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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.,
`Petitioner,
`
`
`
`v.
`
`SMART MOBILE TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`Case IPR2022-01248
`Patent 8,842,653
`____________
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S
`MOTION TO SUBMIT SUPPLEMENTAL INFORMATION
`
`
`
`
`TABLE OF CONTENTS
`
`
`
`Page
`
`I.
`
`PETITIONER FAILS TO SHOW WHY IT SHOULD SUBMIT
`ITS 39-PAGE DECLARATION NOW INSTEAD OF WITH ITS
`REPLY. ......................................................................................................... 1
`
`A. Petitioner’s Proposed Declaration Consists Of Untimely, New
`Claim Construction And Prior Art Analysis In 39 Pages, 7,500
`Words And Dozens Of New Citations To The Record. ........................ 2
`
`B.
`
`Petitioner Fails To Meet Its Burden To Show Why Its Proposed
`Declaration Should Be Submitted Now Instead Of With Its Reply. ..... 4
`
`II.
`
`ALLOWING PETITIONER A DE FACTO ADDITIONAL
`INTERIM ROADMAPPED BRIEF DEEPLY PREJUDICES
`PATENT OWNER. ...................................................................................... 9
`
`III. CONCLUSION ......................................................................................... 10
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
` COURT DECISIONS
`
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
`821 F.3d 1359 (Fed. Cir. 2016) ....................................................................... 1, 2
`
`Redline Detection, LLC v. Star Envirotech, Inc.,
`811 F.3d 435(Fed. Cir. 2015) .............................................................................. 5
`
`AGENCY DECISIONS
`
`Am. Well Corp. v. TelaDocHealth, Inc.,
`IPR2021-00748, Paper 23 (Feb. 28, 2022) .......................................................... 6
`
`Apple Inc. v. Telefonaktiebolaget LM Ericsson,
`IPR2022-00343, Paper 14 (Nov. 10, 2022) ......................................................... 8
`
`Frameless Hardware Compnay, LLC v. CR Laurene Co., Inc.,
`IPR2022-00356, Paper 29 (Oct., 25, 2022) ..................................................... 8, 9
`
`Laboratoire Francais du Fractionnement et des Biotechnologies SA v. Novo
`Nordisk Healthcare AG,
`IPR2017-00028, Paper 22 (Jun. 13, 2017) .......................................................... 5
`
`MED-EL Elektromedizinische Geraete GmbH v. Advanced Bionics AG,
`IPR2020-00190, Paper 24 (Aug. 10, 2022) ......................................................... 8
`
`Merck Sharp & Dohme Corp. v. Microspherix LLC,
`IPR2018-00393, P aper 21 (Sept. 10, 2018) ........................................................ 6
`
`Nissan N. Am., Inc. v. Diamond Coating Techs., LLC,
`IPR2014-01548, Paper 37 ( July 15, 2015) ......................................................... 6
`
`Ooma, Inc. v. Deep Green Wireless LLC,
`IPR2017-01541, Paper 14, (Jan. 23, 2018) ........................................................ 2
`
`Pac. Mktg. Int’l, LLC v. Ignite USA, LLC,
`IPR2014-00561, Paper 23 (Dec. 2, 2014) ........................................................... 7
`
`ii
`
`
`
`
`
`Samsung Elecs. Co., Ltd. v. Immersion Corp.,
`IPR2018-01499, Paper 19 (May 16, 2019) ......................................................... 5
`
`Sling TV LLC v. Realtime Adaptive Streaming LLC,
`IPR2018-01342, Paper 17 (May 7, 2019) ........................................................... 6
`
`Triller, Inc. v. TikTok Pte. Ltd.,
`IPR2022-00180, Paper 18 (Aug. 25, 2022) ................................................. 4, 7, 8
`
`W. Digital Corp. v. Spex Techs., Inc.,
`IPR2018-00082, Paper 22 (July 23, 2018) .......................................................... 6
`
`ZTE Corp. v. ContentGuard Holding, Inc.,
`IPR2013-00139, Paper 27, (Jul. 30, 2013) ...................................................... 2, 5
`
` STATUTES
`
`35 U.S.C. § 312(a)(3) ............................................................................................... 1
`
`REGULATIONS
`
`37 C.F.R. § 42.104(b)(4) .......................................................................................... 2
`
`37 C.F.R. § 42.20(c) ................................................................................................. 4
`
`37 C.F.R. §42.123 ..................................................................................................... 5
`
`37 C.F.R. §42.123(a) ................................................................................................ 5
`
`77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012) .......................................................... 4
`
` OTHER AUTHORITIES
`
`Consolidated Trial Practice Guide ............................................................................ 4
`
`
`
`
`
`
`
`
`
`iii
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`
`
`
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`EXHIBIT LIST
`
`Reserved
`
`Declaration of Professor Todor V. Cooklev, Ph.D.
