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`Paper No. ___
`Filed: March 17, 2023
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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.,
`Petitioner,
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`v.
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`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
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`_____________________________
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`Case No. IPR2023-00133
`Patent No. 7,421,032
`—————————————————
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`PATENT OWNER’S PRE-INSTITUTION SUR-REPLY1
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`1 Authorized by Board e-mail on March 3, 2023.
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`Neither Petitioner’s arguments nor the new stipulation changes the Fintiv
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`calculus—the Fintiv factors still weigh against institution. Despite explicit
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`guidance from the Director on how to avoid the concerns raised in the precedential
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`Fintiv decision, Petitioner continues to decline to do so.
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`Factor 4: Petitioner’s second stipulation still fails to mitigate concerns of
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`duplicative effort. For example, the petition relies on references not included in
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`Petitioner’s stipulation, such as Lin/Costello, Cheng, and MacKay—a concern not
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`raised in Ericsson. See IPR2022-00069, Paper 9, 13-14; POPR, 57. Petitioner’s
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`new stipulation is crafted to ensure Petitioner can still base district court invalidity
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`arguments on references integral to their IPR challenge, or variations of those
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`references. Moreover, Ericsson was decided prior to the Fintiv memo, which
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`specified a Sotera stipulation sets the bar for eliminating concerns of overlapping
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`efforts. Despite being aware of this, Petitioner refuses to offer such a stipulation.
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`Factor 3: Petitioner ignores Caltech’s arguments highlighting the substantial
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`efforts related to validity that have been expended in the district court case. POPR,
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`54-56. By the expected May institution decision date, substantial pretrial work
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`related to validity will be complete: fact discovery will be closed, expert reports
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`will be served, and all dispositive motions will be due within a month. EX1015, 3.
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`Invalidity contentions were served in May 2022, so over a year’s work on
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`invalidity will have been completed by the institution decision date. Id., 4. The
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`district court confirmed the substantial investment to date when it denied a stay in
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`January. EX2002, 5. Contrary to the Reply’s argument, Fintiv states that effort on
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`claim construction also satisfies Factor 3, as it is related to validity. See IPR2020-
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`00019, Paper 11, 10; id., Paper 15, 13-14. The Markman order confirmed the
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`commonsense notion that invalidity arguments are being actively litigated and
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`played a role in claim construction. EX1019, 22.
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`Factor 2: Petitioner mischaracterizes Fintiv: a need to consider all six Fintiv
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`factors does not render Factor 2 “neutral” (Reply, 1). IPR2020-00019, Paper 11, 9;
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`id, Paper 15, 13. Factor 2 supports denial where the trial will occur many months
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`before an IPR decision (which Petitioner does not dispute in the Reply). Id.;
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`Ericsson, IPR2022-00069, Paper 9, 10-11 (describing 8 to 9 months from trial to
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`FWD as “significant gap” favoring denial).
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`Factor 1: Petitioner speculates Factor 1 is neutral because it is not precluded
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`from filing a second stay motion if the IPRs are instituted. But the case Petitioner
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`cites shows the same judge denying a Samsung post-institution stay motion where,
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`as here, litigation was in its advanced stages. See Solas OLED Ltd. v. Samsung
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`Display, Inc., No. 2:19-CV-00152, 2020 WL 4040716, at *2-3 (E.D. Tex. July 17,
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`2020); EX2002, 5 (noting “stage of case” already “disfavor[ed] a stay”). The
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`parties have every reason to expect the same outcome here, as the district court has
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`already noted the late stage of the district court proceeding, as well as indicating a
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`-2-
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`disinclination to grant a stay due to the patents’ history of unsuccessful challenges
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`before the PTAB. EX2002, 5-6. In fact, this district court trial is more advanced; in
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`Solas, IPRs were instituted as many as six months before trial, as opposed to the
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`four months expected here. See Solas, 2020 WL 4040716, at *1 (first institution in
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`April, six months before scheduled October trial); POPR, 53.
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`Factor 6: The petition’s deficiencies support denial both on the merits and
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`under Fintiv. The Reply ignores critical defects, such as the petition’s failure to
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`identify generation of the recited parity bits, in favor of mischaracterizing the
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`POPR. Caltech never “disavowed” the Federal Circuit’s construction of “repeat”;
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`the POPR pointed out the petition’s unjustifiable extension of that construction to
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`bits that could have been produced using repetition. POPR, 3-5, 20-27. Regarding
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`Kobayashi’s disclosure, the Reply seeks to flip the burden. Neither the petition nor
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`Dr. Valenti showed (or even asserted) that Kobayashi disclosed multiplying input
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`bits by generator matrix bits. The POPR pointed out the petition’s unfounded
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`assumption on this point, and how this error fatally undermined the petition’s
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`argument. POPR, 13-27. Moreover, whether Dr. Valenti’s opinions are rebutted by
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`expert testimony is immaterial, as those opinions rest on unsubstantiated
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`assumptions and fail to support propositions essential to Petitioner’s case. The
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`petition’s low likelihood of success is confirmed by the numerous prior IPRs
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`upholding the claims of this and related patents. POPR, 48-50.
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`-3-
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`Date: March 17, 2023
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`Respectfully submitted,
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`/ Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
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`-4-
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that the foregoing Patent Owner’s Pre-Institution
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`Sur-Reply was served on March 17, 2023, on the Petitioner at the following
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`electronic correspondence addresses:
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`Robert A. Appleby
`Greg S. Arovas, P.C.
`KIRKLAND & ELLIS, LLP
`Samsung_Caltech_IPR@kirkland.com
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`Date: March 17, 2023
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`Respectfully submitted,
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`/ Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`Reg. No. 52,182
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`-5-
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