`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`SAMSUNG ELECTRONICS CO., LTD.; AND
`SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioner
`
`v.
`
`SOLAS OLED, LTD.,
`Patent Owner
`
`____________________
`
`Case No. IPR2021-01254
`Patent No. 8,526,767
`____________________
`
`PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`Case No. IPR2021-01254
`Patent No. 8,526,767
`
`LIST OF EXHIBITS
`
`Ex-1006
`
`Ex-1001 U.S. Patent No. 8,526,767
`Ex-1002 Declaration of Dr. Benjamin Bederson
`Ex-1003
`Curriculum Vitae of Dr. Benjamin Bederson
`Ex-1004
`Prosecution History of U.S. Patent No. 8,526,767
`Ex-1005 U.S. Patent Publication No. 2009/0284478, filed on May 15, 2008
`(“Baltierra”)
`JP Patent Publication No. H09-231004, published on Sept. 5, 1997
`(“Katou”), including its certified translation
`Ex-1007 U.S. Patent Publication No. 2007/0176906, published on Aug. 2, 2007
`(“Warren”)
`Ex-1008 U.S. Patent Publication No. 2008/0036743, published on Feb. 14, 2008
`(“Westerman”)
`Intel 486 Datasheet, published April, 1989
`[INTENTIONALLY LEFT BLANK]
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`Claim Mapping Table
`
`Ex-1009
`Ex-1010
`Ex-1011
`Ex-1012
`Ex-1013
`Ex-1014
`Ex-1015
`Ex-1016
`Ex-1017
`Ex-1018
`Ex-1019
`Ex-1020
`
`
`
`i
`
`
`
`Case No. IPR2021-01254
`Patent No. 8,526,767
`
`Provisional Application No. 61/049,453
`Ex-1021
`Ex-1022 Margaret R. Minsky, Manipulating Simulated Objects with Real-World
`Gestures Using a Force and Position Sensitive Screen, SIGGRAPH ‘84
`Proceedings of the 11th Annual Conference on Computer Graphics and
`Interactive Techniques 195 (Hank Christiansen ed., 1984), DOI:
`http://dx.doi.org/10.1145/800031.808598
`Ex-1023 Apple Inc., iPhone Human Interface Guidelines (Dec. 2007)
`Ex-1024
`Benjamin B. Bederson & James D. Hollan, Pad++: A Zooming
`Graphical Interface for Exploring Alternate Interface Physics, UIST ‘94
`Proceedings of the 7th Annual ACM Symposium on User Interface
`Software and Technology 17 (1994), DOI:
`http://dx.doi.org/10.1145/192426.192435
`Ex-1025 David Rogers et al., Tossing Objects in a Desktop Environment,
`submitted to Conference on Human Factors in Computing Systems
`(1996)
`Ex-1026 David Rogers et al., Exemplar Figure of Tossing from Tossing Objects in
`a Desktop Environment, submitted to Conference on Human Factors in
`Computing Systems (1996)
`Benjamin B. Bederson, Fisheye Menus, UIST ‘00 Proceedings of ACM
`Conference on User Interface Software and Technology 217 (2000),
`DOI: 10.1145/354401.354782
`Ex-1028 Hilary Browne et al., Designing a Collaborative Finger Painting
`Application for Children, HCIL-2000-17, CS-TR-4184, UMIACS-TR-
`2000-66 (Sept. 2000), available at https://hcil.umd.edu/pub-perm-
`link/?id=2000-17
`Ex-1029 U.S. Patent No. 3,482,241, issued on Dec. 2, 1969 (“Johnson”)
`Ex-1030 U.S. Patent No. 4,136,291, issued on Jan. 23, 1979 (“Waldron”)
`Ex-1031 U.S. Patent No. 5,463,388, issued on Oct. 31, 1995 (“Boie”)
`Ex-1032 U.S. Patent Publication No. 2002/015024, published on Feb. 7, 2002
`(“Westerman 2002”)
`Ex-1033 William Buxton et al., Issues and Techniques in Touch-Sensitive Tablet
`
`Ex-1027
`
`
`
`ii
`
`
`
`Ex-1036
`
`Ex-1037
`
`Ex-1038
`
`Case No. IPR2021-01254
`Patent No. 8,526,767
`Input, ACM SIGGRAPH, Vol. 19, No. 3, 215-224 (Nov 3, 1985)
`Ex-1034 Dean Harris Rubine, The Automatic Recognition of Gestures, CMU-CS-
`91-202 (Dec. 1991)
