EXHIBIT D

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UNITED STATES PATENT AND TRADEMARK OFFICE

____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________________

ZTE Corporation, ZTE (USA), Inc., and ZTE (TX), Inc.,

Petitioners

v.

WSOU Investments LLC D/B/A Brazos Licensing and Development,

Patent Owner

U.S. Patent No. 7,489,929

Filing Date: Mar. 31, 2005

Issue Date: Feb. 10, 2009

____________________

Case No. IPR2021-00694

PETITIONERS’ PRELIMINARY REPLY TO PATENT OWNER’S 

PRELIMINARY RESPONSE ADDRESSING THE ISSUE OF 

DISCRETIONARY DENIAL UNDER § 314(a)

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1

Recent developments, and non-venue discovery only recently began, further 

establish that discretionary denial is inappropriate here because all Fintiv factors 

favor institution of trial. 

A. Factor 1: Parallel District Court Dismissed Two of the Three Petitioners 

and is Likely to Dismiss or Transfer the Third

The likelihood of a stay remains the same, however, the likelihood that all

parallel district court proceedings for all Petitioners be dismissed is likely—

thereby removing the need for a stay. The district court dismissed two Petitioners 

(Ex. 1020) based on arguments PO incorrectly contended were just “boilerplate” 

(Paper 6, p. 12). The sole remaining Petitioner in Litigation, ZTE Corp., with the 

Court’s permission, filed a Motion for Reconsideration1 regarding legal support of 

dismissal for the sole remaining defendant, or alternatively transfer.

ZTE Corp.’s Motion for Reconsideration is likely to succeed. The court 

dismissed Petitioner ZTE USA for improper venue, however, PO fatally turned it 

into an indispensable party by relying on it for the infringement theories. See Supra 

1 ZTE Corp. filed the Motion under Seal because PO marked the Final 

Infringement Contentions as “CONFIDENTIAL.” See Litigation (Case No. 6:20-

cv-00487), Dkt. 107. The public version will be filed August 23, 2021, and 

Petitioner—if requested—will gladly update the Exhibit listings.

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fn. 1; see also Ex. 1024; and AGIS v. ZTE Corp. et al., No. 2:17-CV-00517-JRG,

2018 WL 4854023, at *4 (E.D. Tex. Sept. 28, 2018) (finding improper venue over 

ZTE USA and refusing to sever it as an indispensable party). As such, the 

misvenue of ZTE USA and ZTE Corp. rise and fall together because, in the 

interests of judicial economy and equity, the two defendants may not be separated. 

Id. For any case involving ZTE Corp., any such Litigation must progress with both 

together, in dismissal or in transfer—and PO vehemently opposed transfer. Id.

B. Factor 2: The Markman Hearing Delay Indicates that Jury Trial is 

Unlikely Before Final Written Decision.

There’s a substantial likelihood that the Litigation trials will not occur 

before a final written decision. The PO incorrectly infers (Paper 6, pp. 10-13) that 

the informal trial dates are fixed. But the Court refrains from officially setting the 

trial date until after the Markman hearing. See Ex. 1021 (“[t]he Court expects to set 

[the trial date] at the conclusion of the Markman hearing”). Because the Markman

hearing remains indefinitely postponed until the resolution of the above 

dismissal/transfer issues (Ex. 1022), this trial will be postponed trial as well. Thus, 

there is no reason to assume trial will occur before the final written decision.

C. Factor 3: The Investment in the Parallel Litigation Remains Minimal.

PO misrepresents the state of discovery (Paper 6, p. 7) that “Markman

discovery . . . has been completed,” but the truth of the matter is that there was no

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Markman discovery. The only authorized discovery was venue discovery until 

June 4, 2021, and fact discovery only recently began. Ex. 1023 at p. 12. 

D. Factor 4: There’s No Risk of Duplicative Efforts.

If the Board institutes here, like in Juniper, Petitioner ZTE Corp. (the sole 

remaining Petitioner in Litigation), agrees not to pursue in the Litigation any 

ground raised or that could have been reasonably raised in the IPR (i.e., any ground 

raised or that could have been reasonably raised under §§ 102, 103 based on prior 

art patents or printed publications). This eliminates any risk of duplicative efforts 

or conflicting decisions between the Board and district court. Sotera Wireless, Inc. 

v. Masimo Corp., IPR2020-01019 (Paper 12), 13-14 (P.T.A.B. Dec. 1, 2020); 

Juniper Networks, Inc. v. Correct Transmission, LLC, IPR2021-00469 (Paper 10), 

8 (P.T.A.B. Aug. 9, 2021).

E. Factor 5: Only One of the Three Petitioners is a Defendant in Litigation.

This factor now favors institution. As addressed above, only one Petitioner, 

ZTE Corp. remains in Litigation. And the Court is likely to dismiss it from 

Litigation—removing all Petitioners from Litigation. See Supra fn. 1.

F. Factor 6: The Other Circumstances Favor Institution. (Unchanged)

G. Conclusion

With the Litigation delays, minimal investment in Litigation, and absence of 

duplicative efforts, the Fintiv factors do not support discretionary denial.