`
`Smart Mobile Technologies, LLC v. Apple Inc., Smart Mobile
`Technologies, LLC v. Samsung Electronics Co., Ltd. et al., Nos.
`6:21-cv-00603 and 6:21-cv-00701, Defendants’ Opening Claim
`Construction Brief (June 8, 2022) [Defendants’ Opening Claim
`Construction Brief]
`
`Smart Mobile Technologies, LLC v. Apple Inc., Smart Mobile
`Technologies, LLC v. Samsung Electronics Co., Ltd. et al., Nos.
`6:21-cv-00603 and 6:21-cv-00701, Defendants’ Opening Claim
`Construction Brief – Exhibit 1 (June 8, 2022) [Defendants’ Opening
`Claim Construction Brief – Exhibit 1]
`
`Kevin M. Stack, Preambles as Guidance, 84 GEO. WASH. L. REV.
`1252 (2016) (http://www.gwlr.org/wp-content/uploads/2016/09/84-
`Geo.-Wash.-L.-Rev.-1252.pdf) [Stack]
`
`ElectronicsTutorials, The Multiplexer, WWW.ELECTRONICS-
`TUTORIALS.WS, https://www.electronics-
`tutorials.ws/combination/comb_2.html (last visited Oct. 26, 2022)
`[Electronics Tutorial]
`
`TexasInstruments, 74HC153 Data Sheet, Dec. 1982, revised Feb.
`2022, WWW.TI.COM, https://www.ti.com/lit/gpn/sn74hc153
`[74HC153 Data Sheet]
`
`Lee Stanton, What is the Difference Between a Landline and a
`Mobile Phone Number?, WWW.ALPHR.COM, Feb. 22, 2022,
`https://www.alphr.com/difference-landline-mobile-phone-number/
`[Alphr]
`
`FOCUS LCDs, Serial Vs. Parallel, LCD RESOURCES,
`https://focuslcds.com/serial-vs-parallel/ (last visited Oct. 19, 2022)
`[LCD Resources]
`
`iv
`
`
`
`
`
`2010
`
`2011
`
`2012
`
`2013
`
`Techopedia, Serial Interface, WWW.TECHOPEDIA.COM, Nov. 4, 2014,
`https://www.techopedia.com/definition/9312/serial-interface
`[Techopedia]
`
`Excerpts from The Authoritative Dictionary of IEEE Standards
`Terms, Seventh Edition (2000) [Dictionary of IEEE Standards
`Terms]
`
`Jonathan Valvano et al., Chapter 11: Serial Interfacing, EMBEDDED
`SYSTEMS – SHAPE THE WORLD,
`https://users.ece.utexas.edu/~valvano/Volume1/E-
`Book/C11_SerialInterface.htm (last visited Oct. 20, 2022) [Valvano]
`
`Steve Goldband, Input and output for microprocessors, Behavior
`Research Methods & Instrumentation, 1978, Vol. 10, No. 2, pp.
`249-253 [Goldband]
`
`2014
`
`Ex parte Orbotech LT Solar, LLC, 2012 Pat. App. LEXIS 2784
`(BPAI May 31, 2012)
`
`2015
`
`Ex parte Evans, 2017 Pat. App. LEXIS 386 (PTAB Aug. 1, 2017)
`
`v
`
`
`
`
`
`Petitioner seeks to file a 39-page, ~7,500 word claim construction and prior
`
`art analysis, with dozens of new citations to the patent, its reference(s), and other
`
`evidence, under the guise of “supplemental information,” out-of-turn now, instead
`
`of with its Reply. See § I.A, infra. That is in addition to the ~130 page declaration
`
`already submitted with the Petition. The Board routinely denies such submission of
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`substantive and expansive analysis to bolster the petition in response to the patent
`
`owner’s and Board’s filings at institution. If that were not so, any petitioner could
`
`simply turn the filing of every petition into effectively a two-stage process.
