PGR2021-00029
`PATENT NO. 10,600,046
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
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`GOOGLE LLC,
`Petitioner,
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`v.
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`RFCYBER CORP.,
`Patent Owner.
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`Patent No. 10,600,046
`Filing Date: June 2, 2015
`Issue Date: March 24, 2020
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`Inventors: Xiangzhen Xie, Liang Seng Koh, and Hsin Pan
`Title: METHOD AND APPARATUS FOR MOBILE PAYMENTS
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`__________________________________________________________________
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`RFCYBER CORP.’S
`SUR-REPLY TO PETITIONER’S REPLY
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`Case No. PGR2021-00029
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`__________________________________________________________________
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`PATENT NO. 10,600,046
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
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`
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`RFCYBER CORP.,
`Patent Owner.
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`
`Patent No. 10,600,046
`Filing Date: June 2, 2015
`Issue Date: March 24, 2020
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`Inventors: Xiangzhen Xie, Liang Seng Koh, and Hsin Pan
`Title: METHOD AND APPARATUS FOR MOBILE PAYMENTS
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`
`__________________________________________________________________
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`RFCYBER CORP.’S
`SUR-REPLY TO PETITIONER’S REPLY
`
`Case No. PGR2021-00029
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`__________________________________________________________________
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`PGR2021-00029
`PATENT NO. 10,600,046
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`Discretionary denial is warranted here because the trial in the Eastern
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`District of Texas (the “Texas Action”), between the same parties as here, will be
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`completed months before the projected Final Written Decision date in this
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`proceeding. Institution thus will result in unnecessary duplication of the parties’
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`and District Court’s substantial efforts and should be denied.
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`Moreover, as discussed in Patent Owner’s POPR, the ’046 patent is not
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`eligible for PGR because every claim has a priority date predating March 16, 2013.
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`However, if the Board should find that the limitations in claims 6-11 and 15-16
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`were not disclosed in the pre-AIA applications, it should deny institution because
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`disclaimed claims are treated as never having existed under controlling law.
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`I.
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`ALL FINTIV FACTORS FAVOR DISCRETIONARY DENIAL
`On May 12, 2021, the District Court in the parallel litigation set trial for
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`March 21, 2022, with a claim construction hearing on October 28, 2021. Reply, 1.
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`A. The Significant Time Between Trial and a Final Written
`Decision Weighs Strongly in Favor of Denial
`The District Court’s trial date of March 21, 2022 will come approximately
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`four months before the projected Final Written Decision in this case. Id. At that
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`time, all issues relating to the challenged claims (including claim construction,
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`validity, and infringement) will have been finally determined by the District Court.
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`This factor, therefore, weighs strongly in favor of denial. See POPR, 37-39.
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`1
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`PGR2021-00029
`PATENT NO. 10,600,046
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`Google asserts that this factor is neutral but provides no evidence or
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`argument to support its assertion. Reply, 1-2.
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`There Is No Likelihood of a Stay
`B.
`As explained in the POPR, there is no likelihood of a stay in the Texas
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`Action because the Court there has explicitly stated that its “consistent and long
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`established practice [is] to deny motions to stay pending IPR and EPR when the
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`PTAB or PTO have instituted review on less than all asserted claims of all asserted
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`patents.” AGIS Software Dev. LLC v. Google LLC, No. 2:19-cv-00361-JRG, 2021
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`WL 465424, at *2 (E.D. Tex. Feb. 9, 2021) (emphasis added); see also POPR at
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`62-63. There are no instituted reviews on any of the four other patents in the Texas
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`action, and thus no stay is likely to issue. Accordingly, this factor favors denial.
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`Stanley Black & Decker, Inc. v. Zircon Corp., IPR2020-01572, Paper No. 10, 9-12
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`(P.T.A.B. Apr. 19, 2021) (finding, even though no stay had been requested, ITC
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`was unlikely to stay investigation and therefore this factor favored denial).
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`Google ignores the Texas Court’s explicit description of its established
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`practice and suggests that this factor is always neutral when Petitioner has not
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`sought a stay. Reply, 1. But Fintiv considers both “whether the court granted a
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`stay or evidence exists that one may be granted if a proceeding is instituted.”
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`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11, at 6 (P.T.A.B. Mar. 20, 2020)
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`2
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`PGR2021-00029
`PATENT NO. 10,600,046
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`(precedential) (emphasis added). Here, there is no evidence that a stay may be
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`granted if a proceeding is instituted; to the contrary, there is strong evidence that a
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`stay will not be granted. Accordingly, this factor favors denial. See Stanley Black
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`& Decker, Inc., IPR2020-01572, Paper No. 10 at 9-12.
