`
`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
`
`IPR2022-01305
`
`PATENT OWNER’S SURREPLY TO PETITIONER’S REPLY
`TO PATENT OWNER’S PRELIMINARY RESPONSE
`
`February 13, 2023
`
`
`
`Case IPR2022-01305
`U.S. Patent 6,922,632
`
`Exhibit
`1001
`1002
`1003
`1004
`1005
`
`1006
`1007
`
`1008
`
`1009
`
`1010
`1011
`1012
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`1013
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`1014
`
`1015
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`1016
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`TABLE OF EXHIBITS
`Title
`
`U.S. Patent No. 6,922,632
`File History of U.S. Patent No. 6,922,632
`U.S. Patent No. 7,725,253
`File History of U.S. Patent No. 7,725,253
`Declaration of Dr. Ulrich Neumann in Support of Inter Partes
`Review of U.S. Patent No. 6,922,632
`Curriculum Vitae of Dr. Ulrich Neumann
`Welch, G. et al., “High-Performance Wide-Area Optical
`Tracking” (2001)
`Welch, G. et al., “SCAAT: Incremental Tracking with
`Incomplete Information” (1997)
`Welch G. “SCAAT: Incremental Tracking with Incomplete
`Information” PhD Thesis, University of North Carolina
`(1996)
`U.S. Patent No. 5,615,132
`U.S. Patent No. 5,307,289
`Gentex’s Amended Preliminary Infringement Contentions
`and corresponding Exhibits 4 and 5 (’632 and ’253
`infringement charts)
`Azuma, R. “Predictive Tracking for Augmented Reality”
`PhD Thesis, University of North Carolina (1995)
`You, S. and Neumann, U. “Orientation Tracking for Outdoor
`Augmented Reality Registration.” (1999)
`Carlson, Neal A. and Berarducci, Michael P. “Federated
`Kalman Filter Simulation Results.” Navigation. Vol. 41,
`Issue 3 at 297-322. (Fall 1994)
`Reitmayr, Gerhard and Schmalstieg. “An Open Software
`Architecture for Virtual Reality Interaction” VRST ’01
`(November 2001)
`
`i
`
`
`
`Exhibit
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`1023
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`Case IPR2022-01305
`U.S. Patent 6,922,632
`
`Title
`Barfield, W. “Fundamentals of Wearable Computers and
`Augmented Reality” (2001)
`Declaration of Rachel J. Watters regarding Welch, G. et al.,
`“High- Performance Wide-Area Optical Tracking” (2001)
`Declaration of Scott Delman regarding Welch, G. et al.,
`“SCAAT:
`Incremental Tracking with
`Incomplete
`Information” (1997)
`Declaration of Dr. James L. Mullins regarding Welch G.
`“SCAAT:
`Incremental Tracking with
`Incomplete
`Information” PhD Thesis, University of North Carolina
`(1996)
`Declaration of Scott Delman regarding Reitmayr, Gerhard
`and Schmalstieg. “An Open Software Architecture for
`Virtual Reality Interaction” VRST ’01 (November 2001)
`U.S. Patent No. 5,807,284
`U.S. Patent No. 5,991,085
`Chen, Steven C. and Lee, Kang. “A mixed-mode smart
`transducer interface for sensors and actuators”, Sound &
`Vibration, 32(4), 24-27 (April 1998)
`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
`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)
`Declaration of Gordon MacPherson regarding Hoff, William
`and Vincent, Tyrone. “Analysis of Head Pose Accuracy in
`Augmented Reality”, IEEE Transactions on Visualization
`
`ii
`
`
`
`Case IPR2022-01305
`U.S. Patent 6,922,632
`
`Exhibit
`
`1029
`
`1030
`2001
`
`2002
`
`2003
`
`2004
`
`Title
`and Computer Graphics, Vol. 6, Issue 4, October – December
`2000.
`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
`U.S. Patent No. 5,592,401
`Complaint, Gentex Corp. v. Meta Platforms, Inc., No. 6:21-
`cv-00755-ADA (W.D. Tex. July 22, 2021), ECF No. 1.
`Joint Order Regarding Claim Construction and Discovery,
`Gentex Corp. v. Meta Platforms, Inc., No. 5:22-cv-03892-
`YGR (N.D. Cal. Nov. 9, 2022), ECF No. 118.
