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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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`______________________
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`SAMSUNG ELECTRONICS CO., LTD AND DELL TECHNOLOGIES INC.
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`Petitioners
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`v.
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`MYPAQ HOLDINGS LTD.
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`Patent Owner
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`_____________________
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`Case No. IPR2022-00311
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`U.S. Patent No. 8,477,514
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`_______________________
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`SUR-REPLY IN SUPPORT OF PATENT OWNER’S
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`PRELIMINARY RESPONSE
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`_______________________
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`Case IPR2022-00311
`U.S. Pat. No. 8,477,514
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`Patent Owner (“PO”) replies to the arguments in Petitioners’ Reply (Paper
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`No. 9) concerning PO’s request for a 35 U.S.C. 314(a) discretionary denial.
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`Factor 1. Here a motion to stay has not been sought because Petitioners
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`know it would be denied. PO’s Preliminary Response cites recent public remarks
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`from the presiding judge indicating his clear preference not to stay lawsuits
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`pending IPR outcomes. POPR, 13 (citing Ex. 2004). The article is the only
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`evidence from the presiding judge explaining that the “one or two” cases
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`previously stayed involved a “plaintiff [who] has first sued other companies over a
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`patent in a different district, and the defendant in that case has initiated a PTAB
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`review that is well underway by the time another company is sued in the Western
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`District of Texas.” Ex. 2004. The underlying litigation was initially filed in the
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`Western District of Texas. This is not an earlier filed IPR already “well under
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`way.” It is speculation to ignore the evidence and assume a stay will be sought
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`when the presiding judge has informed the world he denies stays in all but a very
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`few, exceptional situations involving conditions not present here.
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`Sand Revolution II, LLC is distinguishable. There, the Board rejected a PO’s
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`generic argument that the relevant district court routinely denied stays “in the
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`absence of specific evidence.” Id. Here, PO has provided the most relevant and
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`specific evidence possible: a statement from the presiding judge addressing the
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`issue. Importantly, the presiding judge made this statement knowing his words
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`-1-
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`Case IPR2022-00311
`U.S. Pat. No. 8,477,514
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`were to be published so they could be relied upon by IPR Panels like this one
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`making institution decisions. There is no evidence that the presiding judge has ever
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`granted a stay in any case similarly postured to this one.
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`Petitioners argue “a stay is more likely here because PO has admitted that it
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`would not face any particularized prejudice from a stay.” Reply, 1. First,
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`Petitioners mischaracterize the record. There has been no such admission. Second,
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`PO stated that it has a “strong interest in the prompt vindication of its patent
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`rights.” Ex. 1021, 6. Petitioner’s own cited case—CyWee Group Ltd—confirms
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`“the interest in prompt enforcement of patent rights is entitled to weight” against a
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`stay. Id. at *3. PO’s stated interest in prompt enforcement weighs against a stay.
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`No stay has been granted. None will. This supports discretionary denial.
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`Factor 2. Petitioners concede the scheduled May 2023 trial date is almost
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`two months prior to the current deadline for a FWD. Reply, 2-3. Petitioners ask the
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`Panel to assume the schedule is likely to slip due to foreign discovery issues1 or
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`speculate that the case may be transferred (within the same District). Reply, 2-3.
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`1 Petitioners’ footnote that PO “has not yet started the foreign discovery
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`process” (Reply, 3 n.2) is incorrect. PO has been working diligently to prepare
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`these requests and even corresponding with one of Petitioners for information
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`relevant to completing them.
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`-2-
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`Case IPR2022-00311
`U.S. Pat. No. 8,477,514
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`Petitioners’ speculative arguments are contrary to the known facts. The presiding
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`judge granted MyPAQ early discovery “to be able to keep this case on track” (Ex.
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`1022, 19). The presiding judge has made clear he is going to do what it takes to
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`avoid foreign discovery delaying trial. Id.
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`The transfer motion will be denied (or granted) before an institution
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`decision. Speculation on whether a transfer will occur is unnecessary when the
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`Board will have the transfer decision before an institution decision is made.
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`Further, the court recently appointed a technical advisor to advise on the technical
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`aspects of the case, including summary judgment motions on invalidity. Ex. 2015
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`[Order Appointing Technical Advisor]. This, along with the court’s efforts to keep
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`the current Markman hearing date, suggest a transfer (and any delay) is unlikely.
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`Petitioners cite Micron Technology, Inc. and Google LLC to argue that a trial
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`date set a few months before a FWD is due makes this factor neutral. Neither case
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`supports Petitioners’ assertion. In Micron, the court had not set a trial date due to
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`COVID-19 delays. Micron, 12-13. In Google, the Board discussed COVID-19
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`delays and court closures as the primary reason for the unpredictability in the
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`district court schedule. Google, 12-14. Without the same concerns regarding the
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`global pandemic as were present in 2020, Fintiv’s instructions to weigh this factor
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`in favor of denial of institution should be taken at face value.
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`-3-
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`Case IPR2022-00311
`U.S. Pat. No. 8,477,514
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`Factor 3. By the time of institution, preliminary invalidity and infringement
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`contentions will have been served, the Markman hearing completed, and discovery
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`(foreign and domestic) well under way. As to the issue of validity, final invalidity
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`contentions are due on June 29, 2022. Ex. 1014, 4. Fact and expert discovery will
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`close well before a FWD issues.
