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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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`SAMSUNG ELECTRONICS CO. LTD., SAMSUNG ELECTRONICS
`AMERICA, INC., AND APPLE INC.
`Petitioner,
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`v.
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`NEONODE SMARTPHONE LLC,
`Patent Owner
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`Case IPR2021-00144
`Patent 8,095,879
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`PETITIONERS’ REQUEST FOR REHEARING
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`Case No. IPR2021-00144
`U.S. Patent No. 8,095,879
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`I.
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`INTRODUCTION
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`Petitioners respectfully request rehearing of Ground 2 alone1 pursuant to 37
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`C.F.R. § 42.71(d), based on the following three arguments:
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`(1) The Board misapprehended Hirayama307’s (EX1006) teachings
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`by setting aside FIG. 3A and equating Hirayama307’s telephone icon 41
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`with window 43;
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`(2) The Board misapprehended the claim language by relying on
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`portions of FIG. 3B and FIGs. 4A-B that illustrate actions that occur after
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`the “gliding” and not “during the gliding,” as required by claim 1; and
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`(3) At bottom, the Board misapprehended the existence of genuine
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`disputes of material facts that go to the scope of Hirayama307’s disclosures
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`and a person of ordinary skill in the art’s (“POSA’s”) understanding of it,
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`which should have been resolved through an IPR trial.
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`Ground 2 relied on Hirayama307, as understood by a POSA, either alone or
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`1 Without conceding the merits of the Institution Decision’s preliminary findings
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`regarding Grounds 1A-1E and 3, Petitioners hereby withdraw Grounds 1A-1E and
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`3 and stipulate not to pursue these grounds in any proceeding that is instituted from
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`this rehearing request. In this regard, Petitioners promote narrowed focus on the
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`merits of Ground 2 only.
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`1
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`alternatively in combination with Ren, to meet claim 1’s requirement “wherein the
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`representation of the function is not relocated or duplicated during the gliding.”
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`Petition (“Pet.”) at 60-62; EX1002 (Bederson Declaration), ¶¶ 157-62.2
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`With respect to Ground 2, the Institution Decision held that “Hirayama307
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`appears to disclose either relocating or duplicating the icon on the screen’s
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`display,” and therefore “Petitioner fails to show sufficiently that ‘[i]t would have
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`been obvious given Hirayama307’s disclosure to implement the user interface such
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`that’ ‘the representation of the function is not relocated or duplicated during []
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`gliding,’ as claim 1 requires.” Decision (Paper 24) (“Dec.”), at 18-19.
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`In the context of the language utilized by Hirayama307, the Board’s
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`misapprehension is understandable, given Patent Owner’s inaccurate
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`representations of Hirayama307 in which they conflated Hirayama307’s telephone
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`icon 41 and the window 43 that is created from the activation thereof. See POPR
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`(Paper 23), 37-42. Based on guidance from Neonode’s arguments, the Institution
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`Decision overlooked or misunderstood Petitioners’ demonstration that
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`Hirayama307’s telephone icon 41 (“the representation of the function”) is “not
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`relocated or duplicated during the gliding.” Rather, by focusing on window 43
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`2 The Board is free to conclude Hirayama307 discloses all elements of claim 1.
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`Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1373 (Fed. Cir. 2019).
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`2
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`(and not icon 41) and relying on Hirayama307’s disclosures relating to what
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`happens after the gliding (and not during the gliding), the Institution Decision
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`reflects clear error—at least as to the Petition’s Ground 2. At bottom, any genuine
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`dispute of material fact as to the scope of Hirayama307 should be explored through
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`trial, as there exists no clear evidence refuting Petitioners’ and Dr. Bederson’s
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`interpretation. Accordingly, Petitioners respectfully request rehearing as to
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`Ground 2 of this Petition and institution based on the same.
