IPR2020-00755
`Patent No. 6,366,908
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`______________________
`
`IPR2020-00755
`
`U.S. Patent No. 6,366,908
`______________________
`
`
`PETITIONER’S REPLY TO
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`Patent No. 6,366,908
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`______________________
`
`IPR2020-00755
`
`U.S. Patent No. 6,366,908
`______________________
`
`
`PETITIONER’S REPLY TO
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
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`IPR2020-00755
`Patent No. 6,366,908
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`I.
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`Introduction
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`Petitioner Google LLC submits this reply to explain why, under Apple Inc. v.
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`Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential), the
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`Board should not exercise its discretion to deny institution of this IPR in light of a
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`co-pending district court litigation, which was recently transferred to the Northern
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`District of California. (Ex. 1046.) Uniloc contends that the Fintiv factors favor
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`denial, but Uniloc neglected to inform the Board that, before Uniloc filed its
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`preliminary response, the Board rejected Uniloc’s nearly identical arguments under
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`a nearly identical set of facts and instituted review in Google LLC v. Uniloc 2017
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`LLC, IPR2020-00441, Paper 13 (PTAB July 17, 2020). In that case, among other
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`things, Uniloc argued that there was no evidence the transferee court would grant a
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`stay. Later, however, Uniloc agreed to a stay, which the transferee court granted.
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`(Ex. 1047.)
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`In this case, Uniloc also contends that, “[w]hile the litigation was stayed
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`when Google filed its Petition, that is no longer the case.” (Paper 8 at 7.) This is
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`not true. The parties agreed to stay all proceedings until “the Northern District of
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`California has set a schedule.” (Ex. 1048.) While that court docketed the case last
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`week and set a case management conference for November 10, 2020, it has not set
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`a schedule—indeed the parties’ proposals for such a schedule are not due until
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`November. Thus, the parties’ stipulation to treat the case as stayed remains in
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`1
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`IPR2020-00755
`Patent No. 6,366,908
`effect. For these reasons and those further discussed below, there is no reason to
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`believe that the state of the district court case corresponding to this IPR warrants a
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`discretionary denial of institution any more than the district court case
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`corresponding to IPR2020-00441.
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`II.
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`Factor 1: The litigation would likely be stayed if the Board
`institutes this IPR
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`In discussing the first two Fintiv factors, in IPR2020-00441 the Board stated
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`that, “[a]lthough no court-ordered stay is in effect, the fact that the Northern
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`District of California has thus far expended no more than minimal resources
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`weighs in favor of institution.” IPR2020-00441, Paper 13 at 35. As in that case, the
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`district court here has expended only minimal resources, only docketing the case
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`and setting a case management conference to occur in nearly three months.
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`In addition, the Northern District of California frequently stays cases in view
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`of IPRs, both before and after institution. See, e.g., Uniloc 2017 LLC v. Apple Inc.,
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`No. 3:19-cv-01904, Dkt. 89 (N.D. Cal. Jan. 30, 2020) (after institution); J&K IP
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`Assets, LLC v. Armaspec, Inc., No. 3:17-cv-07308, Dkt. 61 (N.D. Cal. Sep. 12,
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`2019) (same); Cellwitch Inc. v. Tile, Inc., No. 4:19-cv-01315, Dkt. 68 (N.D. Cal.
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`Jan. 17, 2020) (before institution). Indeed, it granted the parties’ stay pending
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`resolution of IPR2020-00441. In addition, over the past fifteen months, district
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`courts have stayed Uniloc litigations pending IPR twenty-eight times—most of
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`which Uniloc either jointly requested or did not oppose. Google intends to move to
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`2
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`IPR2020-00755
`Patent No. 6,366,908
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`stay the district court case at its earliest opportunity.
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`Uniloc does not attempt to distinguish the Board’s reasoning in IPR2020-
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`00441, but it does attempt to distinguish other cases. For example, Uniloc tries to
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`distinguish Cellwitch by explaining that “the court found it significant that the
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`parallel IPR ‘sought review of every claim in the [challenged patent].’” Paper 8 at
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`8 (citing Cellwitch, Dkt. 68, slip op. at 3). But in Cellwitch, the court found “it is
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`not clear which claims plaintiff will ultimately assert,” Cellwitch, Dkt. 68, slip op.
