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`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 IPR2020-01545
`Patent No. 9,146,378
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`PATENT OWNER LARGAN PRECISION CO., LTD.’S PRELIMINARY
`SUR-REPLY
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`Case No. IPR2020-01545
`U.S. Patent No. 9,146,378
`Petitioner’s preliminary reply doesn’t dispute that (a) its petition circum-
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`vented the Board’s Rules, including by exceeding the word-limit by 5,700 words,
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`(b) the district court will address all claims, prior art, and arguments raised in the
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`petition, and (c) the parties have invested 16-plus months and significant resources
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`contesting the parallel litigation in two district courts. These undisputed facts—
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`which raise concerns of fairness, inefficiency, and potential conflicting decisions—
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`continue to favor discretionary denial. And indeed, the Board should exercise that
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`discretion based on a balancing of the six Fintiv factors.
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`Fintiv Factor 1: Petitioner quotes the district court’s statement that it would
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`likely grant a stay if the Board institutes all three requested IPRs, but ignores other
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`results short of that outcome. The court hasn’t indicated whether it would likely
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`grant a stay if the Board institutes fewer than all three IPRs, nor did Petitioner ask
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`for such guidance. Ex. 1018 at 4. And Petitioner doesn’t commit to moving for a
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`stay if the Board doesn’t institute all three IPRs. So, with many relevant facts and
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`circumstances on the potential for a stay still unknown, this factor remains neutral.
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`Fintiv Factor 2: Consistent with the schedule in the Open Text case (POPR
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`at 7), the district court may still schedule trial before the projected March 2022
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`deadline for the Board’s final written decision. But Patent Owner acknowledges
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`that this isn’t likely, as the parties’ newly-submitted proposed schedules have trial
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`beginning no earlier than May 2022. As such, this factor now somewhat disfavors
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` 1
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`Case No. IPR2020-01545
`U.S. Patent No. 9,146,378
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`discretionary denial.
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`Fintiv Factor 3: It remains undisputed that the parties have invested, and
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`continue to invest, substantial time and resources in the parallel litigation. Before
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`the case’s transfer, the parties completed claim construction briefing, produced
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`over 37,000 documents, responded to over four dozen interrogatories, and fully
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`briefed motions to dismiss, disqualify, transfer, and compel. POPR at 8-9.
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`In the new venue, the parties will perform further discovery and claim con-
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`struction exchanges before any IPR institution decision. Ex. 2026 at 10. And the
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`transferee court has already begun to invest resources, such as conducting a case
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`management conference and ruling on co-defendant HP’s motion for issuance of
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`letters rogatory. Ex. 2027. Thus, factor 3 continues to favor discretionary denial.
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`Fintiv Factor 4: It remains undisputed that the parallel litigation will ad-
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`dress the same claims challenged here, based on the same art and arguments.
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`POPR at 10 (the court will also address claim 9). So, institution would introduce a
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`duplicative proceeding, fostering inefficiency and potential conflicting decisions.
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`And the risk of such conflicting decisions is particularly acute here. Peti-
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`tioner has asked the Board to adopt plain and ordinary meaning for all claim terms
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`in the patent while asking the district court to narrowly construe two claim terms.
