UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`SAMSUNG ELECTRONICS AMERICA, INC. and
`SAMSUNG ELECTRONICS CO., LTD.
`Petitioners,
`
`v.
`
`RFCYBER CORP.,
`Patent Owner.
`
`
`
`U.S. Patent No. 9,240,009 to Koh et al.
`IPR Case No. IPR2021-00981
`
`
`
`
`
`
`
`REPLY TO PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`SAMSUNG ELECTRONICS AMERICA, INC. and
`SAMSUNG ELECTRONICS CO., LTD.
`Petitioners,
`
`v.
`
`RFCYBER CORP.,
`Patent Owner.
`
`
`
`U.S. Patent No. 9,240,009 to Koh et al.
`IPR Case No. IPR2021-00981
`
`
`
`
`
`
`
`REPLY TO PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`PETITIONERS’ EXHIBIT LIST
`
`
`Exhibit No. Description
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`U.S. Patent No. U.S. 9,240,009 (the “’009 patent”)
`
`File History of U.S. Patent No. 8,118,218 (“’218 FH”)
`
`Declaration of Gerald Smith Regarding Invalidity of U.S. Patent
`No. 8,118,218
`
`U.S. Patent Application Publication No. 2006/0165060 (“Dua”)
`
`Defendants’ Contingent Election Regarding Invalidity Defenses,
`RFCyber Corp. v. Samsung Electronics Co., Ltd. et al., 2:20-cv-
`00335 (E.D. Tex.) (Dkt. 60) (filed June 8, 2021).
`
`GlobalPlatform Card Specification Version 2.1.1 (March 2003)
`(“GlobalPlatform” or “GP”)
`
`File History of U.S. Patent No. 8,448,855 (“’855 FH”)
`
`Smart Card Handbook Third Edition, by Wolfgang Rankl and
`Wolfgang Effing (2003)
`
`Common Electronic Purse Specifications, Technical
`Specification Version 2.3 (March 2001)
`
`SmartMX, P5CD009 Secure Dual Interface PKI Smart Card
`Controller, Short Form Specification (Rev. 1.0 – 2004 March 26)
`
`SmartMX, P5CD036 Secure Dual Interface PKI Smart Card
`Controller, Short Form Specification (Rev. 1.0 – 2004 March 26)
`
`SmartMX, P5CT072 Secure Dual Interface PKI Smart Card
`Controller, Short Form Specification (Rev. 1.3 – 4 October
`2004)
`
`Mifare proX, P8RF6016 Secure Dual Interface Smart Card IC,
`Short Form Specification (Revision 1.0 – November 2003)
`
`ii
`
`
`
`Exhibit No. Description
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`ETSI TS 102 226 V6.12.0 (2005-09), “Smart cards; Remote
`APDU structure for UICC based applications (Release 6)”
`
`Wenninger et al., “The Electronic Purse,” in Current Issues in
`Economics and Finance, Volume 1, Number 1, Federal Reserve
`Bank of New York (April 1995).
`
`RESERVED
`
`Excerpt from Cambridge Business English Dictionary
`
`U.S. Patent No. 6,983,882
`
`RFID Handbook – Radio-Frequency Identification Fundamentals
`and Applications, Klaus Finkenzeller, John Wiley & Son, Ltd.
`(1999)
`
`RESERVED
`
`ISO/IEC 7816-4:1995 Interindustry commands for interchange
`(May 1995)
`
`U.S. Government General Services Administration (GSA) Smart
`Card Handbook (FEB 2004)
`
`“Here Comes The Wallet Phone,” IEEE Spectrum, November
`2005
`
`File History of U.S. Patent No. 9,189,787 (“’787 FH”)
`
`RESERVED
`
`RFC 3261, SIP: Session Initiation Protocol, The Internet Society
`(June 2002).
