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`Paper No.
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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.
`Petitioner
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`v.
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`MEMORYWEB, LLC
`Patent Owner
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`Patent No. 10,423,658
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`Inter Partes Review No. IPR2022-00221
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`PATENT OWNER’S PRELIMINARY SUR-REPLY
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`The Board authorized Patent Owner to file this Preliminary Sur-Reply
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`addressing discretionary denial. Ex. 1044.
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`The Board Should Deny Institution Pursuant to Fintiv
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`As set forth in Patent Owner’s Preliminary Response (“POPR”), the Board
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`should exercise its discretion to deny institution based on co-pending litigation
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`between involving Petitioner in the Western District of Texas (“the WDTX
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`litigation”). See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11, 5-6 (Mar. 20,
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`2020) (precedential) (hereinafter, “Fintiv”). Nothing in Petitioner’s Reply (Paper 8)
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`tips the balance of the Fintiv factors, which weigh in favor of denying institution to
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`serve efficiency and the integrity of the system. Fintiv, Paper 11, 6.
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`A.
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`Factor 1 weighs against institution
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`Petitioner does not deny that it has not requested a stay in the WDTX litigation
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`or that a stay request would be futile. POPR, 29. Rather than being merely “neutral”
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`as Petitioner contends, this factor favors denial. Reply, 1; Fintiv, Paper 11, 5-6.
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`B.
`Factor 2 weighs against institution
`While the schedule in the WDTX litigation was recently amended, the final
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`written decision deadline in this IPR (if instituted) would still be after the scheduled
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`jury trial. Reply, 1. This weighs against institution. Fintiv, Paper 11 at 9.
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`Petitioner argues that comparing the final written decision deadline against
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`the WDTX litigation trial date is “speculative” in light of, for example, COVID-19,
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`1
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`the pending transfer motion, and prior schedule modifications. Reply, 1-3. This is
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`mere conjecture. The Board “generally take[s] courts’ trial schedules at face value
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`absent some strong evidence to the contrary.” Apple Inc. v. Fintiv, Inc., IPR2020-
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`00019, Paper 15 (PTAB May 13, 2020) (informative) (“Fintiv II”). Indeed, Judge
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`Albright’s Standing Order Governing Proceedings provides that “[a]fter the trial date
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`is set, the Court will not move the trial date except in extreme situations.”1 Petitioner
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`does not point to any particularized reason why the trial in the WDTX litigation will
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`not proceed as currently scheduled.
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`Petitioner also speculates that the Board may issue its final written decision
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`before the jury trial in the WDTX litigation (Reply, 2), but Fintiv instructs the Board
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`to assess this factor based on “the projected statutory deadline” (Fintiv, Paper 11,
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`9)—not a theorectical earlier date—when determining whether to exercise its
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`discretion. Further, there is no indication that Petitioner’s pending motion to transfer
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`(for which briefing concluded in April 2022) will be granted, or that it will have any
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`impact on the August 2023 trial date. Likewise, there is no indication that the
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`Markman hearing (before which the transfer motion must be decided) scheduled for
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`June 30, 2022 will be pushed back again. And while the schedule was amended
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`1 United States District Court for the Western District of Texas Waco Division,
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`Standing Order Governing Proceedings (OGP) 4.1–Patent Cases (Apr. 14, 2022).
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`2
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`once before last year, that was to accommodate the assertion of a newly-issued patent
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`in an amended complaint. POPR, 31 n.2.
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`C.
`Factor 3 weighs against institution
`The relevant time to assess Factor 3 is “the time of the institution.” Fintiv,
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`Paper 11 at 9. Petitioner suggests that the investment in the WDTX litigation is
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`“low,” but by the statutory institution deadline, the parties will have completed
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`venue and claim construction briefing (7 total briefs), conducted a Markman hearing,
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`exchanged infringement and invalidity contentions (with final contentions only ~2
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`weeks away), engaged in fact discovery, and almost certainly received rulings on
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`claim construction and the transfer motion. This enormous expenditure of resources
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`weighs in favor of denying institution.