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`Petitioner’s argument that its motion must be granted merely because it is timely
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`and relevant to the claims (Mot., 1) has been rejected by the Board and the Federal
`
`Circuit. See § I.B, infra. And for good reason: granting the motion would
`
`dramatically prejudice Patent Owner, invert the carefully balanced IPR process,
`
`and benefit no one but Petitioner. See § II, infra. The Motion should be denied.
`
`I.
`
`PETITIONER FAILS TO SHOW WHY IT SHOULD SUBMIT ITS 39-
`PAGE DECLARATION NOW INSTEAD OF WITH ITS REPLY.
`
`“It is of the utmost importance that petitioners in the IPR proceedings adhere
`
`to the requirement that the initial petition identify ‘with particularity’ the ‘evidence
`
`that supports the grounds for the challenge to each claim.’” Intelligent Bio-Sys.,
`
`Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (quoting 35
`
`U.S.C. § 312(a)(3)). “Unlike district court litigation—where parties have greater
`
`freedom to revise and develop their arguments over time and in response to newly
`
`1
`
`
`
`
`
`discovered material,” “the expedited nature of IPRs bring[s]…an obligation for
`
`petitioners to make their case in their petition to institute.” Id. These are
`
`“strict…requirements of which petitioners are aware when they seek to institute an
`
`IPR.” Id.; see also 37 C.F.R. § 42.104(b)(4). Accordingly, Board decisions
`
`disallowing new declarations like the one Petitioner proposes here have held:
`
`Supplemental information is not intended to provide a petitioner an
`advantageous ‘wait-and-see’ opportunity to use a patent owner’s
`preliminary response and our decision on institution in order to refine
`or bolster petitioner’s position.
`
`Ooma, Inc. v. Deep Green Wireless LLC, IPR2017-01541, Paper 14, 3-4 (Jan. 23,
`
`2018) (“Ooma”); ZTE Corp. v. ContentGuard Holding, IPR2013-00139, Paper 27,
`
`3 (Jul. 30, 2013) (“ZTE”) (denying second declaration because “[t]he filing of a
`
`petition for inter partes review should not be turned into a two-stage process”).
`
`Yet, as discussed below, Petitioner’s proposed declaration is precisely the
`
`type of declaration rejected by the Board as improper “supplemental information.”
`
`A.
`
`Petitioner’s Proposed Declaration Consists Of Untimely, New
`Claim Construction And Prior Art Analysis In 39 Pages, 7,500
`Words And Dozens Of New Citations To The Record.
`
`The Petition already relies on a 130-page declaration. See Ex. 1003. Yet,
`
`now Petitioner wants still more pages to “clarif[y]” its positions. Mot., 6. But this
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`declaration does not “clarify.” It adds, for the first time, a lengthy, substantive and
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`untimely claim construction and prior art analysis. Nor is there an “apparent
`
`2
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`
`
`
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`misunderstanding” of Petitioner’s positions by the Board. Mot., 3. Petitioner is
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`simply controverting each one of the Board’s conclusions adverse to Petitioner.
`
`First, the proposed declaration is a massive post-institution increase in
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`Petitioner’s case-in-chief—39 pages and ~7,500 words, more than half of the word
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`limit of the Petition itself and on top of Petitioner’s first, ~130-page declaration.
`
`This volume alone makes clear it is not “merely clarif[ying]” positions. Mot., 6.
`
`Second, the proposed declaration adds dozens of for-the-first-time citations
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`to the record found nowhere in Petitioner’s first declaration. These new citations
`
`are to the Patent itself (see, e.g., Ex. 1050 [Proposed-Decl.] 6-7 (citing Ex. 1001
`
`[’653 Pat.] 3:47-48, 5:8-11, 5:46-67, 8:32-37, 9:4-6, 9:8-10, 9:14-17, 9:31-34,
`
`9:36-38, 9:42-44, 11:1-30, 11:34-41, 12:17-28, Fig. 6)), the grounds’ reference(s)
`
`(see, e.g., id., 10-11, 24-29 (citing Ex. 1007 [Bernard] 2:51-54, 17:26-32, 25:26-
`
`29, 26:20-55, Figs. 13-14)), and other evidence (see, e.g., id., 5-6, 8-10, 22-23
`
`(citing Ex. 2003 [Defendants’ Opening Claim Construction Brief] 37, 40, Exs. 17,
`
`49-53); 34-35 (citing Ex. 1028 [Jakes] 310, 324-329)).
`
`Third, the proposed declaration also presents new analysis and assertions not
`
`found in the first declaration. It devotes 15 pages to arguing why “multiplexing
`
`does not require multiple signals to be presented to a multiplexer simultaneously.”
