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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner
`
`v.
`
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner
`
`
`U.S. PATENT NO. 7,421,032
`
`Case No. IPR2023-00133
`
`
`PETITIONER’S REPLY
`TO PATENT OWNER’S PRELIMINARY RESPONSE
`
`Authorized by Board Email dated March 2, 2013
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`Petitioner’s Reply
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`IPR2023-00133
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`PETITIONER’S UPDATED EXHIBIT LIST
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`Description
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`Exhibit
`No.
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`Ex. 1001 U.S. Patent No. 7,421,032
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`Ex. 1002 Declaration of Matthew C. Valenti, Ph.D., P.E.
`
`Ex. 1003 Curriculum Vitae of Matthew C. Valenti, Ph.D., P.E.
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`Ex. 1004 Prosecution History of U.S. Patent No. 7,421,032
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`Ex. 1005 U.S. Patent No. 6,029,264 to Kobayashi et al. (“Kobayashi”)
`
`Ex. 1006 McEliece et al., “Turbo Decoding as an Instance of Pearl’s ‘Belief
`Propagation’ Algorithm,” IEEE Journal On Selected Areas in
`Communication, Vol. 16, No. 2 (February 1998). (“McEliece”)
`Ex. 1007 MacKay, “A Free Energy Minimization Framework for Inference
`Problems in Modulo 2 Arithmetic,” Fast Software Encryption, B.
`Preneel, Ed. Berlin, Germany: Spigner-Verlag Lecture Notes in
`Computer Science, Vol. 1008 (1995). (“MacKay”)
`Ex. 1008 RESERVED
`
`Ex. 1009 Rorabaugh, Error Coding Cookbook: Practical C/C++ Routines and
`Recipes for Error Detection and Correction (1996). (“Rorabaugh”)
`Ex. 1010 Lin & Costello, Error Control Coding: Fundamentals and
`Applications (1983). (“Lin/Costello”)
`Ex. 1011 Cheng, “On the Construction of Efficient Multilevel Coded
`Modulations,” Proceedings 1997 IEEE International Symposium on
`Information Theory (July 1997). (“Cheng I”)
`Ex. 1012 Cheng, “Iterative Decoding,” Ph.D. dissertation, California Institute
`of Technology, Pasadena, CA (March 1997). (“Cheng II”)
`Ex. 1013 RESERVED
`
`Ex. 1014 RESERVED
`
`Ex. 1015 Docket Control Order (Dkt. No. 27), from California Institute of
`Technology v. Samsung Electronics Co., Ltd., No. 2-21-cv-00446
`(E.D. Tex.)
`Ex. 1016 National Judicial Caseload Profile (June 30, 2022)
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`i
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`Petitioner’s Reply
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`Exhibit
`No.
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`IPR2023-00133
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`Description
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`Ex. 1017 First Amended Complaint (Dkt. No. 42), from California Institute of
`Technology v. Samsung Electronics Co., Ltd., No. 2-21-cv-00446
`(E.D. Tex.)
`Ex. 1018 Plaintiff Caltech’s Infringement Disclosures, Exhibit 1 (Preliminary
`Claim Chart for U.S. Patent No. 7,116,710), from California Institute
`of Technology v. Samsung Electronics Co., Ltd., No. 2-21-cv-00446
`(E.D. Tex.)
`Ex. 1019 Claim Construction Memorandum and Order (Dkt. No. 125), from
`California Institute of Technology v. Samsung Electronics Co., Ltd.,
`No. 2-21-cv-00446 (E.D. Tex.)
`
`ii
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`Petitioner’s Reply
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`IPR2023-00133
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`The Fintiv factors weigh against discretionary denial, particularly factors 4
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`and 3 in light of the “intermediate” parallel-litigation stipulation set forth below.
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`Moreover, the strength of the Petition should foreclose discretionary denial.
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`Factor 4: Petitioner hereby stipulates, if the IPR is instituted, not to pursue
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`invalidity challenges to the ’032 Patent in the parallel district court lawsuit that rely
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`on any reference used in the grounds of the Petition (Kobayashi and McEliece). In
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`light of this “intermediate” stipulation, this factor strongly favors institution. See
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`Ericsson Inc. v. Koninklijke KPN N.V., IPR2022-00069, Paper 9 at 13-14 (May 25,
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`2022) (“Petitioner’s [intermediate] stipulation here ‘mitigates any concerns of
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`duplicative efforts between the district court and the Board[.]’”).
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`Factor 3: Patent Owner (“PO”) has not identified any substantial efforts it has
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`made to litigate the validity issue, the relevant question under factor 3. See Sand
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`Revolution II v. Cont’l Inter., IPR2019-01393, Paper 24 at 11-12 (June 16, 2020)
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`(informative). While the Markman order involved indefiniteness issues for a handful
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`of claims (EX1019), “much of the [] court’s investment relates to ancillary matters
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`untethered to the validity issue itself.” See id. at 10. And Samsung’s stipulation
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`“limits the relevance of the parties’ investment in” the parallel proceeding. See
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`Ericsson Inc., IPR2022-00069, Paper 9 at 13-14. This factor favors institution.
