`571-272-7822
`
`Paper 7
`Date: August 29, 2023
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`DODOTS LICENSING SOLUTIONS LLC,
`Patent Owner.
`
`
`
`IPR2023-00701
`Patent 8,510,407 B1
`
`
`
`
`
`
`
`
`
`
`
`
`Before HUBERT C. LORIN and SHARON FENICK, Administrative Patent
`Judges.
`
`FENICK, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5; 37 C.F.R. § 42.108(c)
`
`
`
`
`
`
`
`
`IPR2023-00701
`Patent 8,510,407 B1
`
`
`Samsung Electronics Co., Ltd. (“Petitioner”) filed a Petition for an
`inter partes review (Paper 2) challenging claims 1–24 of U.S. Patent No.
`8,510,407 B1 (Ex. 1001). DoDots Licensing Solutions LLC (“Patent
`Owner”) filed a Preliminary Response (Paper 6, “Prelim. Resp.”). Each of
`Petitioner and Patent Owner has identified DoDots Licensing Solutions LLC
`v. Samsung Electronics Co., Ltd., 6:22-cv-00535, pending in the United
`States District Court for the Western District of Texas (“the related
`litigation”) as a related matter. Petition 105–106; Paper 3 (Patent Owner’s
`Mandatory Notices), 2.
`Petitioner emailed the Board on August 22, 2023 requesting
`authorization to file a preliminary reply responding to Patent Owner’s
`arguments regarding (i) the claim construction standard used in the expert
`declaration, (ii) allegations of inconsistent positions taken by Petitioner in
`the related litigation, and (iii) arguments relating to our discretion under
`Fintiv. 1 Petitioner noted Patent Owner’s opposition to this request, and
`request to be heard. We held a teleconference on August 24, 2023 with the
`parties regarding this matter.
`During the teleconference, we heard the arguments by each party. We
`determined that certain of the issues could not have been reasonably
`anticipated and addressed and that the panel would benefit from briefing by
`the parties addressing the issues.
`Therefore, we instructed the parties during the conference that we
`would authorize Petitioner to file a Preliminary Reply and Patent Owner a
`
`
`1 Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020)
`(precedential).
`
`2
`
`
`
`IPR2023-00701
`Patent 8,510,407 B1
`
`Preliminary Sur-reply. We also informed the parties that we would issue
`this order to memorialize this instruction.
`The supplemental briefing authorized is limited as discussed below.
`
`
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner is authorized to file, by August 31, 2023, a
`
`seven-page Preliminary Reply, limited to responding to Patent Owner’s
`arguments regarding (i) the claim construction standard used in the expert
`declaration, (ii) allegations of inconsistent positions taken by Petitioner in
`the related litigation, and (iii) arguments relating to our discretion under
`Fintiv; and
`
`FURTHER ORDERED that Patent Owner is authorized to file, no
`later than seven business days after the filing of Petitioner’s Preliminary
`Reply, a responsive seven-page Preliminary Sur-reply.
`
`
`3
`
`
`
`IPR2023-00701
`Patent 8,510,407 B1
`
`For PETITIONER:
`W. Karl Renner
`Jeremy J. Monaldo
`Hyun Jin In
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`jjm@fr.com
`in@fr.com
`
`For PATENT OWNER:
`Jason S. Charkow
`Richard Juang
`Chandran B. Iyer
`Ronald M Daignault
`DAIGNAULT IYER LLP
`jason.s.charkow@dagignaultiyer.com
`richard.juang@gmail.com
`cbiyer@dagignaultiyer.com
`rdaignault@daignaultiyer.com
`
`4
`
`
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