`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`———————
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`RFCYBER CORP.,
`Patent Owner
`
`
`
`
`———————
`
`PGR2021-00029
`U.S. Patent No. 10,600,046
`
`
`(§ 103 Challenge)
`
`
`PETITIONER’S AUTHORIZED REPLY
`TO PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`PGR2021-00029 (U.S. Patent No. 10,600,046) (§ 103)
`
`Petitioner submits this reply in response to Patent Owner’s Preliminary
`
`Response (“POPR”) (Paper 7). The NHK/Fintiv framework does not support
`
`discretionary denial here. Further, Patent Owner’s disclaimer of claims 6-11 and
`
`15-16 has no impact on the eligibility of the ’046 Patent for post-grant review.
`
`I. THE FINTIV FACTORS FAVOR INSTITUTION
`
`Patent Owner has asserted the ’046 Patent against Petitioner. Petition, at 1;
`
`GOOG-1041. The Board balances six factors in considering discretionary denial
`
`when there is parallel litigation. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper
`
`11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”).
`
`A. Factor 1 is neutral (Possibility of a Stay)
`
`This factor is neutral. Patent Owner’s speculation that it is “highly unlikely”
`
`that the district court will grant a stay is just that—speculation. POPR, 35. A stay
`
`pending the outcome of this PGR in the co-pending district court litigation has not
`
`been requested, and the Board should not infer the outcome of any motion to stay.
`
`See DISH Network L.L.C. v. Broadband iTV, Inc., IPR2020-01359, Paper 15 at 11
`
`(PTAB Feb. 12, 2021) (“It would be improper to speculate, . . . what the Texas
`
`court might do regarding a motion to stay,” when a stay had not been requested).
`
`B. Factor 2 is Neutral (Timing of Trial)
`
`Factor 2 is neutral. At a May 12, 2021 scheduling conference, the district
`
`court scheduled the trial date for March 21, 2022. GOOG-1046, 1. While the
`
`1
`
`
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`PGR2021-00029 (U.S. Patent No. 10,600,046) (§ 103)
`
`Board would issue a final written decision by approximately July 2022, the short
`
`time period between the trial and the issuance of the final written decision does not
`
`warrant a discretionary denial. See Hulu, LLC v. SITO Mobile R&D IP, IPR2021-
`
`00206, Paper 11 at 10-11 (PTAB May 10, 2021) (trial date three months before
`
`final written decision weighs only “marginally in favor of” discretionary denial).
`
`Further, this factor is outweighed by other factors identified below,
`
`including delays by Patent Owner at the district court, minimal investment in the
`
`district court trial, and Petitioner’s diligence in filing the Petition. See PEAG LLC
`
`v. Varta Microbattery GmbH, IPR2020-01214, Paper 8 at 15-18 (PTAB Jan. 6,
`
`2021) (district court trial seven months before final written decision outweighed by
`
`minimal investment in district court trial and diligence in filing petition).
`
`C. Factor 3 Favors Institution (Investment in Parallel Proceeding)
`
`This factor, which focuses on work completed “at the time of the institution
`
`decision,” strongly favors institution. Fintiv at 9–10. The focus of this factor is the
`
`amount invested “in the merits of the invalidity positions.” Sand Revolution II v.
`
`Cont’l Intermodal Grp.-Trucking, IPR2019-01393, Paper 24 at 10 (PTAB June 16,
`
`2020) (informative) (emphasis added). There will be minimal investment in the
`
`invalidity positions at district court when the Board issues the institution decision.
`
`At Patent Owner’s request, the deadline for serving infringement contentions
`
`was delayed, resulting in subsequent delays. GOOG-1047; GOOG-1048. Thus,
`
`2
`
`
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`PGR2021-00029 (U.S. Patent No. 10,600,046) (§ 103)
`
`Petitioner’s preliminary invalidity contentions will not be served until July 14,
`
`2021, about two weeks before the Board’s institution decision. GOOG-1048, 1. At
`
`the time of the institution decision, very little will have been done at the district
`
`court as to the merits of the invalidity positions. See PEAG, IPR2020-01214,
`
`Paper 8 at 17 (minimal investment weighs against discretionary denial).