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`C. The Overlapping Parties to The District Court Litigation
`Favor Denial
`Patent Owner and Google are both parties to the parallel District Court
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`litigation. POPR, 58. Thus, this factor favors denial of the Petition. E.g., Cellco
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`P’ship v. Huawei Techs. Co., IPR2020-01352, Paper No. 13 at 15 (P.T.A.B. Mar.
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`5, 2021). Google offers no substantive argument or explanation as to why this
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`factor does not weigh against it, instead stating, without evidence, analysis, or
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`citation, that the factor is neutral. Reply, 5. But it is well-established that overlap
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`between parties weighs in favor of denial. E.g., Cellco, IPR2020-01352, Paper No.
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`13 at 15. Accordingly, this factor weighs against institution.
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`D. The Overlap of Issues Weighs in Favor of Denial
`Patent Owner has asserted claims 1, 2, and 5 against Google in the Texas
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`Action. Google has challenged those claims in this proceeding as well. Pet., 23.
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`Thus, the same claims are at issue in both proceedings.
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`Google attempts to sidestep the substantial overlap by nebulously promising
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`that it will not assert “invalidity grounds relying on any of the prior art contained in
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`3
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`PGR2021-00029
`PATENT NO. 10,600,046
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`the obviousness grounds” that were raised in the Petition but only if trial is
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`instituted. Reply, 4. Even then, Google limits its “stipulation” to “the claims on
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`which trial is instituted, while trial is instituted.” Id.
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`Google’s “stipulation” does not remove the substantial overlap in issues
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`between the Texas Action and this proceeding. It would not prevent Google from
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`raising substantially similar prior art in the District Court, nor would it subject
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`Google to the full estoppel provisions under 35 U.S.C. § 325(e)(2). Accordingly,
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`Google’s stipulation does not obviate the substantial overlap in issues and this
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`factor favors denial.
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`E.
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`The Significant Investment of the Parties and District
`Court Favors Denial
`Patent Owner served its infringement contentions on May 12, 2021.
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`According to the parties’ agreed schedule, Petitioner will serve its invalidity
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`contentions (including § 101 contentions) on July 14, 2021. RFCyber Corp. v.
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`Google LLC, No. 2:20-cv-00274-JRG, Dkt. 55-1 at 4-5 (E.D. Tex. May 26, 2021).
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`Claim construction briefs will be filed with the Court in September and October,
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`with a claim construction hearing on October 28, 2021. Id. Accordingly,
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`substantial resources will have been expended by the parties by the time of the
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`institution decision and shortly after. Far more resources will have been expended
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`by the time a Final Written Decision can issue, as by then a claim construction will
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`4
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`PGR2021-00029
`PATENT NO. 10,600,046
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`have issued, both fact and expert discovery will have concluded, dispositive
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`motions will have been decided, pretrial disclosures will be made, and trial on the
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`merits will have occurred. This factor therefore favors denial. E.g., Supercell Oy
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`v. Gree, Inc., PGR2021-00009, Paper No. 9, at 8-9 (P.T.A.B. May 10, 2021)
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`(finding this factor weighed toward denying institution when “the district court and
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`parties have each already invested, and will have invested even more, substantial
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`resources in claim construction, fact discovery, expert discovery, dispositive
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`motions, and pretrial disclosures”).
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`Google also argues that its alleged diligence weighs in favor of institution.
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`Reply, 4 (“Petitioner acted diligently in filing the Petition within three months of
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`being served with the Complaint . . . .”). But Google filed its Petition on
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`December 23, 2020, the day before the ’046 patent’s alleged PGR eligibility would
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`have expired. Google cannot be said to be diligent when it waited to the end of the
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`PGR window.
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`The Weakness of Google’s Petition Favors Denial
`F.
`As discussed in the POPR, Google’s Petition is extraordinarily weak as its
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`primary reference is not prior art to the ’046 patent. POPR, 41. Id. Google failed
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`to respond to this deficiency in its Reply. Reply, 5.
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`5
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`PGR2021-00029
`PATENT NO. 10,600,046
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`II. DISCLAIMED CLAIMS 6-11 AND 15-16 CANNOT CONFER
`PGR ELIGIBILITY
`Google relies on RetailMeNot, Inc. v. Honey Sci. Corp., PGR2019-00060,
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`Paper 17 (P.T.A.B. Mar. 10, 2020) and Unified Patents, LLC v. Pebble Tide, LLC,
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`PGR2020-00011, Paper 12 (P.T.A.B. Jul. 7, 2020), which held that disclaimed
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`claims can confer PGR-eligibility. Reply, 5-7. As explained in the POPR, those
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`non-precedential decisions came to an incorrect conclusion. POPR, 18-22.
