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`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.,
`SAMSUNG ELECTRONICS AMERICA, INC., and GOOGLE LLC,
`Petitioner
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`v.
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`SCRAMOGE TECHNOLOGY LTD.,
`Patent Owner.
`
`____________________
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`Case IPR2022-00284
`Patent No. 9,997,962
`____________________
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`PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
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`I.
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`THE FINTIV FACTORS FAVOR INSTITUTION
`While the Fintiv factors favor institution for the reasons stated previously
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`Case IPR2022-00284
`U.S. Patent No. 9,997,962
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`(Pet., 81-85), developments in the district court further support institution.
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`For example, the fourth Fintiv factor strongly favors institution. Specifically,
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`Petitioner has stipulated that it will not pursue any obviousness ground that includes
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`the primary reference in this IPR petition (Suzuki) against the asserted claims of the
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`’962 patent in the parallel district court case. Exs-1022-1023. The Board has
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`routinely found that this type of stipulation favors institution. See, e.g., Samsung
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`Electronics Co., Ltd. et al. v. Power2B Inc., IPR2021-01239, Paper 12 at 12-13
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`(January 20, 2022). Thus, PO’s arguments regarding the alleged “complete overlap”
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`(POPR (Paper 8), 47-49) are moot.1
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`The third Fintiv factor also strongly favors institution. PO fails to address
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`Petitioner’s diligence in filing the Petition just three months after being served with
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`preliminary infringement contentions and approximately six or seven months after
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`the complaint filings. (POPR, 46-47; see also Pet., 83.) The Board has found this
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` PO’s reliance on Next Caller (POPR, 48) regarding additional claims being
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` 1
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`challenged in this IPR is misplaced. Next Caller is a pre-Fintiv case and, as
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`Petitioner explained, the number of asserted claims will only be further narrowed
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`before trial in district court. (Pet., 83-84.)
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`1
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`as a “countervailing consideration” to any investment in the district court
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`proceedings that weighs against exercising discretion. Tianma Microelectronics Co.
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`Ltd. v. Japan Display Inc., IPR2021-01028, Paper 14 at 9-11 (December 14, 2021);
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`see also Coolit Systems, Inc. v. Asetek Danmark A/S, IPR2021-01195, Paper 10 at
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`11-12 (Dec. 28, 2021).
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`Moreover, PO’s arguments are premised on claim construction completion.
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`(POPR, 46-47.) But the Board emphasized that the focus of this factor is not the
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`total amount invested by the court and parties, but rather the amount invested “in the
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`merits of the invalidity positions.” Sand Revolution II, LLC v. Continental
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`Intermodal Group – Trucking LLC, IPR2019-01393, Paper 24 at 10 (June 16, 2020)
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`(informative). Here, “much of the district court’s investment relates to ancillary
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`matters untethered to the validity issue itself.” Id. Importantly, Petitioner and PO
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`have not proposed any terms for construction. (See generally Pet.; POPR.) The
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`Board routinely finds the third factor favors institution when claim construction is
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`unrelated to IPR unpatentability issues. See, e.g., Huawei Tech. Co., Ltd., v. WSOU
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`Invs., LLC, IPR2021-00229, Paper 10 at 12-13 (Jul. 1, 2021); Apple Inc. v. Koss
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`Corp., IPR2021-00381, Paper 15, at 16-17 (Jul. 2, 2021).
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`The second Fintiv factor (proximity of trial date) also favors institution
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`because the trial date is not set in the Samsung litigation and the February 2023 date
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`2
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`in the Google litigation is subject to change. 2 In particular, both Google and
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`Samsung have pending motions to transfer. (Ex-1020; Ex-1024.) If the transfer
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`motions are granted, it is highly unlikely that the current trial schedule will hold.
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`(Exs-2002, 2015, 1027.) And even if not granted, the resolution of the transfer
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`motions may result in a delay in resolution of claim construction, and therefore
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`potentially trial, because the district court will not conduct a Markman hearing until
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`after a ruling on the transfer motions. (Ex-1025.)