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`Factor 2: This factor is neutral. Though trial in the district court is presently
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`scheduled before a final written decision would issue, “an early trial date” is “non-
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`1
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`Petitioner’s Reply
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`IPR2023-00133
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`dispositive” and simply means that “the decision whether to institute will likely
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`implicate other factors,” which, as explained in the Petition and herein, favors
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`institution. Fintiv, 5, 9. Moreover, this factor addresses the concern that a trial a final
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`written decision addressing the same prior art and arguments undermine the Board’s
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`objectives of providing an efficient alternative to district court litigation. NHK
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`Springs Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 20 (Sept. 12, 2018)
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`(precedential). Here, however, Samsung’s “intermediate” stipulation above ensures
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`that the Board will not address prior art or arguments presented in district court.
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`Factor 1: This factor is neutral. Though Samsung’s initial stay request was
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`denied, the Eastern District of Texas has indicated that pre-institution denials are a
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`matter of course rather than a merits judgment: “In this district, courts usually deny
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`motions for stay when the PTAB has not acted on a petition for inter partes review.”
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`Perdiemco LLC v. Telular Corp., No. 2:16-CV-01408-JRG-RSP, 2017 WL
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`2444736, at *2 (E.D. Tex. June 6, 2017). Per the usual practice in the Eastern
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`District, the denial does not prejudice to Samsung’s ability to refile upon institution.
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`See Solas OLED Ltd. v. Samsung, No. 2:19-CV-00152-JRG, 2020 WL 4040716, at
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`*2, *4 (E.D. Tex. July 17, 2020) (considering a second motion and according
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`“weight to the timing of” the original).
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`PO also refers to prior litigation of the asserted patents in a different district
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`to argue that a stay is unlikely. POPR at 51. It is improper, however, to “infer, based
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`2
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`Petitioner’s Reply
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`IPR2023-00133
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`on actions taken in a different case with different facts, how the District Court would
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`rule should a stay be requested by the parties in the parallel case[.]” See Fintiv,
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`IPR2020-00019, Paper 15 at 12 (May 13, 2020) (informative).
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`Factor 6: To the extent the panel concludes that the Fintiv factors compel a
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`discretionary denial, the highly meritorious Petition “strengthen[s] the patent system
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`by allowing the review of patents challenged with a sufficiently strong initial merits
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`showing of unpatentability.” CommScope Tech. LLC v. Dali Wireless, Inc.,
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`IPR2022-01242, Paper 23 at 4 (Feb. 27, 2023) (precedential). The Petition here
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`presents compelling evidence of unpatentability. To argue otherwise, PO resorts to
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`disavowing the broad claim construction of “repeat” that it advocated for at the
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`Federal Circuit (POPR, 3-5) and denying that Kobayashi’s generator matrix
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`discloses matrix multiplication to generate bits (id., 21-23). Further, PO did not
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`submit an expert declaration and, as a result, Dr. Valenti’s opinions are unrebutted.
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`And PO’s arguments regarding the prior IPR petitions are unavailing: most claims
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`challenged in those prior IPRs relied upon obviousness combinations, some up to
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`four references. Here, Ground 1 applies a single reference for independent claims 1
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`and 11. In fact, for most of the challenged claims, no combination of references is
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`needed to demonstrate unpatentability. Finally, the numerous prior IPRs are a result
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`of PO’s own choice to litigate its claims serially.
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`3
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`
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`Petitioner’s Reply
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`Date: March 10, 2023
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`
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`IPR2023-00133
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`Respectfully submitted,
`
`/Robert A. Appleby/
`Robert A. Appleby
`Counsel for Petitioner
`Reg. No. 40,897
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`4
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`Petitioner’s Reply
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`IPR2023-00133
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing document was
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`served on March 10, 2023 via electronic mail directed to counsel of record for the
`
`Patent Owner at the following:
`
`Michael T. Rosato
`WILSON SONSINI GOODRICH & ROSATI
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104-7036
`Tel.: 206-883-2529
`Fax: 206-883-2699
`Email: mrosato@wsgr.com
`
`Matthew A. Argenti
`WILSON SONSINI GOODRICH & ROSATI
`650 Page Mill Road
`Palo Alto, CA 94304
`Tel.: 650-354-4154
`Fax: 650-493-6811
`Email: margenti@wsgr.com
`
`Patrick M. Medley
`WILSON SONSINI GOODRICH & ROSATI
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104-7036
`Tel.: 206-883-2593
`Fax: 206-883-2699
`Email: pmedley@wsgr.com
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`
`
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`By: /Robert A. Appleby/
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