UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`INTEL CORPORATION
`Petitioner,
`
`v.
`
`PACT XPP SCHWEIZ AG
`Patent Owner
`________________
`
`Case IPR2020-00537
`U.S. Patent No. 7,928,763
`________________
`
`
`
`
`
`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY
`PURSUANT TO BOARD ORDER
`
`
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`INTEL CORPORATION
`Petitioner,
`
`v.
`
`PACT XPP SCHWEIZ AG
`Patent Owner
`________________
`
`Case IPR2020-00537
`U.S. Patent No. 7,928,763
`________________
`
`
`
`
`
`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY
`PURSUANT TO BOARD ORDER
`
`
`
`
`
`
`
`Case No. IPR2020-00537
`U.S. Patent No. 7,928,763
`
`PATENT OWNER’S EXHIBIT LIST
`
`Exhibit No. Description
`
`2015
`
`2016
`
`2017
`
`2018
`
`2019
`
`2020
`
`Petition for Inter Partes Review of U.S. Patent No. 6,240,376 in
`Synopsys, Inc. v. Mentor Graphics Corp., Case IPR2012-00042,
`Paper 1 (Sep. 26, 2012)
`
`Patent Owner’s Request for Rehearing on Decision to Institute
`Inter Partes Review in Synopsys, Inc. v. Mentor Graphics
`Corp., Case IPR2012-00042, Paper 18 (March 08, 2013)
`
`Banner & Witcoff, Ltd.’s “Messenger Log” from Exhibit 2005
`in Synopsys, Inc. v. Mentor Graphics Corp., Case IPR2012-
`00042
`
`Notice Regarding Case Management, Dkt. No. 19, filed May 23,
`2019
`
`Patent Owner’s Sur-Reply in Intel Corp. v. Tela Innovations,
`Inc., Case IPR2019-01228, Paper 18 (Nov. 27, 2019)
`
`Declaration of Ziyong Li in Support of Patent Owner’s
`Sur-reply
`
`2021
`
`Stipulation to Dismiss, Dkt. No. 24, filed May 30, 2019
`
`2022
`
`2023
`
`Stipulation and Order to Extend Time, Dkt. No. 98, filed June 1,
`2020
`
`Excerpt of Intel’s Initial Invalidity Contentions in the District
`Court case, filed October 31, 2019
`
`2024
`
`Intel’s Motion to Transfer, No. 6:19-cv-00273-ADA, Dkt. 13
`
`i
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case No. IPR2020-00537
`U.S. Patent No. 7,928,763
`
`In its Response, Patent Owner (“PACT”) raised multiple procedural grounds,
`
`each of which provides an independent and fully sufficient reason the Board should
`
`deny the Petition. None of the arguments in Petitioner’s (“Intel”) reply changes this.
`
`I.
`
`PACT Was Not Properly Served Under 37 C.F.R. § 42.105(a)
`
`37 C.F.R. § 42.105(a) sets forth a simple and straightforward requirement,
`
`which Intel failed to meet. To properly effect service, Petitioner must serve Patent
`
`Owner “at the correspondence address of record for the subject patent.” 37 C.F.R. §
`
`42.105(a). Intel did not do this and their reply consists of excuses and insufficient
`
`justifications why Intel need follow
`
`this rule.
`
` Furthermore, Petitioner
`
`mischaracterizes the rule, excluding with an ellipsis the important word
`
`“additionally,” which makes clear service at the correspondence address of record
`
`is required at a minimum, and that service on the patent owner at another address is
`
`not a substitute. 37 C.F.R. § 42.105(a) (“The petitioner may additionally serve the
`
`petition and supporting evidence on the patent owner at any other address”)
`
`(emphasis added). The rule is unambiguous: the petition must at least be served at
`
`the correspondence address of record, which shows Customer Number 73481
`
`associated with Alliacense. Ex. 2006.
`
`Petitioner instead refers to Edward Heller III listed on the power of attorney
`
`and argues that because Edward Heller is deceased, the next best option was to serve
`
`Mr. Aaron Grunberger, the original patent practitioner for the patent-in-suit.
`
`
`
`1
`
`
`
`
`
`
`
`
`
`Case No. IPR2020-00537
`U.S. Patent No. 7,928,763
`
`However, Petitioner was fully aware of the correspondence address of record when
`
`it relied on the California address in its motion to transfer filed in May 2019.
`
`Petitioner made no attempt at service at that address, where other practitioners may
`
`be available. See Ex. 2024. See MPEP § 403.
`
`Intel’s cited case, Synopsys, Inc. v. Mentor Graphics Corp., did not hold that
`
`service on counsel before a power of attorney was filed was proper under § 42.105(a).
`
`Case IPR2012-00042, Paper 23 (Apr. 11, 2013). In Synopsys, the parties did not
`
`dispute that Banner & Witcoff had the power of attorney, and the issue was whether
`
`service on an old address was proper. Ex. 2015; Ex. 2016 at 22-23; Ex. 2017. It is
`
`undisputed that Mr. Grunberger had not yet filed a power of attorney when the
`
`Petition was sent to him.
