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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS CO., LTD. et al,
`Petitioner,
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`v.
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`MEMORYWEB, LLC,
`Patent Owner.
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`Case IPR2022-00221
`Patent 10,423,658
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`PETITIONER’S REPLY TO
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`Proceeding No.: IPR2022-00221
`Attorney Docket: 39843-0116IP1
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`EXHIBITS
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`SAMSUNG-1001 U.S. Patent No. 10,423,658 to Christopher J. Desmond, et al.
`(“the ’658 patent”)
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`SAMSUNG-1002 Excerpts from the Prosecution History of the ’658 Patent (“the
`Prosecution History”)
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`SAMSUNG-1003 Declaration of Dr. Philip Greenspun
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`SAMSUNG-1004 Curriculum Vitae of Dr. Philip Greenspun
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`SAMSUNG-1005 U.S. Patent App. Pub. No. 2011/0122153 A1 (“Okamura”)
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`SAMSUNG-1006 U.S. Patent App. Pub. No. 2010/0058212 A1 (“Belitz”)
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`SAMSUNG-1007 U.S. Patent App. Pub. No. 2006/0206264 A1 (“Rasmussen”)
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`SAMSUNG 1008-SAMSUNG 1019 RESERVED
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`SAMSUNG-1020 Tim Grey, Adobe Photoshop Lightroom Workflow: The Digital
`Photographer's Guide (2007)
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`SAMSUNG-1021 U.S. Patent App. Pub. No. 2011/0074811 A1 (“Hanson”)
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`SAMSUNG-1022 Stephen Shankland, “What’s the best Web site for geotagged
`photos?,” CNET (Mar. 18, 2009), available at
`https://www.cnet.com/tech/computing/whats-the-best-web-site-
`for-geotagged-photos/
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`SAMSUNG-1023 Panoramio, “Embedding a Panoramio map into your web page”
`(Archive.org: Mar. 28, 2010), available at
`https://web.archive.org/web/20100328215828/http://www.pano
`ramio.com/help/embedding
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`SAMSUNG-1024 Shu-Wai Chow, PHP Web 2.0 Mashup Projects, Packt
`Publishing (2007)
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`Proceeding No.: IPR2022-00221
`Attorney Docket: 39843-0116IP1
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`SAMSUNG-1025 Complaint for Declaratory Judgment, MyHeritage (USA), Inc.
`et al. v. MemoryWeb, LLC, Case No. 1:21-cv-02666, Dkt. 1
`(N.D. Ill. May 17, 2021)
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`SAMSUNG-1026 U.S. Patent App. Pub. No. 2009/0113350 A1 (“Hibino”)
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`SAMSUNG-1027 U.S. Patent App. Pub. No. 2006/0165380 A1 (“Tanaka”)
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`SAMSUNG-1028 Complaint for Infringement, MemoryWeb, LLC v. Samsung
`Electronics Co., Ltd. and Samsung Electronics America, Inc.,
`Case No. 21-cv-411 (W.D. Tex.)
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`SAMSUNG-1029 Plaintiff MemoryWeb, LLC’s First Supplemental Initial
`Infringement Contentions, MemoryWeb, LLC v. Samsung
`Electronics Co., Ltd. and Samsung Electronics America, Inc.,
`Case No. 21-cv-411-ADA (W.D. Tex. Nov. 24, 2021)
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`SAMSUNG-1030 Agreed Scheduling Order, MemoryWeb, LLC v. Samsung
`Electronics Co., Ltd. and Samsung Electronics America, Inc.,
`Case No. 21-cv-411-ADA (W.D. Tex. Nov. 23, 2021)
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`SAMSUNG-1031 U.S. Patent No. 6,215,523 (“Anderson”)
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`SAMSUNG-1032 U.S. Patent App. Pub. No. 2008/0133526 (“Haitani”)
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`SAMSUNG-1033 U.S. Patent App. Pub. No. 2008/0306921 (“Rothmuller”)
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`SAMSUNG-1034 U.S. Patent App. Pub. No. 2013/0198602 (“Kokemohr”)
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`SAMSUNG-1035 U.S. Patent App. Pub. No. 2013/0326338 (“Secord”)
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`SAMSUNG-1036 U.S. Patent App. Pub. No. 2007/0016575 (“Hurst-Hiller”)
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`SAMSUNG-1037 Stipulation Letter
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`SAMSUNG-1038 U.S. Patent App. Pub. No. 2008/0276279 (“Gossweiler”)
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`SAMSUNG-1039 U.S. Patent App. Pub. No. 2008/0263103 (“McGregor”)
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`ii
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`Proceeding No.: IPR2022-00221
`Attorney Docket: 39843-0116IP1
`SAMSUNG-1040 U.S. Patent App. Pub. No. 2006/0080342 (“Takaki”)
`SAMSUNG-1041 U.S. Patent App. Pub. No. 2009/0210793 (“Yee”)
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`SAMSUNG-1042 Woody Leonhard, Windows Vista All-in-One Desk Reference
`for Dummies (2007)
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`SAMSUNG-1043 Andy Rathbone, Windows Vista for Dummies (2007)
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`SAMSUNG-1044 Email from Board Authorizing Petitioner’s Reply
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`iii
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`Proceeding No.: IPR2022-00221
`Attorney Docket: 39843-0116IP1
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`On June 2, 2022, the Board issued an email authorizing Petitioner
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`(Samsung) to file a five-page reply to Patent Owner’s Preliminary Response
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`(“POPR”). SAMSUNG-1044. The Board should decline to exercise its discretion
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`to deny Samsung’s petition. In fact, the Fintiv factors favor institution because the
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`final written decision (“FWD”) is likely to precede trial and would, at worst,
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`shortly follow trial. In addition, Samsung’s strong stipulation minimizes overlap
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`between the parallel proceedings. Further, because the petition advances prior art
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`already endorsed by the Board, the exceptionally strong merits favor institution.
