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IPR2022-00221
`Patent No. 10,423,658
`
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` Patent Owner’s Request for Rehearing
`
`Paper No.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.
`Petitioner
`v.
`
`MEMORYWEB, LLC
`Patent Owner
`
`Patent No. 10,423,658
`
`Inter Partes Review No. IPR2022-00221
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`PATENT OWNER’S REQUEST FOR REHEARING
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`IPR2022-00221
`Patent No. 10,423,658
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`
`Exhibit No.
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` Patent Owner’s Request for Rehearing
`
`LISTING OF EXHIBITS
`
`
`Description
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
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`2010
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`2011
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`2012
`
`2013
`
`WITHDRAWN
`
`Japanese Unexamined Patent Application Publication No. 2001-
`160058 and Certified English Translation (“Fujiwara”)
`
`WITHDRAWN
`
`U.S. Patent No. 6,714,215 (“Flora”)
`
`Supplemental Declaration of Kevin Jakel, Unified Patents, LLC v.
`MemoryWeb, LLC, IPR2021-01413 (Dec. 30, 2021) (redacted
`version)
`
`3 Questions for Unified Patents CEO Post-Oil States (Part II)
`
`Petition for Inter Partes Review, Apple Inc. v. MemoryWeb, LLC,
`IPR2022-00031, Paper 1 (PTAB Oct. 30, 2021)
`
`Brief of Amicus Curiae Unified Patents Inc. in Cuozzo Speed
`Technologies, LLC v. Michelle K. Lee et al.
`
`Unified Patents September 3, 2021 Press Release regarding
`MemoryWeb IPR
`
`Unified Patents September 9, 2021 email regarding MemoryWeb
`IPR
`
`Unified Patent’s website link (FAQs)
`(https://www.unifiedpatents.com/faq)
`
`Case Readiness Status Report, MemoryWeb, LLC v. Samsung
`Electronics Co., Ltd. and Samsung Electronics America, Inc.,
`Case No. 21-cv-411 (W.D. Tex.) (Sept. 3, 2021)
`
`Amended Complaint, MemoryWeb, LLC v. Samsung Electronics
`Co., Ltd. and Samsung Electronics America, Inc., Case No. 21-
`ii
`
`
`
`

`

`IPR2022-00221
`Patent No. 10,423,658
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`
`Exhibit No.
`
` Patent Owner’s Request for Rehearing
`
`Description
`
`2014
`
`2015
`
`2016
`
`2017
`
`2018
`
`2019
`
`2020
`
`2021
`
`2022
`
`2023
`
`2024
`
`cv-411 (W.D. Tex.) (Nov. 24, 2021)
`
`Excerpts from Defendant Samsung Electronics Co. Ltd. and
`Samsung Electronics America, Inc.’s Initial Invalidity
`Contentions, MemoryWeb, LLC v. Samsung Electronics Co., Ltd.
`and Samsung Electronics America, Inc., Case No. 21-cv-411
`(W.D. Tex.) (Jan. 31, 2022)
`
`Joint Motion for Entry of Agreed Scheduling Order, MemoryWeb,
`LLC v. Samsung Electronics Co., Ltd. and Samsung Electronics
`America, Inc., Case No. 21-cv-411 (W.D. Tex.) (Oct. 1, 2021)
`
`MV3 Partners LLC v. Roku Inc., 6:18-cv-00308, (W.D. Texas)
`D.I. 83
`
`IAM, “The last thing anyone should think about WDTX is that it
`is patent plaintiff friendly, says Albright” (Apr. 7, 2020)
`
`Excerpt from Jennifer Tidwell, Designing Interfaces, O’Reilly (1st
`Ed. 2005)
`
`Japanese Unexamined Patent Application Publication No. 2007-
`323544 and Certified English Translation (“Takakura”)
`
`Demonstrative exhibit from August 26, 2022 Greenspun
`deposition
`
`U.S. Patent No. 10,621,228
`
`Transcript of Deposition of Philip Greenspun, Ph.D, August 26,
`2022
`
`Declaration of Professor Glenn Reinman, Ph.D.
`
`Transcript of Deposition of Philip Greenspun, Ph.D, October 21,
`2022
`
`iii
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`
`
`

