`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and GOOGLE LLC,
`Petitioner
`
`v.
`
`SCRAMOGE TECHNOLOGY LTD.,
`Patent Owner
`____________
`
`IPR2022-00284
`Patent 9,997,962
`____________
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE SUR-REPLY
`
`
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`Table of Contents
`
`I. ALL FINTIV FACTORS WEIGH AGAINST INSTITUTION ........................ 1
`A.
`Factor 1: A stay is unlikely to be granted. ..................................................... 1
`B.
`Factor 2: The district court trial will begin before the FWD deadline. .......... 2
`C.
`Factor 3: There has been significant investment in the district court. ........... 2
`D.
`Factor 4: Duplicative issues and inefficiencies remain. ................................. 3
`E.
`Factor 5: Petitioner is a defendant in the district court litigation. .................. 4
`F.
`Factor 6: The petition is substantively weak. ................................................. 5
`II. INSTITUTION SHOULD BE DENIED UNDER § 314(a) .............................. 5
`III. INSTITUTION SHOULD BE DENIED UNDER § 325(d) .............................. 7
`IV. CONCLUSION .................................................................................................. 7
`
`
`
`
`
`
`
`
`i
`
`
`
`IPR2022-00284 (’962 Patent)
`Patent Owner Preliminary Response Sur-reply
`
`
`I.
`
`ALL FINTIV FACTORS WEIGH AGAINST INSTITUTION
`
`All six Fintiv factors strongly favor a discretionary denial and Petitioner does
`
`not show otherwise. Trial in the district court is set for four months before the
`
`deadline for a final written decision (“FWD”) in this matter. IPRs were intended to
`
`be “an effective and efficient alternative” to district court litigation, but this IPR
`
`cannot be such an alternative under these circumstances. Allowing this IPR to
`
`proceed simultaneously with the district court litigation would result in duplicative
`
`work, risk conflicting decisions, and be an inefficient use of the Board’s finite
`
`resources. Institution should be denied.
`
`A.
`
`Factor 1: A stay is unlikely to be granted.
`
`Petitioner does not seriously dispute that the district court is unlikely to grant
`
`a stay. Patent Owner provides specific evidence, including evidence regarding the
`
`stage of the litigation, and reasonably concludes that a stay is unlikely under the
`
`applicable law—a position that Petitioner cannot refute. See Samsung Elecs. Co. Ltd.
`
`v. Evolved Wireless LLC, IPR2021-00950, Paper 10 at 10–11 (PTAB Nov. 29, 2021)
`
`(“Evolved”) (finding this factor weighed in favor of denial and denying institution
`
`where patent owner showed a stay was unlikely based on the advanced stage of the
`
`case and past decisions denying stays). The Kirsch case cited by Petitioner is
`
`inapposite because the Board’s FWD was due prior to the trial date in that case.
`
`
`
`1
`
`
`
`IPR2022-00284 (’962 Patent)
`Patent Owner Preliminary Response Sur-reply
`
`
`Moreover, Petitioner still has not filed a motion to stay, and still has not indicated
`
`that it even intends to file such a motion. Factor 1 weighs against institution.
`
`B.
`
`Factor 2: The district court trial will begin before the FWD
`deadline.
`
`Trial is set for February 2023, which is months before a FWD would be due.
`
`And contrary to Petitioner’s assertions, this is more than sufficient to support a
`
`discretionary denial, especially given Judge Albright’s strong policy against
`
`schedule changes. Indeed, the Board has denied institution under nearly identical
`
`circumstances. See, e.g., Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 7–8,
`
`at 13 (PTAB May 13, 2020) (“Fintiv II”) (denying institution where the district court
`
`trial was scheduled two months before the deadline for FWD); Evolved at 13 (PTAB
`
`Nov. 29, 2021) (same); Immersion Systems LLC v. Midas Green Techs., LLC,
`
`IPR2021-01176, Paper 16 at 12–13 (PTAB Jan. 6, 2022) (“Midas”) (three months).
`
`And Samsung’s meritless motion to transfer—where it failed to identify even one
`
`relevant witness in NDCA—only further confirms that there is no evidence to
`
`suggest the trial schedule might be delayed. Ex. 2022. Factor 2 weighs against
`
`institution.
`
`C.
`
`Factor 3: There has been significant investment in the district
`court.