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`Petitioners argue that “[i]t was reasonable [ ] to wait to know which
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`independent claims PO was asserting to ensure all claims could be addressed
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`efficiently in a single Petition.” Reply, 4. Petitioners’ excuse for delaying is
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`illusory. Petitioners challenged all claims, not just the asserted claims. POPR, 17-
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`18. There was no reason to wait.
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`Factor 4. Petitioners’ Reply does not address the arguments presented in the
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`POPR. Instead, Petitioners argue that their stipulation “is broader than the
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`stipulation approved of in Sand Revolution . . . and ensures that there will be no
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`overlap between the PTAB and district court invalidity arguments.” Reply, 5.
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`However, Petitioners’ stipulation falls far short of that required in Sotera Wireless,
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`Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020)
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`(Precedential as to § II.A). Even without the prior art asserted in this IPR,
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`Petitioners’ stipulation would do little to eliminate or simplify the numerous
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`invalidity issues already before the district court, or to preclude additional issues
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`that Petitioners could have but did not raise in its Petition. POPR, 19.
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`Case IPR2022-00311
`U.S. Pat. No. 8,477,514
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`Factor 5. It is undisputed that the parties here are the parties to the parallel
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`proceedings. Petitioners cite Protect Animals With Satellites v. Onpoint Systems,
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`LLC, IPR2021-01483, Paper 11 at 17 (PTAB Mar. 4, 2022) (non-precedential) for
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`the proposition that this factor is neutral where the trial is scheduled close to the
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`same time as the FWD. Reply, 5. The timing of the trial is a consideration under
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`Factor 2, not Factor 5. Fintiv I at 6 (PTAB Mar. 20, 2020) (precedential). Further,
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`Petitioners’ argument conflicts with Fintiv II, which states that, “[b]ecause the
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`petitioner and the defendant in the parallel proceeding are the same party, this
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`factor weighs in favor of discretionary denial.” Fintiv II, 15.
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`Factor 6. The court’s recent order appointing technical advisor Dr. Joshua Yi
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`(discussed above) ensures that validity issues will be reviewed by an individual
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`with expertise in the relevant technical field, thus obviating a central justification
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`for allowing PTAB to proceed in parallel with District Court litigation. Dr. Yi has
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`a Ph.D. in electrical engineering and prior work experience at Freescale
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`Semiconductor in the same fields at issue in this case. Ex. 2016. Dr. Yi has even
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`designed processors not unlike the controllers that make up part of the claimed
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`invention of the patents in suit. See Ex. 2017. In addition, the Petition should not
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`be instituted because the merits of the Petition are weak. POPR, 21.
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`Every factor clearly, overwhelmingly weighs in favor of discretionary
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`denial.
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`Case IPR2022-00311
`U.S. Pat. No. 8,477,514
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`Dated: April 25, 2022
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`Respectfully submitted,
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`/James T. Carmichael /
`James T. Carmichael
`Reg. No. 45,306
`Lead Counsel for Patent Owner
`Email: jim@carmichaelip.com
`Telephone: (703) 646-9255
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`Stephen McBride
`Reg. No. 78,396
`Email: stevemcbride@camichaelip.com
`Telephone: (703) 646-9247
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`Minghui Yang
`Reg No. 71,989
`mitch@carmichaelip.com
`Telephone: (703) 664-9248
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`Carmichael IP, PLLC
`8000 Towers Crescent Dr., 13th Floor
`Tysons, VA 22182
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`-6-
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`Case IPR2022-00311
`U.S. Pat. No. 8,477,514
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that, pursuant to 37 C.F.R. § 42.6(e), true
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`and correct copies of the foregoing SUR-REPLY IN SUPPORT OF PATENT
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`OWNER’S PRELIMINARY RESPONSE has been served electronically via email
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`to DLSamsung514IPR@BakerBotts.com and on the following counsel of record
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`for Petitioner:
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`Eliot D. Williams (eliot.williams@bakerbotts.com
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`Neil Sirota (neil.sirota@bakerbotts.com)
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`Brett Thompsen (brett.thompsen@bakerbotts.com)
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`Frank Zhu (frank.zhu@bakerbotts.com)
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`Paula Heyman (paula.heyman@bakerbotts.com)
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`Dated: April 25, 2022
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`Respectfully submitted,
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`/Stephen McBride /
`James T. Carmichael
`Reg. No. 45,306
`Lead Counsel for Patent Owner
`Email: jim@carmichaelip.com
`Telephone: (703) 646-9255
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`Case IPR2022-00311
`U.S. Pat. No. 8,477,514
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`Stephen McBride
`Reg. No. 78,396
`Email: stevemcbride@camichaelip.com
`Telephone: (703) 646-9247
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`Minghui Yang
`Reg No. 71,989
`mitch@carmichaelip.com
`Telephone: (703) 646-9248
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`Carmichael IP, PLLC
`8000 Towers Crescent Dr., 13th Floor
`Tysons, VA 22182
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