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`iii
`
`
`
`Exhibit No. Description
`
`1030
`
`1031
`
`1032
`
`1033
`
`1034
`
`1035
`
`1036
`
`1037
`
`1038
`
`1039
`
`1040
`
`1041
`
`1042
`
`1043
`
`1044
`
`1045
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`RESERVED
`
`U.S. Patent Application Publication No. 2006/0196931
`
`Declaration of Sylvia Hall-Ellis, Ph.D.
`
`U.S. Patent Application Publication No. 2006/0174352
`(“Thibadeau”)
`
`File history of U.S. Patent No. 9,240,009 (“’009 FH”)
`
`U.S. Patent No. 9,189,787
`
`Plaintiff RFCyber’s Election of Asserted Claims to Defendants
`Google LLC, Samsung Electronics Co. Ltd., and Samsung
`Electronics America, Inc., Case Nos. 2:20-cv-00274-JRG and
`2:20-cv-00335-JRG, dated September 15, 2021
`
`Plaintiff RFCyber’s Final Election of Asserted Claims to
`Defendants Samsung Electronics Co. Ltd., and Samsung
`Electronics America, Inc., Case Nos. 2:20-cv-00274-JRG and
`2:20-cv-00335-JRG, dated October 11, 2021
`
`1046
`
`Defendant Samsung Electronics Co. Ltd.’s, and Samsung
`Electronics America, Inc.’s Motion to Strike the Priority Date
`
`iv
`
`
`
`Exhibit No. Description
`Set Forth in Plaintiff’s Interrogatory Responses, Case Nos. 2:20-
`cv-00274-JRG and 2:20-cv-00335-JRG, dated October 6, 2021
`
`
`
`v
`
`
`
`Patent No. 9,240,009
`IPR2021-00981
`Pursuant to the Board’s email of October 12, 2021, Petitioners submit this
`
` Reply to Patent Owner’s Preliminary Response
`
`Reply to Patent Owner’s Preliminary Response (“POPR”), which Reply is “limited
`
`to (i) discussing any developments that have occurred in the district court litigation
`
`after the petitions were filed impacting Fintiv factor four, and (ii) discussing Patent
`
`Owner’s argument under Fintiv factor 6 that its conception and reduction-to-practice
`
`evidence is better evaluated by the district court than the Board.”
`
`I. FINTIV - FACTOR FOUR
`The Petition challenges all claims (1-17) of the ’009 patent. (Petition at
`
`§§V.B, XI.). The POPR asserts that the claims at issue in this IPR are “exactly the
`
`same” as those in the corresponding E.D. Tex. litigation (“the Litigation”). (POPR
`
`at §VII.D.) This is plainly false and is a misrepresentation of a material fact.
`
`Specifically, the POPR was filed on September 21, 2021. But, on September
`
`15, Patent Owner had already reduced the asserted claims in the Litigation to only
`
`claims 1, 6, 7, 10, 14, and 16. (Ex-1044.) Moreover, on October 11, Patent Owner
`
`further reduced the number of asserted claims in the Litigation, leaving only claims
`
`14 and 16. (Ex-1045.) Thus, only two claims are at issue in the Litigation, whereas
`
`all seventeen claims of the patent are at issue in this IPR. Such a minor overlap
`
`weighs against exercising discretion to deny under §325(d). Apple Inc. v. Fintiv,
`
`Inc., IPR2020-00019, Paper 11 at 12-13 (PTAB Mar. 20, 2020) (precedential) (“[I]f
`
`the petition includes materially different grounds, arguments, and/or evidence than
`
`
`
`1
`
`
`
`Patent No. 9,240,009
`IPR2021-00981
`those presented in the district court, this fact has tended to weigh against exercising
`
` Reply to Patent Owner’s Preliminary Response
`
`discretion to deny institution under NHK.”) This is especially true in view of the
`
`Sotera stipulation filed by Petitioners in this IPR (Ex-1005), which “weighs strongly
`
`against exercising discretion to deny.” NXP Semiconductors N.V. v. Bell
`
`Semiconductor, IPR2021-00966, Paper 9 at 13-14 (PTAB October 8, 2021), citing
`
`Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB
`
`Dec. 1, 2020) (precedential as to § II.A); see also Bose Corp. v. Koss Corp.,
`
`IPR2021-00612, Paper 15 at 26 (PTAB Sept. 15, 2021) (finding Fintiv factor four
`
`weighed “strongly against” exercising discretion to deny institution when Patent
`
`Owner provided no evidence of overlap).