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`I.
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`FINTIV FAVORS INSTITUTION ON THE MERITS
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`A holistic view of the Fintiv factors overwhelmingly supports institution,
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`with only Fintiv Factors 1 and 5 being, at worst, neutral.
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`As to Factor 2, MemoryWeb contends that “the final written decision will be
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`more than a month after the trial.” POPR, 30. However, on June 7, 2022, Judge
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`Albright entered an order re-scheduling the Markman hearing to June 30, 2022,
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`and the parties agreed to an extended case schedule with a new trial date of July
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`27, 2023 (Joint Motion to Modify Schedule filed today with dates herein referring
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`to the agreed schedule). The FWD deadline is now less than two weeks after trial.
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`MemoryWeb also assumes that the Board will take the entire statutory
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`period for institution and FWD. However, the FWD could easily precede trial, if
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`either or both decisions issue before statutory deadlines, which is common.
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`1
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`Proceeding No.: IPR2022-00221
`Attorney Docket: 39843-0116IP1
`Moreover, Samsung was diligent in filing this petition. Indeed, if a full 18-
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`month IPR schedule was judged from the petition filing date (12/17/2021), the
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`FWD would be due no later than 06/17/2023, which would have preceded trial.1
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`Apple Inc. v. Seven Networks, IPR2020-00156, Paper 10, 9 & n.8 (06/15/2020).
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`Furthermore, any comparison of a projected FWD date against a potential
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`trial date is at best speculative. For example, Judge Albright recently canceled a
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`trial based on a COVID-19 outbreak. VLSI Technology LLC v. Intel Corp., case
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`1:19-cv-00977. In contrast, despite the pandemic, the Board has consistently
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`adhered to the one-year statutory deadline and, in fact, routinely issues decisions
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`before their deadlines. See Sand Revolution II, LLC v. Cont’l Intermodal Group –
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`Trucking LLC, IPR2019-01393, Paper 24 at 9 (PTAB June 16, 2020). Moving
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`forward, “it is more likely that [a] District Court will incur delays … than the
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`Board.” Juniper Networks, Inc. et al. v. Packet Intelligence LLC, IPR2020-00338,
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`Paper 22, 14 (Sept. 9, 2020); Sand Revolution at 9.
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`Aside from the pandemic, the Board has recognized the uncertainty of
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`litigation schedules, including that district court trial dates are often delayed, due to
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`1 The FWD deadline moved past the trial date because it took nearly two months to
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`accord a filing date to the petition. Had a filing date been accorded in a typical
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`time frame of ~two weeks, the FWD deadline would certainly precede trial.
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`2
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`Proceeding No.: IPR2022-00221
`Attorney Docket: 39843-0116IP1
`normal litigation events. Mylan Pharma. Inc. v. Sanofi-Aventis Deutschland
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`GMBH, IPR2018-01680, Paper 22 at 17 n.6 (PTAB Apr. 3, 2019) (in NHK Spring,
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`trial was moved back six months). Here, trial has already been delayed by nearly a
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`month and that delay was from a schedule that was already delayed last November.
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`Although the district court has assigned a trial date, that date is uncertain in
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`light of the above, and given that a pending transfer motion suggests the litigation
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`may not proceed on its present schedule. Samsung submitted a motion to transfer
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`the litigation to the Northern District of California (“NDCA”). Apple filed a
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`similar transfer motion, and its case has already been transferred by agreement of
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`the parties. The merits of Samsung’s motion are based in substantial part on similar
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`circumstances and the very fact that a related litigation is now pending in NDCA.
