Filed: October 19, 2022
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., Ltd.,
`SAMSUNG ELECTRONICS AMERICA, Inc., and APPLE Inc.,
`Petitioners,
`
`v.
`SMART MOBILE TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`Case IPR2022-01004
`Patent 9,614,943
`____________
`
`PATENT OWNER’S PRELIMINARY SUR-REPLY
`UNDER 35 U.S.C. § 313 AND 37 C.F.R. § 42.107
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., Ltd.,
`SAMSUNG ELECTRONICS AMERICA, Inc., and APPLE Inc.,
`Petitioners,
`
`v.
`SMART MOBILE TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`Case IPR2022-01004
`Patent 9,614,943
`____________
`
`PATENT OWNER’S PRELIMINARY SUR-REPLY
`UNDER 35 U.S.C. § 313 AND 37 C.F.R. § 42.107
`
`
`
`TABLE OF CONTENTS
`THE PETITION FAILED TO DISCLOSE OBVIOUSNESS ........................ 1
`CASE LAW SUPPORTS DENYING INSTITION ........................................ 4
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`
`
`
`I.
`II.
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`
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`- i -
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`
`
`TABLE OF AUTHORITIES
`
`
`
`Cases
`Arendi S.A.R.L. v. Apple Inc.,
`832 F.3d 1355 (Fed. Cir. 2016) .............................................................................. 4
`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) .............................................................................. 2
`CR Bard v. Medline Indus.,
`Appeal No. 20-1900 (Fed. Cir. 2021) .................................................................... 5
`IXI IP, LLC v. Samsung Elecs. Co.,
`903 F.3d 1257 (Fed. Cir. 2018) .............................................................................. 4
`Koninklijke Philips N.V. v. Google LLC,
`948 F.3d 1330 (Fed. Cir. 2020) .............................................................................. 5
`Lenovo Holding Co. v. InterDigital Tech. Corp.,
`IPR2020-01514, Paper 11 (P.T.A.B. Apr. 15, 2021) ............................................. 5
`
`- ii -
`
`
`
`I.
`
`THE PETITION FAILED TO DISCLOSE OBVIOUSNESS
`In six pages of text and seven separate exhibits, Petitioners cannot point to a
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`single disclosure that says GSM and DECT must or should be sampled and clocked
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`separately. Moreover, their expert, Dr. Jensen, fails to explain why his conclusion
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`follows from his analysis, leaving nothing but ipse dixit. Thus, the Petition falls
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`squarely within Arendi, and should for that reason (among others) be denied.
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`First, Petitioners fail to show that a POSITA would have “recognized” that
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`the channels “were” sampled and clocked individually. Petitioners show that some
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`receivers may sample in certain ways and clock in certain ways, but fail to explain
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`why a POSITA would have sampled and clocked individually in the Byrne device.
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`Specifically, Dr. Jensen contends that channels must be sampled individually based
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`on different protocols at a “higher rate than the Nyquist rate” and then infers that a
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`POSITA would have recognized that DECT would be sampled individually and at a
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`different rate than for GSM. Pet. at 11. But the evidence that he uses refers to only
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`one particular type of receiver—one that processes a discrete-time (zero) IF signal
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`that is direct baseband conversion. Ex. 1024 at 10. In contrast, many receivers—as
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`disclosed by Petitioners’ own exhibits—sample below the Nyquist rate. Ex. 1026 at
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`5 (Architecture A has “subsampling in the second Nyquist zone . . . [which] implies
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`a sampling rate Fs which is less than twice the highest frequency component in the
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`sampled signal.”), 6 (Architecture C, which is “single IF with extreme subsampling”
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`- 1 -
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`
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`where the “concept of extreme subsampling implies the use of a sampling rate Fs
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`which is considerably lower than IF1.”). So, when Dr. Jensen refers to sampling at
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`the Nyquist rate, or even above it, he is referring only to sampling to fully reconstruct
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`an original signal. But existing methods, by Petitioners’ own disclosures, show that
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`sampling does not need to be as high as Dr. Jensen assumes. Moreover, for receivers
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`that do sample above the Nyquist rate, Dr. Jensen fails to account for the possibility
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`of over-sampling the lower GSM rate at the same rate as the DECT rate. Ex. 1003,
`
`¶79. Similarly, while Dr. Jensen outlines a number of parameters that, he says, would
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`impact the clock rate, Ex. 1003, ¶81, he fails to proffer any reason why a POSITA
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`would not simply apply a single clock rate consistent with the parameters for both
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`DECT and GSM in Byrne. So, he fails to show that a POSITA would “recognize”
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`that “the channels in Byrne or the Byrne-Raleigh combination were sampled and
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`clocked individually.”
