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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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`MICROSOFT CORPORATION and HP INC.
`Petitioners,
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`v.
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`SYNKLOUD TECHNOLOGIES, LLC,
`Patent Owner.
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`________________________
`Inter Partes Review No. IPR2020-01269 and IPR2020-01270
`U.S. Patent No. 9,219,780
`________________________
`PETITIONERS’ EXPLANATION REGARDING THE NECESSITY FOR
`MULTIPLE PETITIONS
`________________________
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`I. INTRODUCTION
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`Petitioners have filed two petitions challenging U.S. Patent No. 9,219,780 to
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`Tsao (“the 780 Patent”), both of which are based on the same prior art and include
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`substantive identical analysis. Two petitions were required because the analysis of
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`all 20 claims of the 780 Patent could not reasonably fit within the word limit for a
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`single petition. In considering how best to divide the analysis between the
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`petitions, Petitioners determined that addressing claims 1 and 16 and their
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`dependents in one petition, and claim 9 and its dependent claims in a separate
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`petition, was the most efficient path forward.
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`The Board has found that a Petitioner may file multiple petitions against a
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`single patent when, for example, the asserted claims in the litigation are uncertain
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`and where petitions rely on the same prior art. See, e.g., Microsoft Corporation v.
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`IPA Technologies Inc., IPR2019-00810, Paper 12 at 11-16 (October 16, 2019).
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`The Board further observed that “any duplication of effort that may place
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`unnecessary burdens on the parties and the Board may be avoided or reduced by
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`consolidating the instituted IPRs (if institution of review is granted in more than
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`one proceeding), including consolidating the parties’ briefing, motion practice, and
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`the oral hearings. Id. at 15.
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`1
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`Petitioners made this decision to file two petitions given the length of the
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`claims and its assessment it could not reasonably fits its analysis in fewer petitions,
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`and based on certain distinctions between the scope of claim 9 and the scope of
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`claims 1 and 16. For example, claim 9 is generally directed to “a server,” while
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`claims 1 and 16 are directed to “a wireless device” and “a system,” respectively.
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`By analyzing the most similar independent and dependent claims in separate
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`petitions, Petitioners have presented the analysis in the most efficient manner while
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`maintaining appropriate word count limits.
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`In addition, Petitioners have challenged all 20 claims of the 780 Patent
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`because they do not know which claims (if any) might be asserted against
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`Petitioner Microsoft Inc. (“Microsoft”) in district court. For example, Microsoft
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`filed for a declaratory judgment of noninfringement of the 780 Patent in district
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`court on January 3, 2020 and at present, only an exemplary claim has been
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`identified. See, e.g., id. at 14 (finding that Petitioner had provided “a reasoned
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`explanation” for filing multiple petitions where Petitioner was “in the position of
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`not knowing which claims…Patent Owner would assert against Petitioner in
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`district court litigation.”)
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`Further, pursuant to the Trial Practice Guide recommendations, Petitioners
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`identify the following sections as the sections that are substantively identical across
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`2
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`the two petitions, noting that claims 1, 9 and 16 are the independent claims of the
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`254 Patent:
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`IPR2020-01269
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`Introduction
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`IPR2020-01270
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`Introduction
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`Compliance with the Requirements for
`a Petition for Inter Partes Review
`The 780 Patent
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`Compliance with the Requirements for
`a Petition for Inter Partes Review
`The 780 Patent
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`Principal Prior Art
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`Patentability Analysis
`A. Claim 2
`B. Claims 5 and 6
`C. Claims 3 and 17
`D. Claim 4
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`Principal Prior Art
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`Patentability Analysis
`A. Claim 15
`B. Claim 14
`C. Claim 10
`D. Claim 11
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`Finally, Petitioners recognize that the recent amendments to the Trial
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`Practice Guide state that a petitioner filing multiple petitions against the same
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`patent “should” identify “a ranking of the petitions in order in which [the
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`petitioner] wishes the Board to consider the merits. See pg. 27. Petitioners
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`respectfully suggest that doing so here would be somewhat anomalous. This is not
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`a situation where the petitions challenge the same claims on different prior art
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`bases. The basic prior art analysis of the independent claims is identical in both
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`petitions. Thus, a comparison of the strengths and weaknesses between the two
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`3
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`petitions, which would be necessary to determine a preference, would seem to be a
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`nonsensical exercise.
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`Accordingly, given the structure of the claims of the 780 Patent, and the
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`differences in claims addressed in IPR2020-01269 and IPR2020-01270, Petitioners
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`respectfully request that the Board consider and institute Inter Partes reviews on
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`both petitions. Nevertheless, to the extent the Board deems it necessary to only
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`consider a single petition, Petitioners rank IPR2020-01269 ahead of IPR2020-
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`01270.
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`Dated: July 20, 2020
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`Respectfully submitted,
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`/Joseph A. Micallef/
`Joseph A. Micallef
`Reg. No. 39,772
`SIDLEY AUSTIN LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`jmicallef@sidley.com
`Attorney for Petitioners
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`4
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`CERTIFICATE OF SERVICE
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`I hereby certify that on July 20, 2020, a copy of the Petitioners’ Explanation
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`Regarding The Necessity For Multiple Petitions, and exhibits thereto, has been
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`served in its entirety on the patent owner and counsel for patent owner, via Federal
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`Express, at the following:
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`Sheng Tai (Ted) Tsao
`3906 Borgo Common.
`Fremont, CA 94538
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`Synkloud Technologies, LLC
`124 Broadkill Road, #415
`Milton, DE 19968
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`David S. Eagle
`Sean M. Brennecke
`919 Market Street, Suite 1000
`Wilmington, DE 19801
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`Dated: July 20, 2020
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`Respectfully submitted,
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`/Joseph A. Micallef/
`Joseph A. Micallef
`Reg. No. 39,772
`SIDLEY AUSTIN LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`jmicallef@sidley.com
`Attorney for Petitioners
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`5
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