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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`v.
`APEX BEAM TECHNOLOGIES LLC,
`Patent Owner.
`____________________
`
`Case IPR2023-00602
`U.S. Patent No. 10,568,113
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`____________________
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`PETITIONER’S NOTICE RANKING PETITIONS
`FOR INTER PARTES REVIEW OF U.S. 10,568,113
`
`
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`Case IPR2023-00602
`U.S. Patent No. 10,568,113
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`I.
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`INTRODUCTION
`Petitioner is filing two concurrent Petitions (IPR2023-00601 and IPR2023-
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`00602) challenging the validity of claims 1-20 of U.S. Patent No. 10,568,113 (“the
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`’113 patent”). Pursuant to the Board’s November 2019 Consolidated Trial Practice
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`Guide (“TPG”), Petitioner submits this paper to “identify: (1) a ranking of the
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`Petitions in the order in which it wishes the Board to consider the merits . . . , and
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`(2) a succinct explanation of the differences between the Petitions, why the issues
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`addressed by the differences are material, and why the Board should exercise its
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`discretion to institute additional petitions . . . .” TPG, 60.
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`II. RANKING OF THE PETITIONS
`Although Petitioner believes that both Petitions are meritorious and justified,
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`Petitioner requests that the Board consider the Petitions in the following order:
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`Rank Petition
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`Primary Reference
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`1
`
`2
`
`IPR2023-00601
`
`IPR2023-00602
`
`Xia
`
`Liu
`
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`III. MATERIAL DIFFERENCES BETWEEN THE PETITIONS
`The two petitions are materially different. For example, the petitions rely on
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`different prior art references with different priority dates, which may result in a
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`dispute regarding whether the references qualify as prior art. The ’113 patent
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`claims priority to a Chinese Application filed August 11, 2017, while Xia claims
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`1
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`
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`Case IPR2023-00602
`U.S. Patent No. 10,568,113
`priority to its provisional filing date of August 10, 2017, and Liu claims priority to
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`its provisional filing date of June 16, 2017. To the extent that Patent Owner
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`challenges the priority of Xia and/or contends that a prior art exception under 35
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`U.S.C. 102(b) applies in an attempt to remove Xia as prior art, Petitioner presents
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`the Liu Petition.
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`Further, the obviousness grounds also contain material differences. Although
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`each set of references discloses every claim element, they do not present the same
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`theories of obviousness or use identical language. In particular, where one of the
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`grounds challenging claims 1-20 in the Xia Petition may be a single reference
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`obviousness ground, the Liu Petition asserts a combination of Liu and Jover to
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`render obvious claim limitation [1e]. Accordingly, the petitions have different
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`starting points and different rationales as to why the challenged claims are obvious.
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`IV. THE BOARD SHOULD EXERCISE ITS DISCRETION TO
`INSTITUTE BOTH PETITIONS
`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. Here, Petitioner contends that Xia qualifies as prior art due to is
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`provisional filing date of August 10, 2017. But in the event that Patent Owner
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`attempts to challenge the priority date of Xia and/or contends that a prior art
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`2
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`
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`Case IPR2023-00602
`U.S. Patent No. 10,568,113
`exception under 35 U.S.C. 102(b) applies to remove Xia as prior art, the Liu
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`Petition provides arguments based on Liu, which has a priority date almost two
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`months earlier than Xia. And because no tribunal has decided the prior art status of
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`Xia, both petitions are necessary to address the possible outcomes.
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`In view of the material differences shown above, the Board should exercise
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`its discretion to institute both Petitions. Both Petitions are necessary to show the
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`breadth of prior art that reads on the overly broad claims. The Petitions are not
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`redundant, duplicative, or substantially similar, and this is not a situation in which it
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`would be reasonable to include all challenges in a single petition, as both petitions
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`challenge twenty claims (1-20). Moreover, each Petition provides a strong showing
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`of unpatentability. Instituting on only one Petition would give Patent Owner an
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`unfair advantage, allowing Patent Owner to strategically not address the prior art
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`status of Xia before institution, but then address it once Liu is no longer available to
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`Petitioner (as a result of the Liu petition being denied) despite Liu being an earlier
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`prior art reference.
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`Finally, this is not a situation where Petitioner has filed many IPR petitions
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`against one patent or is asserting dozens of independent grounds. Rather, Petitioner
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`has filed only two petitions, each based on a single primary reference. For the
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`reasons stated above, the potential dispute about the priority date and prior art
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`3
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`Case IPR2023-00602
`U.S. Patent No. 10,568,113
`status of Xia together with the different disclosure and earlier priority date of Liu is
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`sufficient to justify institution of two petitions against the ’113 patent.
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`V. CONCLUSION
`This case satisfies the Board’s example justification for filing two petitions.
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`Specifically, the petitions depend on the Board’s ultimate findings on the priority
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`dates of the two primary references, Xia and Liu, and their prior art status relative
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`to the ’113 patent. Even with the two petitions, Petitioner has raised only two
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`grounds of unpatentability. These two grounds will not unduly burden the Board or
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`the parties. The Board should institute trial for both IPR2023-00601 and IPR2023-
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`00602.
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`Dated: February 28, 2023
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`
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`By: /Joshua L. Goldberg/
` Joshua L. Goldberg, Lead Counsel
` Reg. No. 59,369
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`
`
`4
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`
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`Case IPR2023-00602
`U.S. Patent No. 10,568,113
`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a), the undersigned certifies
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`that on February 28, 2023, a copy of the foregoing Petitioner’s Notice of Ranking
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`Petitions was served by FedEx Priority Overnight on the correspondence address of
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`record indicated in the Patent Office’s Patent Center website for U.S. Patent No.
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`10,568,113:
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`Jialin Zhong
`Zhong Law, LLC
`51 JFK Parkway
`1st Floor West
`Short Hills, NJ 07078
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` A
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` courtesy copy of the foregoing was also served by FedEx Priority Overnight
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`on the address listed on the same law firm’s website (https://zhong-law.com/):
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`Jialin Zhong
`Zhong Law, LLC
`100 Connell Drive
`Suite 2300
`Berkeley Heights, NJ 07922
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`Date: February 28, 2023
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`
`
`By: /William Esper/
`William Esper
`Case Manager and PTAB Coordinator
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
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