IPR2023-00701 (U.S. Patent No. 8,510,407)
`PO’s Sur-Reply
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`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
`Case IPR2023-00701
`U.S. Patent No. 8,510,407 B1
`__________________________________________________________________
`
`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY
`TO PATENT OWNER’S PRELIMINARY RESPONSE
`
`
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`
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`PO’s Sur-Reply
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`
`
`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
`Case IPR2023-00701
`U.S. Patent No. 8,510,407 B1
`__________________________________________________________________
`
`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY
`TO PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
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`IPR2023-00701 (U.S. Patent No. 8,510,407)
`PO’s Sur-Reply
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`TABLE OF CONTENTS
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`I.
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`Page
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`Dr. Schmidt’s use of an incorrect claim construction standard is not a
`“typographical error.” ...................................................................................... 1
`A.
`Petitioner failed to meet its burden of proof in showing that Dr.
`Schmidt’s recitation and use of BRI was a “typographical error.” ....... 1
`The length of time elapsed between learning of the error and
`bringing the error to DoDots’s and the Board’s attention. .................... 2
`C. DoDots would be prejudiced if the proposed corrections were
`allowed. ................................................................................................. 3
`Petitioner’s proposed corrections would materially impact the
`proceeding. ............................................................................................ 5
`
`B.
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`D.
`
`II.
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`Samsung has in fact argued that the ’407 patent includes a means-plus-
`function limitation. .......................................................................................... 6
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`III. Fintiv factors also favor denying the petition. ................................................. 7
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`i
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`IPR2023-00701 (U.S. Patent No. 8,510,407)
`PO’s Sur-Reply
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Amkor Tech, Inc. v. Tessera, Inc,
`IPR2013-00242, Paper No. 32 (P.T.A.B. August 29, 2013) ................................ 3
`Ivantis Inc et al. v. Glaukos Corp et al.,
`IPR 2018-01180, Paper 14 (P.T.A.B. Dec. 6, 2018) .................................... 1, 2, 3
`Other Authorities
`37 C.F.R. §42.104(c) .................................................................................................. 2
`37. C.F.R §100 ........................................................................................................... 3
`37. C.F.R § 104 .......................................................................................................... 3
`37 CFR §42.20(c) ....................................................................................................... 1
`37 CFR § 42.23(a) ...................................................................................................... 1
`
`
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`
`
`ii
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`IPR2023-00701 (U.S. Patent No. 8,510,407)
`PO’s Sur-Reply
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`PATENT OWNER’S EXHIBIT LIST
`Description
`Lenovo Holding Co, Inc. et al. v. DoDots Licensing Sols.,
`IPR2019-01279 (P.T.A.B. Jan. 19, 2021)
`Lenovo Holding Co. v. DoDots Licensing Sols. LLC, 2021 U.S.
`App. LEXIS 36126, at *2 (Fed. Cir. Dec. 8, 2021)
`Defendants’ Proposed Claim Constructions, dated March 1,
`2023, submitted in DoDots Licensing Solutions LLC, v.
`Samsung Electronics Co., Ltd et al., Case No.: 6:22-cv-00535-
`ADA-DTG (W.D. Tex)
`Relevant portions of Prosecution History of U.S. Patent No.
`8,510,407
`June 21, 2022, Memo Regarding Interim Procedure for
`Discretionary Denials in AIA Post-Grant Proceedings with
`Parallel District Court Litigation
`Agreed Scheduling Order, dated December 29, 2022
`Excerpts from Dr. Schmidt’s three declarations in support of
`Samsung’s petitions in IPR2023-00621, IPR2023-00756, and
`IPR2023-00701
`Samsung’s counsel’s first email to DoDots’ counsel regarding
`meet and confer on the alleged typographical error
`July 27, 2023 Order from the United States District Court,
`Western District of Texas in DoDots Licensing Solutions LLC v.
`Samsung Electronics Co., Ltd. et al., 6:22-cv-00535-ADA,
`(W.D. Tex.)
`
`Exhibit No.
`2001
`
`2002
`
`2003
`
`2004
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`2005
`
`2006
`2007
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`2008
`
`2009
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`iii
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`IPR2023-00701 (U.S. Patent No. 8,510,407)
`PO’s Sur-Reply
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`I.