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`II. LEGAL STANDARD
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`“A party dissatisfied with a decision may file a single request for rehearing
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`without prior authorization from the Board” and “must specifically identify all
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`matters the party believes the Board misapprehended or overlooked, and the place
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`where each matter was previously addressed in a motion, an opposition, or a
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`reply.” 37 C.F.R. § 42.71(d).
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`When reconsidering a decision on institution, the Board reviews the decision
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`for an abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs if
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`the decision (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an
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`erroneous conclusion of law; (3) rests on clearly erroneous fact findings; or (4)
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`involves a record that contains no evidence on which the Board could rationally
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`base its decision.” Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435,
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`442 (Fed. Cir. 2015).
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`3
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`III. ARGUMENT
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`A. The Petition’s Ground 2 Arguments—Hirayama307’s Telephone
`Icon 41 as Shown in FIG. 3A as “the representation of the function
`[that] is not relocated or duplicated during the gliding.”
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`Claim 1, the only independent claim of the ’879 Patent, recites as follows:
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`[a] a touch sensitive area in which a representation of a
`function is provided, …
`[c] wherein the function is activated by a multi-step
`operation comprising (i) an object touching the touch sensitive
`area at a location where the representation is provided and then
`(ii) the object gliding along the touch sensitive area away from
`the touched location,
`[d] wherein the representation of the function is not
`relocated or duplicated during the gliding.
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`The Petition identified Hirayama307’s icon 41, shown in yellow in FIG. 3A
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`in the Petition, as the claimed “representation of a function.” Pet. at 51-53 (citing
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`EX1006, 4:57-65, reproducing FIG. 3A as below). The Petition identified no other
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`item to satisfy this claim element. The Petition also pointed to pen 3 as shown in
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`FIG. 3A as the “object” that performs the “touching” of the “representation” and
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`the “gliding . . . away from the touched location.” Pet. at 59. And the Petition
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`explained that icon 41 “is not relocated or duplicated during the gliding.” Pet. at
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`60-62. The Petition made no argument or representation as to what occurs to
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`icon 41 after the gliding.
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`4
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`EX1006, FIG. 3A (arrow is in original, emphasized in the Petition in red).
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`Specifically, the Petition explained icon 41 “is not relocated or duplicated
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`during the gliding” because, while icon 41 is touched, icon 41 itself is not moved
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`during the dragging movement of pen 3 described in Hirayama307. Pet. at 58, 60.
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`FIG. 3A illustrates this point—as pen 3 is undergoing the dragging movement
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`from the location of icon 41 to the display of input tablet 2, a cross-shaped
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`position designating cursor 42 (not icon 41) is displayed during the gliding
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`where the pen 3 contacts the display. Pet. at 60-61, citing EX1006, 4:66-5:3, FIG.
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`3A.
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`Hirayama307 explains that cross-shaped position designating cursor 42 is
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`displayed so “the user can visually confirm the exact position of the point of pen 3
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`. . . .” EX1006, 4:66-5:3; Pet. at 61-62; EX1002, ¶ 158. In addition, Hirayama307
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`states in reference to FIG. 3A that “the user touches an icon 41 on which a picture
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`5
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`of a telephone is drawn . . . with the point of the pen 3.” EX1006, 4:59-65; Pet. at
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`58 (citing same). “Then, if the user moves (i.e. drags) the point of the pen 3 to the
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`display position on the surface of the input tablet 2 without being separated
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`therefrom after having touched the desired icon 41 with the point of the pen 3, and
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`takes the point of the pen 3 off from the surface of the input tablet 2, an icon
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`(hereinafter be [sic] referred to as a window) enlarged in the form of the processing
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`display mode of the desired icon 41 is automatically displayed on the display
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`portion 1 as shown in FIG. 3B.” EX1006, 4:61-5:12, FIGs. 3A, 4A; Pet. at 58-60
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`(citing the same evidence). “[T]he gliding” under the language of the claim is
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`complete by the time the user “takes the point of the pen 3 off from the surface of
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`the input tablet 2.” Pet. at 57, 59-60; EX1006, 1:52-55 (“activate . . . a designated
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`function by the user when the user drags a pen”), 5:3-4, 7:9-10. The remainder of
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`the disclosure in this sentence, and what is shown in FIG. 3B, describes what
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`happens after “the gliding,” not “during the gliding.” Pet. at 53, 59 (explaining
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`that the display of the window 43 with the dialler processing menu is the activation
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`that occurs after the gliding); EX1006, 1:52-55, 6:3-21.
