`U.S. Patent No. 8,510,407 B1
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`LENOVO HOLDING COMPANY, INC.,
`LENOVO (UNITED STATES) INC., and
`MOTOROLA MOBILITY LLC,
`Petitioners,
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`v.
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`DODOTS LICENSING SOLUTIONS LLC,
`Patent Owner.
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`IPR2019-01279
`U.S. Patent No. 8,510,407 B1
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`PATENT OWNER DODOTS LICENSING SOLUTIONS, LLC’S
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`MOTION TO STRIKE
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`IPR2019-01279
`U.S. Patent No. 8,510,407 B1
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`Pursuant to the Order entered by the Board on September 1, 2020 (“Order”),
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`Patent Owner DoDots Licensing Solutions, LLC hereby moves to strike the evidence
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`and argument submitted with Petitioners’ Reply relating to the prior art status of Berg.
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`The Board’s precedential decision in Hulu, LLC v. Sound View Innovs., LLC,
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`IPR2018-01039, Paper 29 (PTAB Dec. 20, 2019) explains the limited ways in which a
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`Petitioner can supplement the evidence and argument that it submitted with its Petition:
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`(1) in a reply to a patent owner preliminary response; (2) in a reply to the patent
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`owner response; and (3) in a motion to file supplemental information. 37 C.F.R.
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`§§ 42.108(c), 42.23, 42.123. As to the first two opportunities, the evidence must
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`be responsive to the prior briefing. 37 C.F.R. § 42.23 (“A reply may
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`only respond to arguments raised in the corresponding opposition, patent
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`owner preliminary response, or patent owner response.”). As to the third,
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`the supplemental information must be relevant to a claim for which trial
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`was instituted and, if the submission occurs after one month from institution,
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`the petitioner must show good cause as to “why the supplemental
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`information reasonably could not have been obtained earlier, and
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`that consideration of the supplemental information would be in the interests-of-
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`justice.” 37 C.F.R. § 42.123.
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`Hulu at 14.
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`IPR2019-01279
`U.S. Patent No. 8,510,407 B1
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`As pointed out in the Order, Petitioners concede that Berg’s prior art status was
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`not discussed in Patent Owner’s Response. Order at 2. As such, the new evidence and
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`argument submitted by Petitioners with their Reply is not responsive to the prior
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`briefing. Unless the evidence and argument are stricken, Patent Owner will be put to
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`the task of submitting rebuttal evidence and argument in its sur-reply and also will need
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`to address the issue in its demonstrative exhibits and at trial (assuming that the Board
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`holds oral argument). This would be a needless expense and a waste of the Board’s
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`time given that the new evidence and argument is so clearly improper.
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`As discussed above, the proper procedure for Petitioners to have followed if they
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`wanted to submit new evidence and argument would have been for them to have
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`requested permission to file supplemental information. They haven’t done that, and it is
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`far too late for them to do that now.
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`Accordingly, Patent Owner respectfully requests that the Board grant Patent
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`Owner’s motion to strike.
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`Respectfully submitted,
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`By: /s/ Lewis E. Hudnell, III
`Lewis E. Hudnell, III
`Reg. No. 51,185
`(Special Counsel to Progress LLP)
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`IPR2019-01279
`U.S. Patent No. 8,510,407 B1
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`Hudnell Law Group P.C.
`800 W. El Camino Real
`Suite 180
`Mountain View, CA 94040
`T: 650-564-7720
`F: 347-772-3034
`lewis@hudnelllaw.com
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`Lead Counsel for Patent Owner
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`Perry Goldberg (pro hac vice)
`Progress LLP
`11620 Wilshire Blvd., Suite 900
`Los Angeles, CA 90025
`T: 310-697-7201
`goldberg@progressllp.com
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`Back-Up Counsel for Patent Owner
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`IPR2019-01279
`U.S. Patent No. 8,510,407 B1
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`CERTIFICATE OF SERVICE
`I certify that the foregoing PATENT OWNER DODOTS LICENSING
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`SOLUTIONS, LLC’S MOTION TO STRIKE was served on September 2, 2020
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`on the Petitioner by filing this document through the Patent Review Processing
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`System as well as e-mailing a copy to jalemanni@kilpatricktownsend.com,
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`smoore@kilpatricktownsend.com, taludlam@kilpatricktownsend.com, and
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`MMeyer@kilpatricktownsend.com.
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`By: /s/ Lewis E. Hudnell, III
`Lewis E. Hudnell, III
`Reg. No. 51,185
`(Special Counsel to Progress LLP)
`Hudnell Law Group P.C.
`800 W. El Camino Real
`Suite 180
`Mountain View, CA 94040
`T; 650-564-7720
`F: 347-772-3034
`lewis@hudnelllaw.com
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`IPR2019-01279
`U.S. Patent No. 8,510,407 B1
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`CERTIFICATE OF COMPLIANCE WITH PAGE LIMIT AND FORMAT
`REQUIREMENTS
`This document complies with applicable page limit (3 pages).
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`1.
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`2.
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`This document complies with the general format requirements of 37
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`C.F.R. § 42.6(a) and has been prepared using Microsoft® Word for Mac Version
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`16.32 in 14 point Times New Roman.
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`By: /s/ Lewis E. Hudnell, III
`Lewis E. Hudnell, III
`Reg. No. 51,185
`(Special Counsel to Progress LLP)
`Hudnell Law Group P.C.
`800 W. El Camino Real
`Suite 180
`Mountain View, CA 94040
`T; 650-564-7720
`F: 347-772-3034
`lewis@hudnelllaw.com
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`5
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