`
`Ex. 1050, ¶ 6. This new claim construction analysis is not found anywhere in the
`
`first declaration. It also spends pages analyzing, for the first time ever, the Patent’s
`
`3
`
`
`
`
`
`alleged “intent to cover simultaneous and sequential multiplexing.” Id., ¶¶ 11-12. It
`
`also devotes 3 pages to analyzing the Patent’s priority application, which was
`
`never cited once in the original declaration. Id., ¶¶ 13-16 (discussing Ex. 17). And
`
`it finishes with for-the-first-time arguments that the references allegedly disclose
`
`every element of Petitioner’s prima facie case that the Board found is missing from
`
`the Petition. See, e.g., Paper 13 [ID] 25 (“Petitioner’s arguments do not show
`
`adequately that Yegoshin would have been understood to have multiplexed signals
`
`…”); 34 (“Petitioner … does not explain how” claim 10 is disclosed); 55
`
`(“Petitioner has not shown how in the combination” claim 27 is disclosed).
`
`These new analyses and citations to meet Petitioner’s prima facie case are
`
`also untimely. Trial Prac. Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012)
`
`(“Examples of indications that a new issue has been raised in a reply include new
`
`evidence necessary to make out a prima facie case … and new evidence that could
`
`have been presented in a prior filing.”); Consol. Trial Prac. Guide, 73 (similar).
`
`B.
`
`Petitioner Fails To Meet Its Burden To Show Why Its Proposed
`Declaration Should Be Submitted Now Instead Of With Its Reply.
`
`“Parties generally submit evidence to support positions in a brief. …
`
`Petitioner bears the burden of establishing why [the Board] should allow the
`
`submission of such evidence now.” Triller, Inc. v. TikTok Pte., IPR2022-00180,
`
`Paper 18, 3 (Aug. 25, 2022) (“Triller”); 37 C.F.R. § 42.20(c). The thrust of
`
`Petitioner’s argument is that the Board should grant its request “because [it] meets
`
`4
`
`
`
`
`
`both requirements laid out in 37 C.F.R. §42.123(a).” Mot., 1. That is not enough.
`
`Section 42.123(a) “does not connote the PTAB must accept supplemental
`
`information so long as it is timely and relevant.” Redline Detection, LLC v. Star
`
`Envirotech, Inc., 811 F.3d 435, 445 (Fed. Cir. 2015). Otherwise, every petitioner
`
`could simply submit a supplemental expert declaration to address every deficiency
`
`identified in every institution decision, turning the filing of every instituted petition
`
`into a “two-stage process.” ZTE, IPR2013-00139, Paper 27, 3 (Jul. 30, 2013).1
`
`Instead, where, as here, a petitioner submits new claim construction and
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`prior art analysis to bolster deficiencies identified in the petition under the guise of
`
`“supplemental information,” the Board typically denies the request unless the
`
`petitioner shows something more than mere relevance and timeliness. See, e.g.,
`
`Lab. Francais du Fractionnement et des Biotechs. SA v. Novo Nordisk Healthcare
`
`AG, IPR2017-00028, Paper 22, 4 (Jun. 13, 2017) (“Petitioner has not explained
`
`sufficiently why the supplemental information could not have been presented with
`
`its original Petition.”); Samsung Elecs. Co., Ltd. v. Immersion Corp., IPR2018-
`
`01499, Paper 19, 6-7 (May 16, 2019) (“We look to whether the petitioner has
`
`
`1 Furthermore, this proposed testimony is not merely “information” under 37
`
`C.F.R. § 42.123, like, e.g., evidence of public availability or document translations.
`
`Instead, it is additional briefing on claim construction and prior art analysis.
