Filed: September 11, 2023
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and APPLE INC.,
`Petitioner,
`
`v.
`
`SMART MOBILE TECHNOLOGIES LLC,
`Patent Owner
`____________
`
`Case IPR2022-01249
`Patent 9,019,946 B1
`____________
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`PATENT OWNER’S OBJECTIONS PURSUANT TO 37 C.F.R. § 42.64(b)(1)
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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 IPR2022-01249
`Patent 9,019,946 B1
`____________
`
`PATENT OWNER’S OBJECTIONS PURSUANT TO 37 C.F.R. § 42.64(b)(1)
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`Pursuant to 37 C.F.R. § 42.64(b)(1) and the Federal Rules of Evidence
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`(“FRE”), Patent Owner Smart Mobile Technologies LLC hereby objects to the
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`following documents submitted by Petitioner Samsung Electronics Co., LTD.,
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`Samsung Electronics America, Inc., and Apple, Inc.
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`Nothing in this paper should be construed as an admission that any rights of
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`Patent Owner would have been waived or forfeited had the paper or any objection
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`herein not been filed, or that 37 C.F.R. § 42.64(b) applies to any of the objections
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`herein if § 42.64(b) would not otherwise apply. The objections herein are
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`premised upon § 42.64 potentially being determined to apply to the document in
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`question, and are submitted solely to preserve the rights of Patent Owner should §
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`42.64(b) be determined to apply.
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`1.
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`Exhibit 1051
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`Under the Trial Practice Guide, the testimony in this exhibit is untimely
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`because it is relied upon to establish Petition’s case-in-chief and could have been
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`submitted with the Petition. Under FRE 602/701/801/802 and 37 C.F.R. § 42.61,
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`this document includes testimony that is not shown to be based on first-hand
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`knowledge including of how relied-upon data was generated, is based on
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`speculation, and constitutes and contains inadmissible hearsay. Under FRE
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`401/402/403/702, this document includes testimony not relevant to the instituted
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`review, because, among other things, it has not been shown that the purportedly
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`expert declarant is qualified to testify competently regarding the matters the
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`opinions are said to address, or that the declarant’s testimony is based on sufficient
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`facts or data or arrived at by reliable principles, procedures, or methods reliably
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`applied to the facts of this case, or that the declarant’s opinion will assist the trier
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`of fact to understand the evidence or to determine any fact in issue and does not
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`have a greater potential to mislead than to enlighten. Under FRE 401/705 and 37
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`C.F.R. § 42.65, this document does not disclose underlying facts and data. Under
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`FRE 401/705 and 37 C.F.R. § 42.65, this document includes testimony on patent
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`law and practice.
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`2.
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`Exhibit 1052
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`Under the Trial Practice Guide, this exhibit is untimely because it is relied
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`upon to establish Petition’s case-in-chief and could have been submitted with the
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`Petition. Under FRE 401/402/403, the exhibit is also inadmissible as irrelevant
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`because, among other things, they do not form a basis of the instituted grounds,
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`and their probative values are outweighed by other considerations including
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`prejudice, confusion, and waste of time.
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`3.
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`Exhibit 1054
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`Under FRE 401/402/403, this document is inadmissible as irrelevant
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`because, among other things, it relates to another matter, a different patent, and
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`different petition, and its probative value, if any, is outweighed by other
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`considerations including prejudice, confusion, and waste of time. Under FRE
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`106/1001, 35 U.S.C. § 312(a)(3) & (5), and 37 C.F.R. § 42.51(b)(1), this document
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`is incomplete and is not a copy which accurately reproduces the original.
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`4.
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`Exhibit 1055
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`Under FRE 401/402/403, this document is inadmissible as irrelevant
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`because, among other things, it relates to another matter, a different patent, and
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`different petition, and its probative value, if any, is outweighed by other
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`considerations including prejudice, confusion, and waste of time.
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`5.
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`Exhibit 1056
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`Under FRE 401/402/403, this document is inadmissible as irrelevant
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`because, among other things, it is improperly incorporated by reference, is not
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`relied upon, or cited by Petitioner in its Petition or Reply, it does not form a basis
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`of the instituted grounds, and its probative value is outweighed by other
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`considerations including prejudice, confusion, and waste of time. Under FRE
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`801/802, to the extent this document is relied upon for the truth of the matter
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`asserted, this document constitutes and contains inadmissible hearsay. Under the
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`Trial Practice Guide, this exhibit is untimely because it is relied upon to establish
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`Petition’s case-in-chief and could have been submitted with the Petition.
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`6.