`
`II. FINTIV - FACTOR SIX
`The POPR argues that Fintiv factor six weighs in favor of denying institution
`
`because it “has a strong case to antedate the primary Dua reference,” citing the
`
`presence of allegedly antedating source code. (POPR at §VII.F.) Patent Owner’s
`
`swear behind case is speculative at best.
`
`First, Patent Owner failed to timely present its priority date and alleged swear
`
`behind evidence in the Litigation. Accordingly, Petitioners have filed a Motion to
`
`Strike the priority date arguments made by Patent Owner in the Litigation and
`
`Petitioners fully expect the District Court to grant its Motion. (Ex-1046.) In fact,
`
`the Eastern District of Texas has previously addressed a similar situation in Elbit
`
`
`
`2
`
`
`
`Patent No. 9,240,009
`IPR2021-00981
`Sys. Land v. Hughes Network Sys., LLC, where it granted the defendant’s motion to
`
` Reply to Patent Owner’s Preliminary Response
`
`exclude the plaintiff’s late disclosure of an earlier priority date after the defendant
`
`had “justifiably developed invalidity positions under the assumption that the . . .
`
`patent [was] entitled to” the priority date disclosed in the plaintiff’s Local Patent
`
`Rule 3-1 contentions. If Petitioners’ Motion is granted, this forum is the only forum
`
`in which Patent Owner can present its alleged swear behind evidence. For this
`
`reason alone, Patent Owner’s Fintiv swear behind argument should be rejected.
`
`Indeed, Fintiv actual counsels in favor of instituting because no other forum will be
`
`able to evaluate Patent Owner’s swear behind case.
`
`Second, and irrespective of whether Petitioners’ Motion in the Litigation is
`
`granted, most (if not all) of Patent Owner’s alleged swear behind evidence in the
`
`Litigation appears to be irrelevant and/or unauthentic as the actual documents
`
`themselves were not provided. Patent Owner cannot achieve an effective swear
`
`behind with such defective evidence. In re NTP, Inc., 654 F.3d 1279, 1291 (Fed.
`
`Cir. 2011).
`
`Third, Patent Owner fails to specifically tie its alleged evidence of conception
`
`and reduction to practice to the claims of the patent. (See generally Ex-2007.)
`
`Again, Patent Owner cannot achieve an effective swear behind if the evidence is not
`
`specifically tied to the claims. “To demonstrate an actual reduction to practice, the
`
`applicant must have … constructed an embodiment or performed a process that met
`
`
`
`3
`
`
`
`Patent No. 9,240,009
`IPR2021-00981
`all the limitations of the claim.” In re Steed, 802 F.3d 1311, 1318 (Fed. Cir. 2015).
`
` Reply to Patent Owner’s Preliminary Response
`
`Fourth, Patent Owner admits several months elapsed between the alleged
`
`conception date and the alleged reduction to practice date. (Ex-2007 at 9.) Patent
`
`Owner must prove diligence throughout this entire period. In re Mulder, 716 F.2d
`
`1542, 1545 (Fed. Cir. 1983) (affirming the Board’s refusal to accept declarations as
`
`meeting the requirements of Rule 131 when the declarations contained no evidence
`
`showing diligence during the two-day period between the effective date of the prior
`
`art and the Appellants’ filing date). Moreover, an “express recital of due diligence”
`
`without showing any facts to support such a recital is mere pleading, which is
`
`insufficient to establish diligence. Ex parte Daniels, Appeal 2008-0568 (PTAB May
`
`9, 2009) (Informative), citing In re Borokowski, 505 F.2d 713, 718 (CCPA 1974)
`
`and In re Harry, 333 F.2d 920, 922 (CCPA 1964). Even assuming arguendo Patent
`
`Owner’s evidence is relevant and authentic (which Petitioners dispute), Exhibit 2007
`
`itself shows Patent Owner cannot meet the due diligence standard. (Ex-2007 at 16-
`
`27 (showing multiple gaps in diligent activity).)
