UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`SAMSUNG ELECTRONICS CO., LTD.; AND
`SAMSUNG. ELECTRONICS AMERICA, INC.,
`Petitioners,
`
`v.
`
`SOLAS OLED, LTD.,
`Patent Owner
`____________
`
`Case IPR2021-01254
`U.S. Patent No. 8,526,767
`____________
`
`
`PATENT OWNER’S PRELIMINARY
`RESPONSE SUR-REPLY
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`
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`
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`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.; AND
`SAMSUNG. ELECTRONICS AMERICA, INC.,
`Petitioners,
`
`v.
`
`SOLAS OLED, LTD.,
`Patent Owner
`____________
`
`Case IPR2021-01254
`U.S. Patent No. 8,526,767
`____________
`
`
`PATENT OWNER’S PRELIMINARY
`RESPONSE SUR-REPLY
`
`
`
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`
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`PATENT OWNER’S EXHIBIT LIST
`
`Description
`Ex.
`2001 Complaint, Solas OLED Ltd. v. Samsung Electronics Co., Ltd. et al., Case
`No. 2:21-cv-00105-JRG (“EDTex case”) Dkt. 1, (Mar. 22, 2021)
`2002 Amended Complaint, EDTex case, Dkt. 11 (Apr. 16, 2021)
`2003 Docket Control Order, EDTex case, Dkt. 45 (Aug. 16, 2021)
`2004 Amended Complaint, Samsung Electronics Co., Ltd. et al. v. Solas OLED
`Ltd. et al., Case No. 1:21-cv-05205-LGS (“SDNY case”), Dkt. 35
`(S.D.N.Y. Aug. 23, 2021)
`2005 Order Denying Stay Pending IPR, Solas OLED Ltd. v. Samsung Display
`Co. et al., No. 2:19-CV-00152-JRG, Dkt. 133, 2020 WL 4040716, at *1
`(July 17, 2020)
`2006 Scheduling Order, SDNY case, Dkt. 44 (Sept. 2, 2021)
`2007 Tiffany Hu, Gilstrap Holds Top Spot for Pandemic-Era Jury Patent Trials,
`LAW360 INTELLECTUAL PROPERTY (Oct. 26, 2021), available online at
`https://www.law360.com/articles/1434133/gilstrap-holds-top-spot-for-
`pandemic-era-jury-patent-trials
`Joint Claim Construction and Prehearing Statement, EDTex case, Dkt. 62
`(Oct. 23, 2021).
`2009 Preliminary Infringement Contentions and Claim Chart, EDTex case, (July
`12, 2021)
`Invalidity Contentions Cover Pleading, EDTex case (Sept. 24, 2021)
`Invalidity Claim Chart for Baltierra, EDTex case
`Invalidity Claim Chart for Katou, EDTex case
`Invalidity Claim Chart for Warren, EDTex case
`Invalidity Claim Chart for Westerman, EDTex case
`
`2010
`2011
`2012
`2013
`2014
`
`2008
`
`
`
`
`
`i
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`
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`IPR2021-01254 (’767 PATENT)
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`POPR SUR-REPLY
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`The ’767 patent is the only patent asserted in the EDTex case, which is
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`scheduled for trial eight months before the IPR FWD deadline. In these
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`circumstances, having the same parties litigate invalidity of the same patent in a
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`separate IPR after trial is what the Fintiv factors were designed to prevent. It would
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`create the risk of duplicative work and conflicting decisions, as well as be an
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`inefficient use the Board’s finite resources. Institution should be denied.
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`Fintiv Factor 1: As Patent Owner explained, Judge Gilstrap has not granted
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`a stay and no evidence exists that one will be granted. POPR at 2–5. Petitioners offer
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`no evidence in reply; they don’t even state they intend to move for a stay. Nor do
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`Petitioners dispute that Judge Gilstrap is unlikely to stay pending IPR based on the
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`specific facts and timing of the EDTex case. Id. at 4–5. Petitioners’ merely assert
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`that “Judge Gilstrap has stayed trials pending ex parte reexamination.” Reply at 1.
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`This is no evidence at all. Factor 1 weighs against institution.
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`Fintiv Factors 2 & 5: Petitioners don’t dispute that the parties are the same
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`as the EDTex case, so Factor 5 weighs against institution. As to Factor 2, Petitioners
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`concede that the EDTex trial date (eight months before the FWD deadline) “would
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`weigh against institution.” Id. at 2. But Petitioners try to cast doubt on Judge
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`Gilstrap’s trial schedule, primarily relying on inapposite and unreliable evidence.
