Filed on behalf of Petitioner by:
`Gerald B. Hrycyszyn, Reg. No. 50,474
`Adam R. Wichman, Reg. No. 43,988
`Richard F. Giunta, Reg. No. 36,149
`WOLF GREENFIELD & SACKS, P.C.
`600 Atlantic Ave.
`Boston, MA 02210-2206
`Tel: 617-646-8000
`Fax: 617-646-8646
`
`Paper No. __
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`VALTRUS INNOVATIONS LTD.,
`Patent Owner.
`_____________
`
`Case No. IPR2022-01408
`Patent No. 7,748,005
`_____________
`
`PETITIONER GOOGLE LLC’S NOTICE RANKING PETITIONS
`AND EXPLAINING MATERIAL DIFFERENCES
`
`
`Gerald B. Hrycyszyn, Reg. No. 50,474
`Adam R. Wichman, Reg. No. 43,988
`Richard F. Giunta, Reg. No. 36,149
`WOLF GREENFIELD & SACKS, P.C.
`600 Atlantic Ave.
`Boston, MA 02210-2206
`Tel: 617-646-8000
`Fax: 617-646-8646
`
`Paper No. __
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`VALTRUS INNOVATIONS LTD.,
`Patent Owner.
`_____________
`
`Case No. IPR2022-01408
`Patent No. 7,748,005
`_____________
`
`PETITIONER GOOGLE LLC’S NOTICE RANKING PETITIONS
`AND EXPLAINING MATERIAL DIFFERENCES
`
`
`
`
`
`Petitioner filed two petitions for inter partes review challenging U.S. Patent
`
`No. 7, 748,005 (“the ’005 patent”). Following the Board’s Consolidated Trial
`
`Practice Guide (November 2019) (“TPG”) at 59-60, Petitioner submits this notice
`
`identifying: (1) a ranking of petitions, and (2) a succinct explanation of differences
`
`between the petitions, why the issues addressed by the differences are material, and
`
`why the Board should use its discretion to institute both petitions.
`
`I.
`
`RANKING PETITIONS
`
`Rank Petition
`1
`IPR2022-01406
`
`Challenging
`claims 1-20
`
`2
`
`IPR2022-01408
`
`Challenging
`claims 1-20
`
`Grounds
`Ground 1: McCarthy in view of Gien renders obvious
`claims 1-20
`
`Ground 2: McCarthy anticipates or renders obvious
`claims 1, 6, and 8
`Ground 1: Jones in view of Agrawal renders obvious
`claims 1, 8
`
`Ground 2: Jones in view of Agrawal and Gien renders
`obvious claims 1-20
`
`
`II. MATERIAL DIFFERENCES BETWEEN PETITIONS
`
` Material Difference 1: Priority Date.
`
`Petition 1 challenges priority for each Challenged Claim in the continuation-
`
`in-part (“CIP”) application that issued as the ’005 patent (“the ’005 CIP”). The
`
`priority disputes involve two different written description arguments: the first
`
`applies to Ground 1, while the second applies to both Grounds. Petition 2 does not
`
`require deciding a priority dispute, because it relies on references that are prior art
`
`- 1 -
`
`
`
`
`
`under pre-AIA 35 U.S.C. § 102(a), (b) and (e) even if the challenged claims were
`
`afforded the earliest listed priority date. The difference is material.
`
`The ’005 patent lists Application No. 10/206,594 (“the ’594 application”),
`
`published February 20, 2003 (“McCarthy”), and No. 09/493,753 (“the ’753
`
`application”), filed January 28, 2000, as related applications. Petition 1
`
`demonstrates that McCarthy, the parent application published more than a year
`
`before the ’005 CIP was filed, is indisputable prior art under pre-AIA §102(b)
`
`because no Challenged Claim is entitled to an effective filing date earlier than
`
`September 10, 2004, the actual filing date for the ’005 CIP. Ground 1 shows that
`
`all 20 claims are obvious over McCarthy in view of a reference, Gien, teaching
`
`virtual machines. Ground 2 shows that claims 1, 6 and 8 are anticipated by or
`
`obvious over McCarthy alone.
`
`The TPG recognizes that “more than one petition may be necessary” in this
`
`exact circumstance—i.e., where “there is a dispute about priority date requiring
`
`arguments under multiple prior art references.” TPG at 59. The TPG implicitly
`
`acknowledges that it is often impractical to include in a single petition some
`
`grounds that are based on a priority challenge and others that are not, particularly
`
`where, as here, each petition must address a large number of lengthy claims. The
`
`twenty challenged claims alone amount to 919 words. EX1001, 15:5-16:63.