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`The Petition further explained that a “POSA would have recognized
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`Hirayama307 does not describe or show icon 41 (‘representation’) is dragged or
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`otherwise relocated or duplicated during the movement of pen 3” because through
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`the cross-shaped position designating cursor 42 “the user can visually confirm the
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`6
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`exact position of the point of pen 3 on the input tablet 2 very clearly.” Pet. at 60;
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`see also Pet. at 61-62 (same); EX1002, ¶¶ 157-59 (Bederson Declaration
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`explaining same). Moreover, the Petition explained why there would be no need
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`for any duplication of icon 41 (e.g., because the cross-shaped cursor 42 informed
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`the user as to the exact location of the pen during a glide operation), and why a
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`POSA would have recognized the same. Pet. at 60-62, citing EX1002, ¶¶158-159.
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`Accordingly, the Petition’s Ground 2 is based, in relevant part, on Hirayama307’s
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`FIG. 3A and icon 41.
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`B.
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`The Decision Misapprehended Hirayama307’s Teachings by
`Setting Aside the Petition’s Arguments Based on FIG. 3A and
`Telephone Icon 41 and Equating Icon 41 With Window 43.
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`The Institution Decision concluded that “Hirayama307 appears to disclose
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`either relocating or duplicating the icon on the screen’s display,” and similarly that
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`“Hirayama307 appears to duplicate or relocate the representation of the function,
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`i.e., icon, during gliding.” Dec. at 18, 19. Rather than relying on FIG. 3A and
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`icon 41 as the Petition presented and as discussed above, the Board relied on
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`FIG. 3B and related disclosures that “an icon (hereinafter be referred to as a
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`window) enlarged in the form of the processing display mode of the desired
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`icon 41 is automatically displayed on the display portion 1 as shown in FIG. 3B.”
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`EX1006, 5:9-11; Dec. at 18.
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`But the Board misapprehended Hirayama307’s teachings by setting aside
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`7
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`FIG. 3A and equating icon 41 with “enlarged icon” or “large icon” (as depicted in
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`FIG. 3B), which Hirayama307 throughout the specification refers to as
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`window 43. Dec. at 18-19; EX1006, 5:64-66, 6:13-14, 6:22-24, 6:46-47. FIG. 3B
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`is reproduced below:
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`EX1006, FIG. 3B. Different from icon 41, Hirayama307 describes window 43 as,
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`for example: “the large icon, i.e., the window 43,” EX1006, 6:22-23; “Enlarge
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`icon as a window,” EX1006, 6:22-23, 30; “a position of a window, i.e. a position
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`of an enlarged icon,” id., 1:61-62; “the processing display form of the icon 41
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`designated is enlarged as a window 43 shown in FIG. 3B,” id., 5:64-66; “an
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`enlarged processing display form (i.e. window) is automatically displayed at a
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`desired position,” id., Abstract; “means for providing an icon processing display
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`mode window corresponding to said icon,” id., 7:46-47, “dragging the pen means
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`8
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`… to a location at which the icon processing display mode window is to be
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`displayed,” id., 7:51-53; EX1002, ¶¶ 153, 156. These discussions show icon 41 is
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`not the same as window 43. Indeed, FIG. 3B maintains the illustration of icon 41
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`in its original position while the user interacts with window 43. As such, the
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`Petition’s arguments related to icon 41 demonstrate that Hirayama307 discloses
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`that the “representation of the function”—i.e., the icon 41—“is not relocated or
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`duplicated during the gliding” as required by limitation 1[d], and the Board
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`misapprehended this showing in the Petition.
