`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
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`ABILITY OPTO-ELECTRONICS TECHNOLOGY CO., LTD.,
`Petitioner,
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`v.
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`LARGAN PRECISION CO., LTD.,
`Patent Owner.
`__________________
`
`Case IPR2020-01545
`Patent 9,146,378
`__________________
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`PETITIONER’S PRELIMINARY REPLY
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`On January 7, 2021, the district court held its initial case management
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`conference (CMC) in the related litigation between Patent Owner and Petitioner,
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`following transfer to the Northern District of California. During the CMC, Judge
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`Donato asked about the status of any IPR petitions, stating that “the odds of a stay
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`are fairly high” should the Board institute trial. Ex. 1015 at 4:16–23. Judge Donato
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`also was clear that the litigation schedule would be lengthy and any trial in the
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`district court would take place far in the future. Indeed, Patent Owner’s draft
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`Amended CMC Statement, which it has prepared following the CMC, now proposes
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`a trial date no earlier than May 2022. Ex. 1016 at 9. These most recent litigation
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`developments contradict Patent Owner’s earlier POPR assertions. The Fintiv
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`factors, particularly factors 1–4 discussed below, favor institution of trial.
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`I.
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`Factor 1: The district court will likely grant a stay upon institution.
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`Patent Owner predicted that the district court would deny a stay request,
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`arguing that Fintiv Factor 1 was “neutral or slightly favor[s] discretionary denial.”
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`POPR at 4–6. Judge Donato instead stated that a stay is likely upon institution:
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`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.
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`Ex.1015 at 4:19–23 (hearing transcript). Accordingly, and contrary to Patent
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`Owner’s earlier assertion, this factor strongly favors institution.
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`II.
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`Factor 2: No trial date is set, and any trial should be well in the future
`after any final written decision.
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`Patent Owner also predicted that its proposed schedule, and a schedule
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`entered by Judge Donato in a prior but different case, meant that “the parties should
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`expect the court to schedule the jury trial to begin by at least [Patent Owner’s]
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`proposed November 2021 date” and that “Fintiv Factor 2 favors discretionary
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`denial.” POPR at 6–8. Again, Patent Owner’s prediction was wrong. At the CMC,
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`Judge Donato did not set a trial date or any other deadlines. Instead, he indicated
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`that the schedule will be lengthy and longer than Patent Owner had predicted.
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`Patent Owner’s draft Amended CMC Statement proposes a claim construction
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`hearing in September 2021, and a trial date no earlier than May 2022. Ex.1016 at 8.
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`This trial date is well after the latest Final Written Decision due date in this matter,
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`March 18, 2022. A stay, if granted, will only further extend Patent Owner’s
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`proposed deadlines. Accordingly, this factor also strongly favors institution.
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`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
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`was in the Eastern District of Texas, particularly the parties’ claim construction
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`briefing, meant that “Fintiv Factor 3 favors discretionary denial.” POPR at 8–10.
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`However, those pre-transfer proceedings never even proceeded to a Markman
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`hearing or ruling, and Judge Donato stated at the recent post-transfer CMC that he
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`was “not willing to tie [the court’s] hands to what happened in the Eastern District
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`[of Texas].” Ex.1015 at 5:17–19. Judge Donato ordered the parties to “work out a
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`new claim construction process” that ensures that all disclosures required by the
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`Northern District of California’s local patent rules are completed. Ex.1015 at 4:25–
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`5:21, 6:7–20. According to Patent Owner’s draft Amended CMC Statement, the
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`parties’ only post-transfer, pre-Institution activities would be the exchange of
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`proposed terms for construction on February 10, 2021, and preliminary
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`constructions on March 3, 2021, with numerous other post-Institution deadlines
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`following from the remainder of 2021 through mid-2022. Ex.1016 at 8–9.
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`Accordingly, Fintiv Factor 3 strongly favors institution.
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`IV. Factor 4: There is no risk of duplicative efforts.
`To avoid any doubt, Petitioner stipulates that, if IPR is instituted, it will not
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`pursue in the district court any ground raised or that could have been reasonably
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`raised in the IPR. This stipulation matches the petitioner’s language in the now
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`precedential Sotera case. Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019,
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`Paper 12, at 13–14 (Dec. 1, 2020) (precedential). Thus, Fintiv Factor 4 “weighs
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`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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`Date: January 19, 2021
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`Respectfully submitted,
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`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
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that the foregoing Petitioner’s Preliminary
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`Reply was served on January 19, 2021, by electronic mail sent to Patent Owner’s
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`lead and backup counsel and the e-mail address designated by Patent Owner for
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`electronic service:
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`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
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`joe.edell.IPR@fischllp.com
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`Date: January 19, 2021
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`/Matthew W. Johnson/
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`UPDATED APPENDIX OF EXHIBITS
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`EXHIBIT
`NO.
`
`TITLE
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`1001
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`U.S. Patent No. 9,146,378 (“’378 patent”)
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`1002
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`File history of the ’378 patent
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`1003
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`U.S. Patent No. 6,970,306 (“Matsuo”)
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`1004
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`File history of Matsuo
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`1005
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`Declaration of William T. Plummer, Ph.D.
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`1006
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`Certified translation of WO 2013/145989 A1 (“Kawasaki”)
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`1007
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`WO 2013/145989 A1 (“Kawasaki”)
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`1008
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`Code V Introductory User’s Guide, Code V 9.7 (October 2006)
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`1009
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`OSLO Optics Reference, Version 6.1 (2001)
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`1010
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`ZEMAX Optical Design Program User’s Guide (August 1, 2006)
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`1011
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`Warren J. Smith, Modern Optical Engineering (3d ed. 2000)
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`1012
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`Warren J. Smith, Modern Lens Design (2d ed. 2005)
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`1013
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`Warren J. Smith, Modern Optical Engineering (2d ed. 1990)
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`-6-
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`EXHIBIT
`NO.
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`TITLE
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`1014
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`Arthur Cox, A System of Optical Design (1964)
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`1015
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`1016
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`Transcript of Proceedings, Largan Precision Co. v. Ability Opto-
`Electronics Technology Co., No. 20-cv-06607 JD (N.D. Cal.
`January 7, 2021)
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`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.)
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