`
`Examples of investment that will not have occurred at the time of the
`
`institution decision include: (i) claim construction, GOOG-1046, 3, (ii) Petitioner’s
`
`final invalidity contentions, GOOG-1049, 58-59 (Patent Rule 3-6(a)(2)), (iii)
`
`Petitioner’s expert invalidity report, GOOG-1046, 3, and (iv) Patent Owner’s
`
`expert validity report (if any). GOOG-1046, 3. Invalidity discovery does not close
`
`until December 6, 2021, nearly five months after the Board issues the institution
`
`decision. GOOG-1046, 3. Dispositive motions on the invalidity of the ’046 Patent
`
`have not been filed, and, as such, there will be no district court orders related to the
`
`validity of the ’046 Patent when the institution decision issues. GOOG-1046, 3.
`
`Thus, when the Board issues its institution decision, there will be only minimal
`
`investment on the merits of the invalidity positions. See Fintiv at 10 (minimal
`
`investment when the district court has not issued orders related to the patent at the
`
`time of the institution decision); AGIS Software Dev. LLC v. Google LLC, No.
`
`2:19-cv-00361-JRG, ECF No. 219 at 5 (E.D. Tex. Feb. 9, 2021) (GOOG-1050)
`
`(granting stay when significant resources would need to be expended before trial).
`
`3
`
`
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`PGR2021-00029 (U.S. Patent No. 10,600,046) (§ 103)
`
`Petitioner acted diligently in filing the Petition within three months of being
`
`served with the Complaint, and before being served with preliminary infringement
`
`contentions. Petitioner’s diligence weighs in favor of institution. See, e.g., Hulu,
`
`IPR2021-00206, Paper 11 at 12 (PTAB May 10, 2021) (Petitioner’s diligence in
`
`filing five months after complaint and two months after preliminary infringement
`
`contentions weighs in favor of institution).
`
`D. Factor 4 Favors Institution (Overlap of Issues)
`
`This factor strongly favors institution. Patent Owner speculates that “this
`
`Petition will involve the same arguments and evidence as the Texas Action,”
`
`despite Petitioner not serving its preliminary invalidity contentions. POPR, 37. To
`
`reduce overlap, if the Board institutes trial, Petitioner stipulates that it will not
`
`assert in the district court litigation invalidity grounds relying on any of the prior
`
`art contained in the obviousness grounds raised in the Petition, for the claims on
`
`which trial is instituted, while trial is instituted. This stipulation eliminates any
`
`overlap between the grounds in this proceeding and any invalidity challenges to be
`
`raised in district court, if the Board institutes review. See Fintiv at 12-13
`
`(discretionary denial is unwarranted when “the petition includes materially
`
`different grounds, arguments, and/or evidence than those presented in the district
`
`court). Petitioner’s stipulation is broader than the stipulation in Sand Revolution
`
`that weighed in favor of institution. See IPR2019-01393, Paper 24 at 12 & n.5.
`
`4
`
`
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`PGR2021-00029 (U.S. Patent No. 10,600,046) (§ 103)
`E. Factor 5 is Neutral (Overlapping Parties)
`
`Petitioner is a defendant in the litigation. This factor is neutral due to the
`
`lack of overlap on the merits between this proceeding and the litigation.
`
`F. Factor 6 Favors Institution (Other Circumstances)
`
`The strong grounds of unpatentability presented in the Petition favor
`
`institution. See Fintiv at 14-15 (strong grounds favor institution).