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`And for the same reasons above, the Board’s reliance on FIGs. 4A and 4B,
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`where it described the figures as a “flow chart including the step of enlarging the
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`icon as a window” and “flow chart including the steps of reducing the icon and
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`moving the reduced icon,” respectively (Dec. at 19), is a misapprehension because
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`here too the Board equates icon 41 with window 43. In reference to FIG. 4A,
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`Hirayama307 explains the “enlarged icon” is “the large display icon, i.e.
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`window 43 . . . shown in FIG. 3B,” where step S6 in FIG. 4A recites “Enlarge icon
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`as a window,” and step S8 recites “Move the enlarged icon.” EX1006, 6:7-14
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`(emphasis added). Thus, the “enlarge[d] icon” in step S6 is window 43, not
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`icon 41, and there is simply no description in Hirayama307 that “enlarge[ing]
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`icon” as a window 43 (i.e., step S6) involves relocation or duplication of icon 41.
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`Indeed, as described above, the static illustration of icon 41 between FIG. 3A and
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`9
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`FIG. 3B demonstrates the opposite.
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`Accordingly, the Board misapprehended the Petition’s focus on FIG. 3A and
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`on icon 41 as the “representation of a function” by erroneously relying on FIG. 3B,
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`equating icon 41 with window 43, and thereby, concluding that window 43
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`“appears to duplicate or relocate the representation of the function, i.e., icon,
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`during gliding.” Dec. at 18. To the contrary, the Petition relies solely on
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`Hirayama307’s icon 41, and window 43 is not the same as icon 41 or a duplication
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`thereof, as confirmed by FIG. 3B.
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`To the extent the Board believes some aspect of FIG. 4A’s disclosure of
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`“Enlarge icon as a window” in step S6 nonetheless suggests a duplication of
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`icon 41, it is at least not explicit in the reference, and therefore is an issue of fact
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`that should be explored through institution and trial.
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`C. The Board Misapprehended The Claim Language by Relying on
`Portions of FIGs. 3B and 4A-B That Illustrate Actions That Occur
`After the Gliding and not During the Gliding as Required by
`Claim 1.
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`As discussed, claim 1 requires that “the representation of the function is not
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`relocated or duplicated during the gliding,” where “the gliding” is done by the
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`“object” going “away from the touched location” on the “touch sensitive area.” In
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`concluding that “Hirayama307 appears to duplicate or relocate the representation
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`of the function, i.e., icon, during gliding,” the Board relied on parts of
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`Hirayama307 discussing what happens after pen 3’s dragging movement away
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`10
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`from the icon 41 is completed, after pen 3 being lifted from the display, and after
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`the function corresponding to icon 41 has been activated. Dec. at 18-19. In other
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`words, even if the Board finds that Hirayama307 discloses duplicating or
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`relocating icon 41 (it does not for the reasons discussed above), the Board’s
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`finding that Hirayama307’s icon is duplicated and relocated “during the gliding”
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`was clear error because it relied on parts of Hirayama307 that discuss what
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`happens after and not during “the gliding.”
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`Specifically, the Institution Decision relied on discussions corresponding to
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`FIG. 3B that “[w]hen the user wants to bring the large icon, i.e., window 43
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`displayed on the display portion 1 . . . back to the original position’ if the user
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`touches a portion ‘within window 43 with the point of the pen 3 and drags the
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`point of the pen 3 back to the telephone icon 41 . . . then the icon of large size can
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`be returned to and stored in that position.” Dec. at 18-19 (quoting EX1006, 6:22-
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`31) (emphasis added).