`Ex-1035 Wayne Westerman, Hand Tracking, Finger Identification, and Chordic
`Manipulation on a Multi-Touch Surface (Spring 1999)
`Peri Tarr et al., Workshop on Multi-Dimensional Separation of Concerns
`in Software Engineering, ICSE ‘00 Proceedings of the 22nd International
`Conference on Software Engineering 809 (2000), DOI:
`https://doi.org/10.1145/337180.337827
`3Com Corp., PalmPilot™ Handbook (1997), available at
`https://www.pdm.com.co/Articulos%20y%20Guias/Palm/
`Guias%20en%20ingles/PalmPilot%20User%20Guide.pdf ?x81790
`Solas’s Preliminary Disclosure of Asserted Claims and Infringement
`Contentions to Samsung, dated July 12, 2021
`Ex-1039 Nov. 2, 2021 Letter from Sen. Thom Tillis (Ranking Member,
`Subcommittee on Intellectual Property) to Acting Director Hirshfeld
`“How reliable are trial dates relied on by the PTAB in the Fintiv
`analysis?” Dufresne, Kelley & Gordon (Oct. 29, 2021), available at
`https://www.1600ptab.com/2021/10/how-reliable-are-trial-dates-relied-
`on-by-the-ptab-in-the-fintiv-analysis/ (last visited Nov. 7, 2021)
`Ex-1041 Docket Navigator (“Judge [Gilstrap] Time to Milestones”)
`Ex-1042
`Case 2:21-cv-00054-JRG-RSP (Docket Control Order)
`Ex-1043
`Case 2:21-cv-00111-JRG-RSP (Docket Control Order)
`Ex-1044
`Case 2:21-cv-00126-JRG-RSP (Docket Control Order)
`Ex-1045
`Case 2:21-cv-00123-JRG (Docket Control Order)
`Ex-1046
`Case 2:21-cv-00137-JRG (Docket Control Order)
`Ex-1047
`Case 2:21-cv-00138-JRG (Docket Control Order)
`Ex-1048
`Petitioner’s Stipulation Letter to Patent Owner, dated Nov. 12, 2021
`
`Ex-1040
`
`
`
`iii
`
`
`
`Case No. IPR2021-01254
`Patent No. 8,526,767
`The Board should not exercise its discretion to deny institution. Patent
`
`Owner’s Preliminary Response (“POPR”) argument that all six Apple Inc. v.
`
`Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential)
`
`factors support denial misstates PTAB decisions, places undue support on the
`
`notional trial schedule, ignores decisions crediting petitioners for utmost diligence
`
`(filing one day after preliminary contentions), and fails to rebut the strong merits.
`
`Factor 1—whether there is a stay or one may be granted—is neutral.
`Where Petitioner has not yet requested a stay based solely on the filing of a
`
`petition, this fact does not weigh in favor of or against institution. Fintiv, Paper 15
`
`at 12 (informative). The POPR speculates what Judge Gilstrap might do if
`
`Samsung requests a stay or what might happen if the case is transferred to the
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`SDNY1—where Fintiv is irrelevant because invalidity is not at issue. POPR 2-5;
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`Ex-2004 (SDNY Amended Complaint). The PTAB routinely rejects such
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`speculation. See Nokia of Am. Corp. v. IPCom GmbH & Co. KG, IPR2021-00533,
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`Paper 10 at 8 (PTAB Aug. 12, 2021) (neutral). Finally, Judge Gilstrap has stayed
`
`trials pending ex parte examination. Pet. 67. The first factor is neutral.
`
`Factor 2—proximity of the trial—weighs somewhat against institution.
`As an initial matter, it is not a given this case will stay in Texas—it could be
`
`transferred to the SDNY. Assuming the current schedule, however, institution at its
`
`
`1 Samsung will update the Board of any changes in the status of the SDNY
`litigation in the coming months.
