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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`GOOGLE LLC
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`Petitioner
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`v.
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`UNILOC 2017 LLC
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`Patent Owner
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`IPR2020-00755
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`PATENT 6,366,908
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`PATENT OWNER SUR REPLY TO PETITIONER’S REPLY
`TO THE PRELIMINARY RESPONSE
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`IPR2020-00755
`U.S. Patent No. 6,366,908
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`Google’s belated arguments as to discretionary denial fail to support Google’s
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`request that the Board institute trial despite the advanced stage of a parallel district
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`court proceeding. Google does not persuasively dispute that, even after transfer of
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`the litigation between the same parties, (1) there is no evidence that a stay is likely or
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`(2) there is no evidence that a final written decision here would necessarily precede
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`a jury trial, and (3) it is a demonstrable and undisputed fact that the validity issues in
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`these parallel proceedings completely overlap. Accordingly, institution should be
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`denied for the reasons emphasized here and in Uniloc’s Preliminary Response.
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`A. There is no evidence the transferee court will grant a stay (Factor 1).
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`Google does not dispute that Apple v. Fintiv1 “considers fact-specific and case-
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`specific guidance from the district court, which is entirely, lacking here.” POPR at
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`5. At most, Google’s Reply generically asserts that the Northern District of California
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`“frequently” (and hence admittedly not always) stays cases in view of IPRs; and
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`Google cites cases without regard to facts and analyses set forth therein.
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`Google neglects to mention that one of the cases it cites as granting a stay after
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`a Board decision on institution was based on an unopposed motion. See Uniloc 2017
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`LLC v. Apple Inc., No. 3:19-cv-01904, Dkt. 89 (N.D. Cal. Jan. 30, 2020). The two
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`Northern District of California cases Google cites as granting stays before a Board
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`decision on institution both acknowledge that motions to stay are highly
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`individualized matters. Cellwitch Inc. v. Tile, Inc., No. 4:19-cv-01315, Dkt. 68 (N.D.
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`1 Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020)
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`(precedential) (“Fintiv”).
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`1
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`IPR2020-00755
`U.S. Patent No. 6,366,908
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`Cal. Jan. 17, 2020); Elekta Ltd. v. ZAP Surgical Sys., Inc., No. 4:19-cv-02269, Dkt.
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`42 (N.D. Cal. Nov. 8, 2019). For example, in Cellwitch, the court found it significant
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`that the parallel IPR “sought review of every claim in the [challenged patent].” Slip
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`op. at 3. Here, the petition seeks review of only claims 6 through 12.
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`Google also does not deny, or even acknowledge, that Cellwitch also
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`considered the fact that “[c]laims [sic] construction briefing has not yet been filed”
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`weighed in favor of a stay. POPR 8‒9 (citing Cellwitch, at 4). This factor weighs
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`against a stay here because claim construction briefing in the parallel proceeding was
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`completed long ago and is made of record as Exhibits 1004, 1005, and 1006 to the
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`Petition. While Google argues that the transferee district has yet to expend significant
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`resources, Google does not deny that the litigation in the transferee district will
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`commence at an advanced stage and will benefit from the work completed prior to
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`transfer.
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`Cellwitch also found that the defendant seeking stay had “instigated the IPR
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`proceedings in a timely fashion.” Id. (citing Cellwitch, at 5). Here, Google offers no
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`explanation for why it delayed filing its petition until seven months after it had served
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`its overlapping invalidity contentions in litigation (Ex. 2001), and long after the court
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`and the parties had already expended considerable resources in litigation.
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`Cellwitch also favorably cites Finjan, Inc. v. Symantec Corp., 139 F. Supp. 3d
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`1032, 1037 (N.D. Cal. 2015) for the proposition that the court may consider whether,
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`if the court “were … to deny the stay until a decision on institution is made, the parties
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`and the Court would expend significant resources on issues that could eventually be
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`mooted by the IPR decision.” Cellwitch, at 5. Here, Google fails to articulate what
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`2
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`IPR2020-00755
`U.S. Patent No. 6,366,908
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`court resources, if any, allegedly would be expended in the interim.
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`The other Northern District of California opinions Google cites each similarly
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`consider highly individualized factors applied to the particular facts of the case.