`
`Petitioner asserts that the Board should simply ignore both the parties’ and the
`
`district court’s significant investment in claim construction. But the Markman
`
`
`
`2
`
`
`
`IPR2022-00284 (’962 Patent)
`Patent Owner Preliminary Response Sur-reply
`
`
`hearing is set for May 23, 2022. The Board’s decisions find that “substantive orders
`
`related to the patent at issue,” including claim construction orders entered by the
`
`district court, favor discretionary denial. Apple Inc. v. Fintiv, Inc., IPR2020-00019,
`
`Paper 11 at 9–10 (PTAB Mar. 20, 2020) (precedential, designated May 5, 2020)
`
`(“Fintiv I”). For example, in Midas, the Board found the fact that a claim
`
`construction order had been entered and discovery was underway was “not
`
`insignificant” and denied institution. Midas at 13–14. The Board further found that
`
`“although it appears that much is left to occur in the related district court litigation,
`
`the evidenced expended effort is nevertheless not insubstantial.” Id. at 14. The same
`
`reasoning applies here. Claim construction briefing is now completed, discovery is
`
`open, and the parties have exchanged infringement and invalidity contentions. This
`
`is not insubstantial. “[T]he level of investment and effort already expended on claim
`
`construction and invalidity contentions” favors discretionary denial. Fintiv II at 13–
`
`14.
`
`D.
`
`Factor 4: Duplicative issues and inefficiencies remain.
`
`Petitioner does not dispute that the district court case involves the same patent,
`
`same claims, and the same invalidity references. And to erase any doubt as to the
`
`complete overlap regarding invalidity arguments and evidence, Petitioner’s
`
`invalidity contentions incorporate by reference its arguments and evidence in this
`
`
`
`3
`
`
`
`IPR2022-00284 (’962 Patent)
`Patent Owner Preliminary Response Sur-reply
`
`
`IPR. POPR at 48–49. Thus, this proceeding is entirely duplicative of the issues that
`
`will be addressed by the district court.
`
`In light of this overlap, Petitioner “has stipulated that it will not pursue any
`
`obviousness ground that includes the primary reference in this IPR petition (Suzuki)
`
`against the asserted claims of the ’962 patent in the parallel district court case.”
`
`Reply at 1. This narrow stipulation is insufficient and only applies to “obviousness”
`
`grounds, meaning that the Suzuki reference would still be at issue for anticipation in
`
`the district court. Moreover, the ’962 patent is also asserted against Apple in the
`
`district court, and Apple has asserted Suzuki as an alleged anticipation and
`
`obviousness reference. Even if Petitioner does not rely on Suzuki, it will still benefit
`
`from any findings made in Apple’s favor. Thus, Suzuki will continue to be litigated
`
`in district court against the ’962 patent such that Petitioner’s stipulation is
`
`meaningless. Petitioner’s narrow stipulation is insufficient and fails to resolve
`
`concerns of duplicative issues and inconsistent rulings. See Evolved at 14–15
`
`(finding this factor weighed against institution despite the petitioner’s broader
`
`stipulation that it would not assert “any grounds of invalidity based in any way upon
`
`the primary reference relied upon”). Factor 4 thus weighs against institution.
`
`E.
`
`Factor 5: Petitioner is a defendant in the district court litigation.
`
`Petitioner’s reply does not address this factor which weighs against institution.
`
`Regardless, it is undeniable that Petitioner is a defendant.
`
`
`
`4
`
`
`
`IPR2022-00284 (’962 Patent)
`Patent Owner Preliminary Response Sur-reply
`
`
`
`F.
`
`Factor 6: The petition is substantively weak.
`
`Petitioner’s reply does not substantively address the failures in the Petition
`
`that Patent owner identified in the POPR. Accordingly, Patent Owner refers to and
`
`incorporates the arguments in its POPR.
`
`Nor does Petitioner make any effort to explain or justify its inconsistent claim
`
`constructions—thereby confirming that Petitioner has attempted to obtain an unfair
`
`strategic advantage with different positions between the two forums. This fact alone
`
`warrants discretionary denial. See Orthopediatrics Corp. v. K2M Inc., IPR2018-
`
`01546, Paper 10 at 10-12 (PTAB Feb. 14, 2019) (“Petitioner’s failure to provide a
`
`claim construction is . . . further compounded by the fact that Petitioner takes an
`
`inconsistent position before the District Court . . . . By failing to reconcile its
`
`proffered claim construction here with its very different construction proffered in
`
`District Court . . . Petitioner fails to satisfy [its] burden”) (denying institution).
`
`II.
`
`INSTITUTION SHOULD BE DENIED UNDER § 314(a)
`Here, the vast majority of the General Plastic factors weigh against
`
`institution. Petitioner cannot dispute that the Board has often exercised its discretion
`
`to deny institution of a subsequent petition against a previously challenged patent
`
`where the subsequent petition is filed by a new petitioner. See POPR at 31. As such,
`
`Factors 1-3 do not compel institution.
`
`
`
`5
`
`
`
`IPR2022-00284 (’962 Patent)
`Patent Owner Preliminary Response Sur-reply
`
`
`
`Regarding Factors 4 and 5, Petitioner fails to identify when it first learned of
`
`the prior art asserted in the Petition. Nor does Petitioner provide any explanation for
`
`why it waited more than seven months after being served with the complaint to file
`
`its Petition. See NetApp v. Realtime Data, IPR2017-01195, Paper 9 at 12 (Oct. 12,
`
`2017) (finding Factor 5 weighed against institution where petitioner “provided no
`
`explanation regarding why it waited” to file its petition).
