IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`LG ELECTRONICS, INC. and LG ELECTRONICS U.S.A., INC.,
`Petitioners
`
`v.
`
`ANCORA TECHNOLOGIES, INC.,
`Patent Owner
`__________
`
`Case IPR2021-00581
`Patent No. 6,411,941
`__________
`
`PATENT OWNER ANCORA’S SUR-REPLY OPPOSING
`PETITIONERS’ MOTION FOR JOINDER
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`LG ELECTRONICS, INC. and LG ELECTRONICS U.S.A., INC.,
`Petitioners
`
`v.
`
`ANCORA TECHNOLOGIES, INC.,
`Patent Owner
`__________
`
`Case IPR2021-00581
`Patent No. 6,411,941
`__________
`
`PATENT OWNER ANCORA’S SUR-REPLY OPPOSING
`PETITIONERS’ MOTION FOR JOINDER
`
`
`
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`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`Ancora’s Sur-Reply to Petitioners’
`Motion for Joinder
`
`Table of Contents
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`
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`IPR2021-00581
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`Page
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`I.
`II.
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`INTRODUCTION ........................................................................................... 1
`PETITIONER DOES NOT CONTRADICT PATENT OWNER’S
`SHOWING THAT THE GENERAL PLASTIC AND FINTIV FACTORS
`OVERWHELMINGLY FAVOR DISCRETIONARY DENIAL ................... 2
`III. THE BOARD HAS DISCRETION AND GOOD REASON TO DENY
`PETITIONER’S MOTION FOR JOINDER ................................................... 4
`IV. CONCLUSION ................................................................................................ 7
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`
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`
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`i
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`
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`Ancora’s Sur-Reply to Petitioners’
`Motion for Joinder
`
`IPR2021-00581
`
`Table of Exhibits
`
`Description
`
`RESERVED
`RESERVED
`RESERVED
`Apple Inc.’s N.D. Cal. Patent L.R. 3-3 Disclosures
`(Invalidity Disclosures)
`Defendants HTC America, Inc. and HTC Corporation’s
`Preliminary Non-Infringement and Invalidity Contentions
`RESERVED
`Email requesting permission to file motion to terminate
`Ancora v. Samsung Fourth Amended Scheduling Order
`Expert Report of Suzanne Barber Regarding Invalidity of
`U.S. Patent No. 6,411,941
`Ancora v. HTC Order Setting Patent Case Schedule
`Samsung and LG Invalidity Contentions and Select Invalidity
`Charts
`Ancora v. LG Affidavit of Service
`IAM Article – Judge Albright Interview
`VLSI v. Intel Jury Verdict Form
`Ancora v. LG Rebuttal Report of David Martin
`
`Exhibit No.
`Ex. 2001
`Ex. 2002
`Ex. 2003
`Ex. 2004
`
`Ex. 2005
`
`Ex. 2006
`Ex. 2007
`Ex. 2008
`Ex. 2009
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`Ex. 2010
`Ex. 2011
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`Ex. 2012
`Ex. 2013
`Ex. 2014
`Ex. 2015
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`
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`
`
`ii
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`
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`Ancora’s Sur-Reply to Petitioners’
`Motion for Joinder
`
`Table of Authorities
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`
`
`IPR2021-00581
`
`Page(s)
`
`Cases
`BMW v. Paice LLC,
`Case No. IPR2020-01386, paper 13 (PTAB Feb. 5, 2021) ................................2, 3
`Samsung Elecs. Co., Ltd. v. Ancora Techs Inc.,
`Case No. IPR2021-00583, paper 11 (PTAB Apr. 9, 2021) .................................... 6
`Shenzhen Silver Star Intelligent Tech. Co., Ltd. v. iRobot Corp.,
`Case No. IPR2018-00761, paper 15 (PTAB Sep. 5, 2018) .................................... 2
`Sotera Wireless, Inc. v. Masimo Corp.,
`Case No. IPR2020-01019, paper 12 (PTAB Dec. 1, 2020) .................................... 4
`ZTE (USA) LLC v. Seven Networks, LLC,
`Case No. IPR2019-00460, paper 18 (PTAB Jun. 6, 2019) ..................................... 4
`Statutes
`35 U.S.C. § 315(e) ..................................................................................................... 4
`Other Authorities
`PTAB Consolidated Trial Practice Guide (Nov. 2019),
`https://www.uspto.gov/TrialPracticeGuideConsolidated ....................................... 6
`
`
`
`iii
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`
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`Ancora’s Sur-Reply to Petitioners’
`Motion for Joinder
`
`I.