`
`Dr. Schmidt’s use of an incorrect claim construction standard is not a
`“typographical error.”
`Petitioner failed to meet its burden of proof in showing that Dr.
`A.
`Schmidt’s recitation and use of BRI was a “typographical error.”
`Samsung admits that Dr. Schmidt’s declaration recites the wrong claim
`
`construction standard and asks to correct it as a purported “typographical error.”
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`See Reply at 1-2. It is undisputed, however, that Samsung has the burden of proof
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`under 37 CFR §§42.20(c) and 42.23(a) to show that its expert made a
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`“typographical error.” Samsung has wholly failed to meet its burden. Tellingly,
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`Samsung does not even mention the burden it bears to show that Dr. Schmidt made
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`a typographical error.
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`Samsung’s reply relies solely on attorney arguments to claim that Dr.
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`Schmidt made a typographical error. Samsung fails to provide any testimonial
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`evidence as to the nature of the error, an explanation of how the purported error
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`occurred, and how it was discovered. See Ivantis Inc et al. v. Glaukos Corp et al.,
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`IPR 2018-01180, Paper 14 at 9 (P.T.A.B. Dec. 6, 2018) (holding that the nature
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`and circumstances of the error is a factor in determining whether the error can be
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`deemed typographical or not). Indeed, Samsung fails to provide any evidence from
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`anyone with firsthand knowledge that Dr. Schmidt did not intend to rely on BRI.
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`Samsung’s bare say-so and arguing that Dr. Schmidt is not an attorney are not
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`enough to meet the burden. With no evidence whatsoever and only attorney
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`1
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`IPR2023-00701 (U.S. Patent No. 8,510,407)
`PO’s Sur-Reply
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`arguments, Petitioner cannot meet its burden of proof on this issue.
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`The identified error, however, is not actually ‘typographical” in nature, and
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`instead is an error of law that would introduce new arguments because Petitioner’s
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`efforts to replace the defunct BRI with the correct Phillips standard results in
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`wholesale changes to Dr. Schmidt’s declaration and the petition. Moreover,
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`submission of any papers to correct errors outside the context of a 37 C.F.R.
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`§42.104(c) motion is improper because it is now more than one year since service
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`of the complaint. The nature of Dr. Schmidt’s error is not rectifiable as a clerical or
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`typographical error. Ivantis Inc et al., IPR 2018-01180, Paper 14 at 9-10. (finding
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`that replacing a prior art document referencing specific quotes with an earlier
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`version of the same prior art document without those quotes is not a clerical error
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`but rather an “error of law”); see also POPR at 13-14 (citing cases where expert’s
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`testimony found to be inadmissible for using the wrong legal standard). When each
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`of Dr. Schmidt’s three declarations (each having different dates) acknowledge the
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`use of BRI, the errors appear less to be “typographical” and more as evidencing the
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`expert’s actual intention and approach to construing claims. See Ex. 2007.
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`B.
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`The length of time elapsed between learning of the error and
`bringing the error to DoDots’s and the Board’s attention.
`Petitioner learned of the error on or about July 14, 2023 when the POPRs in
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`IPR2023-00621 and IPR2023-00756 were filed. But then Samsung waited twenty-
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`2
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`IPR2023-00701 (U.S. Patent No. 8,510,407)
`PO’s Sur-Reply
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`six days (until August 9, 2023) to raise this issue with Patent Owner. See Ex. 2008.
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`This nearly month-long delay to raise a substantive issue (on the eve of the Patent
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`Owners POPR due date in this case) weighs against Samsung. Ivantis, Paper 14 at
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`11 (denying petitioner’s request to correct alleged clerical errors as untimely when
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`leave was sought within four days of the error being discovered).
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`C. DoDots would be prejudiced if the proposed corrections were
`allowed.
`Petitioner’s assertion that Patent Owner would not be prejudiced by the
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`proposed corrections is incorrect. In formulating its POPR, DoDots “should be able
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`to rely on the Petition and accompanying exhibits as being correct.” Ivantis Inc et
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`al., IPR 2018-01180, Paper 14 at 13. Requiring DoDots to “respond to analysis and
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`arguments not before it” is inherently prejudicial. Amkor Tech, Inc. v. Tessera, Inc,
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`IPR2013-00242, Paper No. 32 at 4 (P.T.A.B. August 29, 2013).