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`Likewise, and for much the same reason, Petitioners fail to show that it would
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`have been obvious to sample and clock the channels individually. “Obviousness
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`concerns whether a skilled artisan not only could have made but would have been
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`motivated to make the combinations or modifications of [the] prior art to arrive at
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`the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir.
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`2015). Here, despite Dr. Jensen’s explanation concerning the Nyquist rate and
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`clocking parameters, Dr. Jensen fails to explain why a POSITA would have been
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`- 2 -
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`
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`motivated to modify Byrne to expressly adopt separate sampling and clocking. This
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`on its own is a sufficient ground on which to deny the Petition.
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`As if Petitioners’ failure of proof were not enough, their own evidence
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`suggests that a POSITA would not have sampled and clocked DECT and GSM
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`separately. While Dr. Jensen relies on a reference referring to a Zero IF signal
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`sampling receiver to bolster his conclusion, this reference relates to baseband, not
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`IF, sampling, and is therefore even arguably pertinent only to one channel (GSM).
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`Ex. 1024 at 4. The only disclosure of a real-world receiver that samples DECT and
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`GSM uses only IF sampling, not baseband. Ex. 1024 at 4 (discussing integrated
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`receiver and transmitter ICs that conformed to GSM and DECT standards, including
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`a Seimens receiver that downconverts amplified RF signal from an off-chip low-
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`noise amplifier to an IF of 45-90 MHz and then sent to another off-chip SAW filter,
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`with further downconversion, for which the “architecture is preserved in later
`
`generations of this transceiver operating up to 2Ghz for DECT use.”). That is,
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`preferred receivers did not use the zero IF approach advanced by this exhibit that Dr.
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`Jensen and Petitioners rely on to support separate sampling. In fact, the publication
`
`identifies reasons why a POSITA would not switch to the baseband sampling that
`
`Dr. Jensen relies on. Ex. 1024 at 4 (“Given many decades of familiarity with the
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`[non-Zero IF design], there will likely be some reluctance towards adopting a new
`
`architecture until there is widespread experience in its effectiveness. However,
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`- 3 -
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`
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`direct-conversion [also called Zero IF] also suffers from some unique problems to
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`which the [non-Zero IF design] is immune.”).
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`Thus, Dr. Jensen’s analysis is long on background but silent on the critical
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`point—why a POSITA would have sampled and clocked DECT and GSM separately
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`in Byrne’s device, rather than sampling and clocking at a single rate that would
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`support both. In addition, the evidence upon which Dr. Jensen relies fails to
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`corroborate his conclusion, and indeed contradicts it. Because there is no implicit
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`disclosure or showing of obviousness within the references identified of this
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`important limitation, the basis for Dr. Jensen’s conclusion is nothing more than
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`POSITA knowledge or opinion, which is exactly the type of analysis Arendi
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`forecloses. See Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016).
`
`II. CASE LAW SUPPORTS DENYING INSTITION
`Petitioners next attempt to justify their gap-filling by citing cases that assume
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`the point they seek to show: that the Petition has shown Byrne implicitly disclosed
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`or rendered obvious sampling and clocking channels individually.
