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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 IPR2022-00385
`Patent No. 9,843,215
`____________________
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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 (Pet.
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`U.S. Patent No. 9,843,215
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`(Paper 1), 91-94), developments in the district court further support institution.
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`For example, the fourth Fintiv factor now more strongly favors institution.
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`Petitioner has stipulated that it will not pursue any anticipation or obviousness
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`ground that includes any primary reference in the instant Petition (Sakuma and
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`Hiroki) against the asserted claims of the ’215 patent in the parallel district court
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`case. Exs-1028-1029. The Board has found that this type of stipulation favors
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`institution. See, e.g., Samsung Elecs. Co., Ltd. v. Power2B Inc., IPR2021-01239,
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`Paper 12 at 12-13 (PTAB Jan. 20, 2022). Thus, PO’s arguments regarding the
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`alleged “complete overlap” (POPR (Paper 8), 48-50) 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 within four months after being served
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`with preliminary infringement contentions and approximately seven or eight months
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`after the complaint filings. POPR, 47-48; see also Pet., 92-93. The Board has found
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`this as a “countervailing consideration” to any investment in the district court
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` PO’s reliance on Next Caller (POPR, 50) is misplaced. Next Caller is a pre-Fintiv
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` 1
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`case and, as Petitioner explained, the number of asserted claims will only be further
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`narrowed before trial in district court. Pet., 93.
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`1
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`U.S. Patent No. 9,843,215
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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 (PTAB Dec. 14, 2021);
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`see also Coolit Sys., Inc. v. Asetek Danmark A/S, IPR2021-01195, Paper 10 at 11-12
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`(PTAB Dec. 28, 2021).
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`Moreover, PO’s arguments are premised on claim construction completion.
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`POPR, 47-48. The Board, however, has emphasized that the focus of this factor is
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`not the total amount invested by the court and parties, but rather the amount invested
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`“in the 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 (PTAB June 16,
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`2020) (informative). Here, aside from the district court’s recent claim construction
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`order,2 which is unrelated to the unpatentability issues raised in the Petition, “much
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`of the district court’s investment relates to ancillary matters untethered to the validity
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`issue itself.” Id. And, importantly, Petitioner and PO have not proposed any terms
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`for construction in this proceeding. See generally Pet.; POPR. In such
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`circumstances, the third factor favors institution. See, e.g., Huawei Tech. Co., Ltd.,
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`v. WSOU Invs., LLC, IPR2021-00229, Paper 10 at 12-13 (PTAB Jul. 1, 2021); Apple
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`Inc. v. Koss Corp., IPR2021-00381, Paper 15, at 16-17 (PTAB Jul. 2, 2021).
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`The second Fintiv factor also favors institution, because, while the district
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` The district court issued its claim construction order on May 23, 2022. Ex-1030.
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` 2
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`2
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`U.S. Patent No. 9,843,215
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`court recently set the trial date in both the Samsung and Google litigations for March
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`6, 2023 (Ex-1031), this trial date may change. Indeed, statistics show that a vast
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`majority of trial dates are delayed. Ex-1032 (article coauthored by Ex-USPTO
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`Solicitor Nathan Kelley highlighting that, “[w]hen evaluating future trial dates, the
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`Board was wrong 94% of the time”). But even if the date holds, the approximate
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`five-month gap between the expected final written decision date and the trial date is
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`not dispositive, as the Board has instituted in similar situations. See Pet., 91-92. See
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`also Tianma, Paper 14 at 9-11 (instituting IPR when “[FWD] would issue
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`approximately ten months after the start of trial”); Coolit Sys., Paper 10 at 11-12
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`(instituting IPR despite five-month expected gap between FWD and trial date).
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`The first factor favors institution, or is at best neutral for the reasons
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`previously explained. Pet., 91. Indeed, Judge Albright recently granted a motion to
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`stay in another case after the Board instituted an IPR, even though that case was in
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`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, PO’s attorney argument (POPR, 51; see also
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`POPR, 15-32) fails to sufficiently address Petitioner’s expert-supported arguments
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`regarding the similarities between Petitioner’s references and the ’215 patent (Pet.,
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`93-94). And contrary to PO’s assertion (POPR, 51-53), Petitioner’s claim
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`3
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`U.S. Patent No. 9,843,215
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`construction arguments regarding the “arranged on” term are consistent across the
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`PTAB and district court proceedings (Ex. 2014, 8; Ex. 2020, 8), including with
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`respect to the Hiroki-based grounds. To be sure, Petitioner states in footnote 7 of
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`the Petition that “the ’215 Patent uses the term ‘on’ broadly” and should be read to
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`allow for “the presence of intervening adhesive layers” (Pet., 17, n.7), which is
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`consistent with Petitioner’s proposed construction of this term in the district court
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`proceeding (Ex-2014 at 7 (stating that “contact[]” can be established “directly or
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`indirectly through an adhesive layer”)). Moreover, as explained in the Petition,
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`Hiroki’s antenna discloses this term, because it is on one surface of a non-contact IC
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`card, which is in turn positioned on the polymeric layers without any intervening
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`layer. Pet., 70-75 (citing, e.g., Ex-1007, FIG. 3, [0014], [0002]), 17, n.7, 21 n.9.
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`Additionally, PO does not even dispute that this term is disclosed by the Sakuma-
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`based grounds in the IPR.