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`IPR2022-00221
`Patent No. 10,423,658
`
`
`Exhibit No.
`
` Patent Owner’s Request for Rehearing
`
`Description
`
`2025
`
`2026
`
`2027
`
`2028
`
`2029
`
`2030
`
`2031
`
`2032
`
`2033
`
`2034
`
`Cambridge English Dictionary, definition of “responsive”
`
`Webster’s Third New International Dictionary, definition of
`“responsive”
`
`Wilbert O. Galitz, “The Essential Guide to User Interface Design:
`An Introduction to GUI Design Principles and Techniques,”
`Wiley Publishing, Inc. (3rd Ed.) (2007)
`
`Declaration of Matthew A. Werber
`
`Declaration of Angelo J. Christopher
`
`Second Declaration of Dr. Philip Greenspun, IPR2022-00222
`
`Transcript of January 19, 2023 Deposition of Dr. Philip
`Greenspun, IPR2022-00222
`
`Declaration of Dr. Philip Greenspun, IPR2022-00222
`
`Transcript of March 27, 2023 Deposition of Philip G. Greenspun,
`Ph.D
`
`Patent Owner’s Demonstrative Exhibit
`
`
`
`
`iv
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`
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`

`

`IPR2022-00221
`Patent No. 10,423,658
`
`
` Patent Owner’s Request for Rehearing
`
`TABLE OF CONTENTS
`
`Page(s)
`
`
`I. 
`INTRODUCTION ........................................................................................... 1 
`STANDARDS FOR REHEARING ................................................................ 1 
`II. 
`III.  REQUESTED RELIEF ................................................................................... 1 
`IV.  ARGUMENT ................................................................................................... 2 
`A.  The Board Should Rehear its Claim Construction Rulings ............................. 2 
`1.  Claim 5: “Displaying the People View Including Displaying: . . . a Name
`Associated With the First Person . . . and a Name Associated With the
`Second Person” ........................................................................................... 2 
`2.  Claims 3-5, 7, 9-10, and 12-15: “responsive to a click or tap . . .
`displaying” .................................................................................................. 5 
`B.  The Board Should Rehear its Unpatentability Findings for Dependent
`Claims 5 and 13 ............................................................................................... 7 
`C.  The Board Should Rehear its Unpatentability Findings for Dependent
`Claims 7 and 10 ............................................................................................... 8 
`CONCLUSION ............................................................................................. 11 
`
`
`V. 
`
`
`v
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`
`
`

`

`IPR2022-00221
`Patent No. 10,423,658
`
`
`TABLE OF AUTHORITIES
`
` Patent Owner’s Request for Rehearing
`
` Page(s)
`
`Cases
`
`Aqua Prod., Inc. v. Matal,
`872 F.3d 1290 (Fed. Cir. 2017) ............................................................................... 3
`
`Becton, Dickinson & Co. v. Tyco Healthcare Group, LP,
`616 F.3d 1249 (Fed. Cir. 2010) ............................................................................... 4
`
`In re Nuvasive, Inc.,
`842 F.3d 1376 (Fed. Cir. 2016) ............................................................................... 4
`
`TIP Sys., LLC v. Phillips & Brooks/Gladwin, Inc.,
`529 F.3d 1364 (Fed. Cir. 2008) ............................................................................... 7
`
`Regulations
`
`37 C.F.R. § 42.71(c) ................................................................................................... 1
`
`37 C.F.R. § 42.71(d) .................................................................................................. 1
`
`vi
`
`
`
`

