`
`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.
`
`
`Patent No. 9,240,009
`Filing Date: January 16, 2012
`Issue Date: January 19, 2016
`
`Inventors: Liang Seng Koh, Hsin Pan, and Xiangzhen Xie
`Title: MOBILE DEVICES FOR COMMERCE
`OVER UNSECURED NETWORKS
`
`
`__________________________________________________________________
`
`PATENT OWNER’S SUR-REPLY
`
`Case No. IPR2021-00981
`
`__________________________________________________________________
`
`
`
`
`
`
`
`
`
`
`IPR2021-00981
`PATENT NO. 9,240,009
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`Exhibit No. Description
`2001
`RFCyber Corp. v. Google LLC, et al., No. 2:20-cv-00274-JRG,
`Dkt. 63 (E.D. Tex. June 10, 2021)
`Samsung Notice of Intent to Serve Subpoenas on Nokia Corp.,
`served June 21, 2021
`Samsung Notice of Intent to Serve Subpoenas on EMV Co.,
`served June 21, 2021
`Samsung Notice of Intent to Serve Subpoenas on Global Platform
`Inc. served June 21, 2021
`Samsung Notice of Intent to Serve Subpoenas on NXP USA,
`Corp. served June 21, 2021
`Samsung’s Invalidity and Subject Matter Eligibility Contentions,
`served July 14, 2021
`RFCyber’s First Supplemental Objections and Responses to
`Defendants Samsung Electronics Co. Ltd. and Samsung
`Electronics America, Inc.’s First Set of Interrogatories (Nos. 1-
`14), dated September 14, 2021
`RFCyber Corp. v. Google LLC, et al., No. 2:20-cv-00274-JRG,
`Dkt. 85 (E.D. Tex. July 26, 2021)
`Proposed Protective Order
`A comparison of the proposed Protective Order to the default
`Protective Order
`Samsung Electronics Co., Ltd. and Samsung Electronics America,
`Inc.’s Preliminary Election of Asserted Prior Art in RFCyber
`Corp. v. Google LLC, et al., No. 2:20-cv-00274-JRG (E.D. Tex.
`Sept. 29, 2021)
`RFCyber Corp. v. Google LLC, et al., No. 2:20-cv-00274-JRG,
`Dkt. 130 (E.D. Tex. October 20, 2021).
`
`2008
`
`2009
`2010
`
`2011
`
`2012
`
`i
`
`
`
`
`I.
`
`INTRODUCTION
`Samsung Electronics America, Inc. and Samsung Electronics Co., Ltd.’s
`
`IPR2021-00981
`PATENT NO. 9,240,009
`
`(collectively, “Samsung” or “Petitioner”) Reply (Paper No. 8, “Reply”) does not set
`
`forth any new or valid reason to institute trial in this proceeding. As RFCyber
`
`explained in its POPR, all the Fintiv factors favor denying institution. Paper No. 6
`
`(“POPR”) at 15-23. Samsung’s arguments on Factors 4 and 6 do not change the
`
`balance.
`
`II.
`
`
`FACTOR 4 FAVORS DENYING INSTITUTION
`In the co-pending District Court Litigation, the Court ordered RFCyber and
`
`Samsung to reduce their asserted claims and elected prior art references,
`
`respectively, in advance of the March 2022 trial. RFCyber complied with the Court’s
`
`order and eventually elected to assert claims 14 and 16 of the ’009 Patent. Samsung
`
`continued to elect the same prior art references it asserts in the Petition. Ex. 2011 at
`
`4.
