136, Paper 11 (P.T.A.B. January 4, 2023) (citing Sand
`
`3
`
`
`
`Petitioner’s Reply
`
`Revolution II, LLC v. Continental Intermodal Group Trucking LLC, No. IPR2019-
`
`IPR2022-01304
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`01393, Paper 24 at 11–12 (P.T.A.B. June 16, 2020) (informative)).
`
`Moreover, because the challenged claims in IPR and those asserted in the
`
`parallel litigation are not identical further minimizes the overlap between the IPR
`
`and the parallel litigation. See Taiwan Semiconductor Manufacturing Company v.
`
`Fraunhofer Gesellschaft Zur Foerderung Der AngeWandten Forschung EV, No.
`
`IPR2020-01669, Paper No. 13 (P.T.A.B. April 15, 2021) (concluding that “the extent
`
`of non-overlapping claims, and Petitioner’s stipulation that it will not pursue the
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`same grounds in the district court litigation, minimizes the overlap between this
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`proceeding and the Texas case”). Here, for example, this Petition (which is one of
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`two petitions challenging claims of the ’632 Patent) challenges 32 claims of 69 total
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`claims of the ’632 Patent (claims 1–9, 11–29, and 66-69). In contrast, Patent Owner,
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`via its exclusive field-of-use licensee, has not asserted claims 3, 4, 9, 11–23, 26, 27,
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`or 66–69 of the ’632 Patent in the parallel district court case. And the deadline to
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`meet and confer to further narrow the number of asserted claims is April 18, 2023.
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`Case Management and Pretrial Order, Ex. 1031. Thus, additional non-overlapping
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`claims may be identified in the future. In light of the Sand Revolution type
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`stipulation and the existence of at least one non-overlapping claim, Factor 4 weighs
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`against exercising discretion to deny institution.
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`Factor 5 (Parties): This factor, which is met in nearly all IPRs, is of limited
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`4
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`Petitioner’s Reply
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`weight and Thales fails to show how this factor could outweigh the others.
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`IPR2022-01304
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`Factor 6 (Other Circumstances): Thales’ reliance on Biofrontera Inc. v.
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`DUSA Pharms., Inc., No. IPR2018-01585, Paper 10, at 14–15 (P.T.A.B. Feb. 26,
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`2019) is misplaced. For the reasons provided in the Petition, each of the six asserted
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`grounds meets the reasonable likelihood of success threshold. However, even if the
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`Board were to find there is a reasonable likelihood of showing unpatentability with
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`respect to only Ground I (challenging claims 1–9, 11–22, and 24–29), Ground V
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`(challenging claims 66–68), or Ground VI (challenging claim 69)—these grounds
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`directed to independent claims 1, 66, 68, and 69—Petitioner would have met its
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`burden for at least 31 of the 32 challenged claims. The benefits of holding trial
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`would substantially outweigh the burden of addressing any remaining grounds
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`directed to the dependent claims alone.
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`III. CONCLUSION
`For the reasons above, the Board should reject Thales’ arguments and institute
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`review.
`
`Date: February 6, 2023
`
`
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`
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`Respectfully submitted,
`
`/W. Todd Baker/
`W. Todd Baker (No. 45,265)
`todd.baker@kirkland.com
`KIRKLAND & ELLIS LLP
`1301 Pennsylvania Ave., N.W.
`Washington, D.C. 20004
`Telephone: (202) 389-5000
`Facsimile: (202) 389-5200
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`5
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`Petitioner’s Reply
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`
`
`
`IPR2022-01304
`
`
`Ellisen Shelton Turner (No. 54,503)
`ellisen.turner@kirkland.com
`KIRKLAND & ELLIS LLP
`2049 Century Park East,
`Los Angeles, CA 90067
`Telephone: (310) 552-4200
`Facsimile: (310) 552-5900
`
`Akshay S. Deoras, (pro hac vice admitted)
`akshay.deoras@kirkland.com
`KIRKLAND & ELLIS LLP
`555 California Street
`San Francisco, CA 94104
`Telephone: (415) 439-1400
`Facsimile: (415) 439-1500
`
`Yimeng Dou (No. 69,770)
`yimeng.dou@kirkland.com
`KIRKLAND & ELLIS LLP
`555 South Flower Street, Suite 3700
`Los Angeles, CA 90071
`Telephone: (213) 680-8400
`Facsimile: (213) 680-8500
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`Attorneys for Petitioner Meta Platforms,
`Inc.
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`6
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`Petitioner’s Reply
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`IPR2022-01304
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing document was
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`served on February 6, 2023 via electronic mail directed to counsel of record for the
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`Patent Owner at the following:
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`Thales-Meta-IPRs@addyhart.com
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`Gentex-IPR@wc.com
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`/W. Todd Baker/
`W. Todd Baker (No. 45,265)
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