IPR2022-01433
`Petitioner’s Response to Patent Owner’s Brief
`Filed on behalf of Amazon.com, Inc., Amazon Web Services, Inc.,
`and Amazon.com Services LLC
`
`By:
`J. DAVID HADDEN (Reg. No. 40,629)
`SAINA SHAMILOV (Reg. No. 48,266)
`BRIAN HOFFMAN (Reg. No. 39,713)
`JOHNATHAN CHAI (Reg. No. 75,690)
`JOHNSON KUNCHERIA (Reg. No. 69,093)
`KEVIN MCGANN (Reg. No. 48,793)
`FENWICK & WEST LLP
`801 California Street
`Mountain View, CA 94041
`Telephone: 650.988.8500
`Facsimile: 650.938.5200
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`AMAZON.COM, INC., AMAZON WEB SERVICES, INC.,
`AND AMAZON.COM SERVICES LLC,
`Petitioner,
`
`v.
`
`WAG ACQUISITION, LLC,
`Patent Owner.
`
`
`Case No. IPR2022-01433
`Patent 9,762,636
`_____________
`PETITIONER’S RESPONSE TO PATENT OWNER’S
`BRIEF RE RELEVANCE OF DECISION ON APPEAL IN
`EX PARTE WAG ACQUISITION, APPEAL 20233-003319
`
`
`
`
`Petitioner’s Response to Patent Owner’s Brief
`Filed on behalf of Amazon.com, Inc., Amazon Web Services, Inc.,
`and Amazon.com Services LLC
`
`By:
`J. DAVID HADDEN (Reg. No. 40,629)
`SAINA SHAMILOV (Reg. No. 48,266)
`BRIAN HOFFMAN (Reg. No. 39,713)
`JOHNATHAN CHAI (Reg. No. 75,690)
`JOHNSON KUNCHERIA (Reg. No. 69,093)
`KEVIN MCGANN (Reg. No. 48,793)
`FENWICK & WEST LLP
`801 California Street
`Mountain View, CA 94041
`Telephone: 650.988.8500
`Facsimile: 650.938.5200
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`AMAZON.COM, INC., AMAZON WEB SERVICES, INC.,
`AND AMAZON.COM SERVICES LLC,
`Petitioner,
`
`v.
`
`WAG ACQUISITION, LLC,
`Patent Owner.
`
`
`Case No. IPR2022-01433
`Patent 9,762,636
`_____________
`PETITIONER’S RESPONSE TO PATENT OWNER’S
`BRIEF RE RELEVANCE OF DECISION ON APPEAL IN
`EX PARTE WAG ACQUISITION, APPEAL 20233-003319
`
`
`
`
`
`IPR2022-01433
`Petitioner’s Response to Patent Owner’s Brief
`EXHIBIT LIST (37 C.F.R. § 42.63(e))
`
`Exhibit
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`Description
`
`U.S. Patent No. 9,762,636
`
`Declaration of Kevin Jeffay, Ph.D.
`
`Curriculum vitae of Kevin Jeffay, Ph.D.
`
`File History of U.S. Patent No. 9,762,636 (Abridged)
`
`U.S. Patent No. 6,389,473
`
`1006 Willebeek-LeMair et al. “Bamba—Audio and video streaming over the
`Internet,” published in 1998
`
`1007
`
`1008
`
`1009
`
`1010
`
`Declaration of Rachel Watters re Willebeek
`
`Defendants’ Opening Claim Construction Brief (Dkt. 37),
`No. 6:21-cv-00815-ADA (W.D. Tex.)
`
`Declaration of Dan Schonfeld (Dkt. 37.1), No. 6:21-cv-00815-ADA
`(W.D. Tex.)
`
`Plaintiff’s Responsive Claim Construction Brief (Dkt. 38),
`No. 6:21-cv-00815-ADA (W.D. Tex.)
`
`1011
`
`Declaration of Keith J. Teruya (Dkt. 38.1), No. 6:21-cv-00815-ADA
`(W.D. Tex.)
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`Defendants’ Reply Claim Construction Brief (Dkt. 42),
`No. 6:21-cv-00815-ADA (W.D. Tex.)
`
`Plaintiff’s Sur-Reply Claim Construction Brief (Dkt. 47),
`No. 6:21-cv-00815-ADA (W.D. Tex.)
`
`PCT Publication No. WO 1997/044942
`
`U.S. Patent No. 8,122,141
`
`U.S. Patent No. 6,668,088
`
`- i -
`
`
`
`IPR2022-01433
`Petitioner’s Response to Patent Owner’s Brief
`
`Exhibit
`
`Description
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`U.S. Patent No. 5,533,138
`
`U.S. Patent No. 5,469,212
`
`U.S. Patent No. 6,314,137
`
`U.S. Patent No. 6,848,004
`
`U.S. Patent No. 6,728,763
`
`Scheduling Order (Dkt. 35), No. 6:21-cv-00815-ADA (W.D. Tex.)
`
`Defendants’ Motion to Transfer Venue (Dkt. 30), No. 6:21-cv-00815-ADA
`(W.D. Tex.)
`
`United States District Courts Statistics
`
`Plaintiff’s Responsive Claim Construction Brief (Dkt. 39),
`No. 6:21-cv-00816-ADA (W.D. Tex.)
`
`Declaration of Keith J. Teruya (Dkt. 39.1), No. 6:21-cv-00816-ADA
`(W.D. Tex.)
`
`Defendants’ Reply Claim Construction Brief (Dkt. 43),
`No. 6:21-cv-00816-ADA (W.D. Tex.)
`
`Plaintiff’s Sur-Reply Claim Construction Brief (Dkt. 45),
`No. 6:21-cv-00816-ADA (W.D. Tex.)