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`PO’s citation to Orthopediatrics Corp. v. K2M, Inc., IPR2018-01546, Paper
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`10 at 10-12 (PTAB Feb. 14, 2019) (POPR, 53), is similarly inapposite. As an initial
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`matter, Orthopediatrics is not applicable because Petitioner does not take an
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`inconsistent position before the district court. Furthermore, Orthopediatrics
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`involved a district court’s claim construction order issued before the IPR petition
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`was filed, and the petition did not sufficiently address the district court’s order with
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`respect to the challenged claims. Orthopediatrics Corp., IPR2018-01546, Paper 10
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`4
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`U.S. Patent No. 9,843,215
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`at 7-8; Paper 1 (petition) at iii (Exhibit ORT-1011, claim construction order issued
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`May, 2018), 101 (petition filed August, 2018). That is not the case here, as no claim
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`construction order was issued at the time the instant Petition was filed.
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`Thus, the sixth factor further weighs against discretionary denial.
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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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`factors set forth in General Plastic. (Pet., 94-95.) PO’s arguments do not overcome,
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`and in most cases, do not directly address Petitioner’s positions. (POPR, 32-41.)
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`As an initial matter, the Board requested “Petitioner to inform the Board what
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`relationship exists between any of Petitioner’s real parties in interest and Patent
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`Owner.” (Order (Paper 10) at n.1 (May 17, 2022).) Petitioner submits that its real
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`parties-in-interest, Samsung Electronics Co., Ltd., Samsung Electronics America,
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`Inc., and Google LLC, do not have any relationship with PO, Scramoge Technology
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`Ltd.
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`Additionally, to the extent the Board is inquiring about any relationship
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`between Petitioner’s real parties-in-interest and Apple Inc. (“Apple”), the petitioner
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`in Apple -117 IPR (Pet., 1-2), Petitioner’s real parties-in-interest have no
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`relationship with and have not coordinated in any way with Apple in relation to
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`challenging claims of the ’215 patent before the Board. Nor are Petitioner’s real
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`parties-in-interest similarly situated to Apple. For example, Petitioner’s real parties-
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`5
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`U.S. Patent No. 9,843,215
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`in-interest and Apple are not co-defendants in the same case; nor were they sued at
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`the same time. PO instead sued each entity in seriatim over the span of several
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`months. Additionally, in the parallel district court cases, Petitioner’s real parties-in-
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`interest and Apple were each accused of infringement based on their own unique
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`products. Thus, as PO concedes (POPR, 33-34, 41), the first General Plastic factor
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`favors institution. See Illumina, Inc. v. Ravgen, Inc., IPR2021-01272, Paper 14 at
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`17-21 (PTAB Jan. 26, 2022) (finding first factor weighs against denial in similar
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`circumstances).
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`As to PO’s remaining arguments in its POPR, PO, with minimal explanation,
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`states that factors two and three are neutral. (POPR, 33-34, 41.) As explained
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`previously and below, factors two and three favor institution. PO’s arguments focus
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`on the Board’s decision in NetApp v. Realtime Data, IPR2017-01195, Paper 9
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`(PTAB Oct. 12, 2017) (“NetApp”). (POPR, 32-41 (citing NetApp in support of each
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`factor).) But NetApp involved vastly different 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 NetApp’s IPR overlapped with the prior IPRs. Id.
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`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 filing its IPR due to the previously filed IPRs. Id.
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`at 11-12. Netapp also had the benefit of preliminary responses, institution decisions,
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`6
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`U.S. Patent No. 9,843,215
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`and a patent owner response from the prior IPRs before it 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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`-117 IPR petition and before any preliminary response. Thus, factors three, four,
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`and five favor institution. (Pet., 95.) Additionally, none of the references raised in
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`the instant Petition overlap with the references raised in the Apple -117 IPR petition,
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`and different obviousness combinations are at issue. Thus, factor two also favors
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`institution. (Id., 94-95.) 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, 35-36), PO fails to acknowledge that the instant Petition was
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`filed within seven weeks of that date during the holiday season.
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`Furthermore, PO’s contention that “there is no reason for the delay in filing
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`the instant Petition” (POPR, 37) because IPRs challenging other asserted patents
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`were previously filed is irrelevant. Petitioner filed this Petition within the one year
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`statutory period. And as discussed above, the prior art in this IPR does not overlap
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`with the prior art in the Apple -117 IPR, and this Petition was filed before any
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` PO notes that NetApp is cited in the Trial Practice Guide and in the Board’s other
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` 3
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`precedential cases. (POPR, 34-35.) Regarding the Trial Practice Guide, NetApp is
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`not applicable for the reasons explained herein. Concerning the Board’s other
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`precedential cases, PO fails to explain how those cases are relevant here.
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`7
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`U.S. Patent No. 9,843,215
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`institution decision or preliminary response in the Apple -117 IPR. Petitioner
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`therefore gained no advantage by filing this Petition when it did. See, e.g.,
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`Foundation Med., Inc. v. Guardant Health, Inc., IPR2019-00652, Paper 12 at 33
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`(PTAB August 19, 2019) (citing Samsung Elecs. Co. v. Immersion Corp., IPR2018-
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`01499, Paper 11 at 20-21 (PTAB March 6, 2019)).
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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., 1, 95.) And
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`for factor seven, PO fails to show why the Board cannot issue the final written
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`decision within the statutory timeline. (POPR, 39-40.) Moreover, PO’s reliance on
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`NetApp is misplaced, given the glaring differences between the facts at issue in
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`NetApp and here, as discussed above. (Id.) Therefore, instituting IPR here would
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`not give rise to the same type of inefficiencies that existed in NetApp.
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`III. 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: May 24, 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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`8
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`U.S. Patent No. 9,843,215
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`CERTIFICATE OF SERVICE
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`I hereby certify that on May 24, 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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`Brett Cooper
`bcooper@raklaw.com
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`Reza Mirzaie
`rmirzaie@raklaw.com
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`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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