U.S. Patent No. 8,749,251
`Reasons for and Rankings of Parallel Inter Partes Review Petitions
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________________________
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`
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`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`SONY CORPORATION; AND
`SONY MOBILE COMMUNICATIONS INC.
`Petitioners
`
`v.
`
`NEODRON LTD.
`Patent Owner.
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`PETITIONERS’ REASONS FOR AND RANKING OF PARALLEL
`PETITIONS FOR REVIEW OF U.S. PATENT NO. 8,749,251
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`Reasons for and Rankings of Parallel Inter Partes Review Petitions
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________________________
`
`
`
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`SONY CORPORATION; AND
`SONY MOBILE COMMUNICATIONS INC.
`Petitioners
`
`v.
`
`NEODRON LTD.
`Patent Owner.
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`
`
`
`PETITIONERS’ REASONS FOR AND RANKING OF PARALLEL
`PETITIONS FOR REVIEW OF U.S. PATENT NO. 8,749,251
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`U.S. Patent No. 8,749,251
`Explanation of Material Differences in Inter Partes Review Petitions
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`Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., Sony
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`Corporation, and Sony Mobile Communications Inc. (collectively, “Petitioners”)
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`filed two petitions for inter partes review (“IPR”) of U.S. Patent No. 8,749,251 (“the
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`’251 Patent”) (Ex-1001), assigned to Neodron Ltd. (“Patent Owner”). The two
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`petitions concern different, non-overlapping claims and cite different primary prior
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`art references. The “Krah” petition—challenging claims 1-3, 7-12, and 16-18—
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`includes four grounds, all relying upon U.S. Patent Pub. No. 2008/0162996 A1
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`(“Krah”) (Ex-1005). The “Mese” petition—challenging claims 6 and 15—includes
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`two grounds, each relying upon U.S. Patent No. 5,396,443 (“Mese”) (Ex-1005) and
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`Korean Laid-Open Publication No. 10-2005-0045541 (“Oh”) (Ex-1006). The
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`multiple grounds are necessary because of the nature of the ’251 Patent’s claim set
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`and Patent Owner’s infringement contentions in the co-pending ITC and district
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`court litigations, in which Patent Owner asserts the ’251 Patent against Petitioners.
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`Given these unusual circumstances and the resultant impracticality of including all
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`of the Krah and Mese grounds in a single proceeding, Petitioners respectfully request
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`institution of both petitions against the ’251 Patent. Each involves the same claim
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`construction issue and a related secondary reference (“Chaudhri,” Ex-1007), thus
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`reducing the burden on the Board. Samsung and Sony likewise collaborated rather
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`than filing individual petitions—further reducing the burden on the Board.
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`1
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`U.S. Patent No. 8,749,251
`Explanation of Material Differences in Inter Partes Review Petitions
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`I.
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`REASONS TO INSTITUTE BOTH PETITIONS
`The Patent Trial and Appeal Board’s November 2019 Consolidated Trial
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`Practice Guide (“TPG”) acknowledges
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`that multiple petitions may “be
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`necessary…when the patent owner has asserted a large number of claims in
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`litigation.” TPG at 59. Here, Patent Owner has asserted claims of the ’251 Patent
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`against Petitioners in both In the Matter of Certain Capacitive Touch-Controlled
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`Mobile Devices, Computer, and Components Thereof, Investigation No. 337-TA-
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`1193 (U.S. International Trade Commission) (the “1193 ITC Investigation”) as well
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`as Neodron Ltd. v. Samsung Electronics Co., Ltd. et al (W.D. Tex. 20-cv-00121) and
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`Neodron Ltd. v. Sony Corporation (W.D. Tex. 20-cv-00122) (“the District Court
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`Matters”), which have been stayed pending the 1193 ITC Investigation. While
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`Patent Owner is only asserting claims 2, 3, 17, and 18 against Petitioners at the ITC
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`(Ex. 1015), Patent Owner asserts claims 1-20 against Petitioners in the District Court
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`Matters. Ex-1035, ¶ 30; Ex-1036, ¶ 21. That large number of asserted claims
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`justifies multiple petitions. E.g., Apple Inc. v. Seven Networks, LLC, IPR2020-
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`00157, Paper 10 at 25 (PTAB June 15, 2020) (instituting review and noting that
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`“initial infringement contentions asserting twenty claims…helps to justify two
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`petitions with mutually exclusive challenged claims”).
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`2
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`U.S. Patent No. 8,749,251
`Explanation of Material Differences in Inter Partes Review Petitions
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`Here, as in IPR2020-00157 and numerous other proceedings in which the
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`Board has instituted multiple petitions filed by the same petitioners, the two petitions
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`being filed by Petitioners concern mutually exclusive challenged claims. E.g., id. at
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`28 (“[B]ased on the facts and circumstances, the record justifies two petitions that
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`assert mutually exclusive dependent claims….”); Google LLC v. Hammond Dev.
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`Int’l, Inc., IPR2020-00413, Paper 16 at 42 (PTAB July 14, 2020) (“We determine
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`that the fact that Petitioner’s Petition in [previously instituted] IPR2020-00306 is not
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`directed to the same claims that Petitioner challenges in this proceeding weighs in
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`favor of declining to exercise our discretion to deny institution here.”); Apple v.
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`UUSI d/b/a Nartron, IPR2019-00358, Paper 12 at 19-20 (PTAB Aug. 5, 2019)
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`(instituting two petitions concerning nonoverlapping claims); Intel v. Qualcomm,
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`IPR2018-01261, Paper 8 at 16-18 (Jan. 15, 2019) (instituting five petitions
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`“challeng[ing] non-overlapping subsets of the claims of the ’490 patent.”).