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`Likewise, any argument by Petitioner that the constructions would remain
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`the same regardless of whether Phillips or BRI were used is both incorrect and
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`prejudicial. Under 37. C.F.R §§100 and 104, Petitioner has the burden of proof to
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`set forth the construction of the challenged claims accurately and clearly, and this
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`burden does not shift to the patent owner. Ivantis, Paper 14 at 13. Arguing that
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`Patent Owner should have known that the constructions do not change regardless
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`of the standard used impermissibly shifts the burden of claim construction to the
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`3
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`IPR2023-00701 (U.S. Patent No. 8,510,407)
`PO’s Sur-Reply
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`patent owner. It is not Patent Owner’s burden to show “how Dr. Schmidt
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`incorrectly applied the BRI standard in his assessment of the prior art and its
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`applicability to the Challenged Claims,” as Samsung argues. Reply at 4.
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`Presumably, Dr. Schmidt reviewed his declaration on several occasions and the use
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`of an incorrect standard was in his mind as he formed his opinions on the prior art.
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`After all, it is Dr. Schmidt’s, not counsel’s, sworn declaration. To say that DoDots
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`is required to show where in his sworn declaration Dr. Schmidt may have used BRI
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`and may have used Phillips (a standard he never recites in his declaration) would
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`be speculative at best. Requiring DoDots to parse through Dr. Schmidt’s analysis
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`to figure out where he got it wrong/where he may have gotten it right when his
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`declaration only says that he used BRI is unduly prejudicial to DoDots.
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`But the issue here is whether Dr. Schmidt’s recitation and use of BRI is a
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`supposed typographical error. Aside from mere attorney argument and shifting the
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`burden to DoDots to argue that it should have known that the Phillips standard was
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`in Dr. Schmidt’s head when he considered the challenged claims and prior art
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`when Schmidt specifically said otherwise, Samsung has done nothing to
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`demonstrate that it should be entitled to the relief it seeks.
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`Petitioner also contends that the parties’ use of the Board’s and the Federal
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`Circuit’s prior claim constructions is evidence of Dr. Schmidt using the Phillips
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`standard. But that is a red herring and again, just attorney argument. Reply at 2-3.
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`4
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`IPR2023-00701 (U.S. Patent No. 8,510,407)
`PO’s Sur-Reply
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`Beyond “networked information monitor” and “networked information monitor
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`template,” which the Board construed and the Federal Circuit affirmed, there are
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`many other terms and limitations in the challenged claims. And in considering the
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`claims at issue here and the prior art, Schmidt admits using BRI. Accordingly, that
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`“networked information monitor” and “networked information monitor template”
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`have established constructions says nothing about Schmidt using Phillips when he
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`expressly states that he used BRI in assessing the validity of the challenged claims.
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`D.
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`Petitioner’s proposed corrections would materially impact the
`proceeding.
`Dr. Schmidt’s failure to construe the claims under Phillips results in the
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`petition lacking the requisite evidentiary support to institute the IPR. In this regard,
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`Samsung’s statement that the “Petition itself is based on the correct Phillips
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`standard” and that Schmidt’s claim construction analysis is consistent with the
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`invalidity arguments in the Petition is backwards and wrong. Reply at 4. The
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`Petition actually uses the BRI standard to construe claims because, while it
`
`discusses the Phillips standard in general on page 3, the Petition relies entirely on
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`Dr. Schmidt’s declaration for evidentiary support for each and every claim
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`element, and Dr. Schmidt admits using BRI. For this reason, both the Petition and
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`Dr. Schmidt’s declaration actually rely on the defunct BRI standard and should,
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`therefore, be denied. Permitting the requested corrections would prejudice Patent
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`5
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`IPR2023-00701 (U.S. Patent No. 8,510,407)
`PO’s Sur-Reply
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`Owner because that would then require additional time to respond to new
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`arguments and evidence, thereby disrupting the statutory timeline for an IPR. The
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`proposed corrections also materially impact the Board’s institution decision
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`because they change Dr. Schmidt’s proposed constructions and introduce new
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`arguments to the Petition. This factor weighs heavily in Patent Owner’s favor.