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`Sen. Tillis’s letter was not about Judge Gilstrap but rather focused on Judge
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`Albright and the allegedly “inaccurate trial dates set by the Waco Division.” Ex.
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`
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`1
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`
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`IPR2021-01254 (’767 PATENT)
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`POPR SUR-REPLY
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`1039 at 1, 3. And the blog post (Ex. 1040) surveyed nationwide Fintiv denials
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`between May–Oct. 2020, in the midst of COVID-19 concerns and court closures.
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`Still, excluding terminated cases, it found that 72% (26 of 36) of trials did occur
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`within six months of the predicted date, even during the pandemic. Id. at 2–3.
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`The issue here is whether the EDTex trial is likely to be postponed. It is not.
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`Judge Gilstrap conducted 16 jury trials from Aug. 2020–Sept. 2021, which is strong
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`evidence that the EDTex case will go to trial in May 2022 or shortly thereafter. Ex.
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`2007. And even if trial were delayed by three months, it would still occur five months
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`before the FWD deadline. Factor 2 weighs strongly against institution.
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`Fintiv Factor 3: The entire EDTex case is devoted to the ’767 patent and the
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`parties will complete claim construction, fact discovery, and opening expert reports
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`by Jan. 12, 2022—weeks before the institution deadline. Petitioners ask the Board
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`to ignore these investments because they were reasonably diligent in filing this IPR.
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`This is unsupported and contrary to how the Board has applied the Fintiv factors.
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`Two recent Board decisions are particularly instructive.
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`In Regeneron Pharm., Inc., v. Novartis Pharma AG, et al., the petitioner filed
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`its petition less than a month after the ITC complaint was filed and before ITC
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`proceedings were instituted. IPR2020-01317, Paper 15 at 14 (PTAB Jan. 15, 2021).
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`Nevertheless, the Board gave petitioner’s diligence no weight under Factor 2 and
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`only limited weight under Factor 3. Id. at 15, 17. Despite petitioner’s greater
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`
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`2
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`IPR2021-01254 (’767 PATENT)
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`POPR SUR-REPLY
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`diligence compared to Samsung’s here (one month after complaint compared to four
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`months after), the Board found that Factor 3 “weighs somewhat” against institution.1
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`In Philip Morris Prods., S.A. v. RAI Strategic Holdings, Inc., the petitioner
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`exercised “exceptional” diligence in filing an IPR less than a month after the district
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`court complaint. IPR2020-00921, Paper 9 at 17–18 (PTAB Nov. 16, 2020). And
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`because the parties’ district court investments were modest (not yet exchanging
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`invalidity contentions), the Board found that Factor 3 weighed in favor of institution.
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`Id. Further, unlike here, the Board found that the petition was “particularly strong”
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`and so Factor 6 also weighed in favor of institution. Id. at 26–27.
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`Nevertheless, the Board ultimately denied institution under the Fintiv factors,
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`giving particular weight to the trial date set for eight to nine months before the FWD
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`deadline. Id. at 28–29. The Board found that Factor 2 outweighed other several
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`factors that favored institution, including petitioner’s diligence in filing the petition
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`and the strength of the petition on the merits. Id. The same outcome applies here,
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`except that most of the Fintiv factors here present a stronger case for discretionary
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`denial than the factors did in Philip Morris.
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`1 Id. at 17 (“We acknowledge Petitioner’s diligence in bringing this IPR proceeding,
`but the investment by the parties and the ITC in the parallel proceeding outweighs
`the effort expended so far in this proceeding. . . . [T]he parties, the ALJ, and the staff
`of the ITC have expended considerable resources to date on the ITC investigation,
`in the form of addressing claim construction, completing substantial fact discovery,
`and preparing for expert reports and discovery.”).
`
`
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`3
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`IPR2021-01254 (’767 PATENT)
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`POPR SUR-REPLY
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`Fintiv Factor 4: Petitioners stipulate that if this IPR is instituted, they will not
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`assert obviousness in the EDTex case based on the IPR’s Baltierra and Westerman
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`primary references. Reply at 4. But Petitioners reserve the right to assert Baltierra
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`and Westerman for anticipation, as they’ve done in their invalidity contentions. Exs.
`
`2011 at 1, 2014 at 1. Petitioners have also asserted obviousness based on the Katou
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`and Warren secondary references combined with other references. Thus, all four
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`references at issue in this IPR will continue to be litigated in EDTex.
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`Petitioner’ stipulation is similar to the one in Sand and so only “mitigates to
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`some degree” concerns about duplicative issues. IPR2019-01393, Paper 24 at 12, n.
