IPR2024-01318
`U.S. Patent No. 8,646,042
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`——————————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`——————————
`
`GOOGLE LLC,
`
`Petitioner,
`
`v.
`
`PROXENSE, LLC,
`
`Patent Owner.
`
`——————————
`
`Case No. IPR2024-01318
`U.S. Patent No. 8,646,042
`Filing Date: April 12, 2012
`Issue Date: February 4, 2014
`
`
`
`
`PETITIONER’S SUPPLEMENTAL PAPER AND NOTICE RANKING
`PETITIONS1
`
`
`
`
`1 Petitioner is filing a substantively identical document in IPR2024-00782.
`
`
`U.S. Patent No. 8,646,042
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`——————————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`——————————
`
`GOOGLE LLC,
`
`Petitioner,
`
`v.
`
`PROXENSE, LLC,
`
`Patent Owner.
`
`——————————
`
`Case No. IPR2024-01318
`U.S. Patent No. 8,646,042
`Filing Date: April 12, 2012
`Issue Date: February 4, 2014
`
`
`
`
`PETITIONER’S SUPPLEMENTAL PAPER AND NOTICE RANKING
`PETITIONS1
`
`
`
`
`1 Petitioner is filing a substantively identical document in IPR2024-00782.
`
`
`
`
`I.
`
`IPR2024-01318
`
`U.S. Patent No. 8,646,042
`
`Introduction
`Petitioner previously filed a petition (“Original Petition”) for inter partes
`
`review of U.S. Patent No. 8,646,042 (“the ’042 patent”) in IPR2024-00782,
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`challenging the validity of claims 1-6, 8-15, and 17-20. Petitioner has now timely
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`filed a petition (“Joinder Petition”) with a conditional motion to join Microsoft’s
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`instituted proceeding in IPR2024-00573 (“Microsoft IPR”), requesting institution
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`and joinder be held in abeyance until, and only if, the Board declines to institute
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`Petitioner’s Original Petition. See Mot. for Joinder, IPR2024-01318. Since Petitioner
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`now has two concurrent petitions challenging the validity of the same patent,
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`Petitioner hereby provides: (1) “a ranking of the petitions in the order in which it
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`wishes the Board to consider the merits” and (2) “a succinct explanation of the
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`differences between the petitions, why the issues addressed by the differences are
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`material, and why the Board should exercise its discretion to institute additional
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`petitions.” Consolidated Trial Practice Guide (Nov. 2019) (“CTPG”), 60.
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`II. Ranking of Petitions
`Petitioner believes that both of its Original Petition and Joinder Petition are
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`meritorious and justified, but should the Board decide to institute only a single
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`petition against the ’042 patent, Petitioner requests that the Board institute
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`Petitioner’s Original Petition (in IPR2024-00782).
`
`
`
`1
`
`
`
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`III. Background and Related Proceedings
`Proxense, LLC (the “Patent Owner”) is the owner of the ’042 patent. On
`
`IPR2024-01318
`
`U.S. Patent No. 8,646,042
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`February 15, 2024, Microsoft filed a petition for review of the ’042 patent
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`(“Microsoft Petition”) in the Microsoft IPR. Separately, Petitioner filed an Original
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`Petition2 to challenge the validity of the ’042 patent on April 19, 2024. On June 10,
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`2024, Patent Owner filed its patent owner’s preliminary response in the Microsoft
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`IPR. On August 13, 2024, the Board granted institution of the Microsoft IPR.
