`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 RENEWED OBJECTIONS TO PETITIONER’S
`EVIDENCE PURSUANT TO 37 C.F.R. § 42.64(b)(1)
`Patent Owner DoDots Licensing Solutions LLC (“DoDots”) hereby renews
`
`its objection under the Federal Rules of Evidence (“F.R.E.”) to the admissibility of
`
`certain Original Evidence submitted by Petitioner Samsung Electronics Co., Ltd.
`
`(“Samsung”) along with its IPR petition and objects to certain Supplemental
`
`Evidence Samsung served on November 9, 2023. DoDots objections are timely
`
`pursuant to 37 C.F.R. §42.64(b)(1).
`
`EXHIBIT 1003
`I.
`Exhibit 1003 is the declaration of Petitioner’s expert Dr. Douglas C.
`
`Schmidt. DoDots renews its objection to Exhibit 1003 under F.R.E. 403, 602, 702,
`
`
`
`IPR2023-00701 (U.S. Patent No. 8,510,407)
`
`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 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 renews its objection 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, however,
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`failed to provide a copy of this book to either the Board or the Patent Owner along
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`with the petition. By failing to provide a copy of this book, the Petitioner and its
`
`
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`2
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`
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`IPR2023-00701 (U.S. Patent No. 8,510,407)
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`expert are relying on an incomplete copy of the Brown patent in constructing and
`
`supporting many of their invalidity arguments.
`
`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 renews its objection to Exhibit 1017 (and
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`any discussion of this exhibit in the petition and Dr. Schmidt’s declaration) under
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`F.R.E. 901 and 703 because the Petitioner has failed to authenticate this article and
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`provide any evidence that it is actually prior art. Accordingly, any reliance by the
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`Petitioner or its expert on Exhibit 1017 is improper and unreliable.
`
`IV. SUPPLEMENTARY DECLARATION OF DR. DOUGLAS C.
`SCHMIDT
`Petitioner seeks to introduce a Supplementary Declaration of its expert Dr.
`
`Douglas C. Schmidt. DoDots objects to this document under F.R.E. 403 and 1004
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`because the Supplemental Declaration, which contains new evidence that seeks to
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`replace contents of the original Declaration, should have been submitted prior to
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`the institution decision. Accordingly, any reliance by the Petitioner or its expert on
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`the Supplementary Declaration is now improper and unreliable.
`
`SCOTT ISSACS’S INSIDE DYNAMIC HTML
`V.
`Petitioner seeks to introduce a textbook titled “Inside Dynamic HTML” by
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`Scott Isaacs. DoDots objects to this exhibit under F.R.E. 403 and 901 because the
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`3
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`IPR2023-00701 (U.S. Patent No. 8,510,407)
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`Petitioner delayed producing this document until after institution. The Petitioner
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`had access to this document at the time the petition for the instant IPR was filed,
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`which is evidenced by the fact that this document is listed as prior art in the
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`Petitioner’s invalidity contentions served in the concurrently pending litigation on
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`February 1, 2023. This delay prejudiced DoDots because DoDots could not
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`consider and address the contents of this document in its POPR. The delay,
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`likewise, deprived the Board from considering this document in its institution
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`decision. Moreover, Petitioner has failed to properly authenticate this document.
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`Accordingly, any reliance by the Petitioner or its expert on this textbook or the
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`Brown prior art reference (Exhibit 1005) in the IPR is improper and unreliable.
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`
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`Dated: November 15, 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
`4
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`IPR2023-00701 (U.S. Patent No. 8,510,407)
`
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that the foregoing PATENT OWNER’S
`
`RENEWED OBJECTIONS TO PETITIONER’S EVIDENCE PURSUANT TO 37
`
`C.F.R. § 42.64(b)(1) was served electronically via email on November 15, 2023,
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`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 15, 2023
`
`Respectfully Submitted,
`By: / Jason S. Charkow /
`
`Jason S. Charkow
` USPTO Reg. No. 46,418
`
`
`
`
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`5
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