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. 10,621,228
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`Inter Partes Review No. IPR2022-00222
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`PATENT OWNER’S PRELIMINARY SUR-REPLY
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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. 10,621,228
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`Inter Partes Review No. IPR2022-00222
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`PATENT OWNER’S PRELIMINARY SUR-REPLY
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`The Board authorized MemoryWeb to file this five-page response to
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`Samsung’s Reply. Ex. 1038. For the reasons set forth in the Preliminary Response
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`and set forth below, institution should be denied.
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`The General Plastic Factors Favor Denial
`Samsung continues to argue that it is unrelated to Unified Patents and that
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`Unified is an “independent party.” But, Samsung does not deny that it is a member
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`of Unified Patents. Samsung also does not deny that it should have been named an
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`RPI in the Unified Petition. Gamesmanship by Unified to allow its own members
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`to later file follow-on petitions should not be allowed because it is a deliberate
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`attempt to waste the Board’s resources.
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`Samsung does not deny the similarities between its petition and those of
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`Unified and Apple or cumulativeness of the cited references and combination.
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`Reply, 2. It also does not deny that it used the Apple or Unified petitions as
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`roadmaps in preparing its own petition. Id. Instead, Samsung argues that it delayed
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`filing the petition because it was waiting for MemoryWeb’s identification of asserted
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`claims. Reply, 3. MemoryWeb first identified the asserted claims on September 17,
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`2021. Samsung’s Petition was filed on December 3, 2021. Samsung offers no
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`justification for the eleven-week delay in filing this Petition after it received the
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`identification of the asserted claims. The delay is significant considering the
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`substantial overlap between Samsung’s petition and the Unified and Apple petitions.
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`1
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`LG Electronics v. Bell Northern Research, LLC, IPR2020-00319, Paper 15, p. 12
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`(factor weighed slightly in favor of invoking discretion to deny institution where
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`Petitioner waited for identification of asserted claims to file petition).
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`As outlined in the POPR, the finite resources of the Board would be
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`challenged because Samsung proposes the schedule for this IPR be the same as the
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`Unified IPR. The Patent Owner Response in the Unified IPR is due on June 6, which
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`is before the Board’s deadline to determine whether to institute this IPR. In order to
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`not prejudice MemoryWeb, the schedule of the Unified IPR would have to be
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`delayed by months in order for the schedules of the Unified IPR and this proceeding
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`to be consolidated. This delay would impact the Board’s ability to issue a final
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`decision within one year as required by 35 U.S.C. § 316(a)(11) in the Unified IPR.
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`Notably, Samsung does not address the cumulativeness of its petition to the
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`other petitions or the issues with consolidating the schedules of the IPRs addressed
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`in the POPR. POPR, 38.
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`In sum, the General Plastic factors collectively weigh in favor of the Board
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`exercising its discretion to deny institution based on the Unified and Apple IPRs.
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` The Fintiv Factors Favor Denial
`Samsung does not deny that it has not requested a stay. Samsung also does
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`not address whether it will not request a stay in the district court case – a tacit
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`2
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`admission that it will not file one. Samsung also does deny that any potential request
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`for a stay would be unlikely.
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`There is no indication that the pending motion to transfer will be granted or
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`that it will have any impact on the trial date. As explained in the POPR, the trial
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`date is scheduled during the same month as the anticipated final written decision for
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`this IPR. Accordingly, the second factor is neutral.
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`Samsung does not address the third factor in the reply, which favors denial for
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`the reasons set forth in the Preliminary Response
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`Samsung’s arguments regarding the fourth factor are misleading. The only
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`ground relating to Okamura in Samsung’s invalidity contentions is the Belitz and
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`Okamura combination. Ex. 2014, p. 30 (B-1). Samsung, however, presents eleven
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`additional grounds for invalidity in its invalidity contentions which are not covered
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`by the stipulation. Ex. 2014, p. 30 (B-2 – B-12). Because the stipulation is not a
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`broad stipulation (i.e., because it does not address at least grounds B-2 – B-12), it
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`does not ensure that this inter partes review is a “true alternative” to the district court
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`proceeding. See Sotera, IPR2020-01019, Paper 12 at 19.
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`Samsung offers no basis for the fifth factor being neutral. Instead, as set forth
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`in the Preliminary Response, the fifth factor favors denial because Samsung did not
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`sufficiently justify its delay in filing its Petition – a Petition that it admits is similar
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`to the previously filed petitions. Fintiv, Paper 11 at 13-14; Petition, 90; Reply, 2
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`3
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`(“”it is not surprising that similar arguments may arise when mapping excellent prior
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`art (e.g., Okamura for Samsung and A3UM [sic] for Apple) to identical claim
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`limitations”); Reply, 5.
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`With respect to the sixth factor, Samsung concedes the Okamura-Belitz
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`ground it advances is different than the Okamura-Flora ground advanced by Unified.
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`Reply, p. 5. Notably, Samsung’s petition differs from Unified’s petition in a key
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`way: the only argument that Samsung presents about the “second name” (limitation
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`[1k]) in the claimed people view is deficient because Samsung does not offer any
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`evidence that Okamura discloses or that it would be obvious to modify Okamura to
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`show both the first name adjacent the first image and second name adjacent to the
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`second image. POPR, 49-50. The Unified IPR, on the other hand, offered an
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`obviousness theory based on Okamura alone and an obviousness theory based on
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`Okamura in combination with Flora and Gilley. Unified Petition, 60-61 (Okamura
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`alone), 93-94 (Okamura in combination with Gilley). This key difference supports
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`denial under the sixth Fintiv factor because the Board’s resources should not be
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`wasted on theories that are deficient.
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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 denying institution. Fintiv, Paper 11 at 6.
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`4
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`Respectfully submitted,
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`Dated: April 26, 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 April 26, 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
`IPR39843-0117IP1@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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`1
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