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`Petitioners first turn to IXI IP, LLC v. Samsung Elecs. Co., 903 F.3d 1257,
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`1262-64 (Fed. Cir. 2018), but IXI is inapposite. The implicit disclosure in IXI was a
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`prior art reference that made numerous statements that implied that the LUS could
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`have been on the cell phone; that is, the reference itself (and not a host of other
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`references cobbled together) made statements that logically mandated that the
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`- 4 -
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`
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`missing limitation was disclosed, even if not said in the exact words. See id. That is
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`not the case here. Petitioners have not shown a single disclosure in Byrne implying
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`that separately clocking and sampling must necessarily have been disclosed.
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`Likewise, Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330 (Fed. Cir.
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`2020) is inapposite because there (1) the Petitioner there “properly alleged that a
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`POSITA would have . . . been motivated to combine pipelining,” which is absent
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`here, and (2) a prior art reference corroborated the expert testimony, which also is
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`not present here. Id. at 1337-38. Petitioners’ use of a nonprecedential Federal Circuit
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`slip opinion in CR Bard v. Medline Indus. does no better as it dealt only with the
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`Board incorrectly requiring express guidance from individual references and it
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`likewise had record evidence of a motivation to combine, which is not present here.
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`Appeal No. 20-1900 at 15-16 (Fed. Cir. 2021).
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`It is also telling that Petitioners spent time citing a nonprecedential slip
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`opinion from the Federal Circuit instead of addressing the directly on-point case
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`Patent Owner discussed in the Preliminary Response. Prelim. Resp. at 12-13. In
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`Lenovo Holding Co. v. InterDigital Tech. Corp., the Board denied institution where
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`the Petition disclosed only general information about system functionality and failed
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`to identify a motivation to modify the primary reference. IPR2020-01514, Paper 11,
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`37 (P.T.A.B. Apr. 15, 2021). Petitioners had no answer to this case. The Board
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`should deny institution.
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`- 5 -
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`
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`Dated: October 19, 2022
`
`
`
`
`
`
`Respectfully Submitted,
`
`/Rex Hwang/
`Rex Hwang (Reg. No. 56,206)
`SKIERMONT DERBY LLP
`633 West 5th Street, Suite 5800
`Los Angeles, CA 90071
`P: 213-788-4500/F: 213-788-4545
`Lead Counsel for Patent Owner
`
`Todd Martin (Reg. No. 78,642)
`Steve Udick
`(pro hac vice application to be submitted)
`SKIERMONT DERBY LLP
`1601 Elm Street, Suite 4400
`Dallas, TX 75201
`P: 214-978-6600/F: 214-978-6621
`Back-Up Counsel for Patent Owner
`
`Philip J. Graves
`(pro hac vice application to be submitted)
`Greer N. Shaw
`(pro hac vice application to be submitted)
`GRAVES & SHAW LLP
`355 S. Grand Ave., Suite 2450
`Los Angeles, CA 90071
`P: 213-214-5101
`Back-Up Counsel for Patent Owner
`
`- 6 -
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`
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`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), I certify that I caused to be served on the
`
`counsel for Petitioners a true and correct copy of the foregoing Patent Owner’s
`
`Preliminary Sur-Reply Under 35 U.S.C. § 313 and 37 C.F.R. § 42.107, by electronic
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`means on October 19, 2022, by delivering a copy via electronic mail to the attorneys
`
`of record for the Petitioners as follows:
`
`W. Karl Renner
`IPR39843-0128IP1@fr.com
`Jeremy J. Monaldo
`monaldo@fr.com
`Hyun Jin In
`in@fr.com
`Sangki Park
`spark@fr.com
`Andrew S. Ehmke
`andy.ehmke.ipr@haynesboone.com
`Clint S. Wilkins
`clint.wilkins.ipr@haynesboone.com
`
`PTABInbound@fr.com
`axf-ptab@fr.com
`
`
`
`Dated: October 19, 2022
`
`
`
`
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`Respectfully Submitted,
`
`/Rex Hwang/
`Rex Hwang (Reg. No. 56,206)
`Counsel for Patent Owner
`
`
`
`
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