`
`II. PATENT OWNER’S DISCLAIMER DOES NOT IMPACT PGR
`ELIGIBILITY OF THE ’046 PATENT
`
`The only Board panels that have thoroughly analyzed whether disclaimer
`
`impacts PGR eligibility have held that it does not. See RetailMeNot, Inc. v. Honey
`
`Sci. Corp., PGR2019-00060, Paper 17 at 9-17 (PTAB Mar. 10, 2020)
`
`(“RetailMeNot”) (analyzing AIA § 3(n)(1) and holding that “filing of a statutory
`
`disclaimer of claims … does not act to remove [a] patent from eligibility for post-
`
`grant review”); Unified Patents, LLC v. Pebble Tide, LLC, PGR2020-00011, Paper
`
`12 at 11-21 (PTAB Jul. 7, 2020) (“Unified”) (agreeing with RetailMeNot that “a
`
`patent may be eligible for PGR by virtue of claims that were, at some point in time,
`
`part of the application for patent, even if those claims are later subject to a
`
`statutory disclaimer”). Although two panels have suggested otherwise, those panels
`
`either addressed the issue in dicta (Axon) or bypassed the issue without explanation
`
`(Lifescan). See, e.g., Axon Enter., Inc. v. Digital Ally, Inc., PGR2018-00052,
`
`Paper 8 (PTAB Oct. 1, 2018); Lifescan Global Corp. v. Ikeda Food Rsch., Ltd.,
`
`5
`
`
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`PGR2021-00029 (U.S. Patent No. 10,600,046) (§ 103)
`
`PGR2019-00031, Paper 7 (PTAB Aug. 15, 2019).
`
`In holding that disclaimer does not affect PGR eligibility, RetailMeNot
`
`thoroughly analyzed the interplay between the controlling statutory language of
`
`AIA § 3(n)(1), 37 C.F.R. § 42.207(e), Federal Circuit precedent regarding the
`
`effect of disclaimer, the precedential Facebook decision regarding CBM eligibility,
`
`and the legislative history. RetailMeNot, at 9-17. Here, Patent Owner cites to each
`
`of these same authorities yet urges a different result—without any explanation of
`
`why RetailMeNot was wrong. See POPR, 18-22 (citing 37 C.F.R. § 42.207(e),
`
`Federal Circuit disclaimer precedent, Facebook, and the legislative history). Patent
`
`Owner’s only “new” authority is a panel decision, Lifescan, that contains no
`
`analysis regarding the effect of disclaimer on PGR-eligibility. See Lifescan at 6-25
`
`(noting only the existence of patent owner’s disclaimer and then analyzing the only
`
`remaining claim). Patent Owner incorrectly suggests that this decision somehow
`
`negates the thorough, well-reasoned analysis of RetailMeNot. POPR, 21.
`
`This panel, like Unified, should follow RetailMeNot, which correctly
`
`recognized that AIA § 3(n)(1) “looks beyond simply the claims in the patent and
`
`considers claims contained at any time in the application for patent.” RetailMeNot
`
`at 10 (emphasis added). Thus, even if Federal Circuit precedent states that a
`
`disclaimed claim is viewed as though it “had never existed in the patent,” such
`
`precedent is irrelevant to PGR eligibility, which considers whether the application
`
`6
`
`
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`PGR2021-00029 (U.S. Patent No. 10,600,046) (§ 103)
`
`ever contained the claim. Id. at 10 (quoting Guinn v. Kopf, 96 F.3d 1419, 1422
`
`(Fed. Cir. 1996)). Unified agreed, holding that the statements in Guinn and
`
`Facebook regarding disclaimer “are inapposite to PGR eligibility, as such
`
`eligibility turns on whether the application for patent (not simply the issued patent)
`
`ever contained, at any time, a qualifying claim.” Unified at 19.
`
`RetailMeNot also correctly held (and Unified agreed) that the statement in 37
`
`C.F.R. § 42.207(e) of “[n]o post-grant review will be instituted based on
`
`disclaimed claims” refers only “to the substantive basis for institution.”
`
`RetailMeNot at 15. “[T]he best reading of Rule 42.207(e) is that [the Board] will
`
`not institute a trial to review the patentability of claims that have been statutorily
`
`disclaimed, not that disclaimer defeats eligibility of a patent for PGR.” Unified at
`
`20. Indeed, the corresponding rule for IPR, 37 CFR § 42.107(e), includes the same
`
`language forbidding institution based on disclaimed claims, yet IPR does not have
`
`the eligibility requirement of PGR. This confirms that the language in § 42.207(e)
`
`pertains to which claims are instituted, rather than to PGR eligibility.
`
`In any event, the Board need not reach the question of whether Patent
`
`Owner’s disclaimer affects PGR eligibility because claims 1-5, 12-14, and 17 each
`
`have an effective filing date later than March 16, 2013. See Petition at 6-12, 16-20.
