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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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`SAMSUNG ELECTRONICS CO., Ltd.,
`SAMSUNG ELECTRONICS AMERICA, Inc., and APPLE Inc.,
`Petitioners,
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`v.
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`SMART MOBILE TECHNOLOGIES LLC,
`Patent Owner.
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`Case IPR2022-01004
`Patent 9,614,943
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`PETITIONER’S REPLY TO
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`Proceeding No.: IPR2022-01004
`Attorney Docket: 39843-0128IP1
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`In its preliminary response, Patent Owner mischaracterizes the petition’s
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`arguments and misapplies the law of obviousness. First, Patent Owner argues that
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`the petition uses “common sense” to supply a limitation missing from the prior art.
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`Not so. The petition never mentions “common sense” and provides a detailed
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`analysis of what a person of ordinary skill would have recognized and/or found
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`obvious from the disclosure in the prior art. Second, Patent Owner incorrectly
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`assesses the law of obviousness by advocating for an overly narrow and rigid
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`analysis that was squarely rejected in KSR. Indeed, the prior art must be read in
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`context, taking account of “the background knowledge possessed by a person
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`having ordinary skill in the art” and “the inferences and creative steps that a person
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`of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S.
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`398, 418 (2007). For these reasons, the arguments in the preliminary response
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`should be rejected and institution should be granted.
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`A. The Petition Provided a Reasoned Analysis with Evidentiary
`Support to Demonstrate Sampling and Clocking Individually
`Patent Owner asserts that the Petition relied solely on “common sense” or
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`“common knowledge” to satisfy the individual sampling and clocking limitation.
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`POPR, 9-10. This assertion is clearly misplaced, and ignores Petitioner’s thorough
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`6-page analysis, supported by Dr. Jensen’s testimony and at least 8 different
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`sources of corroborating evidence, which explains why a POSITA would have
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`1
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`Proceeding No.: IPR2022-01004
`Attorney Docket: 39843-0128IP1
`recognized and/or found obvious that the channels in Byrne or the Byrne-Raleigh
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`combination were sampled and clocked individually. Pet., 10-15 (citing EXs-1024,
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`1025, 1026, 1030, 1036, 1038, and 1039, and Dr. Jensen’s Declaration (EX-1003),
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`¶¶78-85). Specifically, the Petition explained how the prior art disclosed multiple
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`channels, how each of the channels was sampled and clocked, and how the
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`multiple channels were subject to different requirements (e.g., sampling rates,
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`processor clock rates, data rates, computational requirements, etc.).1 Id. With these
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`technological details, Dr. Jensen provided reasoned testimony on why the prior art
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`disclosure would have a led a POSITA to recognize that the channels in the prior
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`art were sampled and clocked individually and/or that it would have been obvious
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`to implement the channels in the prior art with individual sampling and clocking.
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`Id. In fact, Dr. Jensen further substantiated these positions by offering detailed
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`examples of the sampling and clocking that would have been needed or would
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`have been obvious to use in implementing the different standards for the cordless
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`(e.g., DECT) and cellular (e.g., GSM) channels taught in the prior art. Pet., 11-14.
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`The Petition’s detailed analysis with abundant evidentiary support stands in
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`stark contrast to the conclusory and unsupported analysis rejected in Arendi. In
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`1 The POPR does not appear to dispute these facts and each fact is supported by
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`corroborating evidence cited in the Petition.
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`2
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`Proceeding No.: IPR2022-01004
`Attorney Docket: 39843-0128IP1
`Arendi, the Board relied on nothing more than “conclusory statements and
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`unspecific expert testimony” in finding that it would have been “common sense ...
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`to supply a limitation that was admittedly missing from the prior art.” 832 F.3d at
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`1362, 1366. Here, the Petition relies on Dr. Jensen’s testimony corroborated by
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`abundant evidence in concluding that individual sampling and clocking was within
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`a POSITA’s general knowledge and a feature that would have been recognized
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`and/or obvious from a POSITA’s review of the Byrne and Raleigh prior art.
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`Further, as acknowledged by Patent Owner, Arendi merely cautions that
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`“common knowledge” cannot be used as a “wholesale substitute for reasoned
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`analysis and evidentiary support, especially when dealing with a limitation missing
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`from the prior art references specified.” Arendi, 832 F.3d at 1362; POPR, 10. The
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`Petition safely eliminates this concern by offering a reasoned explanation showing
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`what a POSITA would have recognized and/or found obvious from the disclosure
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`in Byrne and the Byrne-Raleigh combination with support from copious amounts
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`of evidence. Pet. 10-15. For these reasons, Petitioner’s argument is distinguishable
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`from Arendi and application of Arendi’s “common sense” holding is inapt.