`
`
`
`Samsung now argues that the reduction in claims weighs in favor of instituting
`
`trial. Reply at 1-2. Samsung is wrong. The Board does not require complete overlap
`
`of claims. Indeed, there is substantial overlap between the limitations of claim 14
`
`and claim 1; thus there are essentially 14 claims in the Petition but not the District
`
`Court Litigation. The Board has found that this factor favored denial of institution
`
`even when there were 15 claims challenged in the Petition but not asserted in the
`
`1
`
`
`
`
`district court. Keyme, LLC v. The Hillman Grp., Inc., IPR2020-01485, Paper No. 11
`
`IPR2021-00981
`PATENT NO. 9,240,009
`
`(P.T.A.B. Mar. 31, 2021) (Finding this factor favored institution even when 15
`
`claims not at issue in district court were challenged in an IPR “because it would be
`
`inefficient to proceed and there is potential for conflicting decisions due to the
`
`substantial overlap between the claims and prior art issues.”). This factor, therefore,
`
`favors denying institution. Id.; see also Apple Inc. v. Fintiv, Inc., IPR202-00019,
`
`Paper No. 11 at 13 (P.T.A.B. Mar. 20, 2020) (precedential) (“[I]f a petition involves
`
`the same prior art challenges but challenges claims in addition to those that are
`
`challenged in the district court, it may still be inefficient to proceed because the
`
`district court may resolve validity of enough overlapping claims to resolve key issues
`
`in the petition.”).
`
`III. FACTOR 6 FAVORS DENYING INSTITUTION
`As RFCyber explained in its POPR, significant evidence supports its earlier
`
`conception with diligent reduction to practice that would antedate Petitioner’s
`
`reference, but because the evidence is substantially contained in RFCyber’s source
`
`code, the District Court’s trial—nine months earlier than the Final Written Decision
`
`in this proceeding—is the proper forum to resolve those issues. POPR at 22-23.
`
`Samsung raises meritless arguments that the Board, not the District Court, should
`
`consider the patent’s conception and reduction to practice.
`
`2
`
`
`
`Samsung first asks the Board to speculate that the Court will grant Samsung’s
`
`IPR2021-00981
`PATENT NO. 9,240,009
`
`
`
`motion to strike RFCyber’s conception date. Reply at 2. Samsung’s motion is ill-
`
`taken. As RFCyber explained in its opposition (Ex. 2012), the local patent rules in
`
`the Eastern District of Texas require a patentee to identify: “For any patent that
`
`claims priority to an earlier application, the priority date to which each asserted claim
`
`allegedly is entitled.” E.D. Tex. Local Patent Rule 3-1(e), available at
`
`http://www.txed.uscourts.gov/?q=patent-rules. As the District Court has previously
`
`held, “[T]he rule makes clear that the priority date provided pursuant to P.R. 3-1 is
`
`related to claiming priority to ‘an earlier application.’” EMG Tech., LLC v. Chrysler
`
`Grp., LLC, No. 6:12-CV-259, 2013 WL 12147662, at *1 (E.D. Tex. Jul. 3, 2013).
`
`Thus, the Court will deny Samsung’s motion. See Ex. 2012.
`
`Samsung cites Elbit Sys. Land and C4I Ltd. v. Hughes Network Sys., LLC, No.
`
`2:15-cv-00037, 2017 WL 2651618 (E.D. Tex. 2017), but that case involved a
`
`patentee changing its contended priority date nine days before the close of fact
`
`discovery. Id. at *9-10. As RFCyber explained in its opposition, it has consistently
`
`set forth a conception date of December 2004 since the first time Samsung asked for
`
`it, and Samsung itself delayed even raising the issue until near the end of fact
`
`discovery. Ex. 2012 at 1-5.
`
`Samsung next argues that “most (if not all) of Patent Owner’s alleged swear
`
`behind evidence in the [District Court] Litigation appears to be irrelevant and/or
`
`3
`
`
`
`
`unauthentic as the actual documents themselves were not provided.” Reply at 3.
`
`IPR2021-00981
`PATENT NO. 9,240,009
`
`Samsung’s basis for this argument is dubious at best. As Samsung is aware,1
`
`RFCyber made its source code available for inspection and specifically identified
`
`the relevant code files. Despite having ample opportunity, Samsung has declined to
`
`inspect RFCyber’s source code (the “actual documents”) and determine whether the
`
`evidence is relevant or authentic. And, of course, RFCyber could not submit its
`
`source code files with its POPR without losing the enhanced protections of the
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`District Court Protective Order. POPR at 22-23. Indeed, Samsung would not even
`
`agree to the entry of a Protective Order with an Attorneys’ Eyes Only provision,
`
`much less one with source code protections. See Paper No. 7 at 1.