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`at 3, so it was meaningful that all claims had been challenged. Here, Petitioner
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`challenged claims 6-12, which encompasses all claims asserted in the litigation.
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`In determining whether to grant a stay, a court considers “(1) whether
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`discovery is complete and whether a trial date has been set; (2) whether a stay
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`would simplify the issues in question and trial of the case; and (3) whether a stay
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`would unduly prejudice or present a clear tactical disadvantage to the non-moving
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`party.” Personal Web Techs., LLC v. Apple Inc., 69 F. Supp. 3d 1022, 1025 (N.D.
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`Cal. 2014). Here, a stay is likely because discovery in the district court litigation is
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`not yet complete (depositions remain to be taken and expert reports have not been
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`served and will only be delayed by the transfer), claim construction proceedings
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`are not yet complete (the claim construction hearing remains to be set), and no trial
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`date is set. Given that Uniloc previously agreed to stay the corresponding district
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`court case for three months before the transfer decision even issued, Uniloc cannot
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`3
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`IPR2020-00755
`Patent No. 6,366,908
`claim undue prejudice. 4:20-cv-05346 Dkt. 165. In addition, this IPR would greatly
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`simplify the issues in the district court because the ’908 patent is the only patent at
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`issue and the validity of all asserted claims will be assessed by this IPR. Given the
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`new court’s unfamiliarity with the case, simplifying the issues may be a
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`particularly compelling factor for granting a stay.
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`III. Factor 2: There is no set trial date
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`Due to the transfer, it will be at least three months before the new court sets
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`a schedule including a trial date. The court set an initial case management
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`conference for November 10, 2020, and the court presumably will not enter a
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`schedule until sometime after that conference. Uniloc 2017 LLC v. Google LLC,
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`No. 4:20-cv-05346, Dkt. 177 (N.D. Cal. Aug. 7, 2020). In any event, attempting to
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`predict the case schedule would be pure speculation. See IPR2020-00441, Paper 13
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`at 35 (“[W]e agree with Petitioner that ‘any expectation of a schedule or trial date
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`would be pure speculation.’”).
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`In addition, trial may be scheduled to occur after the expected IPR decision
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`date. And a possible stay pending IPR in the Northern District of California would
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`only further delay trial. As the Board has observed:
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`There is no per se rule against instituting an inter partes review when
`any Final Decision may issue after a district court has addressed the
`patentability of the . . . claims. Nor should there be. Instituting under
`such circumstances gives the district court the opportunity, at its
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`4
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`IPR2020-00755
`Patent No. 6,366,908
`discretion, to conserve judicial resources by staying the litigation until
`the review is complete, thus satisfying the AIA’s objective of providing
`“an effective and efficient alternative to litigation.” . . . NHK Spring
`does not persuade us otherwise.
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`Intuitive Surgical, Inc. v. Ethicon LLC, IPR2018-01703, Paper 7 at 12 (PTAB
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`Feb. 19, 2019) (quotation omitted); see also IPR2020-00441, Paper 13 at 35-36
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`(quoting Intuitive Surgical). Here, depending on the new court’s docket, the trial
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`date may be delayed beyond the IPR decision date.
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`IV. Factor 3: Most investment in the district court litigation lies in the
`future and could be avoided by a stay
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`The transfer (Ex. 1046) and the parties’ agreed stay pending that transfer
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`(Ex. 1048) put a hold on further investment in the district court litigation.
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`Additional investment may also be postponed by a further stay in the Northern
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`District of California. Moreover, as the Board noted in IPR2020-00441, the parties
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`may need to revisit issues before the new court, and the new court “does not have
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`the benefit of familiarity with the issues that the transferring court gained through
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`considering the parties’ claim construction positions.” IPR2020-00441, Paper 13 at
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`36. Indeed, in contrast to the litigation corresponding to IPR2020-00441, the new
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`court here does not have the benefit of the transferring court's claim construction
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`and will be starting from scratch because the Markman hearing has not occurred.