`
`1
`
`
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`Case No. IPR2021-01254
`Patent No. 8,526,767
`latest (Jan. 29, 2022) would be four months before the scheduled trial (after May
`
`23, 2022 jury selection). Ex-2003. At face value, this trial date would weigh
`
`against institution but not “strongly” as the POPR contends. See Samsung Elecs.
`
`Am., Inc. v. Snik LLC, IPR2020-01428, Paper 10 at 11 (PTAB Mar. 9, 2021)
`
`(instituting five months before trial date “weighs against”); PEAG LLC v. Varta
`
`Microbattery GmbH, IPR2020-01212, Paper 8 at 17 (PTAB Jan. 6, 2021) (same).
`
`And, this makes sense. As recently observed, the trial date is not necessarily
`
`reliable and should not be credited too heavily against other factors. See Ex-1039
`
`at 1 (Nov. 2, 2021 Letter from Sen. Tillis to Acting Director Hirshfeld: “[M]y
`
`concern relates to the PTAB’s application of the second of these [Fintiv] factors:
`
`the proximity of the court’s trial date …. Specifically, I am concerned that the
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`PTAB’s historical practice of crediting unrealistic trial schedules.” (emphases
`
`added)). A two-week old study authored in part by former USPTO Solicitor
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`Nathan Kelley found seven accurate trial dates out of 55 Fintiv denials surveyed.
`
`Ex-1040 at 2. In fact, out of 29 completed trials, 20 slipped by 3-6 months or
`
`more. Id. at 2-3 (3-6 month and 6-12 month data).
`
`
`
`Patent Owner contends that Judge Gilstrap “has consistently kept patent
`
`litigation cases on schedule for trial,” but cites an article about case volume, not
`
`adherence to schedules. POPR 6 (citing Ex-2007). According to Docket Navigator
`
`(Ex-1041), Judge Gilstrap averages 1 year, 10 months from complaint to trial,
`
`2
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`
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`Case No. IPR2021-01254
`Patent No. 8,526,767
`which is eight months longer than the 1 year, 2 months between the complaint and
`
`the notional trial date in this case—enough to put the final written decision around
`
`the time of trial.2 It is unsurprising that deadlines slip: besides this case, there are
`
`currently six others (including four patent cases) set for jury selection at: 9:00 AM
`
`on May 23, 2022. Exs-1042-47. Factor 2 weighs only somewhat in favor of denial.
`
`Factor 3—investment—weighs strongly in favor of institution.
`The POPR ignores Petitioner’s diligence entirely and instead places heavy
`
`emphasis on the least investment intensive aspects of the trial, ignoring that
`
`completion of expert reports, expert depositions, dispositive motions, and the trial
`
`itself, all are set to occur after even the latest possible institution decision. POPR
`
`7-8 (Table). And, while a Markman hearing is set for December 17, 2021, there is
`
`simply no indication when “orders related to the patent at issue in the petition,” are
`
`expected, which “weighs against exercising discretion to deny institution under
`
`NHK.” Fintiv, Paper 11 at 9-10. Finally, the POPR (at 3) states that the SDNY case
`
`is duplicative, but Fintiv is not implicated there because validity is not at issue.
`
`In addition, Petitioner’s diligence weighs strongly in favor of institution.
`
`
`2 Patent Owner analogizes this to the previous trial between the same parties in
`Solas OLED, Ltd. v. Samsung Display Co., 2:19-cv-00152-JRG (E.D. Tex.). There,
`trial was scheduled for October 5, 2020 (jury selection), but ultimately was not
`held until March 1, 2021. Meanwhile, the PTAB issued its final written decision on
`time, finding all challenged claims unpatentable that same month, on March 31.
`IPR2020-00140, Paper 48. The district court’s damages award is currently stayed
`in view of the fact that the PTAB found all claims unpatentable.
`
`3
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`
`
`Case No. IPR2021-01254
`Patent No. 8,526,767
`Petitioner filed one day after receiving preliminary contentions, less than four
`
`months after the original complaint, and more than eight months before the
`
`statutory deadline. See PEAG, Paper 8 at 19-20 (filing eight months before
`
`deadline weighs “strongly in favor” of no denial); Intel Corp. v. ParkerVision, Inc.,
`
`IPR2020-01265, Paper 10 at 13-14 (PTAB Jan. 28, 2021) (filing less than one
`
`month after preliminary contentions weighs “strongly against” denial).
