UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`ABILITY OPTO-ELECTRONICS TECHNOLOGY CO., LTD.,
`Petitioner,
`
`v.
`
`LARGAN PRECISION CO., LTD.,
`Patent Owner.
`__________________
`
`Case IPR2020-01339
`Patent 8,988,796
`__________________
`
`PETITIONER’S PRELIMINARY REPLY
`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`ABILITY OPTO-ELECTRONICS TECHNOLOGY CO., LTD.,
`Petitioner,
`
`v.
`
`LARGAN PRECISION CO., LTD.,
`Patent Owner.
`__________________
`
`Case IPR2020-01339
`Patent 8,988,796
`__________________
`
`PETITIONER’S PRELIMINARY REPLY
`
`
`
`
`
`On January 7, 2021, the district court held its initial case management
`
`conference (CMC) in the related litigation between Patent Owner and Petitioner,
`
`following transfer to the Northern District of California. During the CMC, Judge
`
`Donato asked about the status of any IPR petitions, stating that “the odds of a stay
`
`are fairly high” should the Board institute trial. Ex. 1018 at 4:16–23. Judge Donato
`
`also was clear that the litigation schedule would be lengthy and any trial in the
`
`district court would take place far in the future. Indeed, Patent Owner’s draft
`
`Amended CMC Statement, which it has prepared following the CMC, now proposes
`
`a trial date no earlier than May 2022. Ex. 1019 at 9. These most recent litigation
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`developments contradict Patent Owner’s earlier POPR assertions. The Fintiv
`
`factors, particularly factors 1–4 discussed below, favor institution of trial.
`
`I.
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`Factor 1: The district court will likely grant a stay upon institution.
`
`Patent Owner predicted that the district court would deny a stay request,
`
`arguing that Fintiv Factor 1 was “neutral or slightly favor[s] discretionary denial.”
`
`POPR at 4–5. Judge Donato instead stated that a stay is likely upon institution:
`
`I’ll tell you, I’ll tip my hand a little bit, because I think it’s going to
`streamline your case management. If PTAB takes up all of the claims
`in two [of] those patents and most of the third patent, I think the odds
`of stay are fairly high. I’m not guaranteeing it, but I thinks it’s fairly
`likely.
`
`Ex.1018 at 4:19–23 (hearing transcript). Accordingly, and contrary to Patent
`
`
`
`-1-
`
`
`
`
`
`
`
`Owner’s earlier assertion, this factor strongly favors institution.
`
`II.
`
`Factor 2: No trial date is set, and any trial should be well in the future
`after any final written decision.
`
`Patent Owner also predicted that its proposed schedule, and a schedule
`
`entered by Judge Donato in a prior but different case, meant that “the parties should
`
`expect the court to schedule the jury trial to begin by at least [Patent Owner’s]
`
`proposed November 2021 date” and that “Fintiv Factor 2 favors discretionary
`
`denial.” POPR at 6–8. Again, Patent Owner’s prediction was wrong. At the CMC,
`
`Judge Donato did not set a trial date or any other deadlines. Instead, he indicated
`
`that the schedule will be lengthy and longer than Patent Owner had predicted.
`
`Patent Owner’s draft Amended CMC Statement proposes a claim construction
`
`hearing in September 2021, and a trial date no earlier than May 2022. Ex.1019 at 8.
`
`This trial date is well after the latest Final Written Decision due date in this matter,
`
`February 23, 2022. A stay, if granted, will only further extend Patent Owner’s
`
`proposed deadlines. Accordingly, this factor also strongly favors institution.
`
`III. Factor 3: The investment in district court proceedings has been minimal.
`Patent Owner argued that activities that took place while the district court case
`
`was in the Eastern District of Texas, particularly the parties’ claim construction
`
`briefing, meant that “Fintiv Factor 3 favors discretionary denial.” POPR at 8–10.
`
`However, those pre-transfer proceedings never even proceeded to a Markman
`
`hearing or ruling, and Judge Donato stated at the recent post-transfer CMC that he
`
`
`
`-2-
`
`
`
`
`
`
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`was “not willing to tie [the court’s] hands to what happened in the Eastern District
`
`[of Texas].” Ex.1018 at 5:17–19. Judge Donato ordered the parties to “work out a
`
`new claim construction process” that ensures that all disclosures required by the
`
`Northern District of California’s local patent rules are completed. Ex.1018 at 4:25–
`
`5:21, 6:7–20. According to Patent Owner’s draft Amended CMC Statement, the
`
`parties’ only post-transfer, pre-Institution activity would be an exchange of proposed
`
`terms for construction on February 10, 2021, with numerous other post-Institution
`
`deadlines following from the remainder of 2021 through mid-2022. Ex.1019 at 8–9.