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`Google’s speculative and unsupported assertion that the Northern District of
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`California will likely stay the litigation simply cannot be squared with the analyses
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`applied in the court opinions Google has cited. Google’s failure to address the
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`analysis in the opinions it cites is both telling and unsurprising, given Uniloc
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`anticipated in its Preliminary Response that Google would (yet again) merely offer
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`citations without explanation. POPR 7‒9.
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`Accordingly, Google’s bald assertion concerning the mere possibility of a stay,
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`which is theoretically present in any case, fails.
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`B. Google fails to establish it is likely trial will be rescheduled in the
`transferee district well over an entire year from now (Factor 2).
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`Google suggests that the court’s transfer order renders moot the consideration
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`of the proximity of the court’s trial date to the Board’s projected statutory deadline
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`for a final written decision. Rep. 4. According to Google, predicting a trial date in
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`the transferee district would be speculative. Id. However, the new trial date need not
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`be predicted with absolute certainty. It is sufficient to consider the likelihood of a
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`jury trial being completed sometime prior to an expected final written decision.
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`Google does not deny that trial would have to be rescheduled in the transferee
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`district well over an entire year from now for this factor to weigh against
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`discretionary denial. Google also does not deny that this is highly unlikely under the
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`circumstances. That trial will likely be expedited in the transferee district is evidenced
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`3
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`IPR2020-00755
`U.S. Patent No. 6,366,908
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`at least by the undisputed fact that claim construction briefing was competed long
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`ago, which is a factor the transferee district considers as disfavoring a stay because it
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`indicates the litigation has reached an advanced stage.
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`Google also provides no authority for its apparent interpretation of this factor
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`as being independently dispositive in the event there is no trial date set. Google
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`provides no precedential authority in support of such an interpretation. This factor is
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`simply listed on one of several other relevant factors in Fintiv; and while the burden
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`of proof lies with Google, it offers no evidence in support of any speculation that a
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`jury trial will postdate an expected final written decision (in the event of institution).
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`C. Google fails to address or even acknowledge the substantial investment
`in the parallel proceeding by the court and the parties (Factor 3).
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`Google misstates this factor as being forward looking. Rep. 5. In doing so,
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`Google fails to recognize that the third factor is retrospective at least in that it weighs
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`the amount of investment the parties and court have put into parallel litigation.
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`Indeed, the Apple v. Fintiv opinion repeatedly uses the past tense in defining this
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`factor in the context of work already completed. Fintiv, at 9‒10. For example, the
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`Apple v. Fintiv opinion itself offers the following instruction:
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`If, at the time of the institution decision, the district court has issued
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`substantive orders related to the patent at issue in the petition, this
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`fact favors denial. Likewise, district court claim construction orders
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`may indicate that the court and parties have invested sufficient time
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`in the parallel proceeding to favor denial. … This investment factor
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`is related to the trial date factor, in that more work completed by the
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`parties and court in the parallel proceeding tends to support the
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`arguments that the parallel proceeding is more advanced, a stay may
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`4
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`IPR2020-00755
`U.S. Patent No. 6,366,908
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`be less likely, and instituting would lead to duplicative costs.
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`Slip op. at 9‒10 (emphasis added).
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`As explained above, the investment of resources and advanced stage in the
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`parallel proceeding (prior to transfer) is evidenced at least by the completion of claim
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`construction briefing (a factor which figures prominently in the transferee district
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`when considering whether to issue a stay in light of a parallel IPR proceeding).
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`D. The Petition presents completely overlapping issues (Factor 4)
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`Google waived any argument concerning this well-established factor because
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`it clearly is part of the NHK analysis deemed precedential before Google filed its
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`petition. See NHK, IPR2018-00752, Paper 8 at 19–20. In any event, Google’s belated
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`argument grossly misapplies this factor.
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`Google flips this factor on its head by arguing it weighs against discretionary
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`denial here ostensibly because its patentability challenges before the Board are
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`wholly subsumed by those advanced in parallel litigation. Rep. 4‒5. However, under
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`Fintiv, this factor weighs in favor of denial if “the petition includes the same or
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`substantially the same claims, grounds, arguments, and evidence as presented in the
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`parallel proceeding”; and this factor weighs against denial “if the petition includes
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`materially different grounds, arguments, and/or evidence than those presented in the
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`district court.” Fintiv, 12‒13. Application of this factor is straightforward.