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`POPR at 26-34. And Petitioner joined HP’s request that the court re-open claim
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`construction. See Ex. 2004 at 7, 29; Ex. 2026 at 10. The court granted this request,
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`Case No. IPR2020-01545
`U.S. Patent No. 9,146,378
`and now Petitioner may ask the court to construe more terms, in further contradic-
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`tion to its position here.
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`In its preliminary reply, Petitioner attempts to ameliorate this by stipulating
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`that it won’t pursue in the district court any ground it raised or could’ve reasonably
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`raised in the IPR. But this stipulation fails to address that HP has asserted the same
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`art and arguments in court that Petitioner raises here. POPR at 11. Hence, despite
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`Petitioner’s stipulation, the Board and Patent Owner will likely duplicate work per-
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`formed in the parallel litigation. That would increase the risk of inconsistent deter-
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`minations between the Board and the district court, and unfairly burden Patent
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`Owner. Therefore, this factor favors discretionary denial.
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`Fintiv Factor 5: Petitioner doesn’t dispute that, because the district court
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`will resolve the same issues for the same parties, inefficiency risks favor denial.
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`Fintiv Factor 6: Petitioner doesn’t dispute that it used improper tactics to
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`circumvent the Board’s Rules, resulting in its petition exceeding the Board’s word
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`limit by 5,700 words. POPR at And Petitioner doesn’t dispute that it delayed filing
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`its petition, which led to significant investments in the parallel litigation. Further,
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`Petitioner doesn’t dispute that it misinterprets the Matsuo reference or that its obvi-
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`ousness theories rely on improper hindsight. Thus, factor 6 favors denial.
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`On balance then, concerns over inefficiency, fairness, and conflicting deci-
`
`sions, particularly on claim construction, all support discretionary denial.
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`Case No. IPR2020-01545
`U.S. Patent No. 9,146,378
`/Joseph F. Edell/
`
`
`
`Joseph F. Edell (Reg. No. 67,625)
`Counsel for Patent Owner
`Largan Precision Co., Ltd.
`
`
`
`
`
`
`By:
`
`
`
`
`
`
`
`Dated: January 26, 2021
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`Case No. IPR2020-01545
`U.S. Patent No. 9,146,378
`UPDATED LIST OF EXHIBITS
`
`Exhibit
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`Description
`Largan Precision Co., Ltd. v. Ability Opto-Electronics Technology
`Co. Ltd., E.D. Tex. Case No. 4:19-CV-00696-ALM (Defendants’ In-
`validity Contentions for U.S. Patent No. 9,146,378) (May 18, 2020)
`Largan Precision Co., Ltd. v. Ability Opto-Electronics Technology
`Co. Ltd., E.D. Tex. Case No. 4:19-CV-00696-ALM, Docket Item 1
`(Complaint for Patent Infringement) (Sept. 25, 2019)
`Largan Precision Co., Ltd. v. Ability Opto-Electronics Technology
`Co. Ltd., E.D. Tex. Case No. 4:19-CV-00696-ALM, Docket Item 80
`(Amended Scheduling Order) (Mar. 27, 2020)
`Draft Joint Case Management Statement, Largan Precision Co., Ltd.
`v. Ability Opto-Electronics Technology Co. Ltd., N.D. Cal. Case No.
`3:20-CV-006607-JD (Dec. 18, 2020)
`Open Text S.A. v. Alfresco Software, Ltd, N.D. Cal. Case No. 3:13-
`CV-04910-JD, Docket Item 213 (Transcript of Proceedings) (June
`20, 2014)
`Open Text S.A. v. Alfresco Software, Ltd, N.D. Cal. Case No. 3:13-
`CV-04910-JD, Docket Item 240 (Scheduling Order) (Aug. 25, 2014)
`Open Text S.A. v. Alfresco Software, Ltd, N.D. Cal. Case No. 3:13-
`CV-04910-JD, Docket Listing
`United States District Court Northern District of California, General
`Order No. 72-6 (Sept. 16, 2020)
`Largan Precision Co., Ltd. v. Ability Opto-Electronics Technology
`Co. Ltd., E.D. Tex. Case No. 4:19-CV-00696-ALM (Expert Declara-
`tion of Dr. Rongguang Liang Regarding Claim Construction) (July
`13, 2020)
`Largan Precision Co., Ltd. v. Ability Opto-Electronics Technology
`Co. Ltd., E.D. Tex. Case No. 4:19-CV-00696-ALM (Declaration of
`Jose Sasian, Ph.D., Regarding Claim Construction of United States
`Patent Nos. 7,274,518, 8,395,691, 8,988,796, and 9,146,378) (July
`13, 2020)
`Largan Precision Co., Ltd. v. Ability Opto-Electronics Technology
`Co. Ltd., N.D. Cal. Case No. 3:20-CV-006607-JD, Docket Listing
`Largan Precision Co., Ltd. v. Ability Opto-Electronics Technology
`Co. Ltd., E.D. Tex. Case No. 4:19-CV-00696-ALM (Exhibit D-6 In-
`validity Claim Chart for U.S. Patent No. 9,146,378 (“’378 patent”)
`Based on U.S. Patent Application Publication No.
`
` 5
`
`

