UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LENOVO HOLDING COMPANY, INC.,
`LENOVO (UNITED STATES) INC.,
`MOTOROLA MOBILITY LLC
`
`Petitioners
`
`v.
`
`DODOTS LICENSING SOLUTIONS LLC
`
`Patent Owner
`
`Case IPR2019-01278, IPR2019-01279
`Patent Nos. 8,020,083, 8,510,407
`
`PETITIONER’S MOTION TO STRIKE
`SUR-REPLY AND IMPROPER SUR-REPLY EVIDENCE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`LENOVO HOLDING COMPANY, INC.,
`LENOVO (UNITED STATES) INC.,
`MOTOROLA MOBILITY LLC
`
`Petitioners
`
`v.
`
`DODOTS LICENSING SOLUTIONS LLC
`
`Patent Owner
`
`Case IPR2019-01278, IPR2019-01279
`Patent Nos. 8,020,083, 8,510,407
`
`PETITIONER’S MOTION TO STRIKE
`SUR-REPLY AND IMPROPER SUR-REPLY EVIDENCE
`
`
`
`Pursuant to the Board’s September 29, 2020 Order (Paper 30), Petitioner moves
`
`to strike Patent Owner’s Sur-Replies and the accompanying belatedly-presented
`
`declaration (Ex. 2007).
`
`The Sur-Replies’ reliance on a new declaration is prohibited by the rules, is not
`
`proper as late-submitted supplemental information, and would be prejudicial to the
`
`Petitioner; the Sur-Replies should therefore be stricken. First, the rules governing these
`
`proceedings expressly and absolutely prohibit Patent Owner from submitting this new
`
`evidence with its Sur-Reply: A “sur-reply may not be accompanied by new evidence
`
`other than deposition transcripts of the cross-examination of any reply witness.” PTAB
`
`Consolidated Trial Practice Guide, November 2019 (“CTPG”), at 73.1 Exhibit 2007 is
`
`not a deposition transcript but rather a self-described “supplemental” declaration of Dr.
`
`Earl Sacerdoti. Dr. Sacerdoti previously submitted testimony regarding claim
`
`construction and the prior art in support of Patent Owner’s Response. See Ex. 2004.
`
`Now—nearly five months later, and on the eve of oral argument—Patent Owner
`
`attempts to supplement Dr. Sacerdoti’s testimony with an additional 10-page
`
`declaration on the same topics. See Ex. 2007. This new testimony is expressly
`
`precluded by the carefully crafted framework for these proceedings, as discussed
`
`above. CTPG, at 73. Thus, Patent Owner’s Sur-Replies relying on Exhibit 2007 should
`
`1 Patent Owner raised Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064 (Fed. Cir. 2015)
`
`during the telephone conference. Belden is inapplicable here as it addresses the case
`
`where “petitioner submits a new expert declaration with its Reply.” Id. at 1081.
`
`1
`
`
`
`be stricken. CTPG, at 73; see also id. at 74 (“While replies and sur-replies can help
`
`crystalize issues for decision, a reply or sur-reply that raises a new issue or belatedly
`
`presents evidence may not be considered.”).
`
`Second, should Patent Owner argue Ex. 2007 is late-submitted supplemental
`
`information under 37 CFR § 42.123(b), Patent Owner cannot meet its burden to show:
`
`(1) the evidence could not have been obtained earlier, and (2) consideration of it would
`
`be in the interests of justice. Dr. Sacerdoti’s supplemental declaration could have been
`
`submitted earlier with Patent Owner’s Response. Specifically, his supplemental
`
`declaration addresses the disputed claim term “Networked Information Monitor
`
`Template.” Ex. 2007, ¶¶ 2–15. For context, claim 1 of the ’083 Patent recites the “first
`
`networked information monitor template comprises...instructions configured (i) to
`
`cause...” various actions and further recites “one or more processors...execute the first
`
`networked information monitor template.” IPR2019-01278, Ex. 1001 at 47:60-65,
`
`48:3-6. Petitioner asserts that the term “NIM template” must include templates that are
`
`in executable form as explicitly recited in claim 1 but may include templates in other
`
`forms, such as text. IPR2019-01278, Petition (Paper 2) at 24-25, 49. In contrast, Patent
`
`Owner, relying on Dr. Sacerdoti’s original declaration, asserts the NIM Template
`
`cannot be an executable. IPR2019-01278, Patent Owner Response (Paper 20) at 7. In
`
`his new declaration Dr. Sacerdoti provides additional testimony regarding this disputed
`
`construction despite having already provided extensive testimony on this issue in his
`
`original declaration (Ex. 2004, ¶¶ 37–65) and during cross and redirect examination
`
`2
`
`
`
`(See, e.g., Ex. 1019, p. 78-80). Thus, Patent Owner cannot demonstrate that this new
`
`testimony could not have been submitted earlier.