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`Neither RetailMeNot nor Unified considered the Genetics Institute decision
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`cited in the POPR. See POPR, 18 (quoting Genetics Inst., LLC v. Novartis
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`Vaccines & Diags., Inc., 655 F.3d 1291 (Fed. Cir. 2011)). In that decision, the
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`Federal Circuit explained that “upon entry of a disclaimer under § 253, we treat the
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`patent as though the disclaimed claim(s) had ‘never existed.’” 655 F.3d at 1299
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`(emphasis added). If the Board were to use disclaimed claims as a basis for PGR-
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`eligibility, it would necessarily be treating the ’046 patent as though those claims
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`had existed. Such a result contradicts Federal Circuit precedent and the only
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`PTAB precedential decision on the effect of disclaimer. Facebook, Inc. v. Skky,
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`LLC, CBM2016-00091, Paper 12 at 11 (P.T.A.B. Sep. 28, 2017) (precedential)
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`(“[S]tatutorily disclaimed claims must be treated as if they never existed.”).
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`Google further argues (parroting the RetailMeNot decision) that 37 C.F.R.
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`§42.207(e), which recites that “[n]o post-grant review will be instituted based on
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`6
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`PGR2021-00029
`PATENT NO. 10,600,046
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`disclaimed claims” means that the PTAB will not institute a trial to review
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`disclaimed claims but can and should institute a trial where PGR-eligibility is
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`based solely on disclaimed claims. Reply at 7. As stated in the POPR, this
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`interpretation is contrary to the plain language of the Rule. POPR at 22. The
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`RetailMeNot Panel relied on the comment to the Rule, but that comment merely
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`states that no PRG will be instituted to review disclaimed claims; it does not state
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`that disclaimed claims can provide eligibility. RetailMeNot, PGR2019-00060,
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`Paper 17 at 15. Moreover, the interpretation is at odds with the Patent Office’s
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`recent amendments to Rule 42.208, which requires the Board to institute on all
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`challenged claims and does not recite an exception for disclaimed claims. 37
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`C.F.R. § 42.208 (a).
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`In any event, as discussed in the POPR, the Provisional Application provides
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`full support for the disclaimed claims. POPR at 22-23.
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`III. CONCLUSION
`For the foregoing reasons, the Board should exercise its discretion to deny
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`institution. Moreover, the Board should not use the disclaimed claims to confer
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`PGR-eligibility.
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`7
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`Dated: June 2, 2021
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`PGR2021-00029
`PATENT NO. 10,600,046
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`Respectfully submitted,
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`/
`
`
`/Vincent J. Rubino, III
`Vincent J. Rubino, III (Reg. No. 68,594)
`Lead Counsel for Patent Owner
`FABRICANT LLP
`411 Theodore Fremd Road, Suite 206 South
`Rye, New York 10580
`Telephone: (212) 257-5797
`Facsimile: (212) 257-5796
`Email: vrubino@fabricantllp.com
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`8
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`PGR2021-00029
`PATENT NO. 10,600,046
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`CERTIFICATE OF SERVICE
`A copy of RFCYBER CORP.’S SUR-REPLY TO PETITIONER’S REPLY
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`has been served on Petitioner’s counsel of record as follows:
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`Andrew S. Ehmke
`Email: andy.ehmke.ipr@haynesboone.com
`HAYNES AND BOONE, LLP
`2323 Victory Avenue, Suite 700
`Dallas, Texas 75219
`
`Scott T. Jarratt
`Email: scott.jarratt.ipr@haynesboone.com
`HAYNES AND BOONE, LLP
`2323 Victory Avenue, Suite 700
`Dallas, Texas 75219
`
`Jonathan R. Bowser
`Email: jon.bowser.ipr@haynesboone.com
`HAYNES AND BOONE, LLP
`2323 Victory Avenue, Suite 700
`Dallas, Texas 75219
`
`Angela M. Oliver
`Email: angela.oliver.ipr@haynesboone.com
`HAYNES AND BOONE, LLP
`2323 Victory Avenue, Suite 700
`Dallas, Texas 75219
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`Attorneys for Google LLC
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`June 2, 2021
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`By:
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`/ Vincent J. Rubino, III
`/
`
`Vincent J. Rubino, III (Reg. No. 68,594)
`FABRICANT LLP
`411 Theodore Fremd Road, Suite 206 South
`Rye, New York 10580
`Tel. (212 257-5797
`Fax. (212) -257-5796
`
`
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