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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`
`META PLATFORMS, INC.,
`Petitioner
`
`v.
`
`THALES VISIONIX, INC.,
`Patent Owner
`
`
`U.S. PATENT NO. 6,922,632
`
`Case IPR2022-01304
`
`
`PETITIONER’S NOTICE REGARDING MULTIPLE PETITIONS
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`
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`Petitioner’s Notice Regarding Multiple Petitions
`IPR2022-01304
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`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`I.
`RANKING OF THE PETITIONS ................................................................... 1
`II.
`III. MATERIAL DIFFERENCES BETWEEN THE PETITIONS AND
`WHY THEY SHOULD BOTH BE INSTITUTED ........................................ 2
`IV. CONCLUSION ................................................................................................ 3
`
`
`
`i
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`
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`I.
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`Petitioner’s Notice Regarding Multiple Petitions
`IPR2022-01304
`
`INTRODUCTION
`Meta Platforms, Inc. (“Petitioner”) is filing two petitions that challenge non-
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`overlapping sets of claims in U.S. Patent No. 6,922,632 (“the ’632 Patent”). Here,
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`the Patent Owner, via an exclusive licensee in a particular field-of-use, “has asserted
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`a large number of claims in litigation,” including claims that are distinct from one
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`another, that collectively comprise several thousand words of claim language. See
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`Patent Trial and Appeal Board Consolidated Trial Practice Guide (November 2019)
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`at 59. More than one petition is therefore necessary to sufficiently address all the
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`challenged claims, and the Board should exercise its discretion to institute both
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`petitions.
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`II. RANKING OF THE PETITIONS
`Petitioner requests that the Board consider the petitions in the following order,
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`although, for the reasons explained below, the Board’s analysis would not be
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`complete without considering both petitions:
`
`Rank
`
`Petition
`
`Challenged Claims
`
`Prior Art References
`
`A
`
`IPR2022-01304 1-9, 11-29, and 66-69
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`Welch 2001 (Ex.
`1007)
`Welch 1997 (Ex.
`1008)
`Welch Thesis (Ex.
`1009)
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`
`
`1
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`
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`
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`Petitioner’s Notice Regarding Multiple Petitions
`IPR2022-01304
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`B
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`IPR2022-01305 30-36, 44-45, 47-55, and
`57-61
`
`Horton (Ex. 1010)
`Kramer (Ex. 1030)
`Chen (Ex. 1024)
`
`Welch 2001 (Ex.
`1007)
`Welch 1997 (Ex.
`1008)
`Welch Thesis (Ex.
`1009)
`Horton (Ex. 1010)
`Harris (Ex. 1011)
`
`III. DIFFERENCES BETWEEN THE PETITIONS AND WHY THEY
`SHOULD BOTH BE INSTITUTED
`The two petitions challenge 55 claims of 69 total, 53 of which have been
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`asserted by Gentex against Petitioner and Meta Platforms Technologies, LLC in
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`parallel district court litigation, originally filed as Gentex Corp. v. Meta Platforms,
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`Inc., No. 6:21-cv-00755-ADA, and which recently was transferred from the Western
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`District of Texas to the Northern District on July 5, 2022, No. 5:22-cv-03892
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`(“California Litigation”). The 53 claims asserted by Gentex collectively comprise
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`over 2,300 words, making it practically infeasible to substantively analyze all of
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`them in a single petition, given the word limit.
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`
`
`2
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`
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`Petitioner’s Notice Regarding Multiple Petitions
`IPR2022-01304
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`Petition A challenges 32 claims including 4 independent claims, and Petition
`
`
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`B challenges 23 claims including 4 independent claims. Given the number of
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`asserted claims and their length, Petitioner reasonably divided its challenge into two
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`petitions. There is no overlap in the challenged claims across the two petitions. The
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`Board has instituted multiple petitions in similar situations, and should do so here.
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`See, e.g., Microsoft Corp. v. Synkloud Tech., LLC, IPR2020-01269, Paper 9 at 7–9
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`(April 7, 2021) (instituting two petitions for IPR where “the length of the claims,
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`and the difference in scope of [the independent claims], warranted the filing of two
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`petitions”); Adobe Inc. v. Synkloud Tech., LLC, IPR2020-01392, Paper 8 at 9–10
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`(March 11, 2021) (similar).
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`IV. CONCLUSION
`Petitioner is only filing these two IPR petitions against the ’632 Patent, and
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`has not previously filed any IPR petitions against the ’632 Patent. Petitioner is thus
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`not abusing process, rather Petitioner is merely providing the Board with sufficient
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`context to fully understand the nature of the challenged claims and the asserted prior
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`art. For these reasons, the Board should institute both petitions.1
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`
`
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`1 The Administrative Procedures Act and substantive and procedural due process
`weigh against denying the institution of either petition under 35 U.S.C. § 314(a).
`
`
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`3
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`
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`Date: July 22, 2022
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`
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`Petitioner’s Notice Regarding Multiple Petitions
`IPR2022-01304
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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
`
`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,
`(to seek pro hac vice admission)
`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
`
`Attorneys for Petitioner Meta Platforms,
`Inc.
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`4
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`Petitioner’s Notice Regarding Multiple Petitions
`IPR2022-01304
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing document was
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`served on July 22, 2022 via overnight delivery directed to the correspondence
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`address of record for the patent owner at the following address:
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`Arentfox Schiff LLP
`1717 K Street, NW
`Washington DC 20006-5344
`
`
`
` A
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` courtesy copy was also served by electronic mail on the attorneys of record for
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`the following related matter:
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`Gentex Corporation et al. v. Meta Platforms, Inc. et al., Case No. 22-cv-03892
`(N.D. Cal.)
`
`Meredith Martin Addy
`AddyHart P.C.
`10 Glenlake Parkway, Suite 130
`Atlanta, Georgia 30328
`meredith@addyhart.com
`
`Matthew S. Warren
`WARREN LEX LLP
`2261 Market Street, No. 606
`San Francisco, CA 94114
`matt@warrenlex.com
`
`David I. Berl
`Adam D. Harber
`Elise M. Baumgarten
`Melissa B. Collins
`D. Shayon Ghosh
`Arthur John Argall III
`Andrew G. Borrasso
`WILLIAMS & CONNOLLY LLP
`
`
`
`1
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`
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`Petitioner’s Notice Regarding Multiple Petitions
`IPR2022-01304
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`680 Maine Avenue S.W.
`Washington, D.C. 20024
`dberl@wc.com
`aharber@wc.com
`ebaumgarten@wc.com
`mcollins@wc.com
`sghosh@wc.com
`aargall@wc.com
`aborrasso@wc.com
`
`
`W. Todd Baker
`W. Todd Baker (No. 45,265)
`
`
`2
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