`
`- 2 -
`
`
`
`
`
` Material Difference 2: Verbatim Disclosure
`
`Petition 1 relies on McCarthy, which—aside from new subject matter added
`
`in the ’005 CIP—shares a specification with the ’005 patent. Aside from claim
`
`terms drawn to new matter, the challenged claim language appears largely
`
`verbatim in McCarthy. Moreover, during prosecution applicants filed a terminal
`
`disclaimer to overcome double-patenting obviousness rejections over McCarthy.
`
`Ex. 1002, 105. No disputes should arise concerning whether the McCarthy
`
`disclosures correspond to the language in the challenged claims. This is not true of
`
`Petition 2, which does not rely on McCarthy in any ground. The references in
`
`Petition 2 may raise new interpretation issues not present with Petition 1.
`
` Material Difference 3: Different Evidence
`
`Petition 2 relies on different primary (Jones) and secondary (Agrawal)
`
`references from Petition 1, which relies on McCarthy as a primary reference.
`
`Petition 2 also relies on grounds (1 and 2) that require a reason to combine multiple
`
`prior art references (Jones, Agrawal, and Gien).
`
`- 3 -
`
`
`
`Summary of Material Differences
`
`Material
`Difference
`Priority Date
`
`References
`Evidence
`
`Petition 1
`
`Petition 2
`
`No earlier than September
`10, 2004
`McCarthy, Gien
`Verbatim disclosures in
`Patent Owner’s own
`priority application
`(McCarthy)
`
`January 28, 2000
`
`Jones, Agrawal, Gien
`Third-party references,
`combinations of references, and
`evidence to prove claimed
`characteristics met.
`
`III. CONCLUSION
`
`The Petitions rely on different prior art based on different priority dates and
`
`each petition has materially different strengths. Petition 1 relies on Patent Owner’s
`
`own published priority application to meet the challenged claims but turns on the
`
`Board agreeing that the challenged claims are not entitled to an effective filing date
`
`before 2004. Petition 2 does not turn on a priority dispute, but relies on third-party
`
`references that may raise interpretative disputes not plausible with Petition 1, and
`
`relies on combinations of multiple references
`
`Instituting on only Petition 1 would limit Petitioner’s challenge to one reliant
`
`on the Board resolving the two priority disputes in Petitioner’s favor. The Board
`
`has instituted parallel Petitions in similar circumstances. Medtronic v. Teleflex,
`
`IPR2020-00130, Paper 20, 10-13 (Jun. 26, 2020) (instituting parallel petitions
`
`partly given “possibility that we may determine that [a reference] does not qualify
`
`as prior art after fully considering Patent Owner’s priority date arguments”);
`
`- 4 -
`
`
`
`Volkswagen v. Michigan Motor, IPR2020-00445, Paper 12, 13-15 (Aug. 5, 2020)
`
`(instituting parallel petitions where one involved a priority challenge); NRG
`
`Energy, Inc. v. Midwest Energy Emissions Corp., IPR2020-00832, Paper 17 at 15-
`
`18 (Oct. 26, 2020) (same); 10X Genomics, Inc. v. Bio-Rad Labs., IPR2020-00088,
`
`Paper 8, 46-47 (Apr. 27, 2020) (same); Microsoft Corp. v. IPA Techs., IPR2019-
`
`00810, Paper 12, 13-15 (Oct. 16, 2019) (instituting parallel petitions involving a
`
`priority dispute and where patent owner’s vague infringement allegation required
`
`Petitioner to challenge a large number of claims). Institution of two trials is
`
`warranted for the foregoing reasons and will not unduly burden the Board given
`
`the limited number of references relied on in the Petitions. Petitioner is amenable
`
`to aligning the proceedings’ schedules and to consolidating hearings to conserve
`
`the Board’s resources.
`
`Dated: August 17, 2022
`
`Respectfully submitted,
`
`Google LLC,
`
`By: /Gerald B. Hrycyszyn/
`
`Gerald B. Hrycyszyn, Reg. No. 50,474
`
`- 5 -
`
`
`
`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6 (E)(4)
`I certify that on August 17, 2022, I will cause a copy of the foregoing
`
`document, including any exhibits or appendices filed therewith, to be served via
`
`Overnight FedEx at the following correspondence address of record for the patent:
`
`HP Inc.
`3390 E. Harmony Road
`Mail Stop 35
`Fort Collins, CO 80528-9544
`
`Date: August 17, 2022
`
`
`
`/MacAulay Rush/
`MacAulay Rush
`Paralegal
`WOLF, GREENFIELD & SACKS, P.C.
`
`
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