`
`“Transmission Control Protocol,” IETF RFC793, published in
`September 1981
`
`TCP/IP Illustrated, Vol. 1, The Protocols, W. Richard Stevens,
`published in 1994
`
`1031
`
`U.S. Patent No. 6,175,862
`
`1032 Microsoft Computer Dictionary. Fifth ed. (additional excerpt)
`
`August 3, 2023, Deposition of W. Leo Hoarty
`
`1033
`
`
`- ii -
`
`
`
`IPR2022-01433
`Petitioner’s Response to Patent Owner’s Brief
`The Board’s appeal decision in EX2022, reversing the Examiner’s anticipation
`
`rejection, is irrelevant to the present IPR for several reasons.
`
`First, the rejection in EX2022 concerned the combination of Carmel’s FIG. 6B
`
`multiple quality level embodiment with FIG. 3C, but the Petition here relies instead on
`
`Carmel’s single quality level embodiment in FIG. 6A. Reply, 4-8. Thus, the Board’s
`
`finding that the Examiner failed to provide support connecting Carmel’s FIG. 6B
`
`embodiment to the symbols illustrated in FIG. 3C (EX2022, 7-8) is irrelevant.
`
`Second, Petitioner’s IPR challenge is based on obviousness and evidence not
`
`considered by the Board in reaching the decision in EX2022. WAG’s reexamination
`
`argument that Carmel discloses requesting only the first element and “[t]here is no
`
`evidence that there are any requests for any element after the first” (EX2022, 9)
`
`addressed anticipation and ignores expert testimony in the present IPR. The IPR experts
`
`testified that: (a) by 2000 HTTP GET requests were well known and the most common
`
`way for a client to request files from a server; (b) Carmel described storing slices as
`
`separate files (EX1005, 7:27-28); and (c) clients request individual files with individual
`
`requests. Reply, 3-4, 15 (citing testimony of three experts including WAG expert
`
`Hoarty (EX1033, ¶¶ 18-19, 26, 41-42, 47-48, 63); Jeffay (EX2010, ¶ 111); and Houh
`
`(EX2021, ¶¶ 81-83)). The Board in EX2022 instead based its decision solely on what
`
`Carmel expressly teaches and did not have the benefit of the foregoing expert testimony.
`
`EX2022, 9.
`
`- 1 -
`
`
`
`IPR2022-01433
`Petitioner’s Response to Patent Owner’s Brief
`Third, Petitioner relies on Feig as disclosing well-known details for HTTP GET
`
`requests. Reply, 6, 20. The combination of Carmel and Feig was not at issue in
`
`EX2022.
`
`Fourth, WAG does not dispute limitation f in this IPR, which most closely
`
`corresponds to the limitation at issue in EX2022. See Pet., 35-39; Reply, 14-15;
`
`EX2022, 4. The Petition explicitly describes how Carmel alone and in combination
`
`with Feig discloses this limitation by reference in part to Carmel’s FIGS. 6A and 3C
`
`and expert testimony. Pet., 35-39. In particular, the Petition explains the correlation
`
`between the symbols (J, J+1, J+2…) of FIG. 3C and the user systems’ requests (as
`
`represented by FIG. 6A) that the Examiner failed to provide in EX2022. Id. WAG
`
`chose not to address this limitation in its Reply, just as WAG did not dispute a similar
`
`limitation found in claim 10 of the ’141 patent that was cancelled in IPR2016-01238.
`
`See IPR2016-01238, Paper 22, 5 (listing claim 10); EX2022 at 2.
`
`The decision in EX2022 is thus irrelevant to the present IPR. It was based on a
`
`different invalidity theory, as well as different prior art embodiments, arguments, and
`
`evidence. Nor does WAG appear to have disclosed evidence developed during this IPR
`
`to the panel in Reexamination 90/014,834 from which EX2022 arose. The record in
`
`the present IPR demonstrates that a POSITA would have found the challenged claims
`
`obvious based on the presented references.
`
`
`
`- 2 -
`
`
`
`IPR2022-01433
`Petitioner’s Response to Patent Owner’s Brief
`
`
`Dated: December 8, 2023
`
`FENWICK & WEST LLP
`
`
`/J. David Hadden/
`J. DAVID HADDEN
`Reg. No. 40,629
`Attorney for Petitioner
`
`
`
`
`
`
`
`
`
`
`- 3 -
`
`
`
`IPR2022-01433
`Petitioner’s Response to Patent Owner’s Brief
`CERTIFICATION OF SERVICE
`Pursuant to 37 C.F.R. § 42.6, the undersigned certifies that on December 8,
`
`2023, I caused a true and correct copy of the foregoing PETITIONER’S RESPONSE TO
`
`PATENT OWNER’S BRIEF RE RELEVANCE OF DECISION ON APPEAL IN EX PARTE WAG
`
`ACQUISITION, APPEAL 20233-003319 to be electronically served on Patent Owner’s
`
`lead and backup counsel at the following addresses:
`
`Ronald Abramson
`Liston Abramson LLP
`405 Lexington Ave., 46th Floor
`New York, NY 10174
`
`Email:
`ron.abramson@listonabramson.com
`
`
`
`
`Dated: December 8, 2023
`
`Fenwick & West LLP
`801 California Street
`Mountain View, CA 94041
`
`M. Michael Lewis
`Ari J. Jaffess
`Gina K. Kim
`Liston Abramson LLP
`405 Lexington Ave., 46th Floor
`New York, NY 10174
`
`Email:
`michael.lewis@listonabramson.com
`ari.jaffess@listonabramson.com
`gina.kim@listonabramson.com
`
`
`FENWICK & WEST LLP
`
`
`/J. David Hadden/
`J. DAVID HADDEN
`Reg. No. 40,629
`Attorney for Petitioner
`
`
`
`- 4 -
`
`
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