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`Exhibits 1058-1060
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`Under FRE 401/402/403, these documents are inadmissible as irrelevant
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`because, among other things, they are not shown to be contemporaneous with the
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`claimed priority date of the patent at issue, do not form a basis of the instituted
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`grounds, and their probative values are outweighed by other considerations
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`including prejudice, confusion, and waste of time. Under FRE 901, these
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`documents are inadmissible because they have not been shown to be authenticated
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`or identified. Under FRE 801/802, to the extent these documents are relied upon
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`for the truth of the matter asserted, these documents constitute and contain
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`inadmissible hearsay. Under the Trial Practice Guide, these exhibits are untimely
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`because they are relied upon to establish Petition’s case-in-chief and could have
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`been submitted with the Petition.
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`7.
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`Exhibits 1061-1062
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`Under the Trial Practice Guide, these exhibits are untimely because they are
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`relied upon to establish Petition’s case-in-chief and could have been submitted
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`with the Petition.
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`8.
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`Exhibits 1063-1065
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`Under FRE 401/402/403, these documents are inadmissible as irrelevant
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`because, among other things, they are not relied upon or cited by Petitioner in its
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`Petition, they do not form a basis of the instituted grounds, and their probative
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`values are outweighed by other considerations including prejudice, confusion, and
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`- 4 -
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`waste of time. Under the Trial Practice Guide, these exhibits are untimely to the
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`extent they are relied upon to establish Petition’s case-in-chief and could have been
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`submitted with the Petition.
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`9.
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`Exhibit 1066
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`Under FRE 401/402/403, this document is inadmissible as irrelevant
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`because, among other things, it is not relied upon or cited by Petitioner in its
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`Petition, it does not form a basis of the instituted grounds, and its probative value is
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`outweighed by other considerations including prejudice, confusion, and waste of
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`time. Under FRE 106/1001, 35 U.S.C. § 312(a)(3) & (5), and 37 C.F.R. §
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`42.51(b)(1), this document is incomplete and is not a copy which accurately
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`reproduces the original. Under the Trial Practice Guide, this exhibit is untimely to
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`the extent it is relied upon to establish Petition’s case-in-chief and could have been
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`submitted with the Petition.
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`10. Exhibits 1067-1069
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`Under FRE 401/402/403, these documents are inadmissible as irrelevant
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`because, among other things, they are not relied upon or cited by Petitioner in its
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`Petition, they do not form a basis of the instituted grounds, and their probative
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`values are outweighed by other considerations including prejudice, confusion, and
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`waste of time. Under the Trial Practice Guide, these exhibits are untimely to the
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`extent they are relied upon to establish Petition’s case-in-chief and could have been
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`submitted with the Petition.
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`11. Exhibit 1071
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`Under FRE 401/402/403, this document is inadmissible as irrelevant
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`because, among other things, it does not form a basis of the instituted grounds, and
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`its probative value is outweighed by other considerations including prejudice,
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`confusion, and waste of time.
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`Dated: September 11, 2023
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`Respectfully Submitted,
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`/Philip J. Graves/
`Philip J. Graves (Pro Hac Vice)
`Greer N. Shaw (Pro Hac Vice)
`GRAVES & SHAW LLP
`355 S. Grand Ave., Suite 2450
`Los Angeles, CA 90071
`Tel: (213) 214-5101
`Back-Up Counsel for Patent Owner
`
`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
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`Todd Martin (Reg. No. 78,642)
`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
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I certify that I caused to be served on the
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`counsel for Petitioner a true and correct copy of the foregoing Patent Owner’s
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`Objections Pursuant to 37 C.F.R. § 42.64(b)(1), by electronic means on September
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`11, 2023, by delivering a copy via electronic mail to the attorneys of record for the
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`Petitioner as follows:
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`W. Karl Renner
`IPR39843-0126IP1@fr.com
`Jeremy J. Monaldo
`jjm@fr.com
`Hyun Jin In
`in@fr.com
`Sangki Park
`spark@fr.com
`Aamir A. Kazi
`kazi@fr.com
`Christopher O. Green
`cgreen@fr.com
`PTABInbound@fr.com
`axf-ptab@fr.com
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`Andrew S. Ehmke
`andy.ehmke.ipr@haynesboone.com
`Clint S. Wilkins
`clint.wilkins.ipr@haynesboone.com
`
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`Dated: September 11, 2023
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`Respectfully Submitted,
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`/Philip J. Graves/
`Philip J. Graves (Pro Hac Vice)
`Back-Up Counsel for Patent Owner
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