UNITED STATES PATENT AND TRADEMARK OFFICE
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` AMAZON WEB SERVICES, INC.
` AND AMAZON.COM SERVICES LLC,
` Petitioners,
`
` v.
`
` Zentian Limited
` Patent Owner.
` ____________________
`
` Case IPR2023-01197
` Patent No. 10,971,140
` ____________________
`
` PATENT OWNER’S SUR-REPLY IN SUPPORT OF ITS PRELIMINARY
` RESPONSE AND CONTINGENT JOINDER OPPOSITION
`
`
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` AMAZON WEB SERVICES, INC.
` AND AMAZON.COM SERVICES LLC,
` Petitioners,
`
` v.
`
` Zentian Limited
` Patent Owner.
` ____________________
`
` Case IPR2023-01197
` Patent No. 10,971,140
` ____________________
`
` PATENT OWNER’S SUR-REPLY IN SUPPORT OF ITS PRELIMINARY
` RESPONSE AND CONTINGENT JOINDER OPPOSITION
`
`
`
` Case IPR2023-01197
` P ATENT O WNER ’ S S UR -R EPLY
`
` EXHIBIT LIST
`
` Exhibit No.
` 2001
`
` 2002
`
` 2003
`
` Description
` Amazon’s District Court Amended Invalidity Contentions
` Scheduling Order in Zentian Ltd. v. Amazon.com, Inc.,
` 6:22-cv-00123 (W.D. Tex.)
` Correspondence between counsel for Zentian and Amazon re:
` Sotera stipulation
`
` - 1 -
`
`
`
` Case IPR2023-01197
` P ATENT O WNER ’ S S UR -R EPLY
`
` Amazon’s analysis of the Fintiv factors and the Sotera stipulation issue is
`
` inaccurate, and the Board should not institute unless Amazon at least agrees not to
`
` pursue the same grounds and prior art presented in the Petition in the parallel
`
` district court proceeding.
`
` Fintiv factor 1 weighs against institution: there is no stay of the proceedings
`
` before the district court, nor is there any expectation of a stay.
`
` Fintiv factor 3 also weighs against institution. As Fintiv explained, “if, at
`
` the time of the institution decision, the district court has issued substantive orders
`
` related to the patent at issue in the petition, this fact favors denial” of the Petition.
`
` Fintiv at 9–10. Here, the district court has already issued a Markman order
`
` construing the claims. See 6:22-cv-00123, Dkt. 66 (June 20, 2023). Contrary to
`
` Amazon’s assertions, factor 3 thus favors denial.
`
` Fintiv factor 4 also strongly weighs against institution. This factor is
`
` directed to “overlap between issues raised in the petition and in the parallel
`
` proceeding,” not to a comparison between the date for the final written decision
`
` and the district court trial date, as Amazon contends. See Paper 8 at 1-2. As
`
` demonstrated in the POPR, Amazon’s invalidity contentions before the district
`
` - 1 -
`
`
`
` Case IPR2023-01197
` P ATENT O WNER ’ S S UR -R EPLY
` court raise effectively all of the same key prior art references as Amazon’s petition
`
` before the Board. Accordingly, factor 4 weighs against institution.
`
` Fintiv factor 5 also weighs against institution because the same parties are
`
` involved before the Board and the district court. Contrary to Amazon’s assertion,
`
` factor 5’s impact is not “slight,” and this factor should be given due weight in the
`
` Board’s analysis.
`
` As for factor 2, the close proximity between the date for the Board’s final
`
` written decision and the district court’s trial date should weigh against institution
`
` here. Nonetheless, factors 1 and 3-5 plainly weigh against institution, and factor 2’s
`
` effect in the overall analysis is thus minimal in any event.
`
` Finally, with respect to Fintiv factor 6, Amazon's arguments are unavailing .
`
` Zhuhai v. Maxell did not hold that a time-barred follow-on petitioner such as
`
` Amazon need not adopt a Sotera stipulation when it seeks to join a proceeding in
`
` which the lead petitioner obtained institution in part by offering a Sotera
`
` stipulation. IPR2022-00984, Paper 8 at 4 . Zhuhai did not address that issue at all.
`
` Amazon’s reliance on Zhuhai for the general proposition that a lead petitioner need
`
` not adopt a Sotera stipulation in order to obtain institution has no persuasive value
`
` in this context. The question is not whether Apple was required to adopt a Sotera
`
` stipulation; the point is that Apple did do so, and thereby avoided the “compelling
`
` - 2 -
`
`
`
` Case IPR2023-01197
` P ATENT O WNER ’ S S UR -R EPLY
` merits” standard at the institution phase and benefited its ability to obtain
`
` institution. It would be entirely unfair and prejudicial for Amazon to now obtain
`
` institution of its time-barred petitions through the discretionary process of joinder
`
` without also being bound by an appropriate Sotera stipulation. And while Amazon
`
` contends that it would not be estopped before the district court from raising
`
` “grounds that could have reasonably been raised in the Petition,” Paper 8 at 3,
`
` citing Network-1 Techs., Inc. v. Hewlett-Packard Co. , 981 F.3d 1015, 1027 (Fed.
`
` Cir. 2020), the Board should at a minimum require, as a condition to institution,
`
` that Amazon agree not to pursue in the parallel district court proceeding the same
`
` grounds and prior art references that have been presented in the Petition. To the
`
` extent Amazon refuses to provide that stipulation, the Board should respectfully
`
` deny institution.
`
` Respectfully submitted,
`
` /s/ Peter Knops
`
` Peter C. Knops, Reg. No. 37,659
` Kayvan B. Noroozi, Pro Hac Vice forthcoming
` N OROOZI PC
` 11601 Wilshire Blvd., Suite 2170
` Los Angeles, CA 90025
` Attorneys for the Patent Owner
`
` Date: November 15, 2023
`
` - 3 -
`
`
`
` CERTIFICATION OF SERVICE
`
` The undersigned hereby certifies that the foregoing PATENT OWNER’S
`
` SUR-REPLY IN SUPPORT OF ITS PRELIMINARY PRELIMINARY
`
` RESPONSE AND CONTINGENT JOINDER OPPOSITION was served
`
` electronically via e-mail on November 15, 2023, on the following counsel of
`
` record for Petitioner:
`
` J. David Hadden (Reg. No. 40,629)
` dhadden@fenwick.com
` Fenwick & West LLP
` 801 California Street
` Mountain View, CA 94041
` Telephone: (650) 988-8500
` Facsimile: (650) 938-5200
`
` Date: November 15, 2023
`
` Saina Shamilov (Reg. No. 48,266)
` sshamilov@fenwick.com
` Fenwick & West LLP
` 801 California Street
` Mountain View, CA 94041
` Telephone: (650) 988-8500
` Facsimile: (650) 938-5200
`
` Dargaye Churnet (Reg. No. 71,288)
` dchurnet@fenwick.com
` Fenwick & West LLP
` 555 California Street, 12th Floor
` San Francisco, CA 94104
` Telephone: (415) 875-2300
` Facsimile: (415) 281-1350
`
` /Peter Knops/
` Peter C. Knops, Reg. No. 37,659
` N OROOZI PC
` 11601 Wilshire Blvd., Suite 2170
` Los Angeles, CA 90025
` Tel.: 310-975-7074
` Counsel for Patent Owner
`
`
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