Filed: May 26, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________________
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`SAMSUNG ELECTRONICS CO., LTD.,
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`PETITIONER,
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`V.
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`BELL NORTHERN RESEARCH, LLC,
`PATENT OWNER.
`___________________
`Case Nos. IPR2020-00611
`U.S. Patent No. 8,416,862
`___________________
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`PATENT OWNER’S RESPONSE TO PETITIONER’S NOTICE
`REGARDING MULTIPLE PETITIONS
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________________
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`SAMSUNG ELECTRONICS CO., LTD.,
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`PETITIONER,
`
`V.
`
`BELL NORTHERN RESEARCH, LLC,
`PATENT OWNER.
`___________________
`Case Nos. IPR2020-00611
`U.S. Patent No. 8,416,862
`___________________
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`PATENT OWNER’S RESPONSE TO PETITIONER’S NOTICE
`REGARDING MULTIPLE PETITIONS
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`There is no reason why Petitioner could not have thoroughly challenged the
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`ʼ862 Patent in a single petition: “Based on the Board’s prior experience, one
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`petition should be sufficient to challenge the claims of a patent in most situations.”
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`(PTAB Consolidated Trial Practice Guide (November 2019) (“TPG”) at 59.) As
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`the Board well understands, “[t]wo or more petitions filed against the same patent
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`at or about the same time (e.g., before the first preliminary response by the patent
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`owner) may place a substantial and unnecessary burden on the Board and the
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`patent owner and could raise fairness, timing, and efficiency concerns.” (Id.)
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`Petitioner offers no justifiable basis to need two petitions. First, despite its
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`contention, Petitioner cannot justify multiple petitions based on its own choice to
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`use prior art that it admits faces printed publication issues. (Paper 3 (IPR2020-
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`00611) at 2 (“Roh faces printed publication issues that may be raised by Patent
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`Owner.”), Paper 3 (IPR2020-00613) at 3 (“Sadrabadi is an NPL reference, so it
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`(like Roh) faces printed publication issues that may be raised by Patent Owner.”).)
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`These are not issues raised by a dispute over the critical date of the ’862 Patent;
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`they are whether Petitioner has met its burden to show when any references were
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`made publicly available to even begin the inquiry as to whether it occurred before
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`or after the critical date. Second, Petitioner seeks to justify two petitions in an
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`effort to comply with the Board’s rules regarding “the necessary specificity as to
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`how the prior art meets the claim limitations while meeting the word limit
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`1
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`applicable to IPR petitions.” (Paper 3 (IPR2020-00611) at 3, Paper 3 (IPR2020-
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`00613) at 3.) This justification rings hollow in light of Petitioner’s 224-page Expert
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`Declaration it filed in in IPR2020-00611 and its separate 184-page Expert
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`Declaration in IPR2020-00613. This is especially true where, as set out in Patent
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`Owner’s Preliminary Responses, Petitioner still improperly incorporated argument
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`by reference in multiple places—including in attempting to address the very
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`printed publication issues that Petitioner claimed justifies two petitions.
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`To further assist the Board, Patent Owner provides the below responses to
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`the Board’s questions as set out in the TPG:
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`1) What are the differences among the two petitions and are they material?
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`As Petitioner acknowledges through its ranking, there is significant overlap
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`in the utilization of prior art references and each Petition challenges the same
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`single independent claim and three dependent claims. (Paper 3 at 1–2.) As
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`Petitioner points out, “in each petition, the grounds addressing claim 9 (the only
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`challenged independent claim) rely on two references in common (Maltsev and
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`Haykin) and one additional reference (Roh or Lin for Petition 1 [IPR2020–00611];
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`Sadrabadi for Petition 2)” and the same holds true for two of the three challenged
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`dependent claims (claims 11, 12). (Paper 3 at 4.) The additional independent claim,
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`claim 10, uses the same reference—Yang—in each case. (Paper 3 at 1–2.)
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`2
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`Notably, Petitioner frames its necessity for two petitions to ameliorate
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`printed publication issues of Roh and Sadrabadi. But Petition 1 includes the
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`grounds that utilize Lin, and thus ameliorate Petitioner’s alleged concerns over the
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`printed publication status of Roh and Sadrabadi. (Paper 3 at 1–2.) Adding a second
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`petition that includes a reference with issues related to printed publication
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`(Sadrabadi) does not assist Petitioner in mitigating and risk to its chosen prior art
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`references. Petitioner addressed that risk within the first Petition itself by using Lin
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`(a U.S. patent) as an alternative to Roh. See id.
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`2) Why should the Board institute additional petitions if one will suffice?
