`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 OBJECTIONS TO PETITIONER’S EVIDENCE
`PURSUANT TO 37 C.F.R. § 42.64(b)(1)
`Patent Owner DoDots Licensing Solutions LLC (“DoDots”) hereby objects
`
`under the Federal Rules of Evidence (“F.R.E.”) to the admissibility of Exhibits
`
`1003, 1005, and 1017, which the Petitioner filed with its Petition.
`
`EXHIBIT 1003
`I.
`Exhibit 1003 is the declaration of Petitioner’s expert Dr. Douglas C.
`
`Schmidt. DoDots objects to Exhibit 1003 under F.R.E. 403, 602, 702, 703, and 901
`
`because Dr. Schmidt, in his declaration, admits to using the BRI standard when
`
`construing the challenged claims to opine on whether they are invalidated by the
`
`cited prior art. See Ex. 1003 at paragraph 26. The use of the incorrect claim
`
`
`
`IPR2023-00701 (U.S. Patent No. 8,510,407)
`
`construction standard renders Dr. Schmidt’s entire opinion unreliable and
`
`irrelevant. Moreover, Petitioner has not provided the proper foundation for the
`
`inclusion of Dr. Schmidt’s declaration because they have failed to provide
`
`evidence from anyone with firsthand knowledge that Dr. Schmidt did not rely on
`
`and/or did not intend to rely on the BRI standard and simply made a typographical
`
`error.
`
`II. EXHIBIT 1005
`Exhibit 1005 is the Brown prior art patent that Petitioner relies on as its
`
`principal reference. DoDots objects to Exhibit 1005 (and any discussion of this
`
`exhibit in the Petitioner’s petition and expert declaration of Dr. Schmidt) under
`
`F.R.E. 106 and 901 because the Petitioner has failed to provide and file a complete
`
`copy of the Brown patent specification. The Brown patent incorporates by
`
`reference the entirety of Scott Issacs’s Inside Dynamic HTML, Microsoft Press,
`
`October 30, 1997. See Col. 13 at 10-13. Petitioner has, however, failed to provide a
`
`copy of this book to either the Board or the Patent Owner along with the petition.
`
`By failing to provide a copy of this book, the Petitioner and its expert are relying
`
`on an incomplete copy of the Brown patent in constructing and supporting many of
`
`their invalidity arguments.
`
`
`
`2
`
`
`
`IPR2023-00701 (U.S. Patent No. 8,510,407)
`
`
`III. EXHIBIT 1017
`Exhibit 1017 is an article that purportedly appeared on CNET in February
`
`1996. Petitioner and its expert rely on this exhibit as a prior art reference in support
`
`of several invalidity arguments. DoDots objects to Exhibit 1017 (and any
`
`discussion of this exhibit in the petition and Dr. Schmidt’s declaration) under
`
`F.R.E. 901 and 703 because the Petitioner has failed to authenticate this article and
`
`provide any evidence that it is actually prior art. Accordingly, any reliance by the
`
`Petitioner or its expert on Exhibit 1017 is improper and unreliable.
`
`
`
`Dated: November 7, 2023
`
`
`
`
`
`Respectfully submitted,
`
`
`
`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@dagignaultiyer.com
`richard.juang@gmail.com
`cbiyer@dagignaultiyer.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
`
`3
`
`
`
`IPR2023-00701 (U.S. Patent No. 8,510,407)
`
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that the foregoing PATENT OWNER’S
`
`OBJECTIONS TO PETITIONER’S EVIDENCE PURSUANT TO 37 C.F.R. §
`
`42.64(b)(1) was served electronically via email on November 7, 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
`IPR39843-0149IP1@fr.com
`PTABInbound@fr.com
`axf-ptab@fr.com
`jjm@fr.com
`in@fr.com
`
`
`Dated: November 7, 2023
`
`Respectfully Submitted,
`By: / Jason S. Charkow /
`
`Jason S. Charkow
` USPTO Reg. No. 46,418
`
`
`
`
`
`4
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`
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