`
`Factor 4—lack of overlap between the issues—weighs in favor of institution.
`To avoid overlap, Petitioner stipulates that if IPR is instituted, Petitioner will
`
`not pursue obviousness grounds against the asserted claims in the district court
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`using the primary references at issue. See Ex-1048. This stipulation is broader than
`
`the one the Board found persuasive in Sand Revolution II, LLC v. Cont’l
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`Intermodal Grp. – Trucking LLC, IPR2019-01393, Paper 24 at 10-11 (June 16,
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`2020) (informative) (stipulating to not asserting “the same grounds” of invalidity).
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`Moreover, Petitioner challenges all 14 claims of the ’767 Patent, whereas
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`Patent Owner asserts claims 1-3, 6, and 11-14 in the litigation. Efficiency and
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`integrity of the system are served by addressing all claims now. Patent Owner
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`could later assert additional claims here or in the SDNY (or against another party,
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`anywhere) after Petitioner’s time bar. See Illumina, Inc. v. Natera, Inc., IPR2019-
`
`01201, Paper 19 at 6-7 (PTAB Dec. 18, 2019) (distinguishing PayPal, Inc. v.
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`IOENGINE, LLC); Facebook, Inc. v. Blackberry Ltd., IPR2019-00899, Paper 15 at
`
`4
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`
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`Case No. IPR2021-01254
`Patent No. 8,526,767
`12 (PTAB Oct. 8, 2019). Factor 4 weighs in favor of institution.
`
`Factor 6—other circumstances including merits—weighs in favor of institution.
`Each of Baltierra and Westerman alone renders all independent claims
`
`obvious. As an example, Patent Owner argues that Baltierra’s monitoring state
`
`machine 122 is not a multi-touch state-machine that recognizes a multi-touch
`
`gesture. POPR 19-20. Baltierra expressly discloses, however, “when a user makes
`
`a pinching gesture, a user may contact … with his/her thumb before contacting …
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`with his/her forefinger.” Ex-1005 ¶33. As a result, separate contact state machines
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`120 for the thumb and forefinger change state. Id. “In response to these state
`
`changes and the number of contacts change, the monitoring state machine 122
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`changes the identifier module’s input mode.” Id. In other words, it “recognizes a
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`multi-touch gesture”—that is all the claims require. The multi-touch modes are
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`described in Table 2. Id. ¶¶39-41. The identifier module identifies the specific
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`gesture (e.g., pinch) and maps it to a function (e.g., zoom out). Id. ¶¶25-26. Even if
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`the claims require this last step, such a combination would have been obvious as
`
`mere integration of software elements such as taught by Katou. Pet. 31-32.
`
`
`
`In the balanced, holistic assessment of all factors, Fintiv, Paper 11 at 5-6,
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`including the merits, the petition should not be denied based on the trial date. See
`
`Snik, IPR2020-01428, Paper 10 at 11-13 (instituting in similar circumstances).
`
`5
`
`
`
`Dated: November 12, 2021
`
`
`
`
`
`
`
`
`Case No. IPR2021-01254
`Patent No. 8,526,767
`By: /s/ Ryan K. Yagura
`
`Ryan K.Yagura (Reg. No. 47,191)
`
`6
`
`
`
`CERTIFICATE OF SERVICE
`
`Case No. IPR2021-01254
`Patent No. 8,526,767
`
`
`
`The undersigned certifies pursuant to 37 C.F.R. § 42.6(e) and § 42.105 that
`
`on November 12, 2021, a true and correct copy of PETITIONER’S REPLY TO
`
`PATENT OWNER’S PRELIMINARY RESPONSE, together with Exs-1039-
`
`1048 filed therewith, was served in its entirety by filing these documents through
`
`the PTAB E2E System, and by email, on the counsel of record for the Patent
`
`Owner.
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`By: /s/ Ryan K. Yagura
`Ryan K. Yagura (Reg. No. 47,191)
`O’Melveny & Myers LLP
`400 South Hope Street, 18th Floor
`Los Angeles, CA 90071
`Telephone: (213) 430-6000
`Email: ryagura@omm.com
`
`Attorney for Petitioner Samsung
`Electronics Co., Ltd. and Samsung
`Electronics America, Inc.
`
`7
`
`
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