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`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________________
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`APPLE, INC., HTC CORPORATION, HTC AMERICA, INC.,
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`MICROSOFT CORPORATION, MICROSOFT MOBILE OY,
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`MICROSOFT MOBILE, INC., SAMSUNG ELECTRONICS CO., LTD.,
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`SAMSUNG ELECTRONICS AMERICA, INC., AND ZTE (USA) INC.,
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`Petitioners
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`v.
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`EVOLVED WIRELESS LLC,
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`Patent Owner.
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`_____________________
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`Cases IPR2016-00757, IPR2016-01228, IPR2016-01229, IPR2016-01345
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`Patent 7,881,236 B2
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`_____________________
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`PATENT OWNER’S MOTION FOR SUBMISSION OF SUPPLEMENTAL
`INFORMATION UNDER 37 C.F.R. § 42.123(b)
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`88426098.1
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`Patent Owner Evolved Wireless, LLC submits this motion for submission of
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`IPR2016-01228
`Patent 7,881,236B2
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`supplemental information to the above-captioned Inter Partes Reviews of U.S.
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`Patent No. 7,811,236 pursuant to 37 C.F.R. § 42.123(b).
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`I. The supplemental information was not reasonably available to Patent
`Owner prior filing its Patent Owner Responses in the proceedings.
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`The transcript of Samsung’s expert, Dr. Villasenor, was not available until
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`Sept. 12, 2017. As such, it was not reasonably available when Patent Owner
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`submitted its Patent Owner Responses in these proceedings. In the pending district
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`court litigation, opposition expert reports were due on June 26, 2017, which is
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`when Samsung served the report for Dr. Villasenor. Ex. 2015. Dr. Villasenor’s
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`deposition was timely conducted on Aug. 25, 2017, wherein he provided, for the
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`first time, his opinions regarding claim construction of the ’236 Patent. Ex. 2014.
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`Patent Owner received the final transcript on Sept. 12, 2017.
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`At Dr. Villasenor’s deposition, counsel for Samsung designated the
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`deposition transcript confidential under the district court protective order.
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`Immediately upon receiving the transcript on September 12, Patent Owner
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`requested that Samsung consent that the excerpted pages of Dr. Villasenor’s
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`transcript included only public information. Samsung waited until September 22 to
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`inform Patent Owner that the excerpts of Dr. Villasenor’s testimony that Patent
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`Owner sought to supplemental were not confidential.
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`88426098.1
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`On Sept. 25, Patent Owner informed Petitioners of its request for a
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`IPR2016-01228
`Patent 7,881,236B2
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`conference call with the Board to seek authorization to file this Motion. Upon
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`receipt of Petitioners’ objections, Patent Owner submitted its request via email on
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`September 27 requesting the teleconference with the Board.
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`Patent owner was fully diligent in seeking discovery and promptly requested
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`authorization from the Board to submit supplemental information. Due to the
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`scheduling order of the district court litigation, Patent Owner could not have
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`obtained a transcript of Dr. Villasenor’s deposition testimony prior to September
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`12. Ultratec, Inc. v. CaptionCall, LLC, 2017 U.S. App. LEXIS 16363 at *10 (Fed.
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`Cir. Aug. 28, 2017). As such, this information was not available to Patent Owner
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`when it submitted its final response to the Board in these proceedings.
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`II. Consideration of the supplemental information is in the interests-of-justice.
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`A. The supplemental information is highly relevant to the central issue
`of claim construction present in all proceedings.
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`The proposed deposition testimony of Dr. Villasenor demonstrates how one
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`of ordinary skill in the art construes claim term “if” in the ’236 patent. All
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`Petitioners have raised this claim construction issue in the pending IPRs. See
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`IPR2016-00757, Paper 1 at 16-19, Paper 28 at 3-8; IPR2016-01345, Paper 1 at 17-
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`20, Paper 28 at 3-8; IPR2016-01228, Paper 2 at 17-21, Paper 16 at 3-20; IPR2016-
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`01229, Paper 15-18, Paper 16 at 3-20.
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`Indeed, it was a significant issue presented at both oral arguments related to
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`IPR2016-01228
`Patent 7,881,236B2
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`the ’236 Patent. In Apple and Microsoft’s demonstrative exhibits submitted for
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`oral hearing of IPR2016-01228 and IPR2016-01229, 51 of 67 slides directly
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`related to the issue of claim construction in light of prior art, with 20 slides devoted
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`entirely to the interpretation of “if.” Petitioners ZTE, HTC and Samsung in
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`IPR2016-00757 and IPR2016-01345 similarly emphasized the issue of claim
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`construction in light of prior art by having 24 of 36 slides relate to the issue of
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`claim construction; and ten slides interpret “if.”
