UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and
`GOOGLE LLC,
`
`Petitioners
`
`v.
`
`RYAN HARDIN and ANDREW HILL,
`
`Patent Owners.
`
`Case IPR2022-01330
`
`U.S. Patent No. 9,779,418
`
`Petitioners’ Notice Ranking Petitions
`And Explaining Material Differences Between
`Petitions For U.S. Patent No. 9,779,418
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and
`GOOGLE LLC,
`
`Petitioners
`
`v.
`
`RYAN HARDIN and ANDREW HILL,
`
`Patent Owners.
`
`Case IPR2022-01330
`
`U.S. Patent No. 9,779,418
`
`Petitioners’ Notice Ranking Petitions
`And Explaining Material Differences Between
`Petitions For U.S. Patent No. 9,779,418
`
`
`
`IPR2022-01330
`U.S. Patent No. 9,779,418
`
`Petitioners are filing three concurrent petitions challenging the patentability
`
`of claims of U.S. Patent No. 9,779,418 (the “’418 patent”). Pursuant to the Board’s
`
`November 2019 Consolidated Trial Practice Guide (“TPG”), Petitioners submit this
`
`paper to “identify: (1) a ranking of the Petitions in the order in which it wishes the
`
`Board to consider the merits …, and (2) a succinct explanation of the differences
`
`between the Petitions, why the issues addressed by the differences are material, and
`
`why the Board should exercise its discretion to institute additional petitions.”
`
`I.
`
`ORDERING OF PETITIONS
`
`Petitioners believe that each petition is meritorious and justified, especially
`
`because (as explained further below), each petition is necessary to address all of the
`
`claims that Petitioner seeks to challenge. Nonetheless, to the extent required by the
`
`Trial Practice Guide, Petitioners request that the Board consider the petitions in the
`
`following order:1
`
`1 Petitioners’ rank the claim sets grouped as (1) device claims, (2) Beauregard
`
`claims, and (3) method claims. Petitioners have ranked these claim sets to
`
`correspond to the ranking order of claim sets for petitions challenging Patent Nos.
`
`10,049,387 (Case Nos. , IPR2022-01327, IPR2022-01328, and IPR2022-01329) and
`
`10,984,447 (Case Nos. IPR2022-01333, IPR2022-01334, and IPR2022-01335).
`
`1
`
`
`
`IPR2022-01330
`U.S. Patent No. 9,779,418
`
`Rank
`
`PTAB Case No.
`
`Primary
`References
`
`Challenged
`Claims
`
`A
`
`B
`
`C
`
`IPR2022-01331
`(“Petition 1”)
`
`Hardin ’665 in view of
`Salmre
`
`IPR2022-01332
`(“Petition 2”)
`
`Hardin ’665 in view of
`Salmre
`
`IPR2022-01330
`(“Petition 3”)
`
`Hardin ’665 in view of
`Salmre
`
`11-18
`
`19-25
`
`1-10
`
`II.
`
`THREE PETITIONS ARE NEEDED TO PREVENT PREJUDICE
`
`Each of Petitions 1-3 rely on the same prior art grounds but challenge
`
`different, non-overlapping sets of claims. Petitioners submit that three petitions
`
`challenging the ’418 patent are necessary because there was no practicable way to
`
`fit the challenges in a single petition containing less than 14,000 words. Petitioners
`
`submit this is because:
`
`
`
`
`
`The claims are very long, with claims 1-25 themselves comprising
`
`7,637 words. Indeed, each independent claim spans over two and half
`
`columns of the patent;
`
`Patent Owners have asserted almost every claim in the co-pending
`
`district court litigation. In particular, Patent Owners have asserted
`
`claims 1‒3, 6–7, 9–13, and 15–25, meaning all three challenged
`
`2
`
`
`
`
`
`
`
`
`
`IPR2022-01330
`U.S. Patent No. 9,779,418
`
`independent claims and almost all challenged dependent claims are at
`
`issue in the district court, for a total of twenty-one asserted claims;
`
`Demonstrating the ’418 patent’s broken priority chain requires an
`
`extensive discussion of the prosecution history and requires analysis
`
`not normally needed in petitions for inter partes review;
`
`While three petitions are needed, each petition relies on the same prior
`
`art combination (Hardin ’665/Salmre), thus easing any burden on the
`
`Board;
`
`Petitioners have drafted the challenges as efficiently as possible,
`
`providing a claim chart to satisfy 37 C.F.R. § 42.104(b)(4). Petitioners
`
`respectfully submit that claim charts are appropriate here given that
`
`Hardin ’665 has the same specification as the challenged patent and
`
`Petitioners would expect Patent Owners to take the position that all
`
`claim limitations in the challenged patent are found in Hardin ’665; and
`
`
`
`Petitioners have filed all three petitions concurrently, meaning that
`
`Petitioners neither have serially challenged the same claims under
`
`different prior art references nor had the benefit of any of Patent
`
`Owners’ preliminary responses that it might file.