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`II.
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`Samsung has in fact argued that the ’407 patent includes a means-plus-
`function limitation.
`Markman process begins with parties proposing constructions for more
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`terms than what is ultimately briefed and argued. But the decision to brief and
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`argue only a subset of the initially identified terms does not evince a party’s desire
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`to abandon the terms and constructions it initially identified but did not brief or
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`argue. This is exactly what occurred here. In a court mandated document—
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`Defendants’ Identification of Claim Constructions—Samsung notified DoDots of
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`its position that a phrase in the asserted claims is a means-plus-function claim
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`element. See POPR Ex. 2003. And to date, including in its reply, Samsung has not
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`informed DoDots (nor the Board) that it has abandoned this position. And any
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`attempt by Samsung to now abandon its means-plus-function position is irrelevant.
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`In its reply, Samsung argues that its means-plus-function position set forth in
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`POPR Exhibit 2003 should be disregarded because it was not included in a court
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`filing. But that is irrelevant and another red herring. At present, nothing precludes
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`6
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`IPR2023-00701 (U.S. Patent No. 8,510,407)
`PO’s Sur-Reply
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`Samsung from arguing the ’083 claims contain means-plus-function limitations at
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`the district court. Samsung is trying to have it both ways here: hold the means-
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`plus-argument in its back pocket at the district court case, while arguing to this
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`Board that there are no means-plus-function limitations. Such gamesmanship is not
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`permitted. See POPR at 17-20 (citing cases where the Board denied petitions
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`because Petitioner failed to identify corresponding structure in the specification).
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`III. Fintiv factors also favor denying the petition.
`Samsung’s motion to transfer venue to the Northern District of California
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`has been denied, a Markman Order has been issued, and fact discovery has
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`commenced in earnest. Upon completion of claim construction in July 2023, both
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`parties pushed forward with discovery and Samsung has not sought to stay the
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`case. Moreover, in a July 27, 2023 Order, the Court reiterated that, while some
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`discovery dates will be moved, the June 24, 2024 trial date will not change. See Ex.
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`2008. Based on the current posture of the litigation, DoDots has started expending
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`significant resources, including reviewing Samsung’s source code over the last
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`three weeks. Both parties have also collected and intend to produce extensive
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`documents as part of fact discovery. Samsung’s petition should be denied for this
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`reason. Additionally, Samsung’s admission that it has not provided a Sotera
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`stipulation should be fatal to its petition. Reply at 7.
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`7
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`IPR2023-00701 (U.S. Patent No. 8,510,407)
`PO’s Sur-Reply
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`Dated: September 11, 2023
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`Respectfully submitted,
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`
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`By: /Jason S. Charkow/
`Jason S. Charkow (USPTO Reg. No. 46,418)*
`Richard Juang (USPTO Reg. No. 71,478)*
`Chandran B. Iyer (USPTO Reg. No. 48,434)
`Ronald M Daignault*
`jcharkow@daignaultiyer.com
`rjuang@daignaultiyer.com
`cbiyer@daignaultiyer.com
`rdaignault@daignaultiyer.com
`DAIGNAULT IYER LLP
`8618 Westwood Center Drive
`Suite 150
`Vienna, VA 22182
`*Not admitted in Virginia
`
`Attorneys for DoDots Licensing Solutions LLC
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`8
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`IPR2023-00701 (U.S. Patent No. 8,510,407)
`PO’s Sur-Reply
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that the foregoing PATENT OWNER’S
`
`SUR-REPLY TO PETITIONER’S REPLY TO PATENT OWNER’S
`
`PRELIMINARY RESPONSE was served electronically via email on September
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`11, 2023, on the following counsel of record for Petitioner:
`
`W. Karl Renner
`Jeremy J. Monaldo
`Hyun Jin In
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`IPR39843-0148IP1@fr.com
`PTABInbound@fr.com
`axf-ptab@fr.com
`jjm@fr.com
`in@fr.com
`
`
`Dated: September 11, 2023
`
`
`
`Respectfully Submitted,
`By: / Jason S. Charkow /
`
`Jason S. Charkow
` USPTO Reg. No. 46,418
`
`
`
`9
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