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`In any event, the potential four-month gap between the expected final written
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`decision date and the trial date(s) is not dispositive, as the Board has instituted in
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`similar situations. (See Pet., 82-83.) See also MediaTek Inc. et al. v. Nippon
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`Telegraph and Telephone Corp., IPR2020-01607, Paper 12 at 14 (April 2, 2021)
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`(finding factor two “as slightly favoring proceeding” where “final decision will be
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`within three months of trial”); Western Digital Corp. et al. v. Martin Kuster,
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`IPR2020-01391, Paper 10 at 9 (February 16, 2021) (finding factor two neutral where
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`“there would be only a three-and-a-half month difference between the district court
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` Moreover, statistics show that a vast majority of trial dates are delayed. (Ex1026
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` 2
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`(article coauthored by Ex-USPTO Solicitor Nathan Kelley highlighting that,
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`“[w]hen evaluating future trial dates, the Board was wrong 94% of the time”).)
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`3
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`trial date and the due date for the final written decision”); Tianma, Paper 14 at 9-11
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`(December 14, 2021) (instituting IPR when “[FWD] would issue approximately ten
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`months after the start of trial”); Coolit Systems, Paper 10 at 11-12 (Dec. 28, 2021)
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`(instituting IPR despite five-month expected gap between FWD and trial date).
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`The first factor (stay) favors institution, or is at best neutral for the reasons
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`previously explained. (Pet., 82.) Indeed, Judge Albright recently granted a motion
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`to stay in another case after the Board instituted an IPR, even though that case was
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`in an “advanced stage,” having held the Markman hearing six months earlier and on
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`the eve of the close of discovery. Kirsch Rsch. & Dev., LLC v. IKO Indus., Inc., No.
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`6:20-CV-00317-ADA, 2021 WL 4555610, at *1 (W.D. Tex. Oct. 5, 2021).
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`With respect to the sixth factor (other circumstances), PO fails to sufficiently
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`address Petitioner’s arguments regarding the undeniable similarities between
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`Petitioner’s references and the ’962 patent. (Pet., 84-85.) PO’s assertions to the
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`contrary are merely unsupported attorney argument. (POPR, 50; see also POPR, 12-
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`29.) Furthermore, PO’s assertion regarding inconsistent claim construction
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`arguments (POPR, 50-51) is a red herring, as PO does not even argue that the subject
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`claim term(s) are patentable over the proposed grounds in the IPR (see POPR, 12-
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`29).
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`II. THE GENERAL PLASTIC FACTORS FAVOR INSTITUTION
`For all the reasons previously explained, this is not a serial petition under the
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`4
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`factors set forth in General Plastic. (Pet., 85-87.) PO’s arguments do not overcome,
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`and in most cases, do not directly address Petitioner’s positions. (POPR, 31-40.)
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`As an initial matter, PO concedes the first General Plastic factor favors
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`institution while, without any explanation, stating that factors two and three are
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`neutral. (POPR, 33, 40.) As explained previously and below, factors two and three
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`favor institution.
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`PO’s remaining arguments are premised exclusively on its reliance on NetApp
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`v. Realtime Data, IPR2017-01195, Paper 9 (Oct. 12, 2017) (“NetApp”). (POPR, 31-
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`40 (citing NetApp in support of each factor).) But NetApp involved vastly different
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`facts.
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`For instance, NetApp involved at least six prior IPRs filed by different parties
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`between eight to twenty months before NetApp’s petition was filed. NetApp at 2-3,
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`6-8. Five of the six references in the NetApp IPR overlapped with the prior IPRs.
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`Id. at 6. The Board found that Netapp should have known about those five references
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`at least six to eight months before it filed the IPR due to the previously filed IPRs.