`
`Further, Patent Owner cannot satisfy its burden to show that consideration of
`
`this new evidence is in the interests of justice. Dr. Sacerdoti’s supplemental declaration
`
`is improper legal argument under the guise of expert testimony, and he misapplies the
`
`law of lexicography in any event. “In construing claims, the analytical focus must
`
`begin and remain centered on the language of the claims themselves.” Interactive Gift
`
`Exp., Inc. v. Compuserve Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001). Dr. Sacerdoti
`
`ignores the claims, beginning instead with the proposition that a “NIM Template”
`
`cannot be executable and arguing the specification could support that construction.
`
`However, unless the specification “clearly, deliberately, and precisely” spells out how
`
`a claim term is to be used, the plain and ordinary meaning controls. Merck & Co., Inc.
`
`v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1379 (Fed. Cir. 2005). “To act as its own
`
`lexicographer, a patentee must clearly set forth a definition of the disputed claim term
`
`other than its plain and ordinary meaning” and must “clearly express an intent to
`
`redefine the term.” Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1365
`
`(Fed. Cir. 2012) (quotations omitted).
`
`Dr. Sacerdoti ignores this standard. Claim 1 recites executing a NIM Template.
`
`During deposition, Dr. Sacerdoti admitted that “execute” has a plain and ordinary
`
`meaning. Ex. 1019 at 59:5-7. He argues that the challenged patents disclose a single
`
`embodiment of NIM Template and therefore the term “execute” should be ignored. But
`
`3
`
`
`
`the Federal Circuit “has expressly rejected the contention that if a patent describes only
`
`a single embodiment, the claims of the patent must be construed as being limited to
`
`that embodiment." Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir.
`
`2004). Further, Dr. Sacerdoti notes that various terms in the specification are, in fact,
`
`ambiguous and thus fail to define the disputed term. For example, in paragraph 4, he
`
`argues the specification could support a narrow construction of NIM Template that
`
`would exclude an executable, but in that same paragraph admits that “a blob data type
`
`may in general contain executable code.” Likewise, in paragraph 14, he notes that the
`
`term “‘module’ is not limited to executable code.” These admittedly ambiguous
`
`statements in the specification cannot alter the claim’s requirement that the NIM
`
`template be “execute[d]” as that term is understood to one of ordinary skill in the art.
`
`Third, Patent Owner’s failure to submit Dr. Sacerdoti’s full testimony with its
`
`Patent Owner’s Response in spite of knowing that the rules strictly prohibit introducing
`
`such evidence now prejudices Petitioner. Patent Owner’s concealment and delay of this
`
`evidence leaves Petitioner with no ability to cross examine Dr. Sacerdoti on his new
`
`testimony or otherwise respond to this new evidence prior to the oral argument. See
`
`Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1373 (Fed. Cir. 2019) (“[T]he Board may
`
`not rely on a basis for a decision unless the party adversely affected by such reliance
`
`had notice of the basis and an adequate opportunity to address it.”).
`
`Patent Owner’s Sur-Replies and belatedly submitted evidence should be
`
`stricken.
`
`4
`
`
`
`Dated: October 1, 2020
`
`Respectfully submitted,
`By: /s/ John C. Alemanni
`John C. Alemanni (Reg. No. 47,384)
`Lead Counsel for Petitioner
`
`5
`
`
`
`IPR2019-01278, IPR2019-01279
`Patent Nos. 8,020,083, 8,510,407
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing
`
`PETITIONER’S MOTION TO STRIKE SUR-REPLY AND IMPROPER
`
`SUR-REPLY EVIDENCE has been served electronically via email upon the
`
`following:
`
`Lewis E. Hudnell, III
`Hudnell Law Group PC
`lewis@hudnelllaw.com
`
`Perry Goldberg
`Progress LLP
`goldberg@progressllp.com
`
`Dated: October 1, 2020
`
`By:
`
` /John C. Alemanni/
`John C. Alemanni
`Reg. No. 47,384
`Lead Counsel for Petitioners
`
`1
`
`
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