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`Google does not dispute that its petition includes the same or substantially the
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`same claims, grounds, arguments, and evidence as presented in the parallel
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`proceeding; and it remains undisputed that Google’s petition does not include
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`materially different grounds, arguments, and/or evidence. POPR 4‒7 (comparing Pet.
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`5
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`IPR2020-00755
`U.S. Patent No. 6,366,908
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`with Ex. 2001).
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`First, Google does not attempt to defend, or even acknowledge, its false
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`assertion in its Petition that “that it made no attempt in litigation to even propose any
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`combination of Braden-Harder with Grossman.” POPR 5. Nor does Google deny that
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`its “invalidity contentions identify the same Grossman reference in challenging the
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`same claims 6‒12 of the same ’908 patent.” Id. (citing Ex. 2001 at 20).
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`Second, Google does not attempt to defend, or even acknowledge, its false
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`assertion in its Petition that “that it made no attempt in litigation to even propose any
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`combination of Braden-Harder with Miller.” Id., 5‒6.
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`Rather than address the undisputed and complete overlap between these
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`parallel proceedings, Google suggests that any overlap somehow weighs against
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`denial. Rep. 6. This is precisely the opposite of the instruction in Fintiv (and other
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`cases similarly citing NHK) concerning this factor. Fintiv, slip op. 12‒13. Under the
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`present circumstances, this factor only further weighs in favor of denial.
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`Google provides no precedential authority in support of the erroneous
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`proposition that this factor weighs against denial if Google opts to focus on different
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`invalidity theories in parallel litigation, even though it raises the exact same
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`challenges it raised in its instant Petition. Such an interpretation of this factor would
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`effectively render it a nullity and flies in the face of explicit and precedential
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`instruction in Fintiv (quoted above).2
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`2 The distinguishable case Google cites considered the circumstances present there
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`in light of the fact that the Petitioner provided a rational explanation for why it waited
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`to file its petition with theories overlapping those raised in litigation. Rep. 6 (citing
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`6
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`IPR2020-00755
`U.S. Patent No. 6,366,908
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`E. Google is the Petitioner and defendant in the district court (Factor 5).
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`F. The other circumstances identified by Google are irrelevant or
`incorrect (Factor 6).
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`Fintiv instructs that “if the merits of the grounds raised in the petition are a
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`closer call, then that fact has favored denying institution when other factors favoring
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`denial are present.” Fintiv, 15. This factor further supports denial at least in view of
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`the example weaknesses of the petition Uniloc had identified. See generally POPR.
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`G. Conclusion.
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`The factors summarized in Fintiv, when properly understood and applied here,
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`and in view of undisputed facts, weigh in favor of discretionary denial.
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`Date: August 11, 2020
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`Respectfully submitted,
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`By: /Brett A. Mangrum/
`Ryan Loveless
`Reg. No. 51,970
`Brett A. Mangrum
`Reg. No. 64,783
`Attorneys for Patent Owner
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`Intel Corp. v. VLSI Tech. LLC, IPR2019-01192, Paper 15 at 12 (PTAB Jan. 9, 2020).
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`Here, Google is silent as to why it delayed until the last possible moment.
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`7
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`CERTIFICATE OF COMPLIANCE
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`The undersigned certifies that this Sur Reply complies with the Board’s
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`IPR2020-00755
`U.S. Patent No. 6,366,908
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`authorization of a sur reply of no more than 7 pages.
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`Date: August 11, 2020
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`Respectfully submitted,
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`By: /Brett A. Mangrum/
`Ryan Loveless
`Reg. No. 51,970
`Brett A. Mangrum
`Reg. No. 64,783
`Attorneys for Patent Owner
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`8
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`IPR2020-00755
`U.S. Patent No. 6,366,908
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e), the undersigned certifies that the foregoing
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`was served via email to Petitioner’s counsel of record.
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`Date: August 11, 2020
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`Respectfully submitted,
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`By: /Brett A. Mangrum/
`Ryan Loveless
`Reg. No. 51,970
`Brett A. Mangrum
`Reg. No. 64,783
`Attorneys for Patent Owner
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`9
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