`
`INTRODUCTION
`
`IPR2021-00581
`
`Instituting this proceeding and joining it with IPR2020-01609 would
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`unnecessarily expend the Board’s limited resources and prolong this latest serial
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`challenge to the ’941 patent. Petitioner does not refute that both the General Plastic
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`and Fintiv factors overwhelmingly favor exercising the Board’s discretion to deny
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`this petition. The discretionary denial issues are now fully briefed and ripe for the
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`Board’s decision; the Petition can be denied immediately. The Board can
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`alternatively wait until after Patent Owner files its preliminary response, on April
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`23, 2021, to evaluate the merits of the Petition.
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`Even if trial is instituted, the Board should deny Petitioner’s motion for
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`joinder in view of settlement in the original IPR2020-01609. The long history of
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`challenges to the ’941 patent justify denying joinder here. Delay while IPR2020-
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`01609 waits for decisions in this proceeding also justifies denying joinder. That
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`proceeding has languished since February. The delay will continue while this
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`proceeding runs its natural course with the Patent Owner’s preliminary response.
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`This will set the IPR2020-01609 proceeding back by more than two months, even if
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`the Board decides to institute on the day after Patent Owner’s preliminary response.
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`Petitioner cannot refute this fact, and the resulting delay would require the parties
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`and the Board to expend additional resources to finish the proceeding before the
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`statutory twelve-month statutory deadline on February 16, 2022.
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`1
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`
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`Ancora’s Sur-Reply to Petitioners’
`Motion for Joinder
`
`II.
`
`PETITIONER DOES NOT CONTRADICT PATENT OWNER’S
`SHOWING THAT THE GENERAL PLASTIC AND FINTIV FACTORS
`OVERWHELMINGLY FAVOR DISCRETIONARY DENIAL
`
`IPR2021-00581
`
`Petitioner’s reply addresses one factor each from among the General Plastic
`
`and Fintiv factors. This does not rebut the strong evidence favoring discretionary
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`denial, as outlined in Patent Owner’s opposition.
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`Regarding the General Plastic factors, Petitioner argues that it has not
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`previously filed a petition challenging the ’941 patent. At most, this affects the first
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`General Plastic factor, i.e., whether the same petitioner previously filed a petition
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`directed to the same claims of the same patent. But the Board considers the General
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`Plastic factors as a whole. Even if the first factor is neutral or supports institution, it
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`does not single-handedly overcome the remaining factors. See Shenzhen Silver Star
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`Intelligent Tech. Co., Ltd. v. iRobot Corp., Case No. IPR2018-00761, paper 15 at
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`14–15 (PTAB Sep. 5, 2018).
`
`Petitioner’s ad hominem attack on Patent Owner’s litigation strategy carries
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`no weight. Petitioner does not assert that Patent Owner’s litigation tactics prevented
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`it from filing the Petition at an earlier time. Cf. BMW v. Paice LLC, Case No.
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`IPR2020-01386, paper 13 at 19 (PTAB Feb. 5, 2021). In BMW, the Board found that
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`factor one favored institution because “Petitioner challenges claims not previously
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`challenged” and factor three favored institution because “[t]here have been no
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`previous challenges to 17 of the claims challenged in the Petition.” Id. at 20–21, 25.
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`2
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`
`
`Ancora’s Sur-Reply to Petitioners’
`Motion for Joinder
`
`IPR2021-00581
`
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`In the BMW analysis of factor five, the petitioner argued that it had no reason to file
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`its own petition until after it had been sued. Id. at 26. Here, Petitioner challenges the
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`same claims as prior petitions filed against the ’941 patent. Petitioner does not
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`identify any reason for delaying more than 19 months after it was served with a
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`complaint, to file the Petition in this proceeding. And lastly, Petitioner does not argue
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`that it was unaware of U.S. Patent Nos. 4,658,093 to Hellman and 5,892,906 to
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`Chou. Petitioner has not rebutted evidence of Patent Owner’s showing that factors
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`2–4, 6, and 7 weigh against instituting trial, as outlined in the opposition (paper 9).