`
`Regarding Factor 6, Petitioner does not provide any reason the Board should
`
`waste its finite resources to address multiple petitions challenging the same claims
`
`of the same patent. Nor does Petitioner provide any explanation for why it did not
`
`join the earlier Apple IPR, which was instituted on May 4, 2022. See IPR2022-
`
`00120, Paper 9.
`
`Regarding Factor 7, Petitioner does not suggest that the Board would be able
`
`to join, consolidate, or coordinate this proceeding with the earlier Apple IPR. Factor
`
`7 thus weighs against institution. EchoStar v. Realtime Data, IPR2018-00614, Paper
`
`10 at 17 (finding Factors 6 and 7 weigh against institution “due to Petitioner’s delay
`
`in filing its Petition and the time limit of 35 U.S.C. § 316(a)(11), the Board is unable
`
`to join, consolidate, or coordinate this proceeding with the earlier filed proceedings
`
`. . . . The result would be a significant waste of the Board’s resources.”).
`
`
`
`6
`
`
`
`IPR2022-00284 (’962 Patent)
`Patent Owner Preliminary Response Sur-reply
`
`
`III.
`
`INSTITUTION SHOULD BE DENIED UNDER § 325(d)
`The Petition’s Suzuki and Okada references are cumulative to Sakuma, and
`
`Petitioner makes no effort to identify any relevant differences between the Petition’s
`
`cited disclosures and Sakuma. Further, Petitioner does not demonstrate that the
`
`Office erred in a manner material to the patentability of the challenged claims. The
`
`Petition’s hindsight arguments seeking to combine bits and pieces from multiple
`
`different references and embodiments do not warrant reconsideration of
`
`substantially the same art, and the Board should exercise its discretion under 325(d)
`
`to deny institution.
`
`IV. CONCLUSION
`Discretionary denial is warranted here under Fintiv, § 314(a), and § 325(d).
`
`Patent Owner respectfully requests that the Board exercise its discretion to deny
`
`institution.
`
`
`
`
`
`
`
`
`
`7
`
`
`
`
`Date: May 4, 2022
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2022-00284 (’962 Patent)
`Patent Owner Preliminary Response Sur-reply
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /Brett Cooper/
`Brett Cooper, Reg. No. 55,085
`bcooper@raklaw.com
`rak_scramoge@raklaw.com
`Reza Mirzaie, Reg. No. 69,138
`rmirzaie@raklaw.com
`Russ, August & Kabat
`12424 Wilshire Blvd. 12th Floor
`Los Angeles, CA 90025
`Tel.: 310-826-7474
`Fax: 310-826-6991
`
`Counsel for Patent Owner,
`Scramoge Technology, Ltd.
`
`
`
`
`
`
`
`
`
`8
`
`
`
`IPR2022-00284 (’962 Patent)
`Patent Owner Preliminary Response Sur-reply
`
`
`
`
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e)(1))
`
`The undersigned hereby certifies that the above document was served on May
`
`4, 2022 by filing this document through the Patent Trial and Appeal Board End to
`
`End system, as well as delivering a copy via electronic mail upon the following
`
`attorneys of record for the Petitioner:
`
`John Kappos (Reg. No. 37,861)
`Email: jkappos@omm.com
`Cameron W. Westin (Reg. No. 66,188)
`Email: cwestin@omm.com
`O’Melveny & Myers LLP
`610 Newport Center Dr., 17th Floor
`Newport Beach, CA 92660
`Telephone: 949-823-6900
`Fax: 949-823-6994
`
`Naveen Modi (Reg. No. 46,224)
`Joseph E. Palys (Reg. No. 46,508)
`Phillip Citroën (Reg. No. 66,541)
`Paul M. Anderson (Reg. No. 39,896)
`Quadeer A. Ahmed (Reg. No. 60,835)
`Paul Hastings LLP,
`2050 M St., N.W.
`Washington, DC 20036
`Telephone: (202) 551-1990
`Fax: (202) 551-1705
`Email: PH-Google-Scramoge-IPR@paulhastings.com
`
`/Brett Cooper/
`Brett Cooper, Reg. No. 55,085
`bcooper@raklaw.com
`rak_scramoge@raklaw.com
`Russ, August & Kabat
`12424 Wilshire Blvd. 12th Floor
`
`
`
`
`
`IPR2022-00284 (’962 Patent)
`Patent Owner Preliminary Response Sur-reply
`
`Los Angeles, CA 90025
`Tel.: 310-826-7474
`Fax: 310-826-6991
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
