Filed: December 23, 2022
`
`
`
`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 IPR2022-01249
`Patent 9,019,946 B1
`____________
`
`
`PATENT OWNER’S PRELIMINARY SUR-REPLY
`
`
`
`
`
`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 IPR2022-01249
`Patent 9,019,946 B1
`____________
`
`
`PATENT OWNER’S PRELIMINARY SUR-REPLY
`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`Amgen Inc. v. Hoechst Marion Roussel, Inc.,
`314 F.3d 1313 (Fed. Cir. 2003) .............................................................................. 1
`Facebook, Inc. v. Sound View Innovations,
`IPR2017-00998, Paper 13 (P.T.A.B. Sept. 5, 2017) ..................................... 1, 2, 3
`ipDataTel, LLC v. ICN Acquisition,
`IPR2018-01822, Paper 19 (P.T.A.B. Apr. 22, 2019) .........................................1, 3
`Samsung Elecs. Co. v. Ancora Techs., Inc.,
`IPR2020-01184, Paper 11 (P.T.A.B. Jan. 5, 2021)............................................2, 3
`Regulations
`37 C.F.R. §§ 42.104(b)(3)-(4) .................................................................................... 1
`83 Fed. Reg. 51,347-51,348 (Oct. 11, 2018) ............................................................. 2
`
`
`
`- i -
`
`
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response does not
`
`meaningfully dispute that Petitioner (i) is taking inconsistent claim construction
`
`positions before this panel and in District Court, (ii) failed to inform this panel it was
`
`doing so, and (iii) makes no showing that its petitioned grounds meet its own claim
`
`constructions. The Reply therefore confirms that institution should be denied.
`
`Petitioner devotes much of its Reply to alleging that claim construction is not
`
`necessary, but does not address or dispute the fact that Petitioner had the burden to
`
`identify its relied-on claim constructions and specify where each element of the
`
`construed claim is found in the art of record. 37 C.F.R. §§ 42.104(b)(3)-(4).
`
`Petitioner also does not dispute that it did not reveal or apply the constructions it
`
`simultaneously insists—in federal court, without informing this panel—must be
`
`applied to these claims for validity purposes. See Amgen Inc. v. Hoechst Marion
`
`Roussel, Inc., 314 F.3d 1313, 1330 (Fed. Cir. 2003) (“It is axiomatic that claims are
`
`construed the same way for both invalidity and infringement.”). Petitioner’s failure,
`
`like that of the petitioner in Facebook, Inc. v. Sound View Innovations, IPR2017-
`
`00998, Paper 13 (P.T.A.B. Sept. 5, 2017), to mention “its seemingly inconsistent
`
`claim construction positions” in the two forums is a basis to deny institution. Id.,
`
`18; see ipDataTel, LLC v. ICN Acquisition, IPR2018-01822, Paper 19, 13-14
`
`(P.T.A.B. Apr. 22, 2019)
`
`(denying
`
`review where “[i]n
`
`the
`
`litigation,
`
`- 1 -
`
`
`
`Petitioner...argued that [a] term…is indefinite” but had “not offered any explanation
`
`as to how its positions here and in the District Court can be reconciled”).
`
`Petitioner complains that Patent Owner has not offered any constructions. It
`
`was Petitioner’s burden, not Patent Owner’s, to do that. As the POPR (at 10-20)
`
`explains, Office rulemaking has repeatedly confirmed petitioners may not take
`
`inconsistent claim construction positions between district court and IPR cases
`
`without justification. 83 Fed. Reg. 51,347-51,348 (Oct. 11, 2018) (amending rules
`
`to “prevent[] parties from taking inconsistent positions, such as a patent challenger
`
`arguing for a broad scope in a PTAB proceeding (under BRI) and a narrow scope
`
`(under Phillips) in district court to avoid a finding of infringement.”); 51,342 (“the
`
`possibility of differing constructions for the same claim term is troubling, especially
`
`when claim construction takes place at the same time in parallel district court
`
`proceedings”). The Board has based denial of institution on such inconsistencies.
`
`E.g., Samsung Elecs. Co. v. Ancora Techs., Inc., IPR2020-01184, Paper 11, 27
`
`(P.T.A.B. Jan. 5, 2021) (denying institution where, “[s]ignificantly, Petitioner’s
`
`[claim construction] argument…seems to be inconsistent with its position advanced
`
`in the parallel litigation and the Federal Circuit’s interpretation”). Yet here,
`
`“Petitioner left it to Patent Owner to advise [the panel] of Petitioner’s differing claim
`
`construction arguments to the district court.” Facebook, 17.
`
`- 2 -
`
`
`
`Moreover, even now Petitioner still fails to offer any justification for its
`
`inconsistent positions. Its silence is especially significant here because nothing
`
`suggests, and the Petition offers no arguments for finding, that Petitioner’s own
`
`claim constructions are met by the raised grounds in this case. As explained at length
`
`in the POPR, for example, Petitioner has not shown that its combinations disclose or
`
`suggest “multiplexed” signals
`
`that are “interleave[d] or simultaneously
`
`transmit[ted],” as its District Court construction expressly requires of such signals.
`
`POPR, 30-39. Petitioner also provides no justification for alleging certain
`
`limitations are indefinite for infringement purposes but not for invalidity purposes.
`
`Facebook, 9-10; see also ipDataTel, 13-14 (denying petition where Petitioner argued
`
`only before court, not Board, that claim was indefinite).
`
`In conclusion, the Reply does not meaningfully dispute that Petitioner’s claim
`
`construction positions are “inconsistent with its position advanced in the parallel
`
`litigation,” Samsung Elecs., 27, that it did “not inform the panel that Petitioner had
`
`taken a very different claim construction position before the district court,”
`
`Facebook, 17, and that it has not “offer[ed] any explanation as to how its positions
`
`here and in the [d]istrict [c]ourt can be reconciled,” ipDataTel, 13-14. This
`
`inconsistency and silence furnish yet another independent basis to deny institution.
`
`For these reasons and the additional reasons set forth in the POPR, the Board
`
`should deny institution.
`
`- 3 -
`
`
`
`Dated: December 23, 2022
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/Todd Martin/
`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)
`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 pending)
`Greer N. Shaw (pro hac vice pending)
`GRAVES & SHAW LLP
`355 S. Grand Ave., Suite 2450
`Los Angeles, CA 90071
`Tel: (213) 214-5101
`Back-Up Counsel for Patent Owner
`
`- 4 -
`
`
`
`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, by electronic means on December 23, 2022, by delivering a
`
`copy via electronic mail to the attorneys of record for the Petitioners as follows:
`
`W. Karl Renner
`IPR39843-0126IP1@fr.com
`
`Jeremy J. Monaldo
`jjm@fr.com
`Hyun Jin In
`in@fr.com
`Sangki Park
`spark@fr.com
`PTABInbound@fr.com
`axf-ptab@fr.com
`
`Andrew S. Ehmke
`andy.ehmke.ipr@haynesboone.com
`Clint S. Wilkins
`clint.wilkins.ipr@haynesboone.com
`
`
`
`Dated: December 23, 2022
`
`
`
`
`
`Respectfully submitted,
`
`/Todd Martin /
`Todd Martin (Reg. No. 78,642)
`Counsel for Patent Owner
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