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`Regarding the Fintiv factors, Petitioner similarly fails to identify facts that
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`could tilt the analysis in favor of institution. The relevant fact here, with respect to
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`the Fintiv factors, is that the trial between the Petitioner and the Patent Owner will
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`begin on June 7, 2021. The mere fact that a final decision could issue before trials
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`against other accused infringers does not negate the duplication of effort as to
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`Petitioner’s asserted grounds. Petitioner offers no evidence that a stay is likely to be
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`granted in its district court case, given that trial draws near.
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`Petitioner’s stipulation is an attempt to both have and eat its cake, favoring
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`institution in this proceeding but preserving every other ground of invalidity that it
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`asserted in the district court. This ploy would allow Petitioner to assert some grounds
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`of invalidity before the Board and reserve others for the district court, regardless of
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`whether it could have raised them here. Petitioner’s stipulation is contrary to the
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`3
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`
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`Ancora’s Sur-Reply to Petitioners’
`Motion for Joinder
`
`IPR2021-00581
`
`
`estoppel that Congress envisioned. See 35 U.S.C. § 315(e)(2). And Petitioner’s
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`stipulation falls short of the stipulations the Board has found persuasive. Cf. Sotera
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`Wireless, Inc. v. Masimo Corp., Case No. IPR2020-01019, paper 12 at 18–19 (PTAB
`
`Dec. 1, 2020) (precedential). Petitioner’s stipulation is limited to grounds based on
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`Hellman, in contrast to the “broad stipulation” at issue in Sotera, which included
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`“any other ground . . . that was raised or could have been reasonably raised in an
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`IPR (i.e., any ground that could be raised under §§ 102 or 103 on the basis of prior
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`art patents or printed publications).” Id. Petitioner’s stipulation will not avoid
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`duplication of effort on June 7, 2021 when trial between Patent Owner and Petitioner
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`begins in the Federal District Court for the Western District of Texas. As illustrated
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`in Ex. 2009, Petitioner’s expert has disclosed grounds based on a series of patents
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`and printed publications, any one of which could have been asserted in IPR
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`proceedings. In short Petitioner has not rebutted the fact that each of factors 1–6
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`weigh against instituting trial. Discretionary denial is appropriate under both of the
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`General Plastic and Fintiv precedential decisions.
`
`III. THE BOARD HAS DISCRETION AND GOOD REASON TO DENY
`PETITIONER’S MOTION FOR JOINDER
`
`Petitioner concedes that the Board decides joinder motions “on a case-by-case
`
`basis upon consideration of the totality of the circumstances.” ZTE (USA) LLC v.
`
`Seven Networks, LLC, Case No. IPR2019-00460, paper 18 at 6 (PTAB Jun. 6, 2019).
`
`4
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`
`
`Ancora’s Sur-Reply to Petitioners’
`Motion for Joinder
`
`IPR2021-00581
`
`
`The litigation history of the ’941 patent, including the numerous challenges outlined
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`in Patent Owner’s opposition (paper 9 at 2–4) and upcoming trials involving
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`overlapping art justify denying joinder for this proceeding. The Board’s discretion
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`to deny joinder, as asserted in ZTE and the other cases cited in Patent Owner’s
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`opposition, applies in this proceeding with equal force despite the different
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`underlying facts.
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`Institution of trial in IPR2020-01609 does not place any cloud over the
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`validity of the ’941 patent and does not require joinder here. The validity of the ’941
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`patent has been affirmed many times, over different art that was the first choice of
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`similarly situated infringers. Petitioner does not dispute that the Hellman reference
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`asserted in IPR2020-01609 was publicly listed in invalidity contentions asserted
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`against the ’941 patent as of 2015. (See Ex. 2004 at 2, 3, 31.) Each of the accused
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`’941 patent infringers nevertheless decided not to assert grounds of invalidity based
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`on Hellman. Patent Owner has already addressed the shortcomings of Hellman in
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`pending district court litigation with the Petitioner. (Ex. 2015 at 86–96.) Petitioner’s
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`unexplained delay, moreover, justifies denying Petitioner’s motion for joinder. As
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`detailed in Patent Owner’s opposition, Petitioner waited over 19 months after getting
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`sued to file the Petition. (Paper 9 at 14.)