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`IV. Material Differences Support Instituting Multiple Petitions
`Material differences exist between Petitioner’s concurrent Joinder Petition
`
`and Original Petition. For example, and as illustrated in the tables below, the two
`
`petitions raise different
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`invalidity grounds relying on different prior art
`
`combinations, and raise different arguments
`
`Joinder Petition (materially similar to the Microsoft Petition)
`Ground
`Claim(s) Challenged
`35 U.S.C. §
`Reference(s)
`Giobbi ’157,
`Giobbi ’139
`Giobbi ’157,
`Giobbi ’139, Dua
`Broadcom3
`
`1, 5, 6, 8–11, 13, 14
`
`1
`
`2
`
`3
`
`1, 5, 6, 8–11, 13, 14
`
`10, 11, 13, 14
`
`103
`
`103
`
`103
`
`
`2 Google’s Original Petition is not a “follow-on petition” to the Microsoft Petition
`as that term is used in General Plastic. See Paper 1, IPR2024-00782, at 83.
`3 Broadcom and Buer are the same EP 1536306 reference.
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`
`
`2
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`
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`IPR2024-01318
`
`U.S. Patent No. 8,646,042
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`Original Petition (IPR2024-00782)
`Claim(s) Challenged
`35 U.S.C. §
`10
`103
`10
`103
`1, 3-6, 8-15, and 17
`103
`2
`103
`12
`103
`3 and 18-20
`103
`
`Reference(s)
`Dua
`Dua, Kotola
`Buer3
`Buer, Lee
`Buer, Nishikawa
`Buer, Hoffmann
`
`
`
`Ground
`1
`2
`3
`4
`5
`6
`
`
`As shown in the above tables, Petitioner’s Original Petition challenges the ’042
`
`patent based on significantly different invalidity grounds.
`
`I.
`
`The General Plastic Factors Favor Institution
`The Board has applied the General Plastic framework to the joinder petition
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`of a petitioner that previously filed its own petition. Apple Inc. v. Uniloc 2017 LLC,
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`IPR2020-00854, Paper 9 (PTAB Oct. 28. 2020) (precedential); General Plastic
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`Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB
`
`Sept. 6, 2017) (precedential).
`
`A. General Plastic factors 1-3 weigh against discretionary denial.
`General Plastic factors 1-3 weigh against discretionary denial because factor
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`1 is at worst neutral and there are no concerns under factors 2 and 3. Code200, UAB
`
`v. Bright Data Ltd., IPR2022-00861, 00862, Paper 18 (PTAB Aug. 23, 2022).
`
`Factor 1 is at worst neutral this Joinder Petition does not prejudice Patent
`
`Owner. It is not uncommon for petitioners to submit more than one petition against
`
`
`
`3
`
`
`
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`the same patent, and “the Board recognizes that there may be circumstances in which
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`IPR2024-01318
`
`U.S. Patent No. 8,646,042
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`more than one petition may be necessary.” CTPG at 59. This is especially true when
`
`the parties (Microsoft and Google) independently and separately challenged the ’042
`
`patent, using different invalidity grounds, prior art references, and arguments. Any
`
`concerns of prejudice are further alleviated by Petitioner’s request to hold its Joinder
`
`Petition in abeyance until, and only if, the Board declines to institute the Original
`
`Petition. Given the timing requirements in IPRs, such a conditional request is
`
`reasonable. Apple Inc. v. Speir Techs. Ltd., IPR2023-00305, Paper 9 (PTAB May
`
`15, 2023).
`
`Factor 2 has limited relevance here but is also, at worst, neutral. Petitioner did
`
`not “strategically stage prior art and arguments in multiple petitions.” Instead,
`
`Petitioner diligently pursued its own petition based on different invalidity grounds
`
`and arguments. Further, given that the Joinder Petition is based on the same grounds
`
`and combinations of prior art in the Microsoft IPR, Petitioner has not gained any
`
`unfair advantage over Patent Owner here in filing a Joinder Petition. There is simply
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`no risk of harassment of Patent Owner or any frustration of Congress’s intent.