`

`IPR2022-00221
`Patent No. 10,423,658
`
`I.
`
`INTRODUCTION
`Pursuant to 37 C.F.R. § 42.71(d), Patent Owner respectfully requests
`
` Patent Owner’s Request for Rehearing
`
`rehearing of the Board’s Final Written Decision (“Decision” or “FWD,” Paper 39).
`
`As set forth herein, the Decision misapprehended or overlooked arguments and
`
`evidence relating to its claim constructions of the phrase “responsive to” in various
`
`claims and the “[first/second] name” features of claims 5 and 13. The Decision also
`
`misapprehended or overlooked arguments and evidence refuting Petitioner’s
`
`unpatentability arguments directed to claims 7 and 10.
`
`II.
`
`STANDARDS FOR REHEARING
`“A party dissatisfied with a decision may file a request for rehearing”
`
`identifying “all matters the party believes the Board misapprehended or overlooked,
`
`and the place where each matter was previously addressed.” 37 C.F.R. § 42.71(d).
`
`III. REQUESTED RELIEF
`Patent Owner respectfully requests rehearing because
`
`the Decision
`
`overlooked or misapprehended arguments and evidence relating to the proper claim
`
`construction for (1) the phrase “responsive to” in claims 3-5, 7, 9-10, and 12-15 and
`
`(2) the first and second “name” limitations in claims 5 and 13. As a result, the Board
`
`should reconsider the related unpatentability findings. Additionally, the Decision
`
`overlooked or misapprehended arguments and evidence in connection with the
`
`“person view” recited in claims 7 and 10.
`
`1
`
`

`

` Patent Owner’s Request for Rehearing
`
`IPR2022-00221
`Patent No. 10,423,658
`
`IV. ARGUMENT
`A. The Board Should Rehear its Claim Construction Rulings
`1.
`Claim 5: “Displaying the People View Including Displaying:
`. . . a Name Associated With the First Person . . . and a Name
`Associated With the Second Person”
`Claim 5 requires displaying a “people view” responsive to a click or tap of the
`
`people selectable element, where “the displaying the people view” includes
`
`displaying “a name associated with the first person” and “a name associated with
`
`the second person.” EX1001, 36:31-32, 38, 46. The Decision’s finding that “nothing
`
`in the ‘658 Patent requires the simultaneous display of the name[s]” overlooked or
`
`misapprehended evidence that the claim does require the simultaneous display of the
`
`“people view” elements. FWD, 19.
`
`In particular, the Decision states that claim 5 “does not specify when the
`
`names must be displayed.” Id. But the Decision overlooked evidence that (1) the first
`
`person selectable thumbnail image and the first name must be displayed
`
`simultaneously and (2) the second person selectable thumbnail image and the second
`
`name must be displayed simultaneously. POSR, 9 (citing EX2033, 46:17-48:12);
`
`POR, 26-27 (citing EX2023, ¶132 and EX2024, 105:4-12, 192:17-196:18). In
`
`particular, the Decision overlooked the following admission by Samsung’s expert:
`
`2
`
`

`

`IPR2022-00221
`Patent No. 10,423,658
`
`
` Patent Owner’s Request for Rehearing
`
`So you would agree then that claim five requires the
`Q.
`simultaneous display of the first person selectable thumbnail
`image and the name associated with the first person in at least
`some point in time; correct?
`A.
`I think so, yes.
`. . .
`Based on what we just talked about, you would agree that
`Q.
`the name associated with the second person needs to be displayed
`simultaneously with the second person selectable thumbnail
`image in at least some point in time; correct?
`A. Yes.
`
`EX2033, 46:17-48:12 (emphases added); Aqua Prod., Inc. v. Matal, 872 F.3d 1290,
`
`1325 (Fed. Cir. 2017) (agencies “must take account of all the evidence of record,
`
`including that which detracts from the conclusion the agency ultimately reaches”).
`
`Because it overlooked this evidence, the Decision appears to have
`
`misapprehended the dispute, which was whether claim 5 requires that only one
`
`name/thumbnail pair is displayed at a given time (as Petitioner proposed), or whether
`
`at least two name/thumbnail pairs must be displayed simultaneously (as Patent
`
`Owner proposed). POSR, 7. Patent Owner’s construction stays true to the plain claim
`
`language, which requires a “people view” relating to multiple people, rather than a
`
`“person view” (e.g., as required in claims 7 and 10). POSR, 8; EX2033, 44:10-17.
`
`If claim 5 only displays information for one person at any given time, it would
`
`3
`
`