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Date: August 17, 2021 Respectfully Submitted,

/Lionel M. Lavenue/

Lionel M. Lavenue, Lead Counsel

 Reg. No. 46,859

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LIST OF EXHIBITS

Exhibit Description

Ex-1001 U.S. Patent No. 7,489,929 (the ’929 patent)

Ex-1002 Prosecution File History of U.S. Patent No. 7,489,929

Ex-1003 Declaration of Stephen Gray

Ex-1004 Curriculum Vitae of Stephen Gray

Ex-1005 U.S. Patent App. Pub. No. 2002/0045451 (“Hwang”)

Ex-1006 WO 2004102848 (“Kim”)

Ex-1007 U.S. Patent App. Pub. No. 2008/0280611 (“Miklos”)

Ex-1008 3rd Generation Partnership Project (3GPP), Technical Specification 

Group (TSG) RAN; Working Group 2 (WG2); Radio Interface 

Protocol Architecture; TS 25.301 V3.2.0 (1999-10) (“TS25.301”)

Ex-1009 Screen shot of 3GPP Portal showing the upload time of TS25.301 on 

the 3GPP file server 

Ex-1010 Penrod, Bruce M., “A New Class of Precision UTC and Frequency 

Reference Using IS-95 CDMA Base Station Transmissions”, 

33rd Annual Precise Time and Time Interval (PTTI) Meeting, 2002-

01-01

Ex-1011 F. Cortes-Rodriguez, D. Munoz-Rodriguez, and R. Soto, “Position 

location assisted multi-valued logic handoff algorithm,” Gateway to 

21st Century Communications Village. VTC 1999-Fall. IEEE VTS 

50th Vehicular Technology Conference (Cat. No.99CH36324), 

Amsterdam, Netherlands, 1999, pp. 775-779 vol. 2. 

Ex-1012 A. Rojas and J. Paradells, “Shadow margin, overlapping and 

transceivers per cell when making handovers with hysteresis 

margin,” Ninth IEEE International Symposium on Personal, Indoor 

and Mobile Radio Communications (Cat. No.98TH8361), Boston, 

MA, USA, 1998, pp. 340-344 vol.1, 

Ex-1013 WO 01/99291 (“Lin”)

Ex-1014 U.S. Patent No. 6,609,003 (“Park”)

Ex-1015 U.S. Patent App. Pub. No. 2003/0060230 (“Soliman”)

Ex-1016 [Reserved]

Ex-1017 [Reserved]

Ex-1018 [Reserved]

Ex-1019 [Reserved]

Ex-1020 WSOU Investments, LLC d/b/a Brazos Licensing and Development 

v. ZTE Corporation et al., W.D. Tex. 6:20-cv-00487-ADA, Docket 

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Item 105, Order Granting Defendants’ Motion to Dismiss for 

Improper Venue (August 6, 2021)

Ex-1021 Order Governing Procedures or “OGP” – Patent Case v. 3.4 (W.D. 

Tex. Feb. June 24, 2021), available at 

https://www.txwd.uscourts.gov/wpcontent/uploads/Standing%20Orders/Waco/Albright/Order%20Gov

erning%20Proceedings%20-%20Patent%20Cases%20062421.pdf

Ex-1022 WSOU Investments, LLC d/b/a Brazos Licensing and Development 

v. ZTE Corporation et al., W.D. Tex. 6:20-cv-00487-ADA, Docket 

Item 81, Order Cancelling Markman Hearing (May 18, 2021)

Ex-1023 WSOU Investments, LLC d/b/a Brazos Licensing and Development 

v. ZTE Corporation et al., W.D. Tex. 6:20-cv-00487-ADA, Docket 

Item 45, First Amended Scheduling Order (December 3, 2020)

Ex-1024 WSOU Investments, LLC d/b/a Brazos Licensing and Development 

v. ZTE Corporation et al., W.D. Tex. 6:20-cv-00487-ADA, Docket 

Item 38, First Amended Complaint (November 6, 2020)

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CERTIFICATE OF SERVICE

The undersigned certifies that a copy of the foregoing PETITIONERS’ 

PRELIMINARY REPLY TO PATENT OWNER’S PRELIMINARY RESPONSE 

ADDRESSING THE ISSUE OF DISCRETIONARY DENIAL UNDER § 314(a) 

and Exhibits 1020 - 1024 were served via electronic mail to the following attorneys 

of record for Patent Owner:

Ryan Loveless

ryan@etheridgelaw.com

Jeffrey A. Stephens

jstephens@etheridgelaw.com

Brett Mangrum

brett@etheridgelaw.com

James Etheridge

IPTeam@etheridgelaw.com

Brian Koide

brian@etheridgelaw.com

Jeffrey Huang

jeff@etheridgelaw.com

Dated: August 17, 2021 By: /Lisa C. Hines/

Lisa C. Hines

Senior Litigation Legal Assistant

FINNEGAN, HENDERSON, FARABOW,

GARRETT & DUNNER, LLP

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