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`Samsung next argues that RFCyber should have provided a full analysis to
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`“tie its alleged evidence of conception and reduction to practice to the claims of the
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`patent.” Reply at 3-4. But that analysis would require RFCyber to extensively cite
`
`and file its source code, and thus RFCyber could not provide such an analysis
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`without foregoing its source code protections. This issue is the exact reason why
`
`Factor 6 weighs against institution.
`
`
`1 At least two of Samsung’s counsel of record in this proceeding are also counsel
`
`of record in the District Court Litigation.
`
`4
`
`
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`Samsung next argues that “Exhibit 2007 itself shows Patent Owner cannot
`
`IPR2021-00981
`PATENT NO. 9,240,009
`
`
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`meet the due diligence standard.” Reply at 4. Samsung does not explain why, other
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`than to cite irrelevant cases. Patent Owner can meet the diligence standard through
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`corroborated testimony; indeed “diligence and its corroboration may be shown by a
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`variety of activities.” Brown v. Barbacid, 436 F.3d 1376, 1380 (Fed. Cir. 2006)
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`(reversing Board finding of insufficient diligence). RFCyber will provide
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`declarations from the inventors and then Samsung will doubtless seek to depose
`
`those declarants. Of course, Samsung has already taken or will have taken the
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`deposition of most inventors in the District Court Litigation before fact discovery
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`ends on November 1—another reason it is more efficient to litigate the issue in the
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`District Court. These many depositions will take substantial time—indeed, some of
`
`the witnesses live overseas—and go against the PTAB’s mandate to provide a
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`speedy resolution. Instead, the parties have already expended these resources in the
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`District Court Litigation.
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`Finally, Samsung glibly argues that parties can and have submitted
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`confidential information to the Board. Reply at 4-5. Samsung cites no case where
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`the Board imposed the same source code protections as in the District Court
`
`Litigation. See id. RFCyber should not be forced into a choice where it can either
`
`forego those protections or risk losing a valid patent to non-prior art.
`
`Accordingly, the Board should exercise its discretion to deny institution.
`
`5
`
`
`
`
`
`
`Dated: October 25, 2021
`
`
`
`IPR2021-00981
`PATENT NO. 9,240,009
`
`/Vincent J. Rubino, III /
`Vincent J. Rubino, III (Reg. No. 68,594)
`Lead Counsel for Patent Owner
`Fabricant LLP
`411 Theodore Fremd Avenue,
` Suite 206 South
`Rye, New York 10580
`Telephone: 212-257-5797
`Facsimile: 212-257-5796
`Email: vrubino@fabricantllp.com
`
`6
`
`
`
`
`
`CERTIFICATE OF SERVICE
`A copy of PATENT OWNER’S SURREPLY and EXHIBITS (Nos. 2011
`
`IPR2021-00981
`PATENT NO. 9,240,009
`
`through 2012) have been served on Petitioners’ counsel of record as follows:
`
`Heath J. Briggs
`Email: BriggsH@gtlaw.com
`Greenberg Traurig, LLP
`1144 15th St. Suite 3300
`Denver, CO 80202
`
`Andrew R. Sommer
`Email: SommerA@gtlaw.com
`Greenberg Traurig, LLP
`1750 Tysons Boulevard
`McLean, VA 22102
`
`Jeffrey R. Colin
`Email: ColinJ@gtlaw.com
`Allan A. Kassenoff
`Email: KassenoffA@gtlaw.com
`Greenberg Traurig, LLP
`200 Park Avenue
`New York, NY 10166
`
`Attorneys for Samsung America, Inc. and
`Samsung Electronics Co., Ltd.
`
`
`October 25, 2021
`
`
`
`By:
`
`/Vincent J. Rubino, III /
`Vincent J. Rubino, III (Reg. No. 68,594)
`Fabricant LLP
`411 Theodore Fremd Avenue
`Suite 206 South
`Rye, New York 10580
`Tel. 212-257-5797
`Fax. 212-257-5796
`
`
`
`
`
`
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