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`5 (PTAB June 16, 2020) (a broader stipulation would “better address regarding
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`duplicative efforts and potentially conflicting decisions in a much more substantial
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`way” and “help ensure that an IPR functions as true alternative to litigation”).
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`Petitioners also don’t dispute that the additional dependent claims challenged
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`in this IPR are similar to the independent claims at issue in EDTex and implicate the
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`same issues. POPR at 13; Fintiv Order at 13 & n.25 (similarity of non-overlapping
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`claims weigh against institution) (citing Next Caller, IPR2019-00961, Paper 10 at
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`14 (denying institution because “petitioner does not argue that that the non-
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`overlapping claims differ significantly in some way or argue that it would be harmed
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`if institution of the non-overlapping claims is denied”)).
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`
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`4
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`IPR2021-01254 (’767 PATENT)
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`POPR SUR-REPLY
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`Further, Patent Owner is not asserting the additional dependent claims against
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`Petitioners in the EDTex case or SDNY cases. Nor is Patent Owner asserting them
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`other defendants, who in any event would be capable of filing their own IPRs.
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`Fintiv Factor 6: The Petition suffers from several weaknesses that support
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`discretionary denial, as well as denial on the merits. POPR at 16–26. In reply,
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`Petitioners concede that Baltierra’s monitoring state machine 122 (MSM) does not
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`“identif[y] the specific gesture (e.g., pinch).” Reply at 5. Rather, the MSM merely
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`changes an “input mode” selected from Table 2, such as “Zero Mode” or “Single-
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`Input Mode.” Ex. 1005 ¶¶ 32, 41. Petitioners now assert that Baltierra’s switching
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`input modes constitutes recognition of a multi-touch gesture. Reply at 5.
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`This theory has no basis in either the Petition, the ’767 patent, or the evidence.
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`For example, Petitioners’ expert gives examples of gestures, including “drag to pan,”
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`“pinch to zoom,” “tap,” and “double tap.” Ex. 1002 ¶¶ 41, 46, 57. And Baltierra
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`itself contains a list of similar “exemplary gestures.” Ex. 1005 ¶ 26, Table 1. But the
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`Petition never shows that Baltierra’s MSM, as opposed to the identifier module, ever
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`identifies or recognizes a gesture. Indeed, there is no evidence in the record that
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`Baltierra’s switching to Single-Input Mode is, on its own, a “gesture.”
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`And the Petition fails explain why a POSITA would be motivated to modify
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`Baltierra’s MSM to add additional gesture recognition functionality, especially
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`where Baltierra already uses different modules to recognize gestures. POPR at 21.
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`5
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`IPR2021-01254 (’767 PATENT)
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`POPR SUR-REPLY
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`Respectfully submitted,
`
`/s/ Neil A. Rubin
` Neil A. Rubin (Reg. No. 67,030)
`Philip Wang (Reg. No. 74,621)
` RUSS AUGUST & KABAT
` 12424 Wilshire Blvd., 12th Fl.
` Los Angeles, CA 90025
` Phone: (310) 826-7474
` Fax: (310) 826-6991
` pwang@raklaw.com
` nrubin@raklaw.com
` rak_solas@raklaw.com
`
`Counsel for Patent Owner
`
`
`Date: November 23, 2021
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`
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`6
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`IPR2021-01254 (’767 PATENT)
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`
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`POPR SUR-REPLY
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`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e)(1))
`
`The undersigned hereby certifies that the above document was served on
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`November 23, 2021, by filing this document through the Patent Trial and Appeal
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`Board End to End system as well as delivering a copy via email upon the following
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`attorneys of record for the Petitioners:
`
`Ryan Yagura (Reg. No. 47,191)
`O’Melveny & Myers LLP
`400 South Hope Street, 18th Floor Los
`Angeles, CA 90071
`Telephone: (213) 430-6000
`E-Mail: ryagura@omm.com
`
`Caitlin P. Hogan (Reg. No. 61,515)
`O’Melveny & Myers LLP
`Times Square Tower 7 Times Square
`New York, NY 10036
`Telephone: (212) 326-2000
`E-Mail: chogan@omm.com
`
`
`
`
`Date: November 23, 2021
`
`
`Nicholas J. Whilt (Reg. No. 72,081)
`O’Melveny & Myers LLP
`400 South Hope Street, 18th Floor Los
`Angeles, CA 90071
`Telephone: (213) 430-6000
`E-Mail: nwhilt@omm.com
`
`
`
`/s/ Neil A. Rubin
`Neil A. Rubin (Reg. No. 67,030)
`RUSS AUGUST & KABAT
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`(310) 826-7474
`
`Counsel for Patent Owner
`
`
`
`
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