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` Paper No. 22
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`Entered: March 12, 2021
`
`Trials@uspto.gov
`571.272.7822
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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., and APPLE INC.,
`Petitioner,
`
`v.
`
`NEONODE SMARTPHONE LLC,
`Patent Owner.
`____________
`
`IPR2021-00144 (Patent 8,095,879 B2)
`IPR2021-00145 (Patent 8,812,993 B2)1
`____________
`
`
`Before MICHELLE N. ANKENBRAND, KARA L. SZPONDOWSKI, and
`CHRISTOPHER L. OGDEN, Administrative Patent Judges.
`
`ANKENBRAND, Administrative Patent Judge.
`
`
`
`ORDER
`Authorizing Petitioner to File Documents, Supplemental Brief
`Extending Due Date, Word Count for Patent Owner’s Preliminary Response
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`1 This Order addresses issues that are the same in each of the above-
`identified proceedings. We issue one Order for entry in each proceeding.
`The parties may not use this style caption without our permission.
`
`
`
`
`IPR2021-00144 (Patent 8,095,879 B2)
`IPR2021-00145 (Patent 8,812,993 B2)
`
`
`INTRODUCTION
`
`On March 4, 2021, Petitioner sent an email to the Board requesting a
`five-page brief to explain how certain developments in co-pending
`litigations related to these proceedings may impact our analysis of the
`petitions under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB
`Mar. 20, 2020) (precedential) (“Fintiv”). Ex. 3001, 1–2. Petitioner also
`requested leave to file four documents as exhibits in each proceeding:
`(1) Amended Agreed Scheduling Order, filed November 13, 2020, in
`Neonode Smartphone LLC v. Apple Inc., 6:20-cv-00505 (W.D. Tex.)
`(“the Apple litigation”); (2) Order Staying Case Pending Completion of
`Venue Discovery, issued December 8, 2020, in the Apple litigation; (3) Text
`Order Granting Motion to Stay Case, issued December 11, 2020, in Neonode
`Smartphone LLC v. Samsung Elecs. Co., 6:20-cv-00507 (W.D. Tex.); and
`(4) Plaintiff Neonode Smartphone LLC’s Unopposed Motion to Extend
`Venue Discovery Deadlines, filed February 16, 2021, in the Apple litigation.
`Id.
`
`Petitioner represented in the email that Patent Owner did not oppose
`the request “under the following conditions”: (1) Petitioner’s five-page brief
`should be filed before Patent Owner’s Preliminary Response; (2) Patent
`Owner should receive an extension of the Preliminary Response due date to
`one week after Petitioner files its supplemental brief; and (3) Patent Owner
`should receive an extra 1,200 words for the Preliminary Response in view of
`Petitioner’s additional brief. Id. at 2. Petitioner was agreeable to the
`conditions, and explained that it would be ready to file its five-page brief no
`later than March 10, 2021. Id.
`
`2
`
`
`
`IPR2021-00144 (Patent 8,095,879 B2)
`IPR2021-00145 (Patent 8,812,993 B2)
`
`
`We did not hold a telephone conference, but instead responded to the
`parties via email explaining that the documents Petitioner requested to file
`and the briefing Petitioner requested “may be useful to the Board.” Id. at 1.
`As such, we authorized Petitioner to file the documents and a five-page brief
`as outlined in Petitioner’s email no later than March 10, 2021, extended the
`due date of the Preliminary Response, and authorized an additional 1,200
`words for the Preliminary Response. Id. This Order memorializes the
`response we previously provided to the parties.
`
`
` ORDER
`
`Accordingly, it is
`ORDERED that Petitioner is authorized to file in each proceeding the
`four documents described above as exhibits;
`FURTHER ORDERED that Petitioner is authorized to file in each
`proceeding a supplemental brief discussing developments in co-pending
`litigations and how those may affect the Fintiv analysis;2
`FURTHER ORDERED that Patent Owner’s Preliminary Response
`due date in each proceeding is extended to March 17, 2021; and
`FURTHER ORDERED that the word limit for Patent Owner’s
`Preliminary Response in each proceeding is extended by 1,200 words to
`15,200 words.
`
`
`2 Petitioner filed the documents and the supplemental brief on March 10,
`2021. IPR2021-00144, IPR2021-00145, Paper 18; Exs. 1043–1046.
`3
`
`
`
`IPR2021-00144 (Patent 8,095,879 B2)
`IPR2021-00145 (Patent 8,812,993 B2)
`
`For PETITIONER:
`Walter Renner
`David Holt
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`holt2@fr.com
`
`Tiffany Miller
`James Heintz
`DLA PIPER LLP
`tiffany.miller@dlapiper.com
`jim.heintz@dlapiper.com
`
`
`For PATENT OWNER:
`
`Robert Asher
`Bruce Sunstein
`Wendy Demoracski
`SUNSTEIN LLP
`rasher@sunsteinlaw.com
`bsunstein@sunsteinlaw.com
`wdemoracski@sunsteinlaw.com
`
`4
`
`
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