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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.,
`MOTOROLA MOBILITY LLC
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`Petitioners
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`v.
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`DODOTS LICENSING SOLUTIONS LLC
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`Patent Owner
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`Case IPR2019-01279
`Patent No. 8,510,407
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`PETITIONERS’ RESPONSE
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`TO PATENT OWNER’S MOTION TO STRIKE
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`The “exceptional remedy” of striking evidence which further demonstrates that
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`the Berg reference was a printed publication is not justified in this case. While Patent
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`Owner did not challenge the printed publication status of Berg in its Patent Owner
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`response, Patent Owner has nonetheless repeatedly challenged the printed publication
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`status of Berg during communications with the Board and in related proceedings.
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`Further, the printed publication status of Berg was addressed in the Institution
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`Decision, and the Trial Practice Guide authorizes a petitioner to address such issues.
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`Thus, Petitioners’ submission was proper. And even if Petitioners’ submission were
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`improper, any prejudice resulting from its inclusion would be minimal.
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`Petitioners’ submission is proper in response to Patent Owner’s arguments
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`regarding Berg. In Hulu, the Board held “if the patent owner challenges a reference’s
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`status as a printed publication, a petitioner may submit a supporting declaration with its
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`reply to further support its argument that a reference qualifies as a printed publication.”
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`Hulu, LLC v. Sound View Innovs., LLC, IPR2018-01039, Paper 29 at 15 (PTAB Dec.
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`20, 2019) (precedential) at 15. Hulu is not limited to a challenge presented in a Patent
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`Owner response. In this case, Patent Owner did not challenge the printed publication
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`status of Berg in its Patent Owner response (see generally Paper 18) and so the
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`argument should be deemed waived. See Paper 8, 7 (“Patent owner is cautioned that
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`any arguments for patentability not raised in the response will be deemed waived.”).
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`Nonetheless, Patent Owner has attempted to raise the issue multiple times here and in a
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`1
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`related proceeding. First, during the July 21, 2020 telephone conference with the
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`Board, Patent Owner indicated it planned to depose Catherine Vassilkova, whose
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`declaration (Ex. 1017) supporting the public accessibility of Berg had previously been
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`submitted. Second, during the August 31, 2020 telephone conference, Patent Owner
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`again argued that Petitioner had not established Berg as a printed publication. Third,
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`Patent Owner challenged the publication status of Berg in a related proceeding. See,
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`IPR2019-00988, Paper 15, at 12. Thus, Petitioners’ additional evidence regarding this
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`issue is responsive to Patent Owner’s arguments and properly before the Board.
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`Petitioners’ submission is also proper in response to the Board’s Institution
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`Decision. The Trial Practice Guide states, “[t]he Board will permit the petitioner, in its
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`reply brief, to address issues discussed in the institution decision.” Patent Trial and
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`Appeal Board Consolidated Trial Practice Guide November 2019 (“Consolidated
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`TPG”), 73. Here, in its Institution Decision, the Board preliminarily found “based on
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`the indicia on the face of Berg, and in light of the additional evidence cited by
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`Petitioner, that there is a reasonable likelihood that Berg qualifies as a printed
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`publication.” IPR2019-01278, Paper 7, 9 (citing Hulu at 13, 17–18.). Hulu notes that
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`Petitioner faces a higher standard to prevail in a final written decision than the
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`“reasonable likelihood” standard at institution. Id. at 13. Thus Petitioners’ submission
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`is a proper response to the Board’s findings in its Institution Decision regarding Berg.
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`2
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`Finally, the Trial Practice Guide warns that striking a portion of a party’s brief is
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`“an exceptional remedy that the Board expects will be granted rarely.” Consolidated
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`TPG, 80. “In most cases, the Board is capable of identifying . . . and disregarding any
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`new issues or belatedly presented evidence that exceeds the proper scope of reply or
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`sur-reply.” Id. In this case, any potential prejudice to Patent Owner is minimal, and so
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`the “exceptional remedy” of striking Petitioner’s Reply should be rejected.
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`Petitioner demonstrated in its petition that Berg qualifies as a printed
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`publication, relying on indicia on the face of the Berg reference as well as the
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`unchallenged testimony of the author, Cliff Berg. See Paper 2 at 9. And Patent Owner
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`did not challenge the publication status of Berg in its Patent Owner response, thereby
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`waiving this argument. Thus, the additional evidence cannot prejudice Patent Owner.
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`Further, any potential prejudice to Patent Owner based on the Vassilkova Declaration,
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`can be cured by deposing Ms. Vassilkova. Patent Owner has also suggested that it is
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`prejudiced by testimony of its own expert, Dr. Sacerdoti, acknowledging his awareness
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`of the journal in which the Berg article was published, Dr. Dobb’s Journal. See Paper
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`21 at 13 citing Ex. 1019 (Sacerdoti Deposition) at 78:10-21. In his declaration, Dr.
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`Sacerdoti testified regarding Berg; his knowledge regarding the article and the journal
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`in which it appeared is unquestionably relevant, within the scope of his direct
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`testimony, and thus proper reply evidence.
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`For the foregoing reasons, Patent Owner’s motion to strike should be denied in
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`its entirety.
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`3
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`Dated: September 4, 2020
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`Respectfully submitted,
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`By: /s/ John C. Alemanni
`John C. Alemanni (Reg. No. 47,384)
`Lead Counsel for Petitioner
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`4
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing Petitioners’
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`Response to Patent Owner’s Motion to Strike has been served electronically via
`email upon the following:
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`Dated: September 4, 2020
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`Lewis E. Hudnell, III
`Hudnell Law Group PC
`lewis@hudnelllaw.com
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`Perry Goldberg
`Progress LLP
`goldberg@progressllp.com
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`By:
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` /John C. Alemanni/
`John C. Alemanni
`Reg. No. 47,384
`Lead Counsel for Petitioners
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