Paper No. 9
`
`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. 7,725,253
`
`IPR2022-01308
`
`PATENT OWNER’S SURREPLY TO PETITIONER’S REPLY
`TO PATENT OWNER’S PRELIMINARY RESPONSE
`
`February 13, 2023
`
`
`
`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. 7,725,253
`
`IPR2022-01308
`
`PATENT OWNER’S SURREPLY TO PETITIONER’S REPLY
`TO PATENT OWNER’S PRELIMINARY RESPONSE
`
`February 13, 2023
`
`
`
`Case IPR2022-01308
`U.S. Patent 7,725,253
`
`Exhibit
`1001
`1002
`1003
`1004
`1005
`
`1006
`1007
`
`1008
`
`1009
`
`1010
`1011
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`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 IPR2022-01308
`U.S. Patent 7,725,253
`
`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 IPR2022-01308
`U.S. Patent 7,725,253
`
`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
`
`
`
`Case IPR2022-01308
`U.S. Patent 7,725,253
`Parallel district court litigation has been ongoing for the past eighteen months
`
`between the same parties involved in Petitioner’s eight IPRs against Patent Owner’s
`
`patents (Nos. IPR2022-01294, -01298, -01301, -01302, -01303, -01304, -01305, and
`
`-01308). Under the Board’s precedent in Apple Inc. v. Fintiv, Inc., Petitioner’s delay
`
`in bringing its IPRs and the progress made in the parallel district court litigation
`
`warrants denial of institution in accordance with the Board’s discretion under 35
`
`U.S.C. § 314(a). 2020 WL 2486683 (P.T.A.B. May 13, 2020). Petitioner’s reply
`
`only underscores this. Its calculated trial date defies credulity by equating the date
`
`of the case’s transfer (June 30, 2022) to the date of the case’s filing nearly a year
`
`prior (July 22, 2021). Petitioner’s approach is contrary to precedent and common
`
`sense, and lacks any support in the Director’s Interim Procedure for Discretionary
`
`Denials (“Vidal Memo”). And the carefully worded stipulation Petitioner offers—
`
`“that it will not pursue any invalidity challenges that were actually raised in the
`
`Petition if an IPR trial is instituted,” Paper No. 8 (“Reply”) at 1—fails to prevent
`
`duplication of effort in the district court litigation, as it applies only to actually raised
`
`grounds rather than grounds that reasonably could have been raised among the
`
`countless combinations Petitioner has asserted
`
`in
`
`the parallel
`
`litigation.
`
`Accordingly, the Fintiv factors favor denial of institution.
`
`I.
`
`The Board Should Deny Institution Under Fintiv
`
`Under Fintiv, the Board considers the following factors: 1) whether the
`
`1
`
`
`
`Case IPR2022-01308
`U.S. Patent 7,725,253
`district court proceedings are stayed; 2) proximity of the final written decision to
`
`trial; 3) investment in the district court proceedings; 4) issue overlap; 5) similarity
`
`of the parties; and 6) other circumstances impacting the Board’s discretion. Fintiv,
`
`2020 WL 2486683, at *3. The Vidal Memo clarified certain aspects of Fintiv and
`
`indicated that the Board should additionally consider whether “a petition presents
`
`compelling evidence of unpatentability.” Vidal Memo at 2. As clearly indicated in
`
`Patent Owner’s initial filing, the Petition here presents no such compelling evidence.
`
`The other factors are addressed below, and also strongly favor denial.
`
`Proximity to Trial Dates. This factor weighs in favor of denial of institution
`
`because the parties will likely proceed to trial before the Board would enter a final
`
`written decision. According to the Federal Judiciary’s statistics (https://www.
`
`uscourts.gov/statistics/table/na/federalcourt-management-statistics/2022/03/31-1;
`
`see Vidal Memo at 9 n.12), the median time from case filing to trial in the Northern
`
`District of California is 31.1 months, which would put trial in February 2024.
`
`Petitioner’s assertion that trial will take place “no earlier than February 2025” is
`
`premised on erroneously equating the transfer date to the case filing date. Petitioner
`
`cites no precedent in support of that baseless inference, which would negate
`
`everything that occurred prior to the transfer order entered nearly a year after the
`
`case was filed (Ex. 1028). Before transfer, the parties served infringement and
`
`invalidity contentions and fully briefed their claim construction positions, which the
`
`2
`
`
`
`Case IPR2022-01308
`U.S. Patent 7,725,253
`Northern District of California considered at the Markman hearing held last month—
`
`without further briefing after transfer. The parties have thus made significant
`
`progress both before and after transfer, and Petitioner offers no basis to claim that
`
`the trial date will be two years from now in 2025—which is one and a half years
`
`after all fact and expert discovery is set to close on the current schedule. Ex. 1036
`
`at 2. Rather, correctly applying the median time to trial from the case’s actual filing,
`
`as the Vidal Memo instructs, results in a trial five months after the close of expert
`
`discovery in February 2024 and prior to any final written decision by the Board.
