UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`SAMSUNG ELECTRONICS CO., LTD.
`Petitioner
`
`v.
`
`
`BELL NORTHERN RESEARCH, LLC
`Patent Owner
`
`_________________
`
`Patent No. 8,416,862
`_________________
`
`PETITIONER’S NOTICE
`REGARDING MULTIPLE PETITIONS
`
`
`
`
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`SAMSUNG ELECTRONICS CO., LTD.
`Petitioner
`
`v.
`
`
`BELL NORTHERN RESEARCH, LLC
`Patent Owner
`
`_________________
`
`Patent No. 8,416,862
`_________________
`
`PETITIONER’S NOTICE
`REGARDING MULTIPLE PETITIONS
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`INTRODUCTION ........................................................................................... 1
`I.
`RANKING ....................................................................................................... 1
`II.
`III. DIFFERENCES BETWEEN THE PETITIONS, WHY THEY ARE
`MATERIAL, AND WHY ALL SHOULD BE INSTITUTED ....................... 2
`IV. CONCLUSION ................................................................................................ 4
`
`
`
`
`
`i
`
`
`
`U.S. Patent No. 8,416,862
`
`
`I.
`
`INTRODUCTION
`Petitioner is concurrently filing two petitions (called Petition 1 and Petition
`
`2, per the table below) challenging different claims of U.S. Patent No. 8,416,862
`
`(“the ’862 patent”). “To aid the Board in determining” why “more than one
`
`petition is necessary,” Petitioner provides the information below. See PTAB
`
`Consolidated Trial Practice Guide (“TPG”) (November 2019) at 59-60. As
`
`explained below, the Board should not exercise its discretion under 35 U.S.C. §
`
`314 to deny either petition on the basis of the filing of multiple petitions, and
`
`should instead institute both petitions.
`
`II. RANKING
`While both petitions are meritorious and justified as explained below,
`
`Petitioner requests that the Board consider the petitions in the following order:1
`
`Rank Petition Challenged
`Claims
`Petition 1 9-12
`
`1
`
`Grounds
`
`Ground 1: Claims 9, 11, and 12 obvious
`over Roh in view of Maltsev and Haykin
`
`Ground 2: Claim 10 obvious over Roh in
`view of Maltsev, Haykin, and Yang
`
`Ground 3: Claims 9, 11, and 12 obvious
`over Lin in view of Haykin and Maltsev
`
`
`
` 1
`
` While Petitioner is providing this ranking per the PTAB’s guidance in the
`
`consolidated TPG, Petitioner requests institution of both petitions.
`
`1
`
`
`
`U.S. Patent No. 8,416,862
`
`
`2
`
`Petition 2 9-12
`
`
`Ground 4: Claim 10 obvious over Lin in
`view of Haykin, Maltsev, and Yang
`
`Ground 1: Claims 9, 11, and 12 obvious
`over Maltsev in view of Haykin and
`Sadrabadi
`
`Ground 2: Claim 10 obvious over Maltsev
`in view of Haykin and Sadrabadi
`
`III. DIFFERENCES BETWEEN THE PETITIONS, WHY THEY ARE
`MATERIAL, AND WHY ALL SHOULD BE INSTITUTED
`As the Board has recognized, “there may be circumstances in which more
`
`than one petition may be necessary.” See PTAB Consolidated TPG at 59-60. This
`
`is such a circumstance. Due to the nature of the subject matter in the challenged
`
`claims (claims 9-12) of the ’862 patent, Roh, which is a non-patent literature (NPL)
`
`reference, is among the most relevant references regarding patentability of the
`
`challenged claims. Thus, Petition 1 includes grounds relying on Roh as a primary
`
`reference. As explained in Petition 1, Roh faces printed publication issues that
`
`may be raised by Patent Owner. Such printed publication issues are not relevant to
`
`Maltsev (a U.S. patent), which is the primary reference in both grounds of Petition
`
`2. Petitioner should be allowed to proceed with the separate grounds and
`
`arguments relating to Roh and also those relating to Maltsev.
`
`While Petition 1 also includes grounds relying on Lin, which is also a U.S.
`
`patent, Lin discloses the claimed features in a different way than that of Maltsev.
`
`2
`
`
`
`U.S. Patent No. 8,416,862
`
`For example, as explained in Petition 1, Lin discloses the claimed “decompose”
`
`feature recited in claim 9, whereas Petition 2 demonstrates how this feature is
`
`obvious based on the disclosures of Sadrabadi. Petition 1 also presents evidence
`
`showing how Roh discloses the “decompose” feature recited in claim 9.
`
`Consequently, Petitioner’s arguments in Petition 2 are materially different in a
`
`substantive sense (e.g., regarding mapping prior art to claim limitations, and
`
`obviousness arguments) compared to Petition 1. Moreover, Sadrabadi is an NPL
`
`reference, so it (like Roh) faces printed publication issues that may be raised by
`
`Patent Owner, as explained in Petition 2.
`
`Thus, the two petitions present different evidence to address the claims in
`
`different ways, and thus are very different from one another, and the differences
`
`between them are material.
`
`Moreover, due to the nature of the challenged claims, including the length of
`
`challenged independent claim 9, and the relevant prior art available, Petitioner had
`
`to separate the grounds into separate petitions in order to ensure the grounds
`
`contained the necessary specificity as to how the prior art meets the claim
`
`limitations while meeting the word limit applicable to IPR petitions. Given that it
`
`is Petitioner’s burden to establish unpatentability of the challenged claims, the
`
`level of detail included in the petitions is appropriate, and the Board should not
`
`penalize Petitioner for doing so by exercising its discretion under § 314 to deny
`
`3
`
`
`
`U.S. Patent No. 8,416,862
`
`either petition on account of the grounds being presented across multiple petitions.
`
`Moreover, both the Administrative Procedures Act and due process weigh
`
`against denying institution of either petition based on the Board’s discretion.
`
`Indeed, the two petitions here do not constitute an abuse of process because
`
`Petitioner is only challenging four claims (including only one independent claim)
`
`in the two petitions and as discussed above and in the petitions, both petitions are
`
`justified. Additionally, in each petition, the grounds addressing claim 9 (the only
`
`challenged independent claim) rely on two references in common (Maltsev and
`
`Haykin) and one additional reference (Roh or Lin for Petition 1; Sadrabadi for
`
`Petition 2). For these reasons, institution of both petitions would not implicate
`
`concerns regarding the Board’s time and resources required if trial is instituted in
`
`both petitions. Petitioner would also not be opposed to the Board consolidating the
`
`two proceedings upon institution.
`
`IV. CONCLUSION
`For the reasons given above, the Board should institute both petitions.
`
`Dated: February 20, 2020
`
`Respectfully submitted,
`
`By:/Naveen Modi/
`Naveen Modi (Reg. No. 46,224)
`Counsel for Petitioner
`
`
`
`
`4
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on February 20, 2020, I caused a true and correct copy
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`of the foregoing Petitioner’s Notice Regarding Multiple Petitions to be served via
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`express mail on the Patent Owner at the following correspondence address of
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`record as listed on PAIR:
`
`
`
`
`
`Foley & Lardner LLP/ Broadcom Corporation
`3000 K Street N.W.
`Suite 600
`Washington DC 20007-5109
`
`Respectfully submitted,
`
`By: /Naveen Modi/
` Naveen Modi (Reg. No. 46,224)
` Counsel for Petitioner
`
`
`
`
`
`
`
`
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