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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.,
`Petitioner,
`
`
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`v.
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`SMART MOBILE TECHNOLOGIES LLC,
`Patent Owner.
`____________
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`Case IPR2022-01248
`Patent 8,842,653
`____________
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`PATENT OWNER’S PRELIMINARY SUR-REPLY
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`TABLE OF AUTHORITIES
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`Case IPR2022-01248
`Patent 8,842,653
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`Page(s)
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`COURT DECISIONS
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`Amgen Inc. v. Hoechst Marion Roussel, Inc.,
`314 F.3d 1313 (Fed. Cir. 2003) ............................................................................ 1
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`
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`AGENCY DECISIONS
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`Facebook, Inc. v. Sound View Innovations,
`IPR2017-00998, Paper 13 (Sep. 5, 2017) .................................................... 1, 2, 3
`
`ipDataTel, LLC v. ICN Acquisition,
`IPR2018-01822, Paper 19 (Apr. 22, 2019) .......................................................1, 3
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`Samsung Elecs. Co., Ltd. v. Ancora Techs., Inc.,
`IPR2020-01184, Paper 11 (Jan. 5, 2021) ..........................................................2, 3
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`
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`REGULATIONS
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`37 C.F.R. § 42.104(b)(3) ............................................................................................ 1
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`37 C.F.R. § 42.104(b)(4) ............................................................................................ 1
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`
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`OTHER AUTHORITIES
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`83 Fed. Reg. 51,342 (Oct. 11, 2018) .......................................................................... 2
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`ii
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`Case IPR2022-01248
`Patent 8,842,653
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`Petitioner’s Preliminary Reply does not meaningfully dispute that Petitioner
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`(i) is taking inconsistent claim construction positions before this panel and in
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`District Court, (ii) failed to inform this panel it was doing so, and (iii) makes no
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`showing that its petitioned grounds meet its own claim constructions. The Reply
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`therefore confirms that institution should be denied.
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`Petitioner devotes much of its Reply to alleging that claim construction is
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`not necessary, but does not address or dispute the fact that Petitioner had the
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`burden to identify its relied-on claim constructions and specify where each element
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`of the construed claim is found in the art of record. 37 C.F.R. §§ 42.104(b)(3)-(4).
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`Petitioner also does not dispute that it did not reveal or apply the constructions it
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`simultaneously insists—in federal court, without informing this panel—must be
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`applied to these claims for validity purposes. See Amgen Inc. v. Hoechst Marion
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`Roussel, Inc., 314 F.3d 1313, 1330 (Fed. Cir. 2003) (“It is axiomatic that claims
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`are construed the same way for both invalidity and infringement.”). Petitioner’s
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`failure, like that of the petitioner in Facebook, Inc. v. Sound View Innovations,
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`IPR2017-00998, Paper 13 (Sep. 5, 2017), to mention “its seemingly inconsistent
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`claim construction positions” in the two forums is a basis to deny institution. Id.,
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`18; see ipDataTel, LLC v. ICN Acquisition, IPR2018-01822, Paper 19, 13-14 (Apr.
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`22, 2019) (denying review where “[i]n the litigation, Petitioner...argued that [a]
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`term…is indefinite” but had “not offered any explanation as to how its positions
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`1
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`Case IPR2022-01248
`Patent 8,842,653
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`here and in the District Court can be reconciled”).
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`Petitioner complains that Patent Owner has not offered any constructions. It
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`was Petitioner’s burden, not Patent Owner’s, to do that. As the POPR (at 10-17)
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`explains, Office rulemaking has repeatedly confirmed petitioners may not take
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`inconsistent claim construction positions between district court and IPR cases
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`without justification. 83 Fed. Reg. 51,347-51,348 (Oct. 11, 2018) (amending rules
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`to “prevent[] parties from taking inconsistent positions, such as a patent challenger
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`arguing for a broad scope in a PTAB proceeding (under BRI) and a narrow scope
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`(under Phillips) in district court to avoid a finding of infringement.”); 51,342 (“the
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`possibility of differing constructions for the same claim term is troubling,
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`especially when claim construction takes place at the same time in parallel
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`district court proceedings”). The Board has based denial of institution on such
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`inconsistencies. E.g., Samsung Elecs. Co. v. Ancora Techs., Inc., IPR2020-01184,
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`Paper 11, 27 (Jan. 5, 2021) (denying institution where, “[s]ignificantly, Petitioner’s
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`[claim construction] argument…seems to be inconsistent with its position
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`advanced in the parallel litigation and the Federal Circuit’s interpretation”). Yet
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`here, “Petitioner left it to Patent Owner to advise [the panel] of Petitioner’s
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`differing claim construction arguments to the district court.” Facebook, 17.
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`Moreover, even now Petitioner still fails to offer any justification for its
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`inconsistent positions. Its silence is especially significant here because nothing
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`2
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`Case IPR2022-01248
`Patent 8,842,653
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`suggests, and the Petition offers no arguments for finding, that Petitioner’s own
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`claim constructions are met by the raised grounds in this case. As explained at
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`length in the POPR, for example, Petitioner has not shown that its combinations
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`disclose or suggest “multiplexed” signals that are “interleave[d] or simultaneously
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`transmit[ted],” as its District Court construction expressly requires of such signals.
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`POPR, 27-33. Petitioner also provides no justification for alleging certain
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`limitations are indefinite for infringement purposes but not for invalidity purposes.
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`Facebook, 9-10; see also ipDataTel, 13-14 (denying petition where Petitioner
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`argued only before court, not Board, that claim was indefinite).
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`In conclusion, the Preliminary Reply does not meaningfully dispute that
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`Petitioner’s claim construction positions are “inconsistent with its position
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`advanced in the parallel litigation,” Samsung Elecs., 27, that it did “not inform the
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`panel that Petitioner had taken a very different claim construction position before
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`the district court,” Facebook, 17, and that it has not “offer[ed] any explanation as
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`to how its positions here and in the [d]istrict [c]ourt can be reconciled,” ipDataTel,
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`13-14. This inconsistency and silence furnish yet another independent basis to
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`deny institution.
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`For these reasons and the additional reasons set forth in the POPR,
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`institution should be denied.
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`3
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`Case IPR2022-01248
`Patent 8,842,653
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`Respectfully submitted,
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`/ Kenneth J. Weatherwax /
`
`
`Kenneth J. Weatherwax, Reg. No. 54,528
`LOWENSTEIN & WEATHERWAX LLP
`Date: December 23, 2022
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`4
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`CERTIFICATE OF SERVICE
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`Case IPR2022-01248
`Patent 8,842,653
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`The undersigned hereby certifies that the following document was served by
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`electronic service, by agreement between the parties, on the date below:
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`PATENT OWNER’S PRELIMINARY SUR-REPLY
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`The names and addresses of the parties being served are as follows:
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`
`W. Karl Renner
`Jeremy J. Monaldo
`Hyun Jin In
`
`Sangki Park
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`Andrew S. Ehmke
`Clint S. Wilkins
`
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`
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`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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`/ Colette Woo /
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`
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`Date: December 23, 2022
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