`
`Accordingly, this factor weighs in favor of denial of institution. See Fintiv, 2020
`
`WL 2486683, at *5 (trial two months before final written decision supports denial).
`
`Investment in Parallel Proceedings. As Petitioner acknowledges (at 3), the
`
`parties have undertaken substantial—and costly—activities in the Western District
`
`of Texas and the Northern District of California. Claim construction was briefed
`
`and argued at the January 13, 2023 Markman hearing; an order is likely to issue
`
`soon, as Judge Gonzalez Rogers’ recent Markman orders have issued approximately
`
`one month after argument. See Impinj, Inc. v. NXP USA, Inc., 2022 WL 2125133
`
`(N.D. Cal. Mar. 21, 2022) (hearing March 4); Cellspin Soft, Inc. v. Fitbit, Inc., 2021
`
`WL 1417419 (N.D. Cal. Apr. 14, 2021) (hearing Mar. 5); VTT Tech. v. SiTime Corp.,
`
`2020 WL 3869200 (N.D. Cal. July 9, 2020) (hearing May 15). The parties have
`
`exchanged infringement, invalidity, and damages contentions, and have served and
`
`3
`
`
`
`Case IPR2022-01308
`U.S. Patent 7,725,253
`negotiated regarding 100 requests for production and more than two dozen
`
`interrogatories during over nine months of fact discovery. Petitioner has proposed
`
`that all document production be substantially complete by March 16, 2023. Ex. 2003
`
`at 1. This factor thus weighs strongly in favor of denial. See Samsung Elecs. Co. v.
`
`Clear Imaging Rsch., LLC, 2021 WL 628829, at *6-7 (P.T.A.B. Feb. 17, 2021).
`
`Overlap. If IPR is instituted, Petitioner proposes to offer a fig-leaf stipulation
`
`limited to “the actual grounds raised in this IPR.” Reply at 3. As evident in
`
`Petitioner’s invalidity contentions (Ex. 2004), for each patent challenged in the IPRs,
`
`Petitioner asserts invalidity over the same references raised in these IPRs as well as
`
`others that Petitioner raises among its countless permutations of obviousness
`
`combinations. E.g., Ex. 2004 at 83-86. Accordingly, Meta’s narrow stipulation
`
`“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
`
`parallel District Court proceeding.” Samsung, 2021 WL 628829, at *9. Petitioner’s
`
`cited case (Reply at 3) is not to the contrary; the Board did not find that the limited
`
`stipulation “effectively addresses” duplication to the same degree as a broader
`
`stipulation consistent with 35 U.S.C. § 315(e)(2), but rather that the stipulation
`
`“weighs marginally” in favor of institution. Nor does Petitioner’s observation that
`
`**two claims challenged in the IPR are not asserted in the parallel district court case
`
`move the needle, as “sufficiently similar claims are challenged” as those at issue in
`
`4
`
`
`
`Case IPR2022-01308
`U.S. Patent 7,725,253
`the parallel litigation. Id. at *8-9 (this factor favored denial of institution although
`
`six claims challenged in IPR were not challenged in litigation).
`
`Parties. The parties to Petitioner’s IPRs are the same as those involved in the
`
`parallel litigation, and this factor thus favors denial of institution. See Reply at 4.
`
`Possibility of Stay. Petitioner states that it will move for a stay in the event
`
`of institution and that the district court has previously entered stays on different facts.
`
`Reply at 2. But “[a] judge determines whether to grant a stay based on the facts of
`
`each specific case as presented in the briefs by the parties,” and the Board should
`
`“decline to infer, based on actions taken in different cases with different facts, how
`
`the District Court would rule should a stay be requested by [Petitioner] in the parallel
`
`case here.” Samsung, 2021 WL 628829, at *4 (quoting Fintiv, 2020 WL 2486683,
`
`at *5). Petitioner relies on stay orders entered in cases less advanced than the parallel
`
`litigation here, where the noted discovery undertaken was “limited to jurisdictional
`
`issues,” but the parties here are substantially further along. Reply at 2.
`
`
`
`Other Circumstances. As Patent Owner explained (Paper No. 7 at 63),
`
`several of Petitioner’s Grounds are facially insufficient with respect to multiple
`
`claims, which further supports denial of institution. Biofrontera Inc. v. DUSA
`
`Pharms., Inc., IPR2018-01585, Paper 10 at 14 (P.T.A.B. Feb. 26, 2019).
`
`5
`
`
`
`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 IPR2022-01308
`U.S. Patent 7,725,253
`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
`
`
`
`Case IPR2022-01308
`U.S. Patent 7,725,253
`
`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
`
`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
`
`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
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