`

`IPR2022-00221
`Patent No. 10,423,658
`
`effectively be a “person view,” thereby collapsing the distinction between “people”
`
` Patent Owner’s Request for Rehearing
`
`and a “person.”1 Id.; Becton, Dickinson & Co. v. Tyco Healthcare Group, LP, 616
`
`F.3d 1249, 1254 (Fed. Cir. 2010) (when “a claim lists elements separately, the clear
`
`implication of the claim language is that those elements are distinct component[s] of
`
`the patent invention”) (citation and quotation marks omitted).
`
`The Decision also overlooked Patent Owner’s arguments regarding claim 6,
`
`which requires that the “[first/second] person selectable thumbnail image[s]” in the
`
`people view be displayed “in an alphabetical order based on the names.” POSR, 9;
`
`Paper 39, 29:1-13. The thumbnails must be displayed simultaneously to be displayed
`
`in an alphabetical order based on the names. Id. This is also consistent with the
`
`specification, which clearly shows at least two thumbnails and at least two names in
`
`the people view. POR, 28; POSR, 9-11.
`
`
`1 The Decision indicates that the Board “do[es] not agree” that Petitioner’s
`
`construction renders the surrounding “people view” language superfluous but does
`
`not explain why. FWD, 19-20; In re Nuvasive, Inc., 842 F.3d 1376, 1383 (Fed. Cir.
`
`2016) (“it is not adequate to summarize and reject arguments without explaining
`
`why the PTAB accepts the prevailing argument”).
`
`4
`
`

`

`IPR2022-00221
`Patent No. 10,423,658
`
`
` Patent Owner’s Request for Rehearing
`
`
`
`Ex. 1001, FIG. 32 (excerpted and annotated)
`The Board overlooked that since each thumbnail must be displayed
`
`simultaneously with a name (as both experts agreed) and two thumbnails must be
`
`displayed simultaneously (i.e., a “people view” as opposed to a “person view”), then
`
`the two names must be displayed simultaneously. The Board should therefore rehear
`
`its claim construction and find that claim 5 requires the simultaneous display of both
`
`names.
`
`2.
`
`Claims 3-5, 7, 9-10, and 12-15: “responsive to a click or tap
`. . . displaying”
`The Decision construed the phrase “responsive to” as requiring “that the
`
`second event happen ‘subsequent to’ the first event based on a combination of user
`
`interaction and software implementation.” FWD, 18. Specifically, the Decision
`
`rejected Patent Owner’s cause-effect construction because “[i]f ‘responsive to a click
`
`or tap’ is construed to require a direct cause and effect relationship . . . the full scope
`
`5
`
`

`

`IPR2022-00221
`Patent No. 10,423,658
`
`of the claim 1 is not enabled for large sets of photographs or videos” and thus “Patent
`
` Patent Owner’s Request for Rehearing
`
`Owner’s proposed claim construction would invalidate the claim.” Id., 17.
`
`As an initial matter, the Decision appears to have misapprehended the parties’
`
`arguments. Petitioner never argued that the claims would not be enabled under
`
`Patent Owner’s construction. See Reply, 7-8. Rather, Petitioner argued that “Patent
`
`Owner’s construction . . . would exclude examples described in the ‘658 patent.” Id.,
`
`8. As discussed below, Patent Owner’s construction does not exclude disclosed
`
`embodiments. Moreover, Patent Owner did not argue that its claim construction
`
`prohibits scrolling if the display is not large enough to show large numbers of
`
`photographs or videos simultaneously. See, e.g., Ex. 1046, 76:15-77:7, 78:3-79:19,
`
`89:12-90:15.
`
`In focusing on a hypothetical “large set[] of photographs and videos,” the
`
`Decision overlooked or misapprehended the scope of the claimed “set.” FWD, 17.
`
`The claims do not specify how many photographs and videos are in the “set.” There
`
`are clear examples in the specification where every photograph and video in a “set”
`
`can be displayed simultaneously. For example, FIG. 34 shows every photograph and
`
`video associated with a particular geotag.
`
`6
`
`