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`But the possibility of dragging window 43 “back to . . . icon 41” as depicted
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`in FIG. 3B shows that the discussion relates to what happens after what is
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`illustrated in FIG 3A—after pen 3’s initial touching of icon 41 (“representation of
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`the function”), after the dragging movement of pen 3 where a cross-shaped
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`position designating cursor 42 is displayed (“representation of the function is not
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`relocated or duplicated during the gliding”), and after the function corresponding
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`11
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`to icon 41 has been activated (where the “gliding” is complete and “function is
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`activated”). See EX1006, 5:3-12 (describing FIG. 3B as depicting after the user
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`“takes the point of the pen 3 off from the surface of the input tablet . . . ,” which is
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`after “the gliding”); 6:16-21 (“icon is activated so that various processing menus
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`with the window 43 can be executed”); 6:1-2 (referring to “menus displayed on the
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`window 43” after activating the desired icon); Pet. at 53, 57; EX1002, ¶¶ 149, 159.
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`To the extent the Board relied on FIG. 4B, the same reasons discussed as to FIG.
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`3B apply to FIG. 4B. See EX1006, 6:35-37 (operation illustrated in FIG. 3B is
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`“explained more fully with reference to the flow chart forming FIG. 4B.”). Thus,
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`FIGS. 3B and 4B do not concern what happens “during the gliding.”
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`Accordingly, by relying on Hirayama307’s disclosures that discuss what
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`happens after the “gliding,” the Board misapprehended the claim language that
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`requires icon 41 (the representation) not be duplicated or relocated during “the
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`gliding.”
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`D. At Bottom, There are Genuine Disputes of Material Facts as to the
`Scope of Hirayama307 That Should be Resolved Through Trial.
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`The Bederson Declaration (EX1002) relied on in the Petition provides,
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`particularly with reference to FIG. 3A, that icon 41 is the “representation of the
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`function” and that it is “not relocated or duplicated during the gliding” as recited in
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`claim 1. Pet. at 52-53, 60-62, citing EX1002, ¶¶149, 157-159. The Bederson
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`Declaration also provides that a POSA would have understood Hirayama307’s
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`12
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`reference to an “enlarged icon” to refer to window 43, not icon 41. Pet. at 52, 56-
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`57, 60-62, citing EX1002, ¶¶ 149, 153, 157-59. The Bederson Declaration
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`provides a reasoned basis grounded in the teachings of the reference itself (e.g., the
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`display of cursor 42 during the dragging) to support these conclusions. Id.
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`The Institution Decision appears to rely on the reasoning of Patent Owner,
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`which is based on the Rosenberg Declaration’s opinion that a POSA would have
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`interpreted Hirayama307 to disclose the icon 41 as “duplicated,” for example,
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`evidenced by Hirayama307’s reference to an “enlarged icon.” POPR at 37-40,
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`citing EX2001, ¶¶ 100-3.
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`In addition, the Institution Decision may have credited Patent Owner’s
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`inaccurate representations that suggest Hirayama307 discloses a “‘drag and drop’
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`visual presentation” that was allegedly “commonly used in mobile computing
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`devices in 2002” relying almost exclusively on the Rosenberg Declaration
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`regarding how a POSA would interpret Hirayama307. POPR (Paper 23), 37-38,
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`40, citing EX2001, ¶¶ 99-103 (“A POSA would understand that this shows that the
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`icon was dragged”). For example, Patent Owner argued Hirayama307 “discloses
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`that the icons of group 40 in Fig. 3A are dragged during the gliding of the pen and
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`cursor across the display, . . . because that is how drag and drop operations were
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`typically performed in computer user interfaces as of 2002.” POPR at 37.