`
`These claims individually and independently create PGR eligibility.
`
`The Board should reject Patent Owner’s arguments and institute review.
`
`7
`
`
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`PGR2021-00029 (U.S. Patent No. 10,600,046) (§ 103)
`
`Date: May 19, 2021
`
`
`
`
`
`Respectfully submitted,
`
`
`/Andrew S. Ehmke/
`Andrew S. Ehmke
`Lead Counsel for Petitioner
`Registration No. 50,271
`
`
`
`
`
`8
`
`
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`PGR2021-00029 (U.S. Patent No. 10,600,046) (§ 103)
`
`PETITIONER’S EXHIBIT LIST
`
`
`GOOG-1001 U.S. Patent No. 10,600,046 to Xie et al. (“’046 Patent”)
`GOOG-1002 Prosecution History of U.S. Patent No. 10,600,046 (“’046 PH”)
`GOOG-1003 Declaration of Mr. Stephen Gray under 37 C.F.R. § 1.68
`GOOG-1004 Curriculum Vitae of Mr. Gray
`GOOG-1005 U.S. Patent Application Publication No. 2014/0310117 to Moshal
`(“Moshal”)
`GOOG-1006 Verified English Language Translation of Japanese Patent No.
`4901053 B2 (“Jogu”)
`GOOG-1007 U.S. Patent No. 9,027,827 to Dessert et al. (“Dessert”)
`GOOG-1008 U.S. Patent Application Publication No. 2014/0365371 to Ohlhausen
`(“Ohlhausen”)
`GOOG-1009 U.S. Patent Application Publication No. 2010/0211507 to Aabye et
`al. (“Aabye”)
`GOOG-1010 U.S. Patent Application Publication No. 2014/0297381 to Park
`(“Park”)
`GOOG-1011 U.S. Patent Application Publication No. 2011/0066550 to Shank et
`al. (“Shank”)
`GOOG-1012 U.S. Patent No. 8,170,527 to Granucci (“Granucci”)
`GOOG-1013 U.S. Patent Application Publication No. 2013/0166448 to Narayanan
`(“Narayanan”)
`GOOG-1014 Japanese Patent No. 4901053 B2 to Jogu
`GOOG-1015 U.S. Patent Application Publication No. 2011/0173060 to Gallagher
`(“Gallagher”)
`GOOG-1016 U.S. Patent Application Publication No. 2013/0048717 to Brendell et
`al.
`GOOG-1017 U.S. Patent No. 9,202,330 to Boucher (“Boucher”)
`GOOG-1018 Mifare in Action, Card Technology Today (Mar. 2003)
`GOOG-1019 U.S. Patent No. 7,890,371 to Chao
`GOOG-1020 U.S. Patent No. 10,380,573 to Lin
`GOOG-1021 U.S. Patent Application Publication No. 2009/0094123 to Killian
`GOOG-1022 U.S. Patent Application Publication No. 2010/0174650 to Nonaka
`
`9
`
`
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`PGR2021-00029 (U.S. Patent No. 10,600,046) (§ 103)
`
`GOOG-1023 Reserved
`GOOG-1024 U.S. Patent Application Publication No. 2012/0296819 to Lu
`GOOG-1025 U.S. Patent Application Publication No. 2010/0287095 to Ueno
`(“Ueno”)
`GOOG-1026 Comparison (not including figures) of the specification of U.S.
`Application No. 13/350,832 (as published in U.S. Patent Application
`Publication No. 2012/0130838) and the specification of U.S. Patent
`No. 9,047,601
`GOOG-1027 Comparison (not including figures) of the specification of U.S.
`Provisional No. 61/618,802 and the specification of U.S. Patent
`9,047,601
`GOOG-1028 U.S. Patent No. 8,118,218 (“the ʼ218 Patent”)
`GOOG-1029 U.S. Patent Application Publication No. 2012/0130838 (publication
`of U.S. Application 13/350,832) (“the ʼ832 application”)
`GOOG-1030 U.S. Provisional No. 61/618,802
`GOOG-1031 U.S. Patent 9,047,601 (“the ʼ601 Patent”)
`GOOG-1032 U.S. Patent Application Publication No. 2013/0246258
`GOOG-1033 U.S. Patent No. 8,601,266
`GOOG-1034 U.S. Patent Application Publication No. 2010/0211504
`GOOG-1035 Petri Vuorinen, Applying the RFID technology for field force solution
`(Oct.
