IPR2023-00701 (U.S. Patent No. 8,510,407)
`PO’s Opposition
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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 OPPOSITION TO
`PETITIONER’S MOTION TO SUBMIT SUPPLEMENTAL
`INFORMATION PURSUANT TO 37 C.F.R. § 42.123(a)
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`PO’s Opposition
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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 OPPOSITION TO
`PETITIONER’S MOTION TO SUBMIT SUPPLEMENTAL
`INFORMATION PURSUANT TO 37 C.F.R. § 42.123(a)
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`IPR2023-00701 (U.S. Patent No. 8,510,407)
`PO’s Opposition
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`TABLE OF CONTENTS
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`Page
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`Introduction. ..................................................................................................... 1
`Samsung’s motion fails under 37 CFR § 42.123(a). ....................................... 1
`Petitioner improperly brought this motion under 37 CFR § 42.123(a) rather
`than under 37 CFR § 42.104(c). ...................................................................... 4
`Petitioner's motion and actions fail to address the four factor test under both
`37 C.F.R § 42.64(b)(2) and 37 C.F.R § 42.123(a). .......................................... 5
`1.
`The nature of the error, and whether the party requesting relief
`provides adequate explanation for how the error occurred, including
`how the error was discovered. ............................................................... 6
`The length of time elapsed between learning of the error and bringing
`the error to the Board’s attention. ......................................................... 7
`Prejudice to the other party, if any, by allowing the proposed
`corrections. ............................................................................................ 7
`4. Whether the proposed corrections have any impact on the
`proceeding. ............................................................................................ 8
`Petitioner's motion fails to differentiate between supplemental evidence
`under 37 C.F.R § 42.64(b)(2) and supplemental information under
`37 C.F.R. § 42.123(a). ....................................................................................10
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`2.
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`3.
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`I.
`II.
`III.
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`IV.
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`V.
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`i
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`IPR2023-00701 (U.S. Patent No. 8,510,407)
`PO’s Opposition
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`800 F.3d 1375 (Fed. Cir. 2015) ............................................................................ 9
`Handi Quilter, Inc. v. Bernina Int’l AG,
`IPR2013-00364, Paper 30 (PTAB June 12, 2014) ............................................. 10
`Harmonic Inc. v. Avid Tech., Inc.,
`815 F.3d 1356 (Fed. Cir. 2016) ............................................................................ 8
`Ivantis, Inc. v. Glaukos Corp.,
`IPR2018-01180 Paper 14 (PTAB Dec. 6, 2018) .............................................. 5, 6
`Sweegren, Inc., vs. Pure Circle SDN BHD and Purecircle USA Inc.,
`PGR2020-00070 Paper 9 (PTAB Sept. 22, 2020) ................................................ 6
`Redline Detection, LLC v. Star Envirotech, Inc.,
`811 F.3d 435 (Fed. Cir. 2015) .................................................................. 2, 3, 5, 6
`Other Authorities
`27 C.F.R. § 42.20(c) ................................................................................................... 6
` 37 C.F.R. § 42.123(a) ......................................................................................passim
`37 C.F.R § 42.64(b)(2) ......................................................................................... 5, 10
`37 CFR § 42.104(c) ................................................................................................ 4, 7
`
`
`ii
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`IPR2023-00701 (U.S. Patent No. 8,510,407)
`PO’s Opposition
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`I.
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`Introduction.
`Patent Owner opposes Petitioner’s Motion to Submit Supplemental
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`Information pursuant to 37 C.F.R. §42.123(a). Specifically, though Petitioner
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`claims that it is seeking to submit a supplemental Schmidt declaration that
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`supposedly provides “clarification from Dr. Schmidt regarding the claim
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`construction standard that he relied upon in his providing his opinion,” in reality, it
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`is an amended and new declaration that seeks to bolster deficiencies in its Petition.
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`Motion at 1. Petitioner tries to do far more with Dr. Schmidt’s purported
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`supplemental declaration—not only does Dr. Schmidt state in a conclusory manner
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`that he used the Phillips standard to construe the challenged claims, his
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`supplemental declaration also makes substantive changes to Petitioner’s invalidity
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`arguments by modifying citations, adding new citations, omitting figures, and, in
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`the process, altering certain invalidity arguments. Allowing Petitioner to make
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`such after-the-fact changes to its arguments is improper and prejudicial to the
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`Patent Owner. As a result, this Board should deny the Petitioner’s request to file
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`this supplemental declaration.
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`II.
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`Samsung’s motion fails under 37 CFR § 42.123(a).
`Samsung moves to submit a revised Schmidt declaration as supplemental
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`information under 37 C.F.R. § 42.123(a), which in relevant part provides,
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`“the supplemental information must be relevant to a claim for which a trial has
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`1
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`IPR2023-00701 (U.S. Patent No. 8,510,407)
`PO’s Opposition
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`been instituted.” In other words, any supplemental information must be relevant to
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`a claim as opposed to a ground for which trial has been instituted. This distinction
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`was drawn by the Federal Circuit in Redline Detection, LLC v. Star Envirotech,
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`Inc., 811 F.3d 435 (Fed. Cir. 2015) where the petitioner sought to submit a
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`supplemental declaration that changed the grounds for which trial was instituted.
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`The Federal Circuit, in affirming the PTAB’s denial of Redline’s request, found
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`that 37 C.F.R. 42.123(a) “does not offer a routine avenue for bolstering
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`deficiencies in a petition raised by a patent owner in a Preliminary Response . . .
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`[and that Petitioner] should not expect a ‘wait and see’ opportunity to supplement a
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`petition after initial comments or argument have been laid out.” Id. This is exactly
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`what Samsung is attempting here.
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`Samsung moves to submit a supplemental declaration from Dr. Schmidt to
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`purportedly provide clarification regarding the claim construction standard that he
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`used when opining on the validity of the challenged claims. Mot. at 1. But a