`
`Accordingly, Fintiv Factor 3 strongly favors institution.
`
`IV. Factor 4: There is no risk of duplicative efforts.
`To avoid any doubt, Petitioner stipulates that, if IPR is instituted, it will not
`
`pursue in the district court any ground raised or that could have been reasonably
`
`raised in the IPR. This stipulation matches the petitioner’s language in the now
`
`precedential Sotera case. Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019,
`
`Paper 12, at 13–14 (Dec. 1, 2020) (precedential). Thus, Fintiv Factor 4 “weighs
`
`strongly in favor of not exercising discretion to deny institution.” Sotera at 18–19.
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`V. Conclusion
`For these reasons, and those in the Petition, the Fintiv factors show that the
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`efficiency and integrity of the IPR system is best served by instituting review.
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`
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`-3-
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`
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`Date: January 19, 2021
`
`
`
`
`
`Respectfully submitted,
`
`By: /Matthew W. Johnson/
`Matthew W. Johnson
`Reg. No. 59,108
`JONES DAY
`500 Grant Street, Suite 4500
`Pittsburg, Pennsylvania 15219-2514
`(412) 394-9524
`mwjohnson@jonesday.com
`
`-4-
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that the foregoing Petitioner’s Preliminary
`
`Reply was served on January 19, 2021, by electronic mail sent to Patent Owner’s
`
`lead and backup counsel and the e-mail address designated by Patent Owner for
`
`electronic service:
`
`Joseph F. Edell (Reg. No. 67,625)
`joe.edell.IPR@fischllp.com
`FISCH SIGLER LLP
`5301 Wisconsin Avenue NW
`Fourth Floor
`Washington, DC 20015
`Phone: +1.202.362.3524
`
`Adam A. Allgood (Reg. No. 67,306)
`adam.allgood@fischllp.com
`FISCH SIGLER LLP
`5301 Wisconsin Avenue NW
`Fourth Floor
`Washington, DC 20015
`Phone: +1.202.362.3536
`
`joe.edell.IPR@fischllp.com
`
`Date: January 19, 2021
`
`
`
`
`
`
`
`
`
`/Matthew W. Johnson/
`
`
`-5-
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`UPDATED APPENDIX OF EXHIBITS
`
`EXHIBIT
`NO.
`
`TITLE
`
`1001
`
`U.S. Patent No. 8,988,796 (“’796 patent”)
`
`1002
`
`File history of the ’796 patent
`
`1003
`
`U.S. Patent No. 9,097,860 (“Yu”)
`
`1004
`
`File history of Yu
`
`1005
`
`Certified translation of Taiwan Application No. 102131525
`
`1006
`
`U.S. Patent Application Publication No. 2004/0012861
`(“Yamaguchi”)
`
`1007
`
`Declaration of William T. Plummer, Ph.D.
`
`1008
`
`Code V Introductory User’s Guide, Code V 9.7 (October 2006)
`
`1009
`
`OSLO Optics Reference, Version 6.1 (2001)
`
`1010
`
`ZEMAX Optical Design Program User’s Guide (August 1, 2006)
`
`1011
`
`U.S. Patent Application Publication No. 2012/0147249 (“Okano”)
`
`1012
`
`WO 2013/125248 A1 (“Sugiyama”)
`
`1013
`
`Certified translation of WO 2013/125248 A1 (“Sugiyama”)
`
`-6-
`
`
`
`
`
`
`
`
`
`
`
`
`EXHIBIT
`NO.
`
`TITLE
`
`1014
`
`Arthur Cox, A System of Optical Design (1964)
`
`1015
`
`Warren J. Smith, Modern Optical Engineering (3d ed. 2000)
`
`1016
`
`Warren J. Smith, Modern Lens Design (2d ed. 2005)
`
`1017
`
`Warren J. Smith, Modern Optical Engineering (2d ed. 1990)
`
`1018
`
`1019
`
`Transcript of Proceedings, Largan Precision Co. v. Ability Opto-
`Electronics Technology Co., No. 20-cv-06607 JD (N.D. Cal.
`January 7, 2021)
`
`Patent Owner’s January 12, 2021, proposed Amended Joint Case
`Management Statement in Largan Precision Co. v. Ability Opto-
`Electronics Technology Co., No. 3:20-cv-06607-JD (N.D. Cal.)
`
`
`
`
`
`
`
`-7-
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`
`
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