IPR2021-00145
`Patent Owner’s Opposition to
`Samsung-Petitioners’ Motion to Expunge
`
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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.,
`
`Petitioners
`
`v.
`
`NEONODE SMARTPHONE LLC,
`
`Patent Owner
`
`____________
`
`Case IPR2021-00145
`U.S. Patent No. 8,095,993
`
`
`
`
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`
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`PATENT OWNER’S OPPOSITION TO SAMSUNG-PETITIONERS’
`MOTION TO EXPUNGE
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`005079-19/1448900 V1
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`i
`
`
`Patent Owner’s Opposition to
`Samsung-Petitioners’ Motion to Expunge
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`SAMSUNG ELECTRONICS CO. LTD., SAMSUNG ELECTRONICS
`
`AMERICA, INC. AND APPLE, INC.,
`
`Petitioners
`
`v.
`
`NEONODE SMARTPHONE LLC,
`
`Patent Owner
`
`____________
`
`Case IPR2021-00145
`U.S. Patent No. 8,095,993
`
`
`
`
`
`
`
`
`PATENT OWNER’S OPPOSITION TO SAMSUNG-PETITIONERS’
`MOTION TO EXPUNGE
`
`
`005079-19/1448900 V1
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`i
`
`
`
`IPR2021-00145
`Patent Owner’s Opposition to
`Samsung-Petitioners’ Motion to Expunge
`
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`I. ARGUMENT
`The Board filed a Final Written Decision (“FWD”) in this proceeding on
`
`June 15, 2022, finding all challenged claims of U.S. Patent No. 8,812,993 (“the
`
`‘993 patent”) unpatentable. The deadline for Patent Owner to appeal to the Federal
`
`Circuit from the Board’s FWD is August 17, 2022. Patent Owner intends to file a
`
`Notice of Appeal, in conformity with 35 U.S.C. §§ 141-42, 319, and 37 C.F.R. §
`
`90.1, et seq, on or before that date. Accordingly, Patent Owner opposes
`
`Samsung’s Motion to Expunge, in order to preserve the record for appeal.
`
`The documents that Samsung seeks to expunge constitute material evidence
`
`in support of Patent Owner’s argument that objective factors of non-obviousness
`
`demonstrate the patentability of the challenged claims. Patent Owner argued that
`
`Exhibit 2025, a Research & Development and License Agreement between
`
`Neonode Sweden AB (a predecessor in interest to the ‘993 Patent) and Samsung,
`
`pursuant to which the application to which the ‘993 Patent claims priority was
`
`specifically licensed to Samsung (“the Samsung Agreement”), constitutes highly
`
`probative evidence of industry respect for the ‘993 Patent. Paper 29, pp. 66-67;
`
`Paper 55, pp. 26-27. Samsung seeks to expunge Exhibit 2025 in its entirety. In
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`addition, Samsung seeks to expunge (i) the non-public version of a declaration
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`submitted as an exhibit to Patent Owner’s Response, (ii) the non-public version of
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`005079-19/1448900 V1
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`1
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`
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`IPR2021-00145
`Patent Owner’s Opposition to
`Samsung-Petitioners’ Motion to Expunge
`
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`Patent Owner’s Response, and (iii) the non-public version of Patent Owner’s Sur-
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`reply, all of which contain information concerning the Samsung license that has
`
`been redacted from the public versions of those documents. This information,
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`including the royalty rate that Samsung agreed to pay, is also probative of Patent
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`Owner’s argument that objective evidence demonstrates that the claims were not
`
`obvious.
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`In its FWD, issued June 15, 2022, the Board rejected Patent Owner’s
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`argument that the existence and terms of the Samsung Agreement demonstrated
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`industry respect for the claims of the ‘993 Patent, finding that Patent Owner had
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`not “produced evidence showing a nexus between the evidence of industry respect
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`or licensing and the features of the challenged claims.” Paper 68, pp. 49-50.
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`The documents that Samsung seeks to expunge contain information that is
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`relevant to Patent Owner’s argument, which it intends to assert on appeal, that the
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`Board’s determination concerning Patent Owner’s secondary considerations
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`argument is not supported by substantial evidence. Accordingly, the Board should
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`deny Samsung’s Motion to Expunge without prejudice to refiling at an appropriate
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`time, in order to preserve the record for appeal.
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`In Apple Inc. v. Uniloc 2017 LLC, IPR2019-01667, 2021 WL 1700859
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`(P.T.A.B. Apr. 29, 2021), Petitioner filed a motion to expunge, which the patent
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`005079-19/1448900 V1
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`IPR2021-00145
`Patent Owner’s Opposition to
`Samsung-Petitioners’ Motion to Expunge
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`owner opposed in order to keep the record intact pending any appeal. The Board
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`denied the motion without prejudice to refiling after final disposition of all appeals,
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`and entered an order maintaining the pertinent records under seal until, e.g., twenty
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`business days after final disposition of all appeals. Patent Owner would not
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`oppose entry of a similar order in this proceeding.
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`Dated: August 15, 2022
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`Respectfully submitted,
`
`
`
`
`
`
`
`/Robert M. Asher, #30,445/
`Robert M. Asher
`Reg. No. 30,445
`rasher@sunsteinlaw.com
`SUNSTEIN LLP
`100 High Street
`Boston, MA 02110-2321
`(617) 443-9292 (phone)
`(617) 443-0004 (fax)
`
`Philip J. Graves (pro hac vice)
`philipg@hbsslaw.com
`GRAVES & SHAW LLP
`355 S. Grand Ave., Suite 2450
`Los Angeles, CA 90071
`(213) 204-5101 (phone)
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`
`
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`005079-19/1448900 V1
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`IPR2021-00145
`Patent Owner’s Opposition to
`Samsung-Petitioners’ Motion to Expunge
`
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`CERTIFICATION OF COMPLIANCE
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`Pursuant to 37 C.F.R. § 42.24(d), it is certified that this document contains
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`494 words, excluding those portions identified in 37 C.F.R. § 42.24(a)(1), as
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`measured by the word-processing system used to prepare this Response.
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`Dated: August 15, 2022
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`Respectfully submitted,
`
`
`
`
`
`/Robert M. Asher, #30,445/
`Robert M. Asher
`Reg. No. 30,445
`rasher@sunsteinlaw.com
`SUNSTEIN LLP
`100 High Street
`Boston, MA 02110-2321
`(617) 443-9292 (phone)
`(617) 443-0004 (fax)
`
`Philip J. Graves (pro hac vice)
`philipg@hbsslaw.com
`GRAVES & SHAW LLP
`355 S. Grand Ave., Suite 2450
`Los Angeles, CA 90071
`(213) 204-5101 (phone)
`
`
`
`
`
`
`005079-19/1448900 V1
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`IPR2021-00145
`Patent Owner’s Opposition to
`Samsung-Petitioners’ Motion to Expunge
`
`
`CERTIFICATE OF SERVICE
`It is certified that on August 15, 2022, the foregoing document has been
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`served on Petitioners as provided in 37 C.F.R. § 42.6(e) via electronic mail at
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`IPR50095-0015P1@fr.com.
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`Dated: August 15, 2022
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`Respectfully submitted,
`
`
`
`
`
`
`
`/Robert M. Asher, #30,4345/
`Robert M. Asher
`Reg. No. 30,445
`rasher@sunsteinlaw.com
`SUNSTEIN LLP
`100 High Street
`Boston, MA 02110-2321
`(617) 443-9292 (phone)
`(617) 443-0004 (fax)
`
`
`
`005079-19/1448900 V1
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`5
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