IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Patent of: Maged F. Barsoum et al.
`
`U.S. Patent No.:
`10,693,700 Attorney Docket No.: 19688-0196IP2
`Issue Date:
`June 23, 2020
`
`Appl. Serial No.: 16/726,037
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`Filing Date:
`December 23, 2019
`
`Title:
`RECEIVERS INCORPORATING NON-UNIFORM
`MULTIDIMENSIONAL CONSTELLATIONS AND CODE RATE
`PAIRS
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`PETITIONER’S NOTICE RANKING PETITIONS FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 10,693,700
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`In re Patent of: Maged F. Barsoum et al.
`
`U.S. Patent No.:
`10,693,700 Attorney Docket No.: 19688-0196IP2
`Issue Date:
`June 23, 2020
`
`Appl. Serial No.: 16/726,037
`
`Filing Date:
`December 23, 2019
`
`Title:
`RECEIVERS INCORPORATING NON-UNIFORM
`MULTIDIMENSIONAL CONSTELLATIONS AND CODE RATE
`PAIRS
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`PETITIONER’S NOTICE RANKING PETITIONS FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 10,693,700
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`Petitioner has filed two petitions (IPR2023-00228 and IPR2023-00319)
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`challenging U.S. Patent No. 10,693,700 (the “’700 patent”). This paper provides
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`“(1) a ranking of the petitions in the order in which [Petitioner] wishes the Board to
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`consider the merits, … and (2) a succinct explanation of the differences between the
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`petitions, why the issues addressed by the differences are material, and why the
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`Board should exercise its discretion to institute….” Trial Practice Guide, 59-61.
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`I.
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`Ranking of Petitions
`Although both petitions are meritorious and justified, Petitioner requests that
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`the Board consider the petitions in the following order:
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`Rank
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`Petition
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`IPR2023-00228
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`1
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`2
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`Primary
`Reference
`Eroz
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`Claims
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`1, 4, 6-11, 14,
`16-21, 24, and
`26-30
`2-3, 5, 12-13,
`15, 22-23, and
`25
`
`IPR2023-00319
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`’777 patent
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`II.
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`Factors Supporting Institution, Including Material Differences
`A. Two Petitions are Merited due to a Priority issue
`The Board has recognized “that there may be circumstances in which more
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`than one petition may be necessary.” TPG, 59. One of the examples provided by
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`the Board for justifying the institution of multiple petitions is a “dispute about
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`priority date.” Id. The priority date accorded to the ’700 Patent is in dispute because
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` 1
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`Patent Owner has alleged priority to June 5, 2007, the filing date of U.S. Provisional
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`Application No. 60/933,319 (“’319 Provisional” or LGE1007). However, as
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`explained in Section II of the IPR2023-00319 petition, at least claims 2-3, 5, 12-13,
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`15, 22-23, and 25 should not be accorded an earlier priority date of June 5, 2007.
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`The subject matter claimed by these claims lacks written description support in the
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`’319 Provisional and any intervening application in the family, and was introduced
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`into the record as of the filing date (Dec. 23, 2019) of the ’700 Patent. See IPR2023-
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`00319 petition, Section II.
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`The two petitions also assert different prior art references, which are eligible,
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`in part, due to the twelve year gap in the two priority dates. As noted in the table
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`above, the grounds included in the first petition are based on the Eroz primary
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`reference, whereas as the grounds included in the second petition are based on the
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`’777 Patent (U.S. Patent No. 7,978,777) primary reference. The ’777 Patent and
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`secondary references, such as the ATSC standard references, asserted in the second
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`petition (IPR2023-00319) qualify as prior art based on the Dec. 23, 2019 priority
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`date. Thus, the priority date at issue has also given rise to different prior art
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`challenges based on entirely different combinations in both petitions. Institution of
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`both petitions is therefore warranted to ensure that Petitioner is afforded a fair and
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`reasonable opportunity for the PTAB to consider IPR challenges on the claims of
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`the ’700 Patent based on their respective priority dates and eligible prior art.
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` 2
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`B.
`The Two Petitions Challenge Different Claims
`As noted in the table above, the IPR2023-00228 petition challenges claims 1,
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`4, 6-11, 14, 16-21, 24, and 26-30, and the IPR2023-00319 petition challenges claims
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`2-3, 5, 12-13, 15, 22-23, and 25. Thus, the two petitions challenge entirely different
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`claims with no overlap.
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`The scope of the two sets of claims are also substantively different (e.g.,
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`compare claim 3 to any claim challenged in the IPR2023-00228). These differences
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`require individualized attention, and significant consumption of word count to
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`address each of the respective claim sets. For example, claim 3 is almost half a
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`column long and recites several substantively narrow claim features that were not at
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`issue in the claims challenged in the IPR2023-00228 petition. Other differences
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`between the claims challenged in IPR2023-00228 and the claims challenged in
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`IPR2023-00319 are facially apparent. Due to the difference in claim scope between
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`the two sets of challenged claims, the different prior art mapped against the claims
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`in each petition, and the significantly narrow scope of the claims challenged in
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`IPR2023-00319 that required particular attention, two petitions were needed to
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`sufficiently demonstrate a reasonable likelihood that the claims of the ’700 Patent
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`were obvious and invalid.
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` 3
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`Institution of both petitions is respectfully requested to ensure that Petitioner
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`is afforded a fair and reasonable opportunity for the PTAB to consider IPR
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`challenges on each of claims 1-30 of the ’700 Patent.
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`Finally, the Board’s institution of IPRs based on both petitions, which
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`compellingly demonstrate invalidity of the Challenged Claims based on materially
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`different grounds, would serve to efficiently address issues of invalidity for all
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`parties, including Patent Owner. Indeed, the Board’s institution of both petitions
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`and subsequent resolution of the validity issues presented therein has the potential
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`to play a significant role in bringing the dispute between the parties to a close sooner
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`than if the Board exercised discretion not to institute on one or more of the petitions.
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`The compelling merits of the grounds set forth in both petitions also warrants
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`instituting both petitions, both to serve the public’s interest in weeding out bad patent
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`claims and to ensure that Petitioner has a fair and reasonable opportunity for its
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`invalidity challenges against all the claims that Patent Owner currently asserts in its
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`litigation campaign to be considered by the PTAB. Moreover, because Petitioner
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`has offered a Sotera stipulation, the Board should address the invalidity of all the
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`’700 Patent claims as a matter of judicial efficiency as the same invalidity issues will
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`not be addressed in the District Court.
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`For at least these reasons, Petitioner respectfully requests that the Board
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`institute trial on both petitions.
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` 4
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`Dated: December 9, 2022
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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
`Patrick Darno, Reg. No. 69,205
`Usman A. Khan, Reg. No. 70,439
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
`
`Attorneys for Petitioner
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` 5
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4)(i) et seq. and 42.105(b), the undersigned
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`certifies that on December 9, 2022, a complete and entire copy of this Notice
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`Ranking Petitions was provided via Federal Express, to the Patent Owner by
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`serving the correspondence address of record as follows:
`
`KPPB LLP
`2190 S. Towne Centre Place
`Suite 300
`Anaheim, CA 92806
`
`
`
`
`
`/Michael Stanwyck/
`Michael Stanwyck
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(858) 678-5667
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