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`Id. at 11-12. Netapp also had the benefit of access to preliminary responses,
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`institution decisions, and even a patent owner response from the prior IPRs before it
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`5
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`filed its IPR. Id.3
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`In contrast, here, Petitioner promptly filed its petition shortly after the Apple
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`-120 IPR petition and before PO filed its preliminary response. Thus, factors three,
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`four, and five favor institution. (Pet., 85.) Additionally, only one reference in the
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`instant petition overlaps with the references raised in the Apple -120 IPR petition,
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`and different obviousness combinations are at issue. Thus, factor two also favors
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`institution. (Id., 85-86.) And while PO argues that Petitioner was aware of the
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`relied-upon prior art in this IPR by November 15, 2021, when invalidity contentions
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`were served (POPR, 34-35), PO fails to acknowledge that the instant petition was
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`filed within three weeks of that date.
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`Regarding factor six, Samsung and Google jointly filed this petition, which
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`promotes efficiency, including conserving the Board’s resources. (Pet., 84, 86.)
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`And for factor seven, PO fails to show why the Board cannot issue the final written
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`decision within the statutory timeline.
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` PO notes that NetApp is cited in the Board’s Trial Practice Guide and in the Board’s
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` 3
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`other precedential cases. (POPR, 33-34.) Regarding the Trial Practice Guide,
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`NetApp is not applicable for the reasons explained herein. Concerning the Board’s
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`other precedential cases, PO fails to explain how those cases are relevant here.
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`6
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`III. SECTION 325(d) DOES NOT APPLY
`Regarding § 325(d), PO fails to respond to Petitioner’s argument that while
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`Lee was considered by the Office, the new prior art combinations in the petition were
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`not before the Examiner. (Pet., 79.) Nor did PO address the argument that the Office
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`did not previously consider the evidence supporting the obviousness combinations.
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`(Pet., 80.)
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`PO’s generic argument regarding the Suzuki and Okada references being
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`cumulative to Sakuma should also be rejected. (POPR, 29.) For example, PO does
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`not explain how Sakuma’s teachings are cumulative to Suzuki and Okada (but
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`instead merely provides a high-level description of Sakuma’s figure 6a. (Id., 29-31.)
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`And in any event, the Examiner did not discuss or apply Sakuma during prosecution
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`(see generally Ex-1004), and the missing limitation the Examiner identified for
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`allowance is clearly shown by the prior art in the petition, as previously explained.
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`(Pet., 81.)
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`IV. CONCLUSION
`Accordingly, Petitioner respectfully requests that the Board decline to
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`exercise its discretion to deny institution, and instead institute review.
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`Dated: April 27, 2022
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`Respectfully submitted,
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`By: /s/ John Kappos
`John Kappos (Reg. No. 37,861)
`Counsel for Petitioner
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`7
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`Case IPR2022-00284
`U.S. Patent No. 9,997,962
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`CERTIFICATE OF SERVICE
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`I hereby certify that on April 27, 2022, I caused a true and correct copy of the
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`foregoing Petitioner’s Reply to Patent Owner’s Preliminary Response to be served
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`electronically on counsel for Patent Owner at the following addresses:
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`Lead Counsel
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`Backup Counsel
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`Brett Cooper, Reg. No. 55,085
`Russ, August & Kabat
`12424 Wilshire Blvd. 12th Floor
`Los Angeles, CA 90025
`Tel.: 310-826-7474
`Fax: 310-826-6991
`bcooper@raklaw.com
`rak_scramoge@raklaw.com
`
`Reza Mirzaie, Reg. No. 69,138
`Russ, August & Kabat
`12424 Wilshire Blvd. 12th Floor
`Los Angeles, CA 90025
`Tel.: 310-826-7474
`Fax: 310-826-6991
`rmirzaie@raklaw.com
`rak_scramoge@raklaw.com
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`Respectfully submitted,
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`By: /s/ John Kappos
` John Kappos (Reg. No. 37,861)
` Counsel for Petitioner
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