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`Dr. Villasenor’s interpretation of the term “if” is probative as to the issue
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`raised by all petitioners. Expert testimony may be received as extrinsic evidence
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`by the court at its discretion to better reach a correct conclusion as to the true
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`meaning of a disputed term. Markman v. Westview Instruments, Inc., 52 F.3d 967,
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`980 (Fed. Cir. 1995). Indeed, Apple and Microsoft rely on expert testimony for in
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`support of their positions on claim construction. IPR2016-01228, 1229, Ex. 1003.
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`The fact that other petitioners did not rely on expert testimony does not preclude
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`the Board from receiving this evidence, especially when these Petitioners are
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`suggesting that the intrinsic record is not clear as to the proper construction by
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`offering alternative constructions. Nevertheless, Samsung is under a duty of
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`candor to present such evidence to the Board, such that its lack of expert
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`testimony with its petition does not preclude entry of this evidence into the record.
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`IPR2016-01228
`Patent 7,881,236B2
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`37 C.F.R. § 42.11. At a minimum, the supplemental evidence must be included in
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`the record for IPR2016-01345.
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`The Federal Circuit recently reversed a PTAB decision to exclude
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`contradictory testimony that was sought to be introduced pursuant to 37 C.F.R.
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`42.123(b). Ultratec, Inc., 2017 U.S. App. LEXIS 16363 at *11-12. In Ultratec, the
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`Federal Circuit noted that conflicting testimony would be highly relevant to the
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`Board’s analysis. Id. at *11. Dr. Villasenor’s deposition testimony is inconsistent
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`with position taken by Samsung and the other Petitioners in these IPR proceedings
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`as to this claim construction issue.
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`B. The different claim construction standards has no bearing on the
`relevance of this testimony.
`During the teleconference, Petitioners’ argued that the testimony is
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`irrelevant because the expert was applying a different claim construction standard.
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`That argument is without merit. Petitioners have never advanced that the claim
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`construction of “if” is different under broadest reasonable interpretation as
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`compared to the Philips standard. Indeed, Petitioners have advanced the same
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`construction here and in the district court litigation.
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`C. Samsung’s interest in the outcome adequately represents the
`interests of all Petitioners.
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`Petitioners’ arguments that they needed to be present at the deposition or
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`need access to the entire transcript are nothing more than red herring arguments.
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`Samsung has the exact same incentive as the other Defendants. Samsung was
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`IPR2016-01228
`Patent 7,881,236B2
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`present, and even conducted re-direct on this issue. Samsung asked the same or
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`similar questions that any of the other Petitioners’ likely would have asked
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`regarding this claim construction issue. Indeed, Petitioners have not identified
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`anything that would have been different had they been present. The testimony was
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`under oath, and Samsung had every reason to seek the same testimony as the other
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`Petitioners as they seek the same claim construction of the term “if.” Thus, the
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`other Petitioners are not prejudiced by entering this evidence in all proceedings.
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`The remaining portions of the transcript do not relate to this claim
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`construction issue in the ’236 patent. As Patent Owner stated on the
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`teleconference, it believes that all relevant testimony regarding claim construction
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`was included in the excerpt. To the extent that Samsung believes there are
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`additional testimony on this issue, the Board has provided Samsung an opportunity
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`to include such testimony. There is no prejudice to any of the Petitioners that the
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`proposed supplemental information, or any additional testimony from Samsung,
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`because the entire portions of relevant testimony is before the Board and
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`Petitioners.
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`III. Conclusion
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`For the reasons stated above, the Board should grant Patent Owner’s motion
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`for submission of supplemental information under 37 C.F.R. § 42.123(b).
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`IPR2016-01228
`Patent 7,881,236B2
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`Dated: October 6, 2017
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`For Patent Owner:
`/Ryan M. Schultz/
`Cyrus A. Morton
`cmorton@robinskaplan.com
`Ryan M. Schultz
`rschultz@robinskaplan.com
`Robins Kaplan LLP
`2800 LaSalle Center
`800 LaSalle Ave
`Minneapolis, MN 55402
`
`Miles A. Finn
`mfinn@robinskaplan.com
`Robins Kaplan LLP
`399 Park Avenue
`Suite 3600
`New York, NY 10022
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`88426098.1
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`IPR2016-01228
`Patent 7,881,236B2
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(1) and 42.6(e)(4)(iii), the undersigned
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`certifies that on October 6, 2017, a complete and entire copy of Patent Owner’s
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`Motion for Submission of Supplemental Information under 37 CFR 42.123(b)
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`were provided via email to the Petitioners by serving the email correspondence
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`addresses of record as follows:
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`W. Karl Renner, Reg. No. 41,265
`Roberto J. Devoto, Reg. No. 55,108
`Fish & Richardson P.C.
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`Email:
`Renner@fr.com; Devoto@fr.com; IPR00035-0009IP1@fr.com; IPR00035-
`0009IP2@fr.com
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`Dated: October 6, 2017
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`/Miles A. Finn/
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`
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`Miles A. Finn
`Registration No. 54,098
`Robins Kaplan LLP
`399 Park Avenue
`New York, NY 10022
`212.980.7400
`mfinn@robinskaplan.com
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