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`Further, Petitioner does nothing to justify its delay in filing its Petition – a
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`Petition that it admits is (1) similar to previously filed petitions and (2) based
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`primarily on references Petitioner was aware of 6 months prior to filing. Fintiv,
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`Paper 11 at 13-14; Petition, 104; Reply, 5.
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`D.
`Factor 4 weighs against institution
`Petitioner’s arguments regarding the fourth factor are misleading. The only
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`ground relating to Okamura (the primary reference in the Petition) in Petitioner’s
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`invalidity contentions is the Belitz and Okamura combination. Ex. 2014, p. 29 (A-
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`1). Petitioner, however, presents eleven additional invalidity grounds in its
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`3
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`invalidity contentions which are not covered by the stipulation. Ex. 2014, pp. 29-30
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`(A-2 – A-12). What is more, the stipulation is silent about the Belitz reference, so
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`Petitioner is still free to assert invalidity grounds similar to those presented in the
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`Petition in the WDTX litigation. See Ex. 1037. Because the stipulation is not
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`sufficiently broad (i.e., because it does not address at least invalidity grounds A-2–
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`A-12 in the WDTX litigation), it does not “ensure that [this] inter partes review is a
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`‘true alternative’ to the district court proceeding.” Sotera Wireless, Inc. v. Masimo
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`Corp., IPR2020-01019, Paper 12, 19 (PTAB Dec. 1, 2020). As a result, Factor 4 is
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`at best, neutral.
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`E.
`Factor 5 weighs against institution
`Petitioner offers no basis for the fifth factor being “neutral.” Reply, 1. This
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`factor clearly favors denying institution because Petitioner is a party to the WDTX
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`litigation. Paper 6, 33; Fintiv II, Paper 15 at 15.
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`F.
`Factor 6 is neutral
`With respect to the sixth factor, Petitioner argues “the merits could hardly be
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`strong” merely because the POPR “fails to identify any claimed features missing
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`from the applied prior art” for independent claim 1. Even if true, that does not mean
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`Petitioner has met its burden to demonstrate obviousness. See Power Integrations,
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`Inc. v. Fairchild Semiconductor Int’l, Inc., 711 F.3d 1348, 1368 (Fed. Cir. 2013). In
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`any event, it is still within the Board’s discretion to deny institution where efficiency
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`4
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`and the integrity of the system are best served, even where “the merits of Petitioner’s
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`challenges are relatively stronger.” Philip Morris Products, S.A., v. RAI Strategic
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`Holdings, Inc., IPR2020-00919, Paper 9 at 9-11 (PTAB Nov. 16, 2020).]
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`In sum, all six Fintiv factors are neutral or weigh in favor of denying
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`institution. In these circumstances, efficiency and the integrity of the system are best
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`served by exercising discretion to deny institution. Fintiv, Paper 11 at 6.
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`Respectfully submitted,
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`Dated: June 17, 2022
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`By: /Jennifer Hayes/
`Jennifer Hayes
`Reg. No. 50,845
`Nixon Peabody LLP
`300 South Grand Avenue,
`Suite 4100,
`Los Angeles, CA 90071-3151
`Tel. 213-629-6179
`Fax 866-781-9391
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`5
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing Patent Owner’s
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`Preliminary Sur-Reply was served on June 17, 2022, upon the following parties via
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`electronic service:
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`W. Karl Renner
`Jeremy J. Monaldo
`Hyun Jin In
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`IPR39843-0116IP1@fr.com
`PTABInbound@fr.com
`axf-ptab@fr.com
`monaldo@fr.com
`in@fr.com
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`Counsel for Petitioner, Samsung Electronics Co., Ltd.
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`By:
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`/s/ Jennifer Hayes
`Lead Counsel for Patent Owner
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`6
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