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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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`DODOTS LICENSING SOLUTIONS LLC,
`Patent Owner.
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`Case IPR2023-00701
`Patent 8,510,407 B1
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`PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
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`Proceeding No.: IPR2023-00701
`Attorney Docket: 39843-0149IP1
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`EXHIBITS
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`SAMSUNG-1001 U.S. Patent No. 8,510,407 to Kembel, et al. (“the ’407 Patent”)
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`SAMSUNG-1002 Excerpts from the Prosecution History of the ’407 Patent (“the
`Prosecution History”)
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`SAMSUNG-1003 Declaration of Dr. Douglas C. Schmidt
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`SAMSUNG-1004 Curriculum Vitae of Dr. Douglas C. Schmidt
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`SAMSUNG-1005 U.S. Patent No. 6,278,448 B1 (“Brown”)
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`SAMSUNG-1006 U.S. Patent No. 6,449,638 B1 (“Wecker”)
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`SAMSUNG-1007 U.S. Patent No. 5,793,368 (“Beer”)
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`SAMSUNG-1008 U.S. Patent No. 6,789,263 B1 (“Shimada”)
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`SAMSUNG-1009 U.S. Patent No. 6,088,340 (“Buchholz”)
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`SAMSUNG-1010 U.S. Patent No. 6,819,345 B1 (“Jones”)
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`SAMSUNG-1011 HTML 4 Unleashed (“Darnell”)
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`SAMSUNG-1012 IPR2019-01279 Final Written Decision
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`SAMSUNG-1013 U.S. Patent No. 6,342,907 B1 (“Petty”)
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`SAMSUNG-1014 Lenovo Holding Company, Inc. v. DoDots Licensing Solutions
`LLC, No. 2021-1247, 2021 WL 5822248 (Dec. 8, 2021).
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`SAMSUNG-1015 U.S. Patent No. 6,311,058 B1 (“Wecker 2”)
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`SAMSUNG-1016 U.S. Patent No. 5,737,560 (“Yohanan”)
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`i
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`Proceeding No.: IPR2023-00701
`Attorney Docket: 39843-0149IP1
`SAMSUNG-1017 CNET News, “PointCast unveils free news service,”
`https://web.archive.org/web/20110616130215/http://news.cnet.
`com/PointCast-unveils-free-news-service/2100-1023_3-
`204658.html, last accessed Feb. 16, 2023
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`SAMSUNG-1018 Declaration of June Ann Munford
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`SAMSUNG-1019 DoDots Licensing Solutions LLC v. Samsung Electronics Co.,
`Ltd. et al., 6:22-cv-00535, W.D. Tex., filed May 24, 2022
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`SAMSUNG-1020 U.S. Patent No. 6,094,681 (“Shaffer”)
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`SAMSUNG-1021 RESERVED
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`SAMSUNG-1022 U.S. Patent No. 6,185,614 B1 (“Cuomo”)
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`SAMSUNG-1023 RESERVED
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`SAMSUNG-1024 Joint Claim Construction Statement, 6:22-cv-00535, W.D. Tex.,
`filed May 15, 2023
`SAMSUNG-1025 IPR2019-01279, Paper 40 (CAFC Decision)
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`ii
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`Proceeding No.: IPR2023-00701
`Attorney Docket: 39843-0149IP1
`Samsung Electronics Co., Ltd. (“Petitioner” or “Samsung”) submits this
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`reply to Patent Owner’s preliminary response (“POPR”), as authorized by the
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`Board on August 29, 2023. Paper 7. As detailed below, the arguments advanced
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`by Patent Owner (“DoDots”) lack merit and should be rejected.
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`I.
