UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________
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`SAMSUNG ELECTRONICS CORPORATION, LTD., AND
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioners
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`v.
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`IMAGE PROCESSING TECHNOLOGIES, LLC,
`Patent Owner
`____________________
`
`CASE IPR2017-00336
`Patent No . 6,959,293 B2
`____________________
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`PATENT OWNER’S REQUEST
`FOR REHEARING OF THE BOARD’S ORDER (PAPER 39) DENYING
`LEAVE TO FILE A MOTION TO TERMINATE EX PARTE
`REEXAMINATION NO. 90/014,056, AND SUGGESTION FOR EXPANDED
`PANEL
`
`Paper No. 40
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`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`SAMSUNG ELECTRONICS CORPORATION, LTD., AND
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioners
`
`v.
`
`IMAGE PROCESSING TECHNOLOGIES, LLC,
`Patent Owner
`____________________
`
`CASE IPR2017-00336
`Patent No . 6,959,293 B2
`____________________
`
`
`
`
`
`PATENT OWNER’S REQUEST
`FOR REHEARING OF THE BOARD’S ORDER (PAPER 39) DENYING
`LEAVE TO FILE A MOTION TO TERMINATE EX PARTE
`REEXAMINATION NO. 90/014,056, AND SUGGESTION FOR EXPANDED
`PANEL
`
`Paper No. 40
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`Patent Owner Image Processing respectfully submits that in denying leave to
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`file a motion to terminate ex parte reexamination (“EPR”) no. 90/014,056, the
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`Board overlooked or misapprehended Image Processing’s arguments that the
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`NVIDIA factors set forth in General Plastics v. Canon, IPR2016-01357, Paper 19
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`(P.T.A.B. Sept. 6, 2017) should be applied and that such factors weigh heavily in
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`favor of termination. At a minimum, Image Processing should be granted an
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`opportunity to brief the issues fully.
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`NVIDIA Factor #5 (whether Petitioner provides an adequate explanation for
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`the time elapsed between filing multiple petitions directed to the same claims) was
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`not addressed in the Board’s Order, and raises more than enough concerns to
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`justify a fully-briefed motion. Samsung never offered an explanation for its one-
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`year delay in filing a follow-on EPR against ’293 patent claim 1, never explained
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`when it located newly-cited references Siegel and Hirota, and never explained why
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`it could not have cited these references earlier. Image Processing made these
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`points during the May 31 call, and Samsung did not respond substantively.
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`If Samsung searched for “new” prior art in order to file an EPR after Image
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`Processing’s preliminary PO response and after the Institution Decision denying
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`IPR as to claim 1, NVIDIA Factor #2 (whether at the time of filing of the first
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`petition the petitioner knew of the prior art asserted in the second petition or should
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`1
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`have known of it) favors allowing Image Processing to file a motion. The standard
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`is whether a reasonably diligent search would have located the “new” art for
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`Samsung’s first Petition. General Plastics at 20. Samsung should have known
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`about the alleged “new” art through a reasonable search and put its best art forward
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`in one petition (this IPR). Here, as in General Plastics, the record is devoid of any
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`explanation of why Samsung could not have located the “new” art earlier.
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`If, on the other hand, Samsung knew about the prior art earlier but held it
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`back, Factor #4 (length of time elapsed between learning of prior art asserted in a
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`second petition and filing that petition) favors a motion. As in General Plastics,
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`Samsung has provided no explanation for the delay. General Plastics at 11.
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`Other NVIDIA factors also favor allowing a motion. Factor #1 (whether a
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`prior petition was filed) favors a motion. Samsung previously presented a petition
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`directed to the same claim of the same patent. Factor #6 (finite resources of the
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`USPTO) favors a motion because three Examiners are duplicating the Board’s
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`work. The Examiners may reach a conflicting conclusion regarding claim 1 and
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`the Pirim PCT, and are also reviewing other art similar to the prior art that was
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`already presented in this IPR. A motion would allow Image Processing to show
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`that the references are duplicative, as it has argued in telephone calls to the Board.
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`The Board’s Order also overlooked Image Processing’s policy argument that
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`2
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`unexplained follow-on EPRs allow a Petitioner to hold back or intentionally seek
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`out “different” art in order to gain a tactical advantage and delay the resolution of
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`post-grant proceedings (not to mention co-pending litigation), thereby frustrating
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`Congress’s and the Board’s policy of speedy and inexpensive resolution (37 C.F.R.
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`§ 41.1(b)). The Board should allow a motion to require Samsung’s explanation,
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`and also to determine how the NVIDIA factors apply to such follow-on EPRs.
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`Patent Owner’s request presents important policy issues regarding use of
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`IPRs and follow-on EPRs from the same petitioner on the same claims. Notably,
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`under the STRONGER bills (S.1390 § 105; H.R. 5340 § 105) introduced in 2017–
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`2018, follow-on EPR petitions would be barred outright after the one-year bar date.
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`Although Samsung relied on MPEP § 2210 during the May 31 call to argue that 35
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`U.S.C. § 315(e) estoppel does not apply to the EPR, the Board may not have
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`appreciated that MPEP does not cite legal authority for this proposition. Whether
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`§ 315(e) operates to terminate the EPR is an open and important question that
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`needs to be resolved, and would be raised in the motion. Image Processing
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`therefore suggests that an expanded panel be convened (SOP 1, rev. 14, § III.C).
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`For these reasons, Patent Owner requests that the Board reconsider its
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`decision and allow the filing of a motion to terminate the EPR.
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`3
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`Dated: June 20, 2018
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`/s/ Chris J. Coulson
`Chris J. Coulson (Reg. No. 61,771)
`BUNSOW DE MORY LLP
`101 Brambach Rd.
`Scarsdale, NY 10583
`Tel.: (646) 502-6973
`ccoulson@bdiplaw.com
`
`Michael Zachary (pro hac vice)
`mzachary@bdiplaw.com
`Lauren N. Robinson (Reg. No. 74,404)
`lrobinson@bdiplaw.com
`Craig Y. Allison (Reg. No. 38,067)
`callison@bdiplaw.com
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on June 20, 2018, the
`foregoing PATENT OWNER’S REQUEST FOR REHEARING OF THE
`BOARD’S ORDER (PAPER 39) DENYING LEAVE TO FILE A MOTION
`TO TERMINATE EX PARTE REEXAMINATION NO. 90/014,056, AND
`SUGGESTION FOR EXPANDED PANEL was served via electronic mail upon
`the following counsel of record for the Petitioner:
`
`
`John Kappos (Reg. No. 37,861)
`jkappos@omm.com
`
`Marc J. Pensabene (Reg. No. 37,416)
`mpensabene@omm.com
`
`Nicholas J. Whilt (Reg. No. 72,081)
`nwhilt@omm.com
`
`Brian M. Cook (Reg. No. 59,356)
`bcook@omm.com
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`Clarence Rowland (Reg. No. 73,775)
`crowland@omm.com
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`IPTSAMSUNGOMM@OMM.COM
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`/s/ Chris J. Coulson
`Chris J. Coulson (Reg. No. 61,771)
`BUNSOW DE MORY LLP
`101 Brambach Rd.
`Scarsdale, NY 10583
`Tel.: (646) 502-6973
`ccoulson@bdiplaw.com
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`
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