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`Thus, in addition to the significant work that remained even if the case had not
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`5
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`IPR2020-00755
`Patent No. 6,366,908
`been transferred, the transfer requires additional work going forward.
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`Uniloc contends that Google delayed filing its petition. Paper 8 at 9. But the
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`AIA provides one year for defendants to prepare and file a petition. 35 U.S.C.
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`§ 315(b). To the extent Uniloc claims the costs already imposed during the district
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`court litigation are “unfair,” Fintiv, 11, Uniloc (not Google) chose to file 21 nearly
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`simultaneous suits against Google in a district court known to proceed quickly.1
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`V.
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`Factor 4: The district court litigation may not consider the IPR
`prior art, and any overlap increases the chances of a stay
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`Google’s invalidity contentions in the district court litigation identify some
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`of the IPR prior art, Paper 8 at 3-7, but it is listed alongside over 180 invalidity
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`combinations that are different from the combinations identified in the IPR.
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`(Ex. 2001 at 6-25.) The Board has declined to deny institution in such situations
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`because “there is no guarantee that the district court will even consider . . . the
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`prior art references that are asserted in the present Petition.” Intel Corp. v. VLSI
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`Tech. LLC, IPR2019-01192, Paper 15 at 12 (PTAB Jan. 9, 2020); see also Bumble
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`1 Indeed, Uniloc was one of the most active patent plaintiffs in the country over the
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`last decade and the most active patent plaintiff last year. (Ex. 1049.) It has filed
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`nearly 200 litigations in the last two years alone. (Ex. 1050.) Instituting this IPR
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`could save the resources of district courts, future parties, and the Board itself—if a
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`future defendant files an IPR because this one was not considered on the merits.
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`6
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`IPR2020-00755
`Patent No. 6,366,908
`Trading Inc. v. Match Grp. LLC, IPR2019-01537, Paper 14 at 62 (PTAB Mar. 11,
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`2020).
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`VI. Factor 5: Google is the defendant in the district court litigation
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`Google is the defendant in the district court litigation.
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`VII. Factor 6: Other circumstances weigh against discretionary denial
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`The challenged claims are unpatentable as set out in the petition, and the
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`prior art has not been considered by the Office. There is also a public interest
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`against “leaving bad patents enforceable,” which weighs against a discretionary
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`denial. Thryv, Inc. v. Click-To-Call Techs., LP, 140 S. Ct. 1367, 1374 (2020).
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`Moreover, Google’s IPR is the only challenge to the ’908 patent that has
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`ever been or is currently before the Board. A “crucial fact” when exercising
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`discretionary denial is whether “the challenged patent is currently the subject of
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`[other] instituted IPRs.” Google LLC v. Uniloc 2017 LLC, IPR2020-00115,
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`Paper 10 at 6 (PTAB May 12, 2020). That crucial fact is missing here.
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`VIII. Conclusion
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`Because Fintiv factors 1, 2, 3, 4, and 6 all weigh against discretionary denial,
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`or are at most neutral, Google requests that the Board grant institution.
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`Date: August 10, 2020
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`Respectfully submitted,
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`
`
`/Erika H. Arner/
`Erika H. Arner,
`Reg. No. 57,540
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`7
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`IPR2020-00755
`Patent No. 6,366,908
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that the foregoing
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`PETITIONER’S REPLY TO PATENT OWNER’S PRELIMINARY
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`RESPONSE was served on August 10, 2020, via email directed to counsel of
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`record for Patent Owner at the following:
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`Ryan Loveless
`ryan@etheridgelaw.com
`Brett Mangrum
`brett@etheridgelaw.com
`James Etheridge
`jim@etheridgelaw.com
`Brian Koide
`brian@etheridgelaw.com
`Jeffrey Huang
`jeff@etheridgelaw.com
`
`By: /Lisa C. Hines/
`Lisa C. Hines
`Litigation Legal Assistant
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
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`Dated: August 10, 2020
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