`
`Petitioner argues that delivery to litigation counsel constitutes proper service,
`
`citing Micron Tech., Inc. v. e.Digital Corp., Case IPR2015-00519, Paper 14 (Mar.
`
`24, 2015). However, the portion Petitioner relies on addressed the service of
`
`litigation counsel pursuant to 35 U.S.C. § 312(a), which requires “the petitioner
`
`provide[] copies of [] the documents [] to the patent owner.” This is different from
`
`the service requirement in 37 C.F.R. § 42.105(a). For that, the Board stated:
`
`The correspondence address of record for a patent can be discovered
`
`simply by entering the number of the patent into the USPTO’s web-
`
`based Patent Application Information Retrieval (PAIR) portal
`
`(http://portal.uspto.gov/pair/PublicPair).
`
`2
`
`
`
`
`
`
`
`
`
`
`
`Case No. IPR2020-00537
`U.S. Patent No. 7,928,763
`
`Case IPR2015-00519, Paper 14 at 5. This is what Petitioner failed to do here.
`
`Petitioner does not have excusable reasons comparable to the petitioner in Micron.
`
`The petitioner in Micron had served litigation counsel more than two weeks before
`
`the § 315 statutory deadline, and there was no evidence that the patent owner in
`
`Micron warned the petitioner that such service was improper. Id. at 3. Here, Intel
`
`chose not to contact Patent Owner’s litigation counsel regarding the service of the
`
`Petition. Rather, it contacted Mr. Grunberger three days before the deadline without
`
`even copying Patent Owner’s litigation counsel. Intel was warned by Mr.
`
`Grunberger that service was not proper, Ex. 1040, and upon such notice, Intel had
`
`until the end of the day on February 10 to research the proper way to conduct service,
`
`to find the correspondence address, and to effect proper service on the
`
`correspondence address, which Intel failed to do. Moreover, contrary to Intel’s
`
`assertions, the purported recipient identified in Intel’s proof of service does not work
`
`at Quinn Emanuel. Ex. 2020, ¶ 5. Therefore, Intel does not have any justification for
`
`its improper service.
`
`II.
`
`Petitioner’s Declaratory Judgement Action Bars Institution
`
`Intel has failed to explain why its Declaratory Judgement Action does not in
`
`fact raise a challenge to invalidity when it alleges it does not infringe any “valid”
`
`patent. Clearly, Intel was asking the Judge to rule on validity and the Judge
`
`understood that. See Ex. 2018 (“It shall not be an excuse to deny or delay discovery
`
`
`
`3
`
`
`
`
`
`
`
`
`
`Case No. IPR2020-00537
`U.S. Patent No. 7,928,763
`
`on the ground that Intel also contends that one or more claims-in-suit are invalid.”)
`
`(emphasis added).
`
`The cases Petitioner cites are non-precedential, and the Federal Circuit has
`
`taken a far stricter view than what is expressed in the unpublished decisions relied
`
`on by Intel. In Totes-Isotoner Corp. v. United States, the Federal Circuit stated that
`
`“the label that [a party] has chosen to describe its claim is not determinative. With
`
`respect to pleadings, it is understood that a court looks to ‘the quality of its substance
`
`rather than according to its form or label.’” 594 F.3d 1346, 1355 n.6 (Fed. Cir. 2010)
`
`(internal citation omitted). This ruling also applies to patent cases. For example,
`
`the district court of the Intel Corp. v. Tela Innovations, Inc. case expressly
`
`recognized that “Intel now brings this action seeking declaratory relief for
`
`noninfringement, invalidity, and unenforceability with respect to six Tela
`
`patents.” Ex. 2019 at 2 (emphasis added). Similarly, when Intel filed a declaratory
`
`judgment action against PACT, the Northern District of California stated that “Intel
`
`also contends that one or more claims-in-suit are invalid.” Ex. 2018 (emphasis
`
`added). Thus, by asserting that Intel did not infringe “any valid” claims, it expressly
`
`challenged the validity, which bars the Petition under 35 U.S.C. §315(a).
`
`III. The Delaware Action Justifies Discretionary Denial
`
`The Board should deny institution under 35 U.S.C. § 314(a) to promote
`
`efficient administration and fairness.
`
`
`
`4
`
`
`
`
`
`
`
`
`
`Case No. IPR2020-00537
`U.S. Patent No. 7,928,763
`
`First, by denying institution here, the Board will avoid the inefficient and
`
`duplicative exercise of assessing and narrowing claims. Petitioner is requesting the
`
`Board to commit to a burdensome review of over 100 claims across 12 patents under
`
`more than 50 grounds. Ex. 2020, ¶ 3. This project is superfluous in view of the
`
`streamlining mechanism already provided in the Delaware Action: the asserted
`
`claims will be narrowed to 60 across all 12 patents by October 1, 2020, and another
`
`narrowing will be completed by August 6, 2021. Ex. 2007 at 5-6. It would be very
`
`inefficient for the Board to evaluate and consider all 100+ claims under more than
`
`50 grounds, when a process of narrowing is already set forth and underway in the
`
`Delaware Action.
