UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`World Programming Limited
`
`Petitioners
`
`v.
`
`SAS Institute Inc.
`
`Patent Owner
`____________
`
`Case No. Unassigned
`Patent 7,170,519
`____________
`
`PETITIONER’S EXPLANATION OF PARALLEL PETITIONS AND
`RANKING OF PETITIONS
`FOR U.S. PATENT NO. 7,170,519
`
`
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`World Programming Limited
`
`Petitioners
`
`v.
`
`SAS Institute Inc.
`
`Patent Owner
`____________
`
`Case No. Unassigned
`Patent 7,170,519
`____________
`
`PETITIONER’S EXPLANATION OF PARALLEL PETITIONS AND
`RANKING OF PETITIONS
`FOR U.S. PATENT NO. 7,170,519
`
`
`
`Petition for IPR of U.S. Patent 7,170,519
`
`Petitioners provide this Explanation of Parallel Petitions and Notice of
`
`Ranking of Petitions pursuant to the July 2019 Update of the Trial Practice Guide.
`
`The ’519 Patent is subject to a pending lawsuit entitled SAS Institute Inc., v. World
`
`Programming Limited, et. al., Case No. 2-18-cv-00295 (E.D. Tex.) (the
`
`“Litigation”) in which Petitioner World Programming Limited is a defendant.
`
`The ’519 Patent has 59 claims. Ex. 1001, 10:17-16:10. In the Litigation, Patent
`
`Owner asserted at least 42 of the 59 claims in the ’519 Patent. Given the number
`
`of claims being asserted, it is impossible for Petitioner to address all of the claims
`
`in just one petition. Petitioner therefore has concurrently filed two Petitions
`
`(“Petition 1” and “Petition 2”) relating to the ’519 Patent, which in combination
`
`address the aforementioned 42 claims. Thus, the present circumstance is consistent
`
`with the example in the July 2019 Update of the Trial Practice Guide, which states
`
`that “the Board recognizes that there may be circumstances in which more than one
`
`petition may be necessary, including, for example, when the patent owner has
`
`asserted a large number of claims in litigation.”
`
`Although Petitioner believes that its two petitions are both meritorious and
`
`justified in light of the number of claims being asserted by Patent Owner in the
`
`Litigation, Petitioner requests that the Board consider the petitions in the following
`
`order:
`
`1
`
`
`
`Petition for IPR of U.S. Patent 7,170,519
`
`Rank
`1
`
`Petition
`Petition 1
`
`Grounds and References
`Ground 1: Davis and Harold
`
`2
`
`Petition 2
`
`Ground 1: Davis and Harold
`Ground 2: Davis. Harold, and Excel
`Ground 3: Davis, Harold, Rousseeuw, and Krause
`
`Below are some of the material differences between the two petitions:1
`
`1.
`
`Petition 1:
`
`a.
`
`Ground 1 – Claims Challenged: 1-4, 14-18, 21, 27, 29-30, 34-
`
`36, 39, 42-47, 49, 51-53, and 56 (Davis and Harold)
`
`2.
`
`Petition 2:
`
`a.
`
`Ground 1 – Claims Challenged: 5-6 and 37-38 (Davis and
`
`Harold),
`
`b.
`
`Ground 2 – Claims Challenged: 7-11 (Davis, Harold and
`
`Excel), and
`
`c.
`
`Ground 3 – Claims Challenged: 22-26 (Davis, Harold,
`
`Rousseeuw and Krause)
`
`As shown above, the grounds set forth in the concurrently filed petitions are not
`
`redundant and are materially different because the claims being challenged in each
`
`petition differ, with dependent claims being challenged in Petition 2 that are not
`
`1 Independent claims are bolded.
`
`2
`
`
`
`Petition for IPR of U.S. Patent 7,170,519
`
`challenged in Petition 1. Petition 2 also includes obviousness grounds as well as
`
`motivations to combine the references that are not in Petition 1. A summary of the
`
`similarities and material differences between Petitions 1 and 2 are identified in the
`
`Petition 1
`✓
`✓
`
`✓
`
`table below.
`
`Grounds
`Independent Claims Being Challenged:
`1 and 34
`
`Dependent Claims Being Challenged:
`2-4, 14-18, 21, 27, 29-30, 35-36, 39,
`42-47, 49, 51-53, and 56
`
`Dependent Claims Being Challenged:
`5-11, 22-26, and 37-38
`
`Obviousness Combination and
`Motivation to Combine of Davis and
`Harold
`
`Obviousness Combination and
`Motivation to Combine of Davis and
`Harold and Excel
`
`Obviousness Combination and
`Motivation to Combine of Davis and
`Harold and Rousseeuw and Krause
`
`Petition 2
`
`✓
`✓
`
`✓
`
`✓
`
`The Board should consider both petitions and not exercise its discretion to
`
`deny institution in either IPR given the number of claims being asserted by the
`
`Patent Owner in the Litigation. And as shown above, the two petitions are not
`
`redundant, and the differences between the two petitions are material given the
`
`3
`
`
`
`Petition for IPR of U.S. Patent 7,170,519
`
`different dependent claims being challenged, obviousness grounds, and
`
`motivations to combine.
`
`Date: August 5, 2019
`
`Respectfully submitted,
`
`BAKER BOTTS L.L.P.
`
`/s/Christopher V. Ryan/
`Christopher V. Ryan (Reg. No. 54,759)
`98 San Jacinto Blvd., Suite 1500
`Austin, Texas 78701
`Phone: (512) 322-2586
`Facsimile: (512) 322-3686
`
`LEAD COUNSEL FOR PETITIONER
`
`4
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the foregoing PETITIONER’S
`
`EXPLANATION OF PARALLEL PETITIONS AND RANKING OF
`
`PETITIONS FOR U.S. PATENT NO. 7,170,519 was served via Express Mail or
`
`by means at least as fast and reliable as Express Mail on August 5, 2019, on the
`
`following counsel of record for Patent Owner at the correspondence address of
`
`record for the subject patent,
`
`John V. Biernacki
`Jones, Day, Reavis & Pogue
`North Point, 901 Lakeside Avenue
`Cleveland OH 44114
`
`via Express Mail or by means at least as fast and reliable as Express Mail.
`
`Additionally, a courtesy copy was served via FEDERAL EXPRESS on the Patent
`
`Owner’s counsel at the following address:
`
`Jason W. Cook
`McGuireWoods LLP
`2000 McKinney Ave.
`Suite 1400
`Dallas, TX 75201
`
`
`
`Petition for IPR of U.S. Patent 7,170,519
`
`Date: August 5, 2019
`
`Respectfully submitted,
`BAKER BOTTS L.L.P.
`
`/s/Christopher V. Ryan/
`Christopher V. Ryan (Reg. No. 54,759)
`98 San Jacinto Boulevard, Suite 1500
`Austin, TX 78701-4078
`
`LEAD COUNSEL FOR PETITIONER
`
`1
`
`
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