`2005),
`available
`at
`https://dl.acm.org/doi/pdf/10.1145/1107548.1107564
`GOOG-1036 Carol L. Clark, Shopping without cash: The emergence of the e-purse,
`Economic Perspectives (2005) (“Shopping without cash”)
`GOOG-1037 History
`of
`Money
`and
`Payments,
`https://squareup.com/us/en/townsquare/history-of-money-and-
`payments
`GOOG-1038 Reserved
`GOOG-1039 PayPal, Britannica, https://www.britannica.com/topic/PayPal
`GOOG-1040 U.S. Patent No. 7,597,250
`GOOG-1041 Complaint for Patent Infringement, RFCyber Corp. v. Google LLC et
`al., 2:20-cv-00274 (E.D. Tex. Aug. 21, 2020)
`GOOG-1042 Affidavits of Service in RFCyber Corp. v. Google LLC et al., 2:20-
`cv-00274 (E.D. Tex.)
`
`10
`
`
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`PGR2021-00029 (U.S. Patent No. 10,600,046) (§ 103)
`
`GOOG-1046
`(NEW)
`
`GOOG-1047
`(NEW)
`
`GOOG-1043 Infernal Technology, LLC v. Sony Interactive Entertainment LLC,
`No. 2:19-cv-249, ECF No. 261 (E.D. Tex. Nov. 20, 2020)
`GOOG-1044 Ramot at Tel Aviv Univ. v. Cisco Sys., Inc., No. 2:19-cv-225, ECF
`No. 203 (E.D. Tex. Nov. 20, 2020)
`GOOG-1045 Solas Oled Ltd. v. Samsung Display Co., Ltd., No. 2:19-cv-152, ECF
`No. 302 (E.D. Tex. Nov. 20, 2020)
`Docket Control Order, RFCyber Corp. v. Google LLC et al., 2:20-cv-
`00274 (E.D. Tex.) (from May 12, 2021 scheduling conference)
`April 20, 2021 email from Patent Owner’s counsel seeking extension
`of service of preliminary infringement contentions
`Joint Motion for Extension of Deadlines, RFCyber Corp. v. Google
`LLC et al., 2:20-cv-00274 (E.D. Tex. Apr. 27, 2021)
`U.S. District Court for the Eastern District of Texas Local Rules (as
`of December 1, 2020)
`Memorandum Opinion and Order, AGIS Software Dev. LLC v.
`Google LLC et al., No. 2:19-cv-00361-JRG, ECF No. 219 (E.D. Tex.
`Feb. 9, 2021) (Gilstrap, J.)
`
`
`GOOG-1048
`(NEW)
`GOOG-1049
`(NEW)
`
`GOOG-1050
`(NEW)
`
`
`
`11
`
`
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`PGR2021-00029 (U.S. Patent No. 10,600,046) (§ 103)
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`GOOGLE LLC
`
`Petitioner
`
`§
`§
`§
`
`Petition for Post-Grant Review
`
`U.S. Patent No. 10,600,046
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies, under 37 C.F.R. § 42.6, that service was made on
`
`the Patent Owner as detailed below.
`
`Date of service May 19, 2021
`
`Manner of service Electronic Service by E-mail
`
`to Patent Owner’s
`Documents served Petitioner’s Authorized Reply
`Preliminary Response; and Exhibits GOOG-1046 to GOOG-
`1050
`
`Persons served Vincent J. Rubino, III (vrubino@fabricantllp.com)
`Peter Lambrianakos
`(plambrianakos@fabricantllp.com)
`(motion to appear pro hac vice pending)
`Alfred R. Fabricant (ffabricant@fabricantllp.com )
`Enrique W. Iturralde (eiturralde@fabricantllp.com)
`
`
`
`
`
`
`
`
`
`
`
`
`/Andrew S. Ehmke/
`Andrew S. Ehmke
`Lead Counsel for Petitioner
`Registration No. 50,271
`
`
`12
`
`
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