`
`Finally, the POPR alleges that the PTAB is not equipped to deal with its
`
`alleged source code evidence. (POPR at §VII.F.) This is plainly false. Rule 42.54
`
`gives the PTAB wide latitude to control the discovery and dissemination of
`
`confidential information including source code. (37 C.F.R. §42.54.) See e.g.,
`
`Samsung Electronics Co., Ltd. v. NVIDIA Corp., IPR2015-01070, Paper 33 (PTAB
`
`
`
`4
`
`
`
`Patent No. 9,240,009
`IPR2021-00981
`March 24, 2016 2015) (granting motion to seal confidential source code documents).
`
` Reply to Patent Owner’s Preliminary Response
`
`Moreover, for nearly 10-years now, parties have submitted confidential information
`
`in AIA trials and there has never been a reported breach of the PTAB’s confidential
`
`systems to Petitioners’ counsel’s knowledge. Additionally, for decades, the PTAB
`
`has had procedures in place to deal with trade secret and protective order
`
`information. (See MPEP § 724.) There is no evidence that Patent Owner’s trade
`
`secret evidence would be exposed or jeopardized in this proceeding.
`
`Nonetheless, to allay any concerns, Petitioners will not oppose any motion by
`
`Patent Owner to have its alleged trade secret information submitted to the Board in
`
`paper form only (i.e., non-electronic form) so long as Petitioners’ lead counsel also
`
`receives the same paper copy.
`
`For the above reasons, Patent Owner’s alleged swear behind evidence does
`
`not sway Fintiv factor six in its favor. If anything, it sways in Petitioners’ favor as
`
`the PTAB may ultimately be the only forum that can hear Patent Owner’s alleged
`
`priority date challenge. And even if Petitioners’ Motion from the Litigation is
`
`denied, Patent Owner’s swear behind case is speculative, making this factor neutral.
`
`Snap, Inc. v. SRK Technology LLC, IPR2020-00820, Paper 15 at 8-9 (Oct. 21, 2020)
`
`(precedential as to § II.A) (finding “unfounded speculation” as to how the District
`
`Court might proceed did not weigh in favor of a discretionarily denying).
`
`
`
`
`
`
`
`5
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`
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`Patent No. 9,240,009
`IPR2021-00981
`
`
`Date: October 18, 2021
`
`
`
`
`
` Reply to Patent Owner’s Preliminary Response
`
`Respectfully submitted,
`
`GREENBERG TRAURIG, LLP
`
`
`By: /s/ Heath J. Briggs
`
`
`Heath J. Briggs (Reg. No. 54,919)
`1144 15th St. Suite 3300
`Denver, CO 80202
`Telephone: 303-685-7418
`Facsimile: 720-904-6118
`BriggsH@gtlaw.com
`
`Counsel for Petitioners
`
`
`
`6
`
`
`
`Patent No. 9,240,009
`IPR2021-00981
`
` Reply to Patent Owner’s Preliminary Response
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a true and correct copy of this Reply and any
`
`new exhibits have been electronically served on the Patent Owner by emailing the
`
`following addresses:
`
` plambrianakos@fabricantllp.com
`
` vrubino@fabricantllp.com
`
` eiturralde@fabricantllp.com
`
` rcowell@fabricantllp.com
`
` ptab@fabricantllp.com
`
`
`
`Date: October 18, 2021
`
`
`
`Respectfully submitted,
`
`GREENBERG TRAURIG, LLP
`
`By: /s/ Heath J. Briggs
`
`
`Heath J. Briggs (Reg. No. 54,919)
`1144 15th St. Suite 3300
`Denver, CO 80202
`Telephone: 303-685-7418
`Facsimile: 720-904-6118
`BriggsH@gtlaw.com
`
`Counsel for Petitioners
`
`
`
`1
`
`
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