`Gentex Corp. v. Meta Platforms, Inc., No. 5:22-cv-03892-
`YGR (N.D. Cal.), Letter from Laura Ashley Harris to Andrew
`Borrasso (Feb. 3, 2023)
`Gentex Corp. v. Meta Platforms, Inc., No. 5:22-cv-03892-
`YGR (N.D. Cal.), Excerpts of Invalidity Contentions of Meta
`Platforms, Inc. (Dec. 5, 2022)
`
`iii
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`
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`Case IPR2022-01305
`U.S. Patent 6,922,632
`Parallel district court litigation has been ongoing for the past eighteen months
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`between the same parties involved in Petitioner’s eight IPRs against Patent Owner’s
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`patents (Nos. IPR2022-01294, -01298, -01301, -01302, -01303, -01304, -01305, and
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`-01308). Under the Board’s precedent in Apple Inc. v. Fintiv, Inc., Petitioner’s delay
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`in bringing its IPRs and the progress made in the parallel district court litigation
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`warrants denial of institution in accordance with the Board’s discretion under 35
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`U.S.C. § 314(a). 2020 WL 2486683 (P.T.A.B. May 13, 2020). Petitioner’s reply
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`only underscores this. Its calculated trial date defies credulity by equating the date
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`of the case’s transfer (June 30, 2022) to the date of the case’s filing nearly a year
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`prior (July 22, 2021). Petitioner’s approach is contrary to precedent and common
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`sense, and lacks any support in the Director’s Interim Procedure for Discretionary
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`Denials (“Vidal Memo”). And the carefully worded stipulation Petitioner offers—
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`“that it will not pursue any invalidity challenges that were actually raised in the
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`Petition if an IPR trial is instituted,” Paper No. 10 (“Reply”) at 1—fails to prevent
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`duplication of effort in the district court litigation, as it applies only to actually raised
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`grounds rather than grounds that reasonably could have been raised among the
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`countless combinations Petitioner has asserted
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`in
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`the parallel
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`litigation.
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`Accordingly, the Fintiv factors favor denial of institution.
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`I.
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`The Board Should Deny Institution Under Fintiv
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`Under Fintiv, the Board considers the following factors: 1) whether the
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`1
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`U.S. Patent 6,922,632
`district court proceedings are stayed; 2) proximity of the final written decision to
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`trial; 3) investment in the district court proceedings; 4) issue overlap; 5) similarity
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`of the parties; and 6) other circumstances impacting the Board’s discretion. Fintiv,
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`2020 WL 2486683, at *3. The Vidal Memo clarified certain aspects of Fintiv and
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`indicated that the Board should additionally consider whether “a petition presents
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`compelling evidence of unpatentability.” Vidal Memo at 2. As clearly indicated in
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`Patent Owner’s initial filing, the Petition here presents no such compelling evidence.
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`The other factors are addressed below, and also strongly favor denial.
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`Proximity to Trial Dates. This factor weighs in favor of denial of institution
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`because the parties will likely proceed to trial before the Board would enter a final
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`written decision. According to the Federal Judiciary’s statistics (https://www.
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`uscourts.gov/statistics/table/na/federalcourt-management-statistics/2022/03/31-1;
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`see Vidal Memo at 9 n.12), the median time from case filing to trial in the Northern
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`District of California is 31.1 months, which would put trial in February 2024.
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`Petitioner’s assertion that trial will take place “no earlier than February 2025” is
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`premised on erroneously equating the transfer date to the case filing date. Petitioner
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`cites no precedent in support of that baseless inference, which would negate
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`everything that occurred prior to the transfer order entered nearly a year after the
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`case was filed (Ex. 1028). Before transfer, the parties served infringement and
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`invalidity contentions and fully briefed their claim construction positions, which the
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`2
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`U.S. Patent 6,922,632
`Northern District of California considered at the Markman hearing held last month—
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`without further briefing after transfer. The parties have thus made significant
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`progress both before and after transfer, and Petitioner offers no basis to claim that
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`the trial date will be two years from now in 2025—which is one and a half years
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`after all fact and expert discovery is set to close on the current schedule. Ex. 1036
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`at 2. Rather, correctly applying the median time to trial from the case’s actual filing,
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`as the Vidal Memo instructs, results in a trial five months after the close of expert
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`discovery in February 2024 and prior to any final written decision by the Board.
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`Accordingly, this factor weighs in favor of denial of institution. See Fintiv, 2020
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`WL 2486683, at *5 (trial two months before final written decision supports denial).
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`Investment in Parallel Proceedings. As Petitioner acknowledges (at 3), the
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`parties have undertaken substantial—and costly—activities in the Western District
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`of Texas and the Northern District of California. Claim construction was briefed
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`and argued at the January 13, 2023 Markman hearing; an order is likely to issue
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`soon, as Judge Gonzalez Rogers’ recent Markman orders have issued approximately
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`one month after argument. See Impinj, Inc. v. NXP USA, Inc., 2022 WL 2125133
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`(N.D. Cal. Mar. 21, 2022) (hearing March 4); Cellspin Soft, Inc. v. Fitbit, Inc., 2021
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`WL 1417419 (N.D. Cal. Apr. 14, 2021) (hearing Mar. 5); VTT Tech. v. SiTime Corp.,
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`2020 WL 3869200 (N.D. Cal. July 9, 2020) (hearing May 15). The parties have
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`exchanged infringement, invalidity, and damages contentions, and have served and
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`3
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`Case IPR2022-01305
`U.S. Patent 6,922,632
`negotiated regarding 100 requests for production and more than two dozen
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`interrogatories during over nine months of fact discovery. Petitioner has proposed
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`that all document production be substantially complete by March 16, 2023. Ex. 2003
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`at 1. This factor thus weighs strongly in favor of denial. See Samsung Elecs. Co. v.
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`Clear Imaging Rsch., LLC, 2021 WL 628829, at *6-7 (P.T.A.B. Feb. 17, 2021).