`
`III. THE DIFFERENCES BETWEEN THE PETITIONS
`
`The main difference between each petition is that different claims are
`3
`
`
`
`IPR2022-01330
`U.S. Patent No. 9,779,418
`
`challenged. Petitioners note that the analysis in each petition is substantially similar
`
`due to the repetitive nature of the challenged claims. For example, independent
`
`claim 1 is a method claim, independent claim 11 recites a mobile device, and
`
`independent claim 19 is a Beauregard claim, similar to claim 1. Petitioners were
`
`unable to fit analysis of these three similar independent claims (and similar
`
`corresponding dependent claims) into a single 14,000 word petition.
`
`Petitioners submit that the situation here is unlike General Plastics Industrial
`
`Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017).
`
`Petitioners have not previously challenged the ’418 patent, all of the petitions were
`
`filed the same day, and while they each challenge different claims, they are all based
`
`on the same prior art. Indeed, given the similarity between the independent claims,
`
`the Board’s analysis of one petition will in all likelihood be similar to the analysis
`
`required by the other two.
`
`IV. DENIAL OF TRIAL INSTITUTION WOULD BE UNFAIR
`
`Petitioners neither drafted the lengthy claims of the ’418 patent nor had any
`
`say in how many claims would be included in the patent. Nor did Petitioners have
`
`any say in what claims to assert in district court litigation. Petitioners respectfully
`
`submit that Patent Owners, and not Petitioners, should bear any burden caused by
`
`an unreasonable multiplicity of lengthy claims. Petitioners further submit that Patent
`
`Owners’ decision to assert almost every claim in the co-pending litigation has
`
`4
`
`
`
`IPR2022-01330
`U.S. Patent No. 9,779,418
`
`necessitated the need to file these three petitions. Indeed, denial of any of these three
`
`petitions would deprive Petitioners of the forum Congress created to hear
`
`patentability challenges.
`
`V.
`
`CONCLUSION
`
`Petitioners request that the Board not exercise its discretion to deny any of
`
`these three petitions. Petitioners have neither filed multiple serial petitions nor
`
`asserted multiple different prior art challenges. Instead, Petitioners challenge a
`
`patent with a significant number of lengthy claims, and Patent Owners have asserted
`
`almost all of them.
`
`Date: August 2, 2022
`
`Respectfully submitted,
`
`/Jeffrey A. Miller/
`Jeffrey A. Miller, Lead Counsel
`Reg. No. 35,287
`
`5
`
`
`
`IPR2022-01330
`U.S. Patent No. 9,779,418
`
`CERTIFICATE OF SERVICE
`
`I certify that on August 2, 2022, I caused a true and correct copy of the
`
`foregoing Petitioners’ Notice Ranking Petitions And Explaining Material
`
`Differences Between Petitions For U.S. Patent No. 9,779,418 to be served via
`
`overnight delivery on the Patent Owners at the following correspondence address of
`
`record as listed on PAIRPatent Center:
`
`Ryan Hardin
`P.O. Box 271861
`Houston TX 77277
`
`A courtesy copy was also sent via electronic mail to Patent Owners’ litigation
`
`counsel listed below:
`
`Thomas M. Melsheimer (tmelsheimer@winston.com)
`M. Brett Johnson (mbjohnson@winston.com)
`Rex A. Mann (mann@winston.com)
`Chad B. Walker (cbwalker@winston.com)
`Ahtoosa A. Dale (adale@winston.com)
`Saranya Raghaven (sraghaven@winston.com)
`Matt Hopkins (mhopkins@winston.com)
`Wesley Hill (wh@wsfirm.com)
`
`/Jeffrey A. Miller/
`Jeffrey A. Miller, Lead Counsel
`Reg. No. 35,287
`
`6
`
`
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