`
`Second, the advanced stage of and the substantial time and effort already
`
`invested in the Delaware Action justifies discretionary denial. Here, much has
`
`already happened in district court litigation. A venue dispute has already been
`
`resolved. Ex. 2021. Claim construction is effectively complete with the Markman
`
`order expected within 60 days of the June 10 hearing. See Bentley Motors, Ltd. v.
`
`Jaguar Land Rover, Ltd., Case IPR2019-01539, Paper 9 at 14 (Mar. 10, 2020)
`
`(denying institution even when a Markman hearing had not yet occurred). Over five
`
`million pages have already been exchanged. Ex. 2020, ¶ 2. Document production
`
`has been substantially complete, and depositions have been scheduled. Ex. 2022;
`
`Ex. 2020, ¶ 4. Petitioner’s reliance on Sand Revolution II, LLC, v. Continental
`
`
`
`5
`
`
`
`
`
`
`
`
`
`Case No. IPR2020-00537
`U.S. Patent No. 7,928,763
`
`Intermodal Group - Trucking LLC, IPR2019-01393 is misplaced, as the PTAB’s
`
`decision relied primarily on the changing and uncertain trial date, a factor not
`
`applicable here, in reaching its conclusion, which it qualified as “marginal.”
`
`Last, in an effort to justify institution despite substantial overlap of prior art
`
`references, Petitioner points to non-overlapping references representing a sliver of
`
`the total number of invalidity challenges in the district court and the IPRs. However,
`
`Petitioner has not foreclosed the possibility of also pursuing these references in
`
`district court and expressly reserved the right to add theories of invalidity in the
`
`Delaware Action. See Ex. 2023.0002 (“Intel’s Initial Invalidity Contentions reflect
`
`present knowledge and contentions, and Intel reserves the right, to the extent
`
`permitted by the Court and the applicable statutes and rules, to modify and
`
`supplement its Initial Invalidity Contentions”). As long as Petitioner maintains their
`
`right to add assertions in the Delaware Action, this factor cannot weigh in favor of
`
`instituting IPR. Bentley, IPR2019-01539, Paper 9 at 9-11 (denying institution even
`
`when four of thirteen claims challenged in the IPR proceeding were not challenged
`
`in the district court litigation).
`
`IV. Conclusion
`
`In the interest of efficiency and of adherence to the rules, the dispute between
`
`Intel and PACT should proceed in the Delaware Action. The weight of the above
`
`reasons carried across 12 total petitions strongly favors denial.
`
`
`
`6
`
`
`
`
`
`
`Case No. IPR2020-00537
`U.S. Patent No. 7,928,763
`
`
`
`Date: August 6, 2020
`
` Respectfully submitted,
`
`By: /Ziyong Li/
` Ziyong Li (Reg. No. 76,089)
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`50 California Street, 22nd Floor
`San Francisco, CA 94111
`Tel: (415) 875-6373
`Fax: (415) 875-6700
`Email: seanli@quinnemanuel.com
`
`
`Attorney for Patent Owner –
`PACT XPP SCHWEIZ AG.
`
`
`
`7
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case No. IPR2020-00537
`U.S. Patent No. 7,928,763
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certify that the foregoing documents were served on
`
`August 6, 2020 by filing these documents through the Patent Review Processing
`
`System, as well as by e-mailing copies to:
`
`
`
`Kevin Bendix
`Reg. No. 67,164
`Intel_PACT_IPR@kirkland.com
`kevin.bendix@kirkland.com
`KIRKLAND & ELLIS LLP
`555 South Flower Street, Suite 3700
`Los Angeles, CA 90071
`Telephone: (213) 680-8400
`Facsimile: (213) 680-8500
`
`Robert A. Appleby, P.C.
`Reg. No. 40,897
`robert.appleby@kirkland.com
`Gregory S. Arovas, P.C.
`Reg. No. 38,818
`greg.arovas@kirkland.com
`KIRKLAND & ELLIS LLP
`601 Lexington Avenue
`New York, New York 10022
`Telephone: (212) 446-4800
`Facsimile: (212) 446-4900
`
`
`
`
`
`
`
`Date: August 6, 2020
`
` Respectfully submitted,
`
`By: /Ziyong Li/
` Ziyong Li (Reg. No. 76,089)
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`50 California Street, 22nd Floor
`San Francisco, CA 94111
`
`8
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case No. IPR2020-00537
`U.S. Patent No. 7,928,763
`
`Tel: (415) 875-6373
`Fax: (415) 875-6700
`Email: seanli@quinnemanuel.com
`
`
`Attorney for Patent Owner –
`PACT XPP SCHWEIZ AG.
`
`9
`
`
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