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`Overlap. If IPR is instituted, Petitioner proposes to offer a fig-leaf stipulation
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`limited to “the actual grounds raised in this IPR.” Reply at 3. As evident in
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`Petitioner’s invalidity contentions (Ex. 2004), for each patent challenged in the IPRs,
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`Petitioner asserts invalidity over the same references raised in these IPRs as well as
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`others that Petitioner raises among its countless permutations of obviousness
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`combinations. E.g., Ex. 2004 at 67-69, 71. Accordingly, Meta’s narrow stipulation
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`“does not mitigate the ‘concerns of inefficiency and the possibility of conflicting
`
`decisions,’ nor does it ensure that an inter partes review is a ‘true alternative’ to the
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`parallel District Court proceeding.” Samsung, 2021 WL 628829, at *9. Petitioner’s
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`cited case (Reply at 3) is not to the contrary; the Board did not find that the limited
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`stipulation “effectively addresses” duplication to the same degree as a broader
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`stipulation consistent with 35 U.S.C. § 315(e)(2), but rather that the stipulation
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`“weighs marginally” in favor of institution. Nor does Petitioner’s observation that
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`claims challenged in the IPR—mostly dependent claims—are not asserted in the
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`parallel district court case move the needle, as “sufficiently similar claims are
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`4
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`Case IPR2022-01305
`U.S. Patent 6,922,632
`challenged” as those at issue in the parallel litigation, including independent claim
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`47. Id. at *8-9 (this factor favored denial of institution although six claims
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`challenged in IPR were not challenged in litigation).
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`Parties. The parties to Petitioner’s IPRs are the same as those involved in the
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`parallel litigation, and this factor thus favors denial of institution. See Reply at 4-5.
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`Possibility of Stay. Petitioner states that it will move for a stay in the event
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`of institution and that the district court has previously entered stays on different facts.
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`Reply at 2. But “[a] judge determines whether to grant a stay based on the facts of
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`each specific case as presented in the briefs by the parties,” and the Board should
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`“decline to infer, based on actions taken in different cases with different facts, how
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`the District Court would rule should a stay be requested by [Petitioner] in the parallel
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`case here.” Samsung, 2021 WL 628829, at *4 (quoting Fintiv, 2020 WL 2486683,
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`at *5). Petitioner relies on stay orders entered in cases less advanced than the parallel
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`litigation here, where the noted discovery undertaken was “limited to jurisdictional
`
`issues,” but the parties here are substantially further along. Reply at 2.
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`
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`Other Circumstances. As Patent Owner explained (Paper No. 9 at 65),
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`several of Petitioner’s Grounds are facially insufficient with respect to multiple
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`claims, which further supports denial of institution. Biofrontera Inc. v. DUSA
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`Pharms., Inc., IPR2018-01585, Paper 10 at 14 (P.T.A.B. Feb. 26, 2019).
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`5
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`
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`February 13, 2023
`
`D. Shayon Ghosh
`Reg. No. 75,865
`Gentex-IPR@wc.com
`
`Arthur J. Argall III
`Reg. No. 73,005
`Gentex-IPR@wc.com
`
`Adam D. Harber
`(pro hac vice motion
`forthcoming)
`Gentex-IPR@wc.com
`
`WILLIAMS & CONNOLLY LLP
`680 Main Avenue SW
`Washington, DC 20024
`202.434.5000
`
`Counsel for Real-Party-in-
`Interest Gentex Corporation
`
`Case IPR2022-01305
`U.S. Patent 6,922,632
`Respectfully submitted,
`
`/s/Meredith Martin Addy
`Meredith Martin Addy
`Reg. No. 37,883
`meredith@addyhart.com
`ADDYHART P.C.
`10 Glenlake Parkway, Suite 130
`Atlanta, Georgia 30328
`312.320.4200
`Robert Hart
`Reg. No. 35,184
`robert@addyhart.com
`Gregory B. Gulliver
`Reg. No. 44,138
`gbgulliver@addyhart.com
`Brandon C. Helms
`Reg. No. 61,742
`bhelms@addyhart.com
`
`ADDYHART P.C.
`401 N. Michigan Ave., Suite 1200-1
`Chicago, Illinois 60611
`312.834.7701
`Counsel for Patent Owner
`Thales Visionix, Inc.
`
`6
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`Case IPR2022-01305
`U.S. Patent 6,922,632
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`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies service of Patent
`
`Owner Thales Visionix Inc. and licensee Gentex Corporation served this Surreply
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`on the counsel of record for Petitioner Meta Platforms, Inc. by filing this document
`
`through the P-TRACTS, as well as delivering a copy via electronic mail to the
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`following:
`
`W. Todd Baker
`todd.baker@kirkland.com
`
`Yimeng Dou
`yimeng.dou@kirkland.com
`
`Date: February 13, 2023
`
`Ellisen Shelton Turner
`ellisen.turner@kirkland.com
`
`Akshay S. Deoras
`akshay.deoras@kirkland.com
`
`By: /s/ Meredith Martin Addy
`Meredith Martin Addy
`
`