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`Petitioner argues that “both the Administrative Procedures Act and due
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`process concerns weigh against denying institution of either petition based on the
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`Board’s discretion.” (Paper 3 at 4.) Neither is true.
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`“[Section] 314(a) invests the Director with discretion on the question
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`whether to institute review . . . .” (emphasis omitted)); SAS Inst. v. Iancu, 138 S.
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`Ct. 1348, 1356 (2018). That discretion includes the discretion to deny a petition.
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`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s
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`decision to deny a petition is a matter committed to the Patent Office’s
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`discretion.”) Indeed, “the PTO is permitted, but never compelled, to institute an
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`IPR proceeding.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed.
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`3
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`
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`Cir. 2016). No violation of the APA or due process would occur if the Board
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`declined to institute one or both petitions.
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`First, the very same reason that Petitioner argues that “institution of both
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`petitions would not implicate concerns regarding the Board’s time and resources
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`required” is the same reason Petitioner need not have filed two petitions—there is
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`significant overlap between the asserted prior art. In Comcast Cable Comm’s, LLC
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`v. Veveo, Inc., IPR2019-00238, Paper 15 (PTAB July 5, 2019), the Board found
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`overlap in the references at issue in multiple petitions and declined to institute all
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`of them. Similarly, the Board can, and should, exercise its discretion here to
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`decline to institute one or more of the present petitions.
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`Second, as noted in Patent Owner’s Preliminary Response, there are
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`sufficient grounds to deny both petitions under § 314(a) in light of the Fintiv
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`Factors. See also Nalox-1 Pharmaceuticals, LLC v. Opiant Pharmaceuticals, Inc.,
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`IPR2019-00686, Paper 11, 6 (PTAB Aug. 27, 2019) (“When determining whether
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`to exercise our discretion under § 314(a), [the Board] consider[s], among other
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`factors, whether a petitioner has filed multiple other petitions challenging the same
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`patent.”).
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`Third, denial of one or more of the petitions is appropriate because Petitioner
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`fails to comply with the Board’s rules. As noted in Patent Owner’s Preliminary
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`Response, Petitioner violates the word limit by incorporating arguments by
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`4
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`reference voluminous declarations and those declarations further cross-reference
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`other portions. This is particularly egregious, and warrants denial of both
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`petitions—and at least one—given that Petitioner claims two petitioners are needed
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`“to ensure the grounds contained the necessary specificity.” This was a promise
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`Petitioner failed to keep.
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`3) Ranking of petitions
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`While Patent Owner does not believe that either Petition should be
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`instituted, if the Board is inclined to institute on one Petition, it should be IPR-
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`2019-00611.
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`Petitioner has not shown compelling circumstances to warrant deviating
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`from the Board’s policy that “multiple petitions by a petitioner are not necessary in
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`the vast majority of cases.” (TPG 59.) For the reasons stated in its Preliminary
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`Response, Patent Owner believes both petitions should be denied on their merits,
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`pursuant to the Board’s ¶ 314(a) discretion, and/or so Petitioner is not rewarded for
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`its inefficient filing decision that imposed a burdensome task on the Board and
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`Patent Owner, and may also signal to future petitioners that its own choices that
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`lead to multiple petitions are not a sufficient reason for there to be two petitions.
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`5
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`Dated: May 26, 2020
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`Respectfully Submitted,
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`/Steven W. Hartsell/
`Steven W. Hartsell (Reg. No. 58,788)
`SKIERMONT DERBY LLP
`1601 Elm St., Ste. 4400
`Dallas, Texas 75201
`P: 214-978-6600/F: 214-978-6601
`Lead Counsel for Patent Owner
`
`Alexander E. Gasser (Reg. No. 48,760)
`Joseph M. Ramirez (Reg. No. 70,716)
`SKIERMONT DERBY LLP
`1601 Elm St., Ste. 4400
`Dallas, Texas 75201
`P: 214-978-6600/F: 214-978-6601
`Back-Up Counsel for Patent Owner
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I certify that I caused to be served on the
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`counsel for Petitioner a true and correct copy of the foregoing Patent Owner’s
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`Response to Petitioner’s Notice Regarding Multiple Petitions, by electronic means
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`on May 26, 2020 at the following addresses of record:
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`Naveen Modi
`Joseph E. Palys
`Arvind Jairam
`PH-Samsung-BNR-IPR@paulhastings.com
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`Dated: May 26, 2020
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`Respectfully Submitted,
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`/Steven W. Hartsell/
`Steven W. Hartsell (Reg. No. 58,788)
`Lead Counsel for Patent Owner
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