UNITED STATES PATENT AND TRADEMARK OFFICE
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`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________
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`SONY CORPORATION, SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG DISPLAY CO., LTD.,
`Petitioners,
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`v.
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`SURPASS TECH INNOVATION LLC,
`Patent Owner.
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`_______________
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`Case IPR2015-00863
`Patent 7,202,843
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`_______________
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`RESPONSE TO BOARD ORDER OF MAY 13, 2016
`BY PATENT OWNER SURPASS TECH INNOVATION LLC
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`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________
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`SONY CORPORATION, SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG DISPLAY CO., LTD.,
`Petitioners,
`
`v.
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`SURPASS TECH INNOVATION LLC,
`Patent Owner.
`
`_______________
`
`Case IPR2015-00863
`Patent 7,202,843
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`_______________
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`
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`RESPONSE TO BOARD ORDER OF MAY 13, 2016
`BY PATENT OWNER SURPASS TECH INNOVATION LLC
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`
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`Case No. IPR2015-00863
`Patent No. 7,202,843
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`In response to the Board’s Order dated May 13, 2016, Patent Owner
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`SURPASS TECH INNOVATION LLC submits that the Board should not enter
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`judgment against claims 4, 8, and 9 of the subject patent. As explained below,
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`claims 4, 8, and 9 have been fully and finally adjudicated in a prior inter partes
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`review. Accordingly, the Board should terminate this proceeding as to only claims
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`4, 8, and 9 under 37 C.F.R. § 42.72 as moot.1
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`1.
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`The patentability of claims 4, 8, and 9 has been fully and finally
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`adjudicated in IPR2015-00021
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`The patent at issue in this proceeding, U.S. Patent No. 7,202,843 (“the ‘843
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`Patent”) was also at issue in IPR2015-00021 previously pending before this Board.
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`In IPR2015-00021, the Board issued a final written decision on February 26, 2016
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`that held claims 4, 8, and 9 of the ‘843 patent to be unpatentable. The period to
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`appeal the final written decision expires after 63 days from the date of the final
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`written decision. This deadline to file a notice of appeal, by Patent Owner’s
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`calculation, was April 29, 2016. As of that deadline and the date signed below,
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`1 Claims 5-7 were not at issue in the prior inter partes review, and Patent Owner
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`understands that the Board will render a Final Written Decision on the merits in
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`this proceeding with respect to these claims. Paper 38 at 2 n.1.
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`1
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`Case No. IPR2015-00863
`Patent No. 7,202,843
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`Patent Owner has not appealed the final written decision in IPR2015-00021, which
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`is now final.
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`2.
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`There is no Article III standing to adjudicate the patentability of
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`claims 4, 8, and 9
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`
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`A party who seeks to invoke federal jurisdiction must establish Article III
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`standing, which is now absent in this case. Consumer Watchdog v. Wis. Alumni
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`Research Found., 753 F.3d 1258, 1260-61 (Fed. Cir. 2014)
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`To meet the constitutional minimum for [Article III] standing, the
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`party seeking to invoke federal jurisdiction must satisfy three
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`requirements. Lujan v. Defenders of Wildlife, 504 U.S. 555, 560, 112
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`S.Ct. 2130, 119 L.Ed.2d 351 (1992). First, the party must show that it
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`has suffered an "injury
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`in fact"
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`that
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`is both concrete and
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`particularized, and actual or imminent (as opposed to conjectural or
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`hypothetical). Id. at 560-61, 112 S.Ct. 2130. Second, it must show that
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`the injury is fairly traceable to the challenged action. Id. at 560, 112
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`S.Ct. 2130. Third, the party must show that it is likely, rather than
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`merely speculative, that a favorable judicial decision will redress the
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`injury. Id. at 561, 112 S.Ct. 2130.
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`Id. As of this date, claims 4, 8, and 9 are fully and finally unpatentable. Should the
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`Board decide to adjudicate the patentability of claims 4, 8, and 9 again in this
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`2
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`Case No. IPR2015-00863
`Patent No. 7,202,843
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`current proceeding, Patent Owner would have no Article III standing to appeal that
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`judgment; in that instance, there would be no “injury in fact” in the Board’s
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`determination that unpatentable claims 4, 8, and 9 are unpatentable. Further, an
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`appeal of the current inter partes review would have no effect on the Board’s
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`determination in IPR2015-00021 that claims 4, 8, and 9 are unpatentable. These
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`factors confirm that the patentability of claims 4, 8, and 9 is now moot.
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`The U.S. Court of Appeals for the Federal Circuit recently issued an
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`informative Opinion that addressed three IPRs decided against a common patent.
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`In IPR2014-00110, the Board determined that claims 16-19 of the patent-at-issue
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`were unpatentable. See IPR2014-00110, Paper 46 at 22. In IPR2014-00111, the
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`Board determined that claims 20-24 of the same patent- at-issue were unpatentable.
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`See IPR2014-00111, Paper 47 at 32. Then, in IPR2014-00395, the Board
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`determined that claims 16 and 19-24 were unpatentable. See IPR2014-00395,
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`Paper 41 at 30. The patent owner appealed these cases to the Federal Circuit.
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`In deciding these cases on appeal, the Court affirmed the Board in the first
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`two cases, IPR2014-00110 and IPR2014-00111. And since those two cases fully
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`addressed the patentability of claims 16 and 19-24 at issue in IPR2014-00395, the
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`Court dismissed the appeal of IPR2014-00395 as moot. See Norred v. Medtronic,
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`Inc. et al., Case No. 2015-1731 (Fed. Cir., May 10, 2016) (nonprecedential).
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`Similarly here, this case is moot as to the question of whether claims 4, 8, and 9 are
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`3
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`Case No. IPR2015-00863
`Patent No. 7,202,843
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`unpatentable. The issue has been fully and finally decided, and the property rights
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`embodied in claims 4, 8, and 9 no longer exist for adjudication.
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`In this circumstance, Patent Owner submits that the proper action is for the
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`Board to terminate this inter partes review as to only claims 4, 8, and 9 as moot.
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`Termination without rendering a final decision as to these claims is appropriate
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`here, where the patent rights in these claims are already extinguished. Authority is
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`granted to the Board for such termination under 37 C.F.R. § 42.72.
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`Respectfully submitted,
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`By: /s/ Wayne M. Helge
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`Registration No. 56,905
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`Lead Counsel for Patent Owner
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`4
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`Dated: May 23, 2016
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`Case No. IPR2015-00863
`Patent No. 7,202,843
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`CERTIFICATE OF SERVICE
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`I hereby certify that on May 23, 2016, a true and correct copy of the
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`
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`foregoing Response to Board Order by Patent Owner Surpass Tech Innovation
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`LLC was served via email to the Petitioners by serving the correspondence
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`addresses of record as follows:
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`Lead Counsel: Walter Hanley (Reg. No. 28,720) of Kenyon & Kenyon LLP
`Backup Counsels: John Flock (Reg. No. 39,670); Jay I. Alexander (Reg. No.
`32,678) of Covington & Burling LLP.
`Electronic Service: Sony-SurpassTech@kenyon.com
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`By: /s/ Wayne M. Helge
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`Registration No. 56,905
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`Counsel for Patent Owner
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`5
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