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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 IPR2022-01249
`Patent 9,019,946 B1
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`PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
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`Proceeding No.: IPR2022-01249
`Attorney Docket: 39843-0126IP1
`Patent Owner argues that the Petition should be denied because it does not
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`present a construction in the Petition put forward in parallel district court litigation.
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`See POPR at 10-20. Patent Owner’s argument would require an exact uniformity
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`between constructions presented between forums, as opposed to uniformity in the
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`standard used across forums. Id. But the Patent Office’s purpose for changing the
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`claim construction standard to Phillips was to promote “uniform interpretation of
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`the patent laws,” to reduce the potential for different construction outcomes, not to
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`rigidly require presentation of the same constructions across forums. Changes to
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`the Claim Construction Standard, 83 FED. REG. at 51,348.
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`It is well-established that claim construction is only required for “terms ‘that
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`are in controversy, and only to the extent necessary to resolve the controversy.’”
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`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
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`(Fed. Cir. 2017). It follows that where terms are not in controversy – where there
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`are not “disputed meanings” – then it is not necessary to put forward a construction
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`in an IPR. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed.
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`Cir. 1999). Such is the case here. The prior art reads on the claims in a manner that
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`does not require construction, and Patent Owner has not offered any constructions
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`in their Preliminary Response. Notably, Patent Owner has not identified any
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`alleged inconsistency in constructions for claim 14, other than merely identifying
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`that Petitioner contended at district court that 14[h] is indefinite. See POPR at 18.
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`1
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`Proceeding No.: IPR2022-01249
`Attorney Docket: 39843-0126IP1
`Moreover, it was Patent Owner that sought a construction of “multiplexing” in
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`district court, to which Petitioner was required to respond. If there is a “two-faced
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`approach” in this proceeding, it is Patent Owner’s proposed construction of
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`“multiplexing” in district court they don’t also seek here.
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`The decisions Patent Owner relies upon are consistent with this claim
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`construction principle. KioSoft is not an example of the Board generally
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`“preclud[ing] a petitioner from taking inconsistent claim constructions in AIA
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`proceedings and district court.” POPR at 16. KioSoft’s Petitioner actively proposed
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`a construction, placing the construction into controversy. See KioSoft Tech. LLC v.
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`PayRange Inc., CBM2020-00026, Paper 11 at 15-16 (PTAB Mar. 22, 2021).
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`Petitioner actively argued – under Phillips – for a construction different from their
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`proposal at district court, even using the same expert. Id. at 17. This Petition does
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`not seek a construction for “multiplexing,” since it is not necessary to resolve any
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`controversy, not to mention that this term is missing from claim 14. Nor did
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`Petitioner’s expert provide a declaration in the district court proceeding.
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`Orthopediatrics does not stand for a general rule that any differences in
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`constructions warrant a denial of institution. While Petitioner argued constructions
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`weren’t necessary, Patent Owner argued for means-plus-function limitations, thus
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`placing them in controversy. Orthopediatrics Corp. v. K2M Inc., IPR2018-01546,
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`Paper 10 at 7-9 (PTAB Feb. 14, 2019). Petitioner’s position was problematic
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`2
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`Proceeding No.: IPR2022-01249
`Attorney Docket: 39843-0126IP1
`because they had argued at district court that the terms were means-plus-function
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`limitations. Id. Here, Patent Owner does not argue that any term requires
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`construction, but rather presents multiple arguments using Petitioner’s district
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`court proposal while disagreeing with it. POPR at 19, fn. 3. And neither party
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`argues for a means-plus-function limitation.
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`Patent Owner omits other decisions where differences in claim construction
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`proposals between parallel proceedings did not warrant denial, and that frame the
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`issue as whether a party has placed a term into controversy. In an analogous case,
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`Petitioner stated that no claim construction was necessary while Patent Owner
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`advocated Petition denial for not proposing any constructions or not applying the
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`same constructions. See Dell Inc. v. Neo Wireless LLC, IPR2021-01486, Paper 10
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`at 12-13 (PTAB Mar. 16, 2022). Patent Owner proposed no construction. Id. The
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`Board agreed with Petitioner that construction wasn’t necessary. Id.; 26-28; Quest
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`Diagnostics Inc. v. Ravgen, Inc., IPR2021-00791, Paper 20 (PTAB Oct. 19, 2021).
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`Accordingly, that a term received a proposed construction in this case’s
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`related proceeding is not determinative; rather, the question is whether construction
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`under the shared Phillips standard is required to resolve a controversy. Indeed, the
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`term “multiplexing,” to which Patent Owner dedicated most of its preliminary
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`response (POPR at 1-2, 4-6, 9, 19, 30-47, 51-54, 59), is not even part of claim 14.
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`There is no controversy here, and therefore there is no basis to deny the Petition.
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`3
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`Dated December 16, 2022
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`Proceeding No.: IPR2022-01249
`Attorney Docket: 39843-0126IP1
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`Respectfully submitted,
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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.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
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`Attorneys for Petitioner
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`4
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`Proceeding No.: IPR2022-01249
`Attorney Docket: 39843-0126IP1
`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 December 16, 2022, a complete and entire copy of this Petitioner’s Reply
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`to Patent Owner’s Preliminary Response was provided by email to the Patent
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`Owner by serving the correspondence address of record as follows:
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`Rex Hwang
`Todd Martin
`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
`pgraves@gravesshaw.com
`gshaw@gravesshaw.com
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`/Kristyn Waldhauser/
`Kristyn Waldhauser
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(612) 638-5731
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`5
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