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`THE PETITION RELIES ON THE CORRECT CLAIM
`CONSTRUCTION STANDARD
`As clearly explained in the Petition, “Petitioner submits that all claim terms
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`should be construed according to the Phillips standard. Phillips v. AWH Corp.,
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`415 F.3d 1303 (Fed. Cir. 2005); 37 C.F.R. §42.100.” Petition, 3. As the Petition
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`goes on to explain, in no unclear terms, “[u]nder the Phillips standard, the ‘words
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`of a claim are generally given their ordinary and customary meaning as understood
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`by a person of ordinary skill in the art when read in the context of the specification
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`and prosecution history,” and, moreover, “Petitioner submits that all claim terms
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`should be given their ordinary and customary meaning in the context of the
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`specification under the Phillips standard[.]” Id., 3. Thus, DoDots’ contention that
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`“Samsung’s petition should be denied” because “the petitioner uses the incorrect
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`BRI claim-construction standard” is wrong. POPR, 12.
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`DoDots’ contention that the Petition fails to apply the correct “claim
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`construction standard under 37 C.F.R. 42.100(b)” similarly misses the mark.
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`POPR, 12 (emphasis added). In his declaration, Petitioner’s expert Dr. Schmidt
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`expressly referred to “37 C.F.R. § 42.100(b)” as the basis of his interpretations of
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`1
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`Proceeding No.: IPR2023-00701
`Attorney Docket: 39843-0149IP1
`the claim terms at issue. SAMSUNG-1003, ¶26. Although Dr. Schmidt quoted an
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`earlier version of 37 C.F.R. § 42.100(b) with the “broadest reasonable
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`construction” language, such a typographical error does not deter the soundness of
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`his opinions, especially when considering that Dr. Schmidt is not a lawyer nor has
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`he ever professed to be one.1 Rather, Dr. Schmidt’s understanding of legal
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`principles is based on information received from Samsung’s counsel—who as
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`noted above applied the correct Phillips standard. See id., ¶¶15-18, 26.
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`The fact that Dr. Schmidt, despite the typographical error, applied the
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`correct claim construction standard becomes abundantly clear upon reviewing his
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`actual claim construction analysis. See SAMSUNG-1003, ¶¶50-61. Indeed, for
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`the only two terms for which Dr. Schmidt provided a separate claim construction
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`analysis—“networked information monitor” and “networked information monitor
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`template”—Dr. Schmidt’s constructions were perfectly aligned with those from
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`IPR2019-001279, which were endorsed by the Federal Circuit under the Phillips
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`standard. See SAMSUNG-1003, ¶¶28-29, see also ¶¶50-61 (“Therefore, Brown’s
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`desktop components are “networked information monitors,” as properly
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`construed”); SAMSUNG-1025. These constructions provided by Dr. Schmidt are
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`I If institution is granted, Petitioner plans to submit an updated expert declaration
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`from Dr. Schmidt that corrects the typographical error.
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`2
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`Proceeding No.: IPR2023-00701
`Attorney Docket: 39843-0149IP1
`also fully aligned with the agreed upon constructions by Samsung and DoDots for
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`these same terms in the co-pending district court case. See SAMSUNG-1024, 2.
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`DoDots certainly cannot dispute that the correct claim construction standard was
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`used in those additional proceedings—and by extension in this one.
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`Although DoDots contends that it was somehow unduly burdened and
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`prejudiced for allegedly being “forced to consider the arguments set forth in the
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`petition and the expert declaration under both the Phillips standard and the BRI
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`standard,” it is unclear what additional work had to be done, particularly when, as
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`noted above, Dr. Schmidt’s only claim construction analysis relied on
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`constructions endorsed by the Federal Circuit under the Phillips standard. See
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`POPR, 15-17. To the extent extra work was needed to cover both standards, which
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`Petitioner does not concede, it is unclear, then, why DoDots would choose to
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`expend resources analyzing Petitioner’s arguments under a claim construction
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`standard it knew was incorrect. Ultimately, because no additional claim
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`constructions were presented in the Petition or the Schmidt Declaration beyond
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`those that the Federal Circuit endorsed and DoDots expressly agreed to in
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`earlier/parallel proceedings, the argument that Patent Owner was unduly burdened
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`by Dr. Schmidt’s typo misses the mark.