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`B. More Applicable Case Law Endorses the Exact Type of
`Reasoned Analysis Provided in the Petition
`In KSR, the Court criticized a rigid approach to determining obviousness
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`based on the disclosures of individual prior art references, with little recourse to
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`the knowledge, creativity, and experience of a POSITA. 550 U.S. at 415-22; see
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`3
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`Proceeding No.: IPR2022-01004
`Attorney Docket: 39843-0128IP1
`also Randall Mfg. v. Rea, 733 F.3d 1355, 1363 (Fed. Cir. 2013). The Court
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`emphasized the importance of interpreting prior art in view of “the background
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`knowledge possessed by a person having ordinary skill in the art” and “the
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`inferences and creative steps that a person of ordinary skill in the art would
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`employ.” Id. at 418; Randall Mfg., 733 F.3d at 1363.
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`Within this framework, the Federal Circuit has repeatedly endorsed the same
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`type of analysis provided in the Petition for the sampling and clocking features.
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`For example, in IXI IP, LLC v. Samsung Elecs. Co., the Federal Circuit endorsed a
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`finding of implicit disclosure where the prior art did not explicitly teach a claimed
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`implementation detail, but that detail would have been recognized based on a
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`POSITA’s review of the prior art. 903 F.3d 1257, 1263 (Fed. Cir. 2018) (affirming
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`finding of implicit disclosure where “a POSITA would read Marchand to
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`understand that JINI LUS may be located on the cellphone.”). Similar to IXI,
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`although Byrne does not expressly describe that its channels are individually
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`sampled and clocked, Dr. Jensen explains why a POSITA would have recognized
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`that these implementation details are implicit in Byrne’s phone, as it includes
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`separate components for cellular/cordless channels and different operations and
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`requirements for respective communications. Pet. 10, 14 (EX-1008, 7:39-49).
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`In addition to implicit disclosure, the Petition also alleged an obviousness
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`theory that has been endorsed by the Federal Circuit. For instance, in Koninklijke
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`4
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`Proceeding No.: IPR2022-01004
`Attorney Docket: 39843-0128IP1
`Philips N.V. v. Google LLC, the Federal Circuit explained how “the inquiry into
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`whether any ‘differences’ between the invention and the prior art would have
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`rendered the invention obvious to a skilled artisan necessarily depends on such
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`artisan’s knowledge.” 948 F.3d 1330, 1337 (Fed. Cir. 2020). In that case, like here,
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`the Petitioner demonstrated that an implementation detail (i.e., pipelining in a
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`processor) was “within the general knowledge of a skilled artisan” and would have
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`been obvious to use in implementing the functionality of the single prior art
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`reference. Id. at 1337-38. Similar to Philips, the Petition demonstrated that, to the
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`extent Byrne or Byrne-Raleigh do not implicitly disclose the implementation details
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`of individual sampling and clocking, those details were within the general
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`knowledge of a skilled artisan and would have been obvious to use. Pet. 10-15.
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`Further, in CR Bard v. Medline Industries, the Federal Circuit criticized the
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`Board for “demand[ing] express guidance from individual references” without
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`“consider[ing] the knowledge and creativity of a skilled artisan.” Appeal No. 20-
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`1900 at 15 (Fed. Cir. 2021) (nonprecedential). There, “[g]iven the prior art
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`disclosures and the finite number of predictable options,” implementation details
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`that were not expressly disclosed in the asserted references were found obvious. Id.
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`at 16. As in Bard, individually sampling/clocking two different channels was a
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`predictable option, and a POSITA would have found it obvious and predictable to
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`implement Byrne’s or Byrne-Raleigh’s system in this manner.
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`5
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`Dated October 12, 2022
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`Proceeding No.: IPR2022-01004
`Attorney Docket: 39843-0128IP1
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`/Jeremy J. Monaldo/
`W. Karl Renner, Reg. No. 41,265
`Jeremy J. Monaldo, Reg. No. 58,680
`Hyun Jin In, Reg. No. 70,014
`Sangki Park, Reg. No. 77,261
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
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`Attorneys for Petitioner
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`6
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`Proceeding No.: IPR2022-01004
`Attorney Docket: 39843-0128IP1
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4) and 42.205(b), the undersigned certifies
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`that on October 12, 2022, a complete and entire copy of this Petitioner’s Reply to
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`Patent Owner’s Preliminary Response was provided by email to the Patent Owner
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`by serving the correspondence address of record as follows:
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`Rex Hwang
`Todd Martin
`Steven J. Udick
`SKIERMONT DERBY LLP
`633 West 5th Street, Suite 5800
`Los Angeles, CA 90071
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`Philip J. Graves
`Greer N. Shaw
`GRAVES & SHAW LLP
`355 S. Grand Ave., Suite 2450
`Los Angeles, CA 90071
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`Email: rhwang@skiermontderby.com
`tmartin@skiermontderby.com
`sudick@skiermontderby.com
`pgraves@gravesshaw.com
`gshaw@gravesshaw.com
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`/Diana Bradley/
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`Diana Bradley
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`(858) 678-5667
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