Case IPR2022-00807
`U.S. Patent No. 9,756,168
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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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`APPLE, INC., SAMSUNG ELECTRONICS CO. LTD., AND SAMSUNG
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`ELECTRONICS AMERICA, INC.,
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`Petitioner
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`v.
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`SMART MOBILE TECHNOLOGIES LLC,
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`Patent Owner.
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`Case IPR2022-00807
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`U.S. Patent No. 9,756,168
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`PATENT OWNER’S NOTICE OF APPEAL
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`U.S. Patent No. 9,756,168
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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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`APPLE, INC., SAMSUNG ELECTRONICS CO. LTD., AND SAMSUNG
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`ELECTRONICS AMERICA, INC.,
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`Petitioner
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`v.
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`SMART MOBILE TECHNOLOGIES LLC,
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`Patent Owner.
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`____________
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`Case IPR2022-00807
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`U.S. Patent No. 9,756,168
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`____________
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`PATENT OWNER’S NOTICE OF APPEAL
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`Case IPR2022-00807
`U.S. Patent No. 9,756,168
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` To the Director of the United States Patent and Trademark Office,
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`Under 35 U.S.C. §§ 141(c), 142, and 319, and 37 C.F.R. §§ 90.2-90.3,
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`notice is hereby given that Patent Owner Smart Mobile Technologies LLC (“Patent
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`Owner”) appeals to the United State Court of Appeals for the Federal Circuit from
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`the Final Written Decision of the Patent Trial and Appeal Board (“the Board”),
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`entered on October 23, 2023 (Paper 38) in IPR2022-00807 regarding U.S. Patent
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`No. 9,756,168 B1 (“the ’168 Patent”), and from all underlying orders, decisions,
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`rulings, and opinions decided adversely to Patent Owner in the above-captioned
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`proceeding.
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`For the limited purpose of providing the Director of the United States Patent
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`and Trademark Office (“the Director”) with the information requested under 37
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`C.F.R. § 90.2.(a)(3)(ii), the Patent Owner submits that the appeal will address all
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`aspects of the Board’s decision decided adversely to Patent Owner, including,
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`without limitation, whether the Board erred in concluding that Petitioners have
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`proven by a preponderance of the evidence that claims 2–5, 19–23, 25, 28, 29, and
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`34 of the ’168 Patent are unpatentable. In particular, and without limitation, this
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`appeal will address the issues of whether Petitioners have proven that (i) claims
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`2-5, 23, and 28 are unpatentable pursuant to 35 U.S.C. § 103 over the combination
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`of U.S. Patent No. 5,854,985 (“Sainton”), U.S. Patent No. 6,430,599 (“Baker”),
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`and U.S. Patent No. 6,185,413 (“Mueller”); (ii) claims 25 and 34 are unpatentable
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`1
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`pursuant to 35 U.S.C. § 103 over a combination of Sainton, Baker, Mueller, and
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`U.S. Patent No. 7,043532 (“Humpleman”); (iii) claim 22 is unpatentable pursuant
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`to 35 U.S.C. § 103(a) over a combination of Sainton, Baker, Mueller, and U.S.
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`Patent No. 5,201,067 (“Grube”); (iv) claims 19 and 20 are unpatentable pursuant to
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`35 U.S.C. § 103(a) over a combination of Sainton, Baker, Mueller, and U.S. Patent
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`No. 6,587,684 (“Hsu”); (v) claim 21 is unpatentable pursuant to 35 U.S.C. § 103(a)
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`over a combination of Sainton, Baker, Mueller, and U.S. Patent No. 6,252,543
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`(“Camp”); (vi) claim 29 is unpatentable pursuant to 35 U.S.C. § 103(a) over a
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`combination of Sainton, Baker, Mueller, and U.S. Patent No. 6,337,858 (“Petty”).
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`Patent Owner further reserves the right to challenge any finding or determination
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`relating to the issues and matters listed above and to challenge any other issues or
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`matters decided against Patent Owner in any order, decision, ruling, or opinion by
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`the Board in the above-captioned proceeding.