`
`5
`
`
`
`
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`articulated a specific reason to enter the evidence at that particular time under the
`
`guise of supplemental information.”); Triller, 3-4 (finding “unwarranted”
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`supplemental declaration that “seeks to provide arguments via the supplemental
`
`declaration for issues addressed by Patent Owner in its Preliminary Response or by
`
`us in the Decision on Institution”); Ooma, 3-4 (denying 42.123 supplemental
`
`declaration on level of ordinary skill in art in response to institution), Sling TV LLC
`
`v. Realtime Adaptive Streaming LLC, IPR2018-01342, Paper 17, 3-4 (May 7,
`
`2019) (similar); Merck Sharp & Dohme Corp. v. Microspherix LLC, IPR2018-
`
`00393, Paper 21, 3 (Sep. 10, 2018) (“supplemental information is not intended to
`
`offer a petitioner a routine avenue for bolstering deficiencies in a petition raised by
`
`a patent owner in a preliminary response.”); Am. Well Corp. v. TelaDocHealth,
`
`Inc., IPR2021-00748, Paper 23, 6-7 (Feb. 28, 2022) (noting Board’s denial of
`
`motions “where the petitioner sought to use the supplemental information to refine
`
`or bolster challenges originally presented in the petition, based on information in
`
`the preliminary response or institution decision”); Nissan N. Am., Inc. v. Diamond
`
`Coating Techs., IPR2014-01548, Paper 37, 3-4 (July 15, 2015) (denying
`
`“supplemental information” expert declaration on how person of ordinary skill in
`
`the art would understand disclosure in references); W. Digital Corp. v. Spex Techs.,
`
`IPR2018-00082, Paper 22, 9 (July 23, 2018) (similar).
`
`Recognizing that its motion is a mere request to bolster the Petition based on
`
`6
`
`
`
`
`
`the roadmap laid out by Patent Owner and the Board, Petitioner presents an array
`
`of generic assertions supposedly supporting its motion, all of which have already
`
`been rejected by the Board. Petitioner first cites the ID’s statements suggesting the
`
`parties address certain issues in future briefing. Mot., 1-2. However, “statements in
`
`the institution decision that the parties should consider addressing certain issues”
`
`did not “invit[e] supplemental information” and are instead “directed at the normal
`
`briefing process, and d[id] not justify supplemental information.” Triller, 5-6.
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`Petitioner next argues it could not have “anticipated” the ID’s statements.
`
`Mot., 10. But Petitioner offers no evidence that the Board’s findings identifying the
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`Petition’s weaknesses are unique in any way or warrant any out-of-turn additional
`
`briefing. Petitioner also does not address why the procedures that allow Petitioner
`
`to properly submit a reply brief with a supporting declaration to address any issues
`
`raised in the institution decision are inadequate. Triller, 5.
`
`Petitioner’s legal citations are inapposite. Petitioner argues (Mot., 8) that its
`
`facts are distinct from Redline Detection and “similar” to Pac. Mkt. Int’l, LLC v.
`
`Ignite USA, LLC, IPR2014-00561, Paper 23 (Dec. 2, 2014). That is both factually
`
`and legally wrong. Factually, Pacific Market’s supplemental declaration was 10
`
`pages, not, as here, 39 pages on top of a 130-page first declaration. Id., Ex. 1021.
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`Legally, the Board has observed that Pacific Market’s reasoning no longer applies:
`
`[A]lthough Petitioner relies on reasoning from Pacific Market,
`
`7
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`
`
`
`
`Petitioner does not address substantive changes to the briefing process
`since Pacific Market was entered. In particular, Petitioner does not
`account for what impact, if any, the following changes have on the cited
`reasoning from Pacific Market: (i) a petitioner, in its reply brief, may
`address issues discussed in the institution decision; and (ii) a patent
`owner may file a sur-reply as a matter of right. See Consolidated Trial
`Practice Guide (“CTPG”) (Nov. 2019), 73.
`
`Triller, 5.
`
`Petitioner (Mot., 4-5) relies heavily on Apple Inc. v. Telefonaktiebolaget LM
`
`Ericsson, IPR2022-00343, Paper 14 (Nov. 10, 2022). The supplemental declaration
`
`in Ericsson, unlike this one, did not “seek to rely on … uncited portions of relied-
`
`upon prior art.” Id., 4. Petitioner’s proposed declaration includes dozens of new
`
`citations to its prior art, the patent, and additional documents, the opposite of
`
`Ericsson’s. See § II.A, supra. Petitioner (Mot, 5) also cites MED-EL
`
`Elektromedizinische Geraete GmbH v. Advanced Bionics AG, IPR2020-00190,
`
`Paper 24 (Aug. 10, 2022), but the proposed declaration in MED-EL was only a
`
`short 6 pages (id., Ex. 1014), in contrast to the 39-page declaration here.
`
`Petitioner’s reliance (Mot., 5-6) on Frameless Hardware Co. v. CR Laurene Co.,
`
`IPR2022-00356, Paper 29 (Oct., 25, 2022), is also misplaced. That supplemental
`
`declaration provided underlying data for tests discussed in the expert’s original
`
`declaration, giving “the panel additional information to evaluate how much weight
`
`8
`
`
`
`
`
`to give” the original declaration. Id., 8. That is a far cry from 39 pages of naked,
`
`roadmapped new claim construction and prior art analysis here.