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`But as discussed above, Hirayama307 does not describe icon 41 as being
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`13
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`“dragged and dropped.” See Pet. at 60-62; EX1002, ¶¶ 157-159. The only
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`interface element explicitly shown to be dragged is the window 43, the movement
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`of which is explicitly illustrated in FIG. 3B by an arrow and broken lines, whereas
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`telephone icon 41 is consistently shown in the same unmoving location in every
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`figure. EX1006, 6:7-14, FIGs. 3A-B. At bottom, the evidence set forth by
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`Petitioners in the Bederson Declaration creates genuine disputes of material fact
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`regarding how a POSA would have understood the scope of Hirayama307. See
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`Sony Corp. v. Fujifilm Corp, IPR2017-00618, Paper 11, at 6-7 (granting rehearing
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`where conflicting expert testimony about how a POSA would have understood a
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`prior art reference “creates a genuine issue of material fact” that the Board “must
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`view . . . in the light most favorable to Petitioner”). Accordingly, the Board clearly
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`erred by resolving the dispute in Patent Owner’s favor and thereby denying the
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`Petition. See 37 C.F.R. § 42.108(c) (2016).3
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`Even to the extent that the Board contends that their Decision was not based
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`3 This Petition was filed November 6, 2020, which is before the change to 37
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`C.F.R. § 42.108(c) took effect for IPR petitions filed on or after January 8, 2021.
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`PTAB Rules of Practice for Instituting on All Challenged Patent Claims and All
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`Grounds and Eliminating the Presumption at Institution Favoring Petitioner as to
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`Testimonial Evidence, 85 Fed. Reg. 79,120 (Dec. 9, 2020).
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`14
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`on a question of material fact raised by testimonial evidence, it has nevertheless
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`been shown in this request that no teachings of Hirayama307 demonstrate that the
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`Petition’s interpretation of it would have been unreasonable to a POSA (indeed,
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`this request demonstrates that Petitioners’ interpretation is more reasonable). To
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`conclude that it does on this preliminary record would be to frustrate the very
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`purpose of holding trials to resolve factual disputes and would thus be inconsistent
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`with the intent of § 314(a). See Hulu, LLC v. Sound View Innovations, LLC,
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`IPR2018-01039, Paper 29 at 13-15 (PTAB Dec. 20, 2019) (distinguishing between
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`the institution threshold and the evidentiary standard for proving claims
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`unpatentable).
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`IV. RELIEF REQUESTED
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`For these reasons, Petitioners respectfully request that the Board reconsider
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`and grant inter partes review of the ’879 Patent based on Hirayama307
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`(Ground 2), as explained in the Petition and supporting evidence.
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`15
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`Date: ___July 15, 2021_____
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`Respectfully submitted,
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`/W. Karl Renner/
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`W. Karl Renner, Reg. No. 41,265
`David L. Holt, Reg. No. 65,161
`Tiffany C. Miller, Reg. 52,032
`James M. Heintz, Reg. No. 41,828
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`Attorneys for Petitioner
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4), the undersigned certifies that on July 15,
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`2021, a complete and entire copy of this PETITIONERS’ REQUEST FOR
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`REHEARING was provided via email, to the Patent Owner by serving the
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`correspondence address of record as follows:
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`Robert M. Asher, rasher@sunsteinlaw.com
`Bruce D. Sunstein, bsunstein@sunsteinlaw.com
`Timothy M. Murphy, tmurphy@sunsteinlaw.com
`Arne Hans, ahans@sunsteinlaw.com
`Sunstein LLP
`100 High Street
`Boston, MA 02110-2321
`Email: sunsteinip@sunsteinlaw.com
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`Philip J. Graves, philipg@hbsslaw.com
`Greer N. Shaw, greers@hbsslaw.com
`Hagens Berman Sobol Shapiro LLP
`301 North Lake Avenue, Suite 920
`Pasadena, CA 91101
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`Mark S. Carlson, markc@hbsslaw.com
`Hagens Berman Sobol Shapiro LLP
`1301 Second Avenue, Suite 2000
`Seattle, WA 98101
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`/Crena Pacheco/
`Crena Pacheco
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(858) 678-5667
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