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`This Notice of Appeal is timely filed with the Director. 37 C.F.R. §
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`90.3(a)(1), (b)(1). Pursuant to 35 U.S.C. § 142 and 37 C.F.R. § 90.2(a)(1), this
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`Notice is being filed with the Director, and a copy of this Notice is being
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`concurrently filed with the Board. In addition, a copy of this Notice is being filed
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`with the Clerk of the United States Court of Appeals for the Federal Circuit, along
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`with the applicable filing fee, via CM/ECF and pay.gov.
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`Dated: December 19, 2023
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`Respectfully submitted,
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`/ Kenneth J. Weatherwax /
`Kenneth J. Weatherwax, Reg. No. 54,528
`weatherwax@lowensteinweatherwax.com
`LOWENSTEIN & WEATHERWAX LLP
`1016 Pico Blvd
`Santa Monica, CA 90405
`Tel: (310) 307-4500
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`Philip J. Graves
`pgraves@gravesshaw.com
`Greer N. Shaw
`gshaw@gravesshaw.com
`GRAVES & SHAW LLP
`355 S. Grand Ave., Suite 2450
`Los Angeles, CA 90071
`Tel.: (213) 204-5101
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`CERTIFICATES OF FILING AND SERVICE
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`I hereby certify that, in addition to being filed electronically through the
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`Patent Trial and Appeal Board’s P-TACTS System, the original version of the
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`foregoing PATENT OWNER’S NOTICE OF APPEAL was filed, as required by
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`37 C.F.R. § 104.2, by Express Mail on this 19th day of December 2023 with the
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`Director of the United States Patent and Trademark Office at the following
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`address:
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`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`The undersigned also hereby certifies that a true and correct copy of the
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`foregoing PATENT OWNER’S NOTICE OF APPEAL and the filing fee is being
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`filed via the electronic filing system, CM/ECF, with the Clerk’s Office of the
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`United States Court of Appeals for the Federal Circuit on December 19, 2023 and a
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`true and correct paper copy of the foregoing is being filed by Express Mail, as
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`required by the Fed. Cir. R. 15(a)(1), on this 19th day of December 2023 with the
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`Clerk’s Office of the United States Court of Appeals for the Federal Circuit at the
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`following address:
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`United States Court of Appeals for the Federal Circuit
`717 Madison Place, N.W., Suite 401
`Washington, DC 20439
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`4
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`The undersigned also hereby certifies that on December 19, 2023, copies of
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`the foregoing PATENT OWNER’S NOTICE OF APPEAL were served on
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`Petitioners as provided in 37 C.F.R. § 42.6(e) via electronic mail transmission
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`addressed to the attorneys of record for the Petitioner at the email addresses listed
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`below:
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`Lead Counsel
`Andrew S. Ehmke
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219 Phone: (214) 651-5116
`Fax: (214) 200-0853
`andy.ehmke.ipr@haynesboone.com
`USPTO Reg. No. 50,271
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`Back-up Counsel
`Adam C. Fowles
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219 Phone: (972) 739-8674
`Fax: (214) 200-0853
`adam.fowles.ipr@haynesboone.com
`USPTO Reg. No. 65,005
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`Samuel Drezdzon
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219 Phone: (972) 739-6918
`Fax: (214) 200-0853
`samuel.drezdzon.ipr@haynesboone.com
`USPTO Reg. No. 67,085
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`5
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`W. Karl Renner
`Jeremy J. Monaldo
`Hyun Jin In
`Sangki Park
`FISH & RICHARDSON P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402 Phone: (202) 783-5070
`Fax: (877) 769-7945
`IPR39843-0127IP1@fr.com
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`Dated: December 19, 2023
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`Respectfully submitted,
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`/ Kenneth J. Weatherwax /
`Kenneth J. Weatherwax, Reg. No. 54,528
`weatherwax@lowensteinweatherwax.com
`LOWENSTEIN & WEATHERWAX LLP
`1016 Pico Blvd
`Santa Monica, CA 90405
`Tel: (310) 307-4500
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`Philip J. Graves
`pgraves@gravesshaw.com
`Greer N. Shaw
`gshaw@gravesshaw.com
`GRAVES & SHAW LLP
`355 S. Grand Ave., Suite 2450
`Los Angeles, CA 90071
`Tel.: (213) 204-5101
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`6
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