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`In other words, none of the claims addressed in the Krah petition are
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`addressed in the Mese petition. If the Board “discretionarily dismissed one petition
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`or the other, some claims of the [’251] patent would be left uncovered by any ground
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`alleged by Petitioner[s].” Marvell Semiconductor, Inc. v. Uniloc 2017 LLC,
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`IPR2019-01349, Paper 9 at 14 (PTAB Feb. 4, 2020) (instituting review).
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`3
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`U.S. Patent No. 8,749,251
`Explanation of Material Differences in Inter Partes Review Petitions
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`Two petitions are necessary to address the large number of challenged claims
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`given the relevant claim limitations (which at times dictate different primary
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`references—Krah versus Mese and Oh) and a claim construction question
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`concerning the phrase “key touch on the touchscreen.” Patent Owner has advanced
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`one interpretation of this phrase. Petitioners propose an “alternative claim
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`construction[] and present[] at least one ground of unpatentability for each
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`construction.” 10X Genomics, Inc. v. Bio-Rad Labs., Inc., IPR2020-00086, Paper 8
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`at 22 (PTAB Apr. 27, 2020) (instituting review). But this explanation, and the
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`corresponding additional grounds, consume space. The narrower of the two
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`identified claim constructions requires a secondary reference (Chaudhri, Ex-1007),
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`which overlaps between the two petitions, but consumes additional space.
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`This claim construction and prior art overlap would reduce the burden on the
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`Board in instituting review on both petitions. Apple, IPR2020-00157, Paper 10 at
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`17-18 n.11 (“Because the two IPR proceedings involve non-overlapping claim
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`challenges with overlapping art and claim construction issues, as discussed further
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`below, a minimal loss in efficiency occurs, and a gain in integrity of the patent
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`system occurs, in instituting both trials.”); Solaredge Techs. Ltd. v. SMA Solar Tech.
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`AG, IPR2019-1224, Paper 10 at 12 (PTAB Jan. 23, 2020) (instituting review, citing
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`the “overlap in prior art and [claim construction] issues”).
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`4
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`U.S. Patent No. 8,749,251
`Explanation of Material Differences in Inter Partes Review Petitions
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`Finally, the collaboration between Samsung and Sony is an additional reason
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`to institute review on both petitions. Chegg, Inc. v. Netsoc, IPR2019-01171, Paper
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`16 at 14 (PTAB Dec. 5, 2019) (instituting review, noting that “submission of only
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`two Petitions on behalf of three petitioners…[promoted] efficient administration”).
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`II. RANKINGS OF THE PETITIONS
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`Rank
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`Prior Art Grounds
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`Challenged Claims
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`1
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`2
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`Krah
`Krah and Wilson
`Krah and Chaudhri
`Krah, Chaudhri, and Wilson
`Mese and Oh
`Mese, Chaudhri, and Oh
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`1-3, 7-12, 16-18
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`6 and 15
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`Petitioners rank the Krah petition higher than the Mese petition because the
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`Krah petition addresses more claims—including, inter alia, those asserted in the
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`ongoing 1193 ITC Investigation. But instituting review of both petitions would
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`promote the integrity of the patent system, as in Apple and other cases discussed
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`herein. By contrast, discretionarily denying one of the petitions would ultimately
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`increase burdens on the Board by encouraging patentees to assert numerous claims
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`(as Patent Owner did here) while discouraging defendants to collaborate.
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`Respectfully Submitted,
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`/s/ John Kappos
`(Reg. No. 37,861)
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`5
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`U.S. Patent No. 8,749,251
`Explanation of Material Differences in Inter Partes Review Petitions
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`CERTIFICATE OF SERVICE
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`The undersigned certifies pursuant to 37 C.F.R. §42.6(e) and §42.105 that on
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`September 24, 2020, a true and correct copy of the Petitioners’ Reasons For and
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`Ranking of Parellel Petitions for Review of U.S. Patent No. 8,749,251 was served
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`via express mail on the Patent Owner at the below correspondence address of record:
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`Shami Messinger PLLC
`1000 Wisconsin Ave. NW, Suite 200
`Washington, DC 2007
`A courtesy copy was sent to the below counsel via electronic mail:
`Reza Mirzaie (CA SBN 246953)
`Email: rmirzaie@raklaw.com
`Marc A. Fenster (CA SBN 181067)
`Email: mfenster@raklaw.com
`Brian D. Ledahl (CA SBN 186579)
`Email: bledahl@raklaw.com
`Russ August & Kabat
`12424 Wilshire Blvd., 12th Floor
`Los Angeles, CA 90025
`Telephone: (310) 826-7474
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`and
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`Matthew D. Aichele (VA SBN 77821)
`Email: maichele@raklaw.com
`Russ August & Kabat
`800 Maine Avenue, SW, Suite 200
`Washington, DC 20024
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`6
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`U.S. Patent No. 8,749,251
`Explanation of Material Differences in Inter Partes Review Petitions
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`Telephone: (310) 826-7474
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`.
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`Respectfully submitted,
`/s/ John Kappos
`John Kappos (Reg. No. 37,861)
`Email: jkappos@omm.com
`O’Melveny & Myers LLP
`610 Newport Center Drive, 17th Floor
`Newport Beach, California 92660.
`Telephone: (949) 823-6954
`Attorney for Petitioner
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`7
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