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`Litigation between Patent Owner and other accused defendants (aside from
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`Petitioner) has no bearing on whether this proceeding should be joined with
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`5
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`
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`Ancora’s Sur-Reply to Petitioners’
`Motion for Joinder
`
`IPR2021-00581
`
`
`IPR2020-01609. The district court trial between Patent Owner and Petitioner will be
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`the first trial of the five pending lawsuits.1 The grounds of invalidity asserted by
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`Petitioner will be aired in the district court long before a final written decision in this
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`proceeding.
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`If the Board decides discretionary denial does not apply in this proceeding,
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`the IPR2020-01609 proceeding will be delayed by more than two months.
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`Petitioner’s reply does not refute this fact, and the resulting delay would require the
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`parties and the Board to expend additional resources to finish the proceeding before
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`the statutory twelve-month statutory deadline on February 16, 2022.
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`Patent Owner has the right to respond to the Petition with a preliminary
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`response that explains why the “prior art does not teach or suggest a combination
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`that the petitioner is advocating.” PTAB Consolidated Trial Practice Guide, at 50
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`(Nov. 2019), https://www.uspto.gov/TrialPracticeGuideConsolidated. Congress
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`provided Patent Owner with the right to file a preliminary response to any petition
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`filed at the PTAB, without restriction for petitions filed with a motion for joinder.
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`35 U.S.C. § 313. Petitioner should welcome a thorough review at the preliminary
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`stage if it can avoid the cost and delay of an unnecessary trial. Petitioner complains
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`
`1 Patent Owner and Samsung recently settled their dispute, which will end their
`district court litigation. The parties jointly filed a motion to terminate the nascent
`IPR proceeding on April 9, 2021. Samsung Elecs. Co., Ltd. v. Ancora Techs Inc.,
`Case No. IPR2021-00583, paper 11 (PTAB Apr. 9, 2021).
`
`6
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`
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`Ancora’s Sur-Reply to Petitioners’
`Motion for Joinder
`
`IPR2021-00581
`
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`that Patent Owner’s preliminary response in this proceeding would be a “second bite
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`at the apple,” implying impropriety or unfairness that neither exists nor matters.
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`Although the Board instituted trial in IPR2020-01609, this proceeding remains
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`separate. The controlling statute, rules, and precedent do not estop Patent Owner
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`from asserting additional reasons for denying institution.
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`IV. CONCLUSION
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`For the reasons above and in its opposition (paper 9), Patent Owner
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`respectfully submits that discretionary denial of the Petition is appropriate, and the
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`Board should exercise its discretion to deny Petitioner’s motion for joinder.
`
`Dated: April 16, 2021
`
`120 South LaSalle Street
`Suite 2100
`Chicago, IL 60603
`Telephone: (312) 577-7000
`Facsimile: (312) 577-7007
`
`Respectfully submitted,
`FITCH, EVEN, TABIN & FLANNERY LLP
`By: /Nicholas T. Peters/
`
`Nicholas T. Peters
`Reg. No. 53,456
`ntpete@fitcheven.com
`
`
`
`7
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`
`
`Ancora’s Sur-Reply to Petitioners’
`Motion for Joinder
`
`IPR2021-00581
`
`CERTIFICATE OF SERVICE
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`
`
`The undersigned certifies in accordance with 37 C.F.R. § 42.6(e) that on
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`April 16, 2021, a copy of the foregoing Patent Owner Ancora’s Sur-Reply Opposing
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`Petitioners’ Motion for Joinder was served on Petitioner’s counsel by email at the
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`addresses listed below:
`
`David L. McCombs (Reg. No. 32,271)
`david.mccombs.ipr@haynesboone.com
`Tel.: (214) 651-5533
`
`Gregory P. Huh (Reg. No. 70,480)
`gregory.huh.ipr@haynesboone.com
`Tel.: (972) 739-6939
`
`Haynes And Boone, LLP
`2323 Victory Avenue, Suite 700
`Dallas, Texas 75219
`Fax: (214) 200-0853
`
`
`
`Dated: April 16, 2021
`
`120 South LaSalle Street
`Suite 2100
`Chicago, IL 60603
`Telephone: (312) 577-7000
`Facsimile: (312) 577-7007
`
`Respectfully submitted,
`FITCH, EVEN, TABIN & FLANNERY LLP
`By: /Nicholas T. Peters/
`
`Nicholas T. Peters
`Reg. No. 53,456
`ntpete@fitcheven.com
`
`8
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`
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