`
`Factor 3 weighs against discretionary denial because there are no “road-
`
`mapping” concerns. Code200, at 5. The Original Petition was prepared and filed
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`prior to any preliminary response was filed, so Petitioner could not have leveraged
`
`any patent owner response or Board decision as a roadmap in preparing its Original
`
`
`
`4
`
`
`
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`Petition. Nor was the Joinder Petition prepared based on any “lessons learned from
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`IPR2024-01318
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`U.S. Patent No. 8,646,042
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`later developments,” Code200, at 5, since that petition is a “copycat” petition that is
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`substantially the same as the instituted Microsoft Petition and does not seek to
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`introduce any new grounds or claims not in the Microsoft IPR.
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`B. General Plastic factors 4-7 favor institution.
`Factors 4 and 5 have limited relevance but favor institution. The Original
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`Petition was timely prepared based on different invalidity grounds and arguments.
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`The Joinder Petition was also timely filed within the timeline set by the Board’s
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`rules, so any time elapsed between these filings is proper. Factor 7 also has limited
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`relevance because the one-year statutory time period may be adjusted for a joined
`
`case. Code200, at 6. Lastly, factor 6 favors institution because there is no risk that
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`the two petitions would undermine the Board’s ability to complete the proceedings
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`in a timely manner. While the two petitions present different invalidity grounds, they
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`rely on some overlapping references, lowering the burden associated with
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`consideration of the petitions. And any remaining concerns of the Board’s resources
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`or of fairness are outweighed by the benefits “of improving patent quality by
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`reviewing the merits of the challenges raised in the petitions.” Code200, at 6.
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`
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`5
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`
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`Date: August 22, 2024
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`
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`IPR2024-01318
`
`U.S. Patent No. 8,646,042
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`Respectfully Submitted,
`
`
`
`
`
`
`
`
`
`/Erika H. Arner/
`Erika H. Arner
`Lead Counsel
`Reg. No. 57,540
`
`
`
`6
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`
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`IPR2024-01318
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`U.S. Patent No. 8,646,042
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies
`
`that a copy of
`
`the
`
`foregoing
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`PETITIONER’S SUPPLEMENTAL PAPER AND NOTICE RANKING
`
`PETITIONS was served on August 22, 2024, via FedEx Priority Overnight on the
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`correspondence address of record indicated in the Patent Office’s Patent Center
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`system for U.S. Patent No 8,646,042.
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`PATENT LAW WORKS/PROXENSE
`Greg Sueoka
`4516 South 700 East, Suite 290
`Salt Lake City, UT 84107
`
`A courtesy copy is also being sent via email to Patent Owner’s counsel in
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`Proxense, LLC v. Google LLC, No. 6:23-cv-00320 (W.D. Tex.), where Patent Owner
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`has asserted the subject patent:
`
`David L. Hecht
`dhecht@hechtpartners.com
`
`Maxim Price
`mprice@hechtpartners.com
`
`Conor B. McDonough
`cmcdonough@hechtpartners.com
`
`Yi Wen Wu
`wwu@hechtpartners.com
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`HECHT PARTNERS LLP
`125 Park Avenue, 25th Floor
`New York, New York 10017
`
`
`
`
`7
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`
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`IPR2024-01318
`
`U.S. Patent No. 8,646,042
`
`Brian D. Melton
`bmelton@susmangodfrey.com
`
`Geoffrey L. Harrison
`gharrison@susmangodfrey.com
`
`Meng Xi
`mxi@susmangodfrey.com
`
`Bryce T. Barcelo
`bbarcelo@susmangodfrey.com
`
`SUSMAN GODFREY L.L.P.
`1000 Louisiana Street, Suite 5100
`Houston, Texas 77002-5096
`
`Lear Jiang
`ljiang@susmangodfrey.com
`
`SUSMAN GODFREY L.L.P.
`1900 Avenue of the Stars, Suite 1400
`Los Angeles, California 90067-6029
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`
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`Dated: August 22, 2024
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`
`
`By: /Daniel E. Doku/
`Daniel E. Doku
`Litigation Legal Assistant
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
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`
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`
`8
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