`

`Case No. IPR2020-01545
`U.S. Patent No. 9,146,378
`
`Exhibit
`
`2013
`
`2014
`
`2015
`2016
`
`2017
`
`2018
`
`2019 –
`2022
`2023
`2024
`
`2025
`2026
`
`2027
`
`
`
`Description
`2005/0041306/U.S. Patent No. 6,970,306 to Matsuo ‘306 (“Matsuo
`‘306”) (May 18, 2020)
`Largan Precision Co., Ltd. v. Ability Opto-Electronics Technology
`Co. Ltd., E.D. Tex. Case No. 4:19-CV-00696-ALM (Exhibit D-8 In-
`validity Claim Chart for U.S. Patent No. 9,146,378 (“’378 patent”)
`Based on WO 2013145989 Al (“Kawasaki ‘989”) (May 18, 2020)
`Largan Precision Co., Ltd. v. Ability Opto-Electronics Technology
`Co. Ltd., E.D. Tex. Case No. 4:19-CV-00696-ALM (Plaintiff Largan
`Precision Co., Ltd.’s Patent Rule 3-1 and 3-2 Disclosures) (Apr. 2,
`2020)
`[RESERVED]
`C.W. Lee Email to Ability Opto-Electronics Technology Co. Ltd.
`Regarding Infringement of the ’378 Patent (Aug. 13, 2019)
`Largan Precision Co., Ltd. v. Ability Opto-Electronics Technology
`Co. Ltd., E.D. Tex. Case No. 4:19-CV-00696-ALM, Docket Item
`138 (Defendants’ Responsive Claim Construction Brief) (Sept. 1,
`2020)
`Largan Precision Co., Ltd. v. Ability Opto-Electronics Technology
`Co. Ltd., E.D. Tex. Case No. 4:19-CV-00696-ALM, Docket Item
`131 (Largan’s Opening Claim Construction Brief) (July 30, 2020)
`[RESERVED]
`
`U.S. Patent No. 9,690,073 (Liu)
`Bibliographic Data for Japanese Patent Publication 201208230,
`https://worldwide.espacenet.com/publicationDetails/bib-
`lio?FT=D&date=20120607&DB=&lo-
`cale=en_EP&CC=JP&NR=2012108230A&KC=A&ND=5 (last vis-
`ited on October 29, 2020)
`U.S. Patent Application Publication No. 2005/0041306 (Matsuo)
`Amended Joint Case Management Statement, Largan Precision Co.,
`Ltd. v. Ability Opto-Electronics Technology Co. Ltd., N.D. Cal. Case
`No. 3:20-CV-006607-JD, Docket Item 177 (Jan. 22, 2020)
`Request for International Judicial Assistance, Letters Rogatory, Lar-
`gan Precision Co., Ltd. v. Ability Opto-Electronics Technology Co.
`Ltd., N.D. Cal. Case No. 3:20-CV-006607-JD, Docket Items 176,
`176-1 (Jan. 20, 2020)
`
`
` 6
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`

`

`Case No. IPR2020-01545
`U.S. Patent No. 9,146,378
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the foregoing PATENT
`
`OWNER LARGAN PRECISION CO., LTD.’S PRELIMINARY SUR-REPLY
`
`was served via electronic mail to the following attorneys of record for the Peti-
`
`tioner listed below:
`
`
`
`Matthew W. Johnson
`mwjohnson@jonesday.com
`JONES DAY
`500 Grant Street, Suite 4500
`Pittsburgh, Pennsylvania 15219-2514
`
`John A. Marlott
`jamarlott@jonesday.com
`JONES DAY
`77 West Wacker, Suite 3500
`Chicago, Illinois 60601-1692
`
`Keith B. Davis
`kbdavis@jonesday.com
`Jeffrey M. White
`jwhite@jonesday.com
`JONES DAY
`2727 North Hardwood Street, Suite 500
`Dallas, Texas 75201
`
`
`
`Dated: January 26, 2021
`
`
`
`
`
`
`
`By:
`
`
`
`
`
`/Joseph F. Edell/
`Joseph F. Edell (Reg. No. 67,625)
`Attorney for Patent Owner
`Largan Precision Co., Ltd.
`
`
`
` 7
`
`

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