`

`IPR2022-00221
`Patent No. 10,423,658
`
`
` Patent Owner’s Request for Rehearing
`
`Ex. 1001, FIG. 34 (excerpted)
`
`
`
`The claims do not need to read on every possible “set” of digital photographs and
`
`videos. TIP Sys., LLC v. Phillips & Brooks/Gladwin, Inc., 529 F.3d 1364, 1373 (Fed.
`
`Cir. 2008); POSR, 6, 10.
`
`For at least these reasons, the Board should rehear its construction of the term
`
`“responsive to.”
`
`B.
`
`The Board Should Rehear its Unpatentability Findings for
`Dependent Claims 5 and 13
`Okamura does not disclose displaying a “first name” and “second name”
`
`simultaneously in the alleged people view. POR, 64-68; POSR, 18. The Decision
`
`found that Okamura disclosed the “people view” of claim 5, in part, because the
`
`Decision “rejected Patent Owner’s narrow claim construction interpreting the first
`
`and second name displaying terms in claim 5 to require simultaneous display of both
`
`names.” FWD, 53. Accordingly, if the Board rehears its claim construction (supra,
`
`§ IV.A.1), it should also rehear its unpatentability findings for claim 5.
`
`7
`
`

`

`IPR2022-00221
`Patent No. 10,423,658
`
`
` Patent Owner’s Request for Rehearing
`
`Similarly, Okamura does not disclose displaying a “first album name” and
`
`“second album name” simultaneously in the alleged people view. POR, 85-89;
`
`POSR, 21-22. The Decision found that Okamura disclosed the “album view” of
`
`claim 13, in part, because the Decision “rejected Patent Owner’s narrow claim
`
`construction interpreting the first and second album name displaying terms in claim
`
`13 to require simultaneous display of both album names.” FWD, 61. Accordingly, if
`
`the Board rehears its claim construction (supra, § IV.A.1), it should also rehear its
`
`unpatentability findings for claim 13.
`
`C. The Board Should Rehear its Unpatentability Findings for
`Dependent Claims 7 and 10
`Claims 7 and 10 recite: “responsive to a click or tap of the [first/second]
`
`person selectable thumbnail image, displaying a [first/second] person view, the
`
`displaying the [first/second] person view including displaying (i) the name
`
`associated with the [first/second] person and (ii) a scaled replica of each of the digital
`
`photographs and videos in the [third/fourth] set of digital photographs.”
`
`The Petition identified FIG. 24’s content playback screen 460 as allegedly
`
`corresponding to the claimed “[first/second] person view” and alleged that selecting
`
`a thumbnail in FIG. 21 (the alleged people view) causes the content playback screen
`
`460 to be displayed. Petition, 81; POR, 69. The Petition is incorrect: the evidence
`
`demonstrated that the content playback screen 460 in FIG. 24 (alleged person view)
`
`8
`
`