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`DoDots further asserts that Dr. Schmidt’s entire testimony should be
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`disqualified because it applies the wrong legal standard. See POPR, 13. In so
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`3
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`Attorney Docket: 39843-0149IP1
`doing, DoDots cites to Herbert v Lisle Corp. Id. However, in Herbert, a patent
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`law expert held an incorrect understanding of “patent law,” which was crucial to
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`his entire opinion and testimony. In the present proceeding, DoDots does not and
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`cannot point to any such impact on Petitioner’s and Dr. Schmidt’s invalidity
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`arguments. Rather, Dr. Schmidt’s claim construction analysis “reliably applied the
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`principles and methods to the facts of the case” and was entirely consistent with
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`earlier constructions from the co-pending district court case, IPR proceeding, and
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`Federal Circuit case. Fed. R. Evid. 702(d); see SAMSUNG-1003, ¶¶28-29, 50-61.
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`Indeed, aside from a single instance of a typo in Dr. Schmidt’s declaration
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`where he was citing to 37 C.F.R. § 42.100(b), DoDots fails to show how Dr.
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`Schmidt incorrectly applied the BRI standard in his assessment of the prior art and
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`its applicability to the Challenged Claims. On the other hand, it is undisputed that
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`the Petition itself is based on the correct Phillips standard and that Dr. Schmidt’s
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`claim construction analysis is wholly consistent with the invalidity arguments set
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`forth in the Petition. DoDots does not raise any dispute over claim construction,
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`much less explain why a different claim construction standard would result in a
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`different construction of any term in the Challenged Claims. Rather, as discussed
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`above, the only claim constructions presented in Dr. Schmidt’s declaration were
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`constructions endorsed by the Federal Circuit under the Phillips standard and
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`constructions with which DoDots agrees. With these facts, the typographical error
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`4
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`Proceeding No.: IPR2023-00701
`Attorney Docket: 39843-0149IP1
`in Dr. Schmidt’s declaration has no bearing on the substance of his analysis or the
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`soundness of the technical reasoning provided in his declaration.
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`II.
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`SAMSUNG’S IPR AND DISTRICT COURT CONSTRUCTIONS ARE
`FULLY ALIGNED
`DoDots alleges that, “[t]o preserve its rights in the district court, petitioner
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`adopts the patent owner’s construction ‘only for this IPR,’ but then fails to offer a
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`construction as required under 37 C.F.R. §§ 42.104(b)(3) for a means-plus-
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`function claim limitation.” POPR, 2. DoDots goes on to assert that Petitioner fails
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`to agree with the proposed district court constructions “other than for the ‘purposes
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`of this IPR only.’” Id., 20. Relatedly, DoDots contends that the Petition is
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`deficient because it allegedly fails to account for Samsung’s constructions in the
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`co-pending litigation. Id. Such arguments are misleading and flawed.
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`Samsung has never advanced means-plus-function treatment for any claim
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`feature of the ’407 patent in any district court filing. See SAMSUNG-1024. While
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`Samsung submitted initial claim construction pleadings to treat the noted
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`“computer program modules being configured to...” phrase as a means-plus-
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`function limitation, such positions were at best preliminary and never filed with the
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`court. Moreover, Samsung subsequently revised these initial constructions, upon
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`agreement with DoDots, in a Joint Claim Construction Statement dated May 15,
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`2023, (which was signed by DoDots three months before the POPR was filed)
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`where it was indicated that means-plus-function treatment was not being pursued.
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`5
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`Proceeding No.: IPR2023-00701
`Attorney Docket: 39843-0149IP1
`See SAMSUNG-1024.2 This joint statement was the only document ever presented
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`to the court as Samsung’s official claim construction position. Id. Consequently,
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`because means-plus-function claims are not at issue—in this proceeding or in the
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`co-pending district court case—Patent Owner’s arguments directed to the same are
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`moot and there is nothing to reconcile between the two proceedings.