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`Regardless of whether Samsung’s motion is granted, the motion may continue to
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`have a domino effect of delay in the litigation. For instance, in the event that the
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`motion to transfer is denied, the court may still delay the trial because earlier case
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`deadlines may need to be pushed back to resolve the transfer issue. As discussed
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`above, this already has occurred. As background, the Federal Circuit has required
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`Judge Albright to rule on motions to transfer prior to Markman hearings. In re SK
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`Hynix Inc., 835 F. App'x 600 (Fed. Cir. 2021). In light of Judge Albright’s heavy
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`patent docket, we have yet to see an order on the motion, and as we approached the
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`previously set Markman date (06/03/2022), the Court delayed the hearing. This
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`3
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`Proceeding No.: IPR2022-00221
`Attorney Docket: 39843-0116IP1
`sequence of events may continue to occur. And, of course, should the motion be
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`granted and the case transferred to NDCA, a new trial date will be set, all but
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`assuring that the FWD will issue before trial.
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`Finally, the Board considers proximity of the parallel proceeding to FWD
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`(even under the prior schedule, the parallel cases would be in proximity). When the
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`FWD is due shortly after trial—here, less than 2 weeks later—this factor receives
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`little weight. Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at
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`15 (2020). Also, “given the minimal, if any, overlap between the issues in the
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`[litigation] and this proceeding, the time overlap has less significance.” SharkNinja
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`v. iRobot Corp., IPR2021-00545, Paper 11 at 7 (2021).
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`Regarding Fintiv Factor 3, the investment in the litigation remains low. At
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`this time, the court has not yet heard oral argument (to the extent that is requested
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`by the court) or ruled on Samsung’s transfer motion. Also, fact discovery has not
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`yet begun and the court’s Markman hearing has been delayed to June 30. Much
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`work remains to be done (e.g., fact and expert discovery are not scheduled to close
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`until January and April 2023, respectively). Thus, Petitioner’s diligence in filing at
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`an early stage of the litigation weighs strongly against discretionary denial.
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`Regarding Fintiv Factor 4, MemoryWeb contends that the “stipulation is
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`narrowly drawn to only the grounds in the petition.” POPR, 32. This is simply not
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`true. The stipulation offered by Samsung states that Samsung will not pursue
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`4
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`Proceeding No.: IPR2022-00221
`Attorney Docket: 39843-0116IP1
`district court invalidity challenges based on the primary reference (Okamura) and
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`thus broadly covers various grounds both raised and not raised in the Petition.
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`Indeed, assuming institution, Samsung will not pursue any district court invalidity
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`challenge including Okamura, thereby significantly reducing overlap.
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`Moreover, the assessment of overlap may change. In fact, Final Invalidity
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`and Infringement Contentions are not due until August 23, 2022. Also, deadlines
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`of December 22, 2022 and April 18, 2023 relate to narrowing the number of claims
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`asserted and prior art references. Accordingly, as litigation progresses, the overlap
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`in claim coverage and/or prior art is almost certain to reduce even more.
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`As to Fintiv Factor 6, MemoryWeb contends that “Petitioner has failed to
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`meet its burden to demonstrate a likelihood of success on the merits.” POPR, 34.
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`Yet, the same primary reference (Okamura) was previously found to justify
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`institution of a petition (IPR2021-01413) against a related MemoryWeb patent, and
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`the same secondary reference (Belitz) was previously found to justify institution of
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`a petition (IPR2022-00033) against the ’658 patent. The Board’s acknowledgement
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`of the relevance of Okamura and Belitz to MemoryWeb patents confirms the
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`strength of the grounds asserted in the present petition. With these facts, and
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`because MemoryWeb’s preliminary response fails to identify any claimed features
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`missing from the applied prior art, the merits could hardly be stronger. Thus,
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`Factor 6 strongly favors institution.
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`5
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`Dated June 10, 2022
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`Proceeding No.: IPR2022-00221
`Attorney Docket: 39843-0116IP1
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`/Jeremy J. Monaldo/
`W. Karl Renner, Reg. No. 41,265
`Jeremy J. Monaldo, Reg. No. 58,680
`Hyun Jin In, Reg. No. 70,014
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
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`Attorneys for Petitioner
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`Proceeding No.: IPR2022-00221
`Attorney Docket: 39843-0116IP1
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4) and 42.205(b), the undersigned certifies
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`that on June 10, 2022, a complete and entire copy of this Petitioner’s Reply to
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`Patent Owner’s Preliminary Response and Exhibit 1044 were provided by email to
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`the Patent Owner by serving the correspondence address of record as follows:
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`Jennifer Hayes
`George Dandalides
`Nixon Peabody LLP
`300 South Grand Avenue, Suite 4100
`Los Angeles, CA 90071-3151
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`Email: jenhayes@nixonpeabody.com
`gdandalides@nixonpeabody.com
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`/Diana Bradley/
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`Diana Bradley
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`(858) 678-5667
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`7
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