`

`IPR2022-00221
`Patent No. 10,423,658
`
`is displayed when the user selects one of the face boxes 456-459 in FIG. 23. POR,
`
` Patent Owner’s Request for Rehearing
`
`69-72; POSR, 13-15.
`
`The Decision did not find Okamura discloses a direct transition from FIG. 21
`
`to FIG. 24 (because it does not). Instead, the Decision found that “Patent Owner’s
`
`argument [for claims 7 and 10] rests on its overly narrow construction of the claim
`
`term ‘responsive to.’” FWD, 55. Accordingly, if the Board rehears its claim
`
`construction (supra, § IV.A.2), it should also rehear its unpatentability findings for
`
`these claims.
`
`But even if the Board does not rehear its claim construction, the Board should
`
`rehear its unpatentability findings because the Decision overlooked Patent Owner’s
`
`argument that Okamura does not disclose displaying scaled replicas “responsive to”
`
`a click or tap of the first/second person selectable thumbnail under “any reasonable
`
`construction of ‘responsive to.’” POSR, 16 (citing EX2023, ¶¶ 272-278) (emphasis
`
`added); Paper 39, 32:4-33:10. The Decision overlooked Dr. Greenspun’s admissions
`
`that the second event is “not simply subsequent to” the first event and “the first event
`
`has to cause something to change in the software that makes the second event
`
`possible.” EX2033, 17:11-25; POSR, 1-2. Petitioner never explained how the first
`
`event (selecting a person in FIG. 21) causes something to change in the software that
`
`makes the second event (displaying FIG. 24) possible.
`
`9
`
`

`

`IPR2022-00221
`Patent No. 10,423,658
`
`
` Patent Owner’s Request for Rehearing
`
`The Decision emphasizes that its construction of “responsive to” does not
`
`allow for an infinite number of intervening events. FWD, 18. Yet the Decision
`
`overlooked Dr. Greenspun’s testimony that displaying the “people view” in FIG. 32
`
`of the ‘658 patent would be “responsive to” an initial login operation and even
`
`turning on the computer. POSR, 3 (citing EX2033, 32:19-33:14, 34:16-35:11, 35:25-
`
`37:24). This demonstrates that Petitioner’s construction is unbounded in terms of the
`
`number of intervening inputs, views, and decisions between the first and events. If
`
`“responsive to” allows for more than one but less than infinite intervening inputs,
`
`views, and decisions, the Decision is unclear how Okamura’s disclosure—which
`
`requires (1) a first face selection and first input in FIG. 21 (alleged people view) to
`
`display FIG. 22, (2) a second input in FIG. 22 to display FIG. 23, and (3) a second
`
`face selection and third input in FIG. 23 to display FIG. 24 (alleged person view)—
`
`meets the Board’s construction. FWD, 54-55; POSR, 14-15; POR, 69-72.
`
`The Decision also overlooked the fact that the person selected in FIG. 24
`
`(alleged first person view) and the person selected via thumbnail 432 in FIG. 21
`
`(alleged people view) are different people. POSR, 15.
`
`10
`
`

`

`IPR2022-00221
`Patent No. 10,423,658
`
`
` Patent Owner’s Request for Rehearing
`
`
`
`
`FIG. 21 (excerpted)
`
`
`FIG. 24 (excerpted)
`
`By contrast, the claim language requires a selection in the people view associated
`
`with the first person and displaying a first person associated with the first person. Id.
`
`In other words, the same person that is selected in the people view must be the same
`
`person in the person view. As shown above, Okamura does not disclose this. Id.
`
`V. CONCLUSION
`For the reasons set forth herein, Patent Owner respectfully requests rehearing
`
`and a finding that at least claims 5-15 of the ’658 patent are not unpatentable.
`
`
`
`Respectfully submitted,
`
`Dated: August 30, 2023
`
`
`
`
`
`11
`
`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
`
`

`

`IPR2022-00221
`Patent No. 10,423,658
`
`
`
` Patent Owner’s Request for Rehearing
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Patent Owner’s
`
`Request for Rehearing was served on August 30, 2023, upon the following parties
`
`via electronic service:
`
`IPR39843-0116IP1@fr.com
`
`PTABInbound@fr.com
`
`axf-ptab@fr.com
`
`jjm@fr.com
`
`in@fr.com
`
`cgreen@fr.com
`
`Counsel for Petitioner, Samsung Electronics Co., Ltd.
`
`
`
`
`
`/s/ Jennifer Hayes
`By:
`Lead Counsel for Patent Owner
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`12
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