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`III. THE PETITION SHOULD NOT BE DISCRETIONARILY DENIED
`UNDER FINTIV
`As explained in the Petition and as further detailed below, the Fintiv factors
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`weigh against discretionary denial.
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`Factor 1: The Board should disregard Patent Owner’s speculation regarding
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`a future motion to stay. POPR, 26. The Board has consistently declined to predict
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`such outcomes, and that same approach is warranted here. Sotera, IPR2020-01019
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`Paper 12 at 14 (PTAB Dec. 1, 2020) (precedential). Factor 1 remains neutral.
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`Factor 2: Director Vidal’s observation in the Interim Fintiv Guidance “that
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`scheduled trial dates are unreliable and often change” and that median time-to-trial
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`2 It is remarkable that DoDots did not provide an up-to-date representation of the
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`district court claim construction positions in its POPR. It is even more remarkable
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`that DoDots filed this POPR citing the superseded initial pleading after Samsung
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`alerted DoDots to the issue in other co-pending IPRs (IPR2023-00621 and
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`IPR2023-00756).
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`6
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`Proceeding No.: IPR2023-00701
`Attorney Docket: 39843-0149IP1
`statistics provide an accurate estimate of trial dates remain apt in this case. And
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`the fact that an estimated trial date for the district court case, based on median
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`time-to-trial date is likely to occur after the expected FWD date in this proceeding
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`is not disputed. Thus, Factor 2 continues to weigh against discretionary denial.
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`Factor 3 continues to weigh against discretionary denial—or is at worst
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`neutral—because the parties’ investment of resources in resolving the ’407 patent’s
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`validity in the parallel litigation remains low, and Petitioner was diligent in filing
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`its Petition. The purported “significant resources” Patent Owner points to are
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`mostly related to claim construction, and much work still remains before the
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`litigation is ripe for a jury trial.
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`Factor 4 continues to weigh against discretionary denial. Contrary to Patent
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`Owner’s assertions, a Sotera stipulation is not a requirement in all cases, especially
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`in a case such as this where the FWD is likely to come before the district court trial
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`based on median time-to-trial data.
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`As noted in the Petition, Factors 5 and 6 also do not favor discretionary
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`denial. In particular, the Petition set forth two independent theories of obviousness
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`based on each of Brown and Shimada. While the POPR included cursory attorney
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`arguments directed to certain aspects of Shimada (which Petitioner strongly
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`disagrees with), it remained silent with respect to any such deficiencies in Brown.
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`Thus, the compelling merits of the Petition weigh against discretionary denial.
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`7
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`Dated
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`August 31, 2023
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`Proceeding No.: IPR2023-00701
`Attorney Docket: 39843-0149IP1
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`Respectfully submitted,
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`/Hyun Jin In/
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`W. Karl Renner, Reg. No. 41,265
`Jeremy J. Monaldo, Reg. No. 58,680
`Hyun Jin In, Reg. No. 70,014
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
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` Attorneys for Petitioner
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`8
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`Proceeding No.: IPR2023-00701
`Attorney Docket: 39843-0149IP1
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4) and 42.205(b), the undersigned certifies
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`that on August 31, 2023, a complete and entire copy of this Petitioner’s Reply to
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`Patent Owner’s Preliminary Response and accompanying exhibits were provided
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`by email to the Patent Owner by serving the correspondence address of record as
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`follows:
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`Jason S. Charkow
`Richard Juang
`Chandran B. Iyer
`Ronald M. Daignault
`DAIGNAULT IYER LLP
`8618 Westwood Center Drive Suite 150
`Vienna, VA 22182
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`Email: dodotslit@daignaultiyer.com
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`/Diana Bradley/
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`Diana Bradley
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`Tel: 858-678-5667
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`9
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