`
`II. ALLOWING PETITIONER A DE FACTO ADDITIONAL INTERIM
`ROADMAPPED BRIEF DEEPLY PREJUDICES PATENT OWNER.
`
`Petitioner’s new 39-page analysis of claim construction and art, with dozens
`
`of new citations to the record, effectively provides Petitioner with an additional
`
`round of briefing, and in almost the most prejudicial manner possible. It inverts the
`
`statutory scheme, which carefully balances the rights of patent owners against
`
`expedited challenges to their patents. Intelligent Bio-Sys., 821 F.3d at 1369
`
`(“Unlike district court litigation—where parties have greater freedom to revise and
`
`develop their arguments over time,” the “expedited nature of IPRs” requires
`
`petitioners to make their case in the petition.”). Instead of its reply, Petitioner
`
`would be able to respond to Patent Owner’s arguments now, assess how Patent
`
`Owner responds to the new arguments, and then respond to that response in its
`
`Reply—an additional, critical round of briefing it has no right to receive.
`
`Furthermore, Patent Owner’s Response would have to address the 39-page
`
`new declaration, on top of the 130-page first declaration, and would effectively
`
`have less word count than the Petition. And Patent Owner would not know how
`
`Petitioner may rely on the declaration, and would have to decide how to respond to
`
`it without guidance from any brief. It may guess wrong. The Reply may even not
`
`rely on this proposed declaration, and may instead file a modified declaration, with
`
`9
`
`
`
`
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`the result that Patent Owner wasted briefing. Accord Triller, 5.
`
`Filing of the proposed declaration now would not even reduce the number of
`
`depositions. Petitioner would still be able to submit a third declaration with its
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`reply, requiring an additional deposition.
`
`Petitioner argues that Patent Owner “benefit[s]” if Petitioner’s motion is
`
`granted. Mot., 6. This is incorrect as explained above. Every advantage goes to
`
`Petitioner, none to Patent Owner. And the Board has also rejected similar
`
`reasoning, declining to force this supposed “benefit” on unwilling patent owners.
`
`Triller, 5 (“Patent Owner’s opposition to Petitioner’s Motion shows that Patent
`
`Owner does not view this opportunity as a sufficient reason for allowing the
`
`supplemental declaration now. We will not second-guess Patent Owner as to
`
`whether it should forego this opportunity.”).
`
`Finally, it is noted that Petitioner’s counsel can hardly be unacquainted with
`
`these points. The same law firm represented the patent owner in Triller, where it
`
`successfully opposed on the patent owner’s behalf a similar—and, indeed, not
`
`nearly as prejudicial—proposal for a “supplemental information” declaration under
`
`§ 42.123, successfully raising many arguments also raised in this opposition.
`
`Those arguments are even more persuasive here, for the reasons given above.
`
`III. CONCLUSION
`
`For the foregoing reasons, Petitioner’s motion should be denied.
`
`10
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`
`
`
`
`Respectfully submitted,
`
`
`
`/Kenneth J. Weatherwax/
`
`
`Kenneth J. Weatherwax, Reg. No. 54,528
`LOWENSTEIN & WEATHERWAX LLP
`Date: March 16, 2023
`
`11
`
`
`
`CERTIFICATE OF SERVICE
`
`Case IPR2022-01248
`Patent 8,842,653
`
`
`The undersigned hereby certifies that the following document wAS served
`
`by electronic service, by agreement between the parties, on the date below:
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION TO
`SUBMIT SUPPLEMENTAL INFORMATION
`
`The names and addresses of the parties being served are as follows:
`
`
`W. Karl Renner
`Jeremy J. Monaldo
`Hyun Jin In
`
`Sangki Park
`
`
`
`
`
`
`
`
`
`Andrew S. Ehmke
`Clint S. Wilkins
`
`
`
`
`IPR39843-0125IP1@fr.com
`jjm@fr.com
`in@fr.com
`spark@fr.com
`PTABInbound@fr.com
`axf-ptab@fr.com
`andy.ehmke.ipr@haynesboone.com
`clint.wilkins.ipr@haynesboone.com
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`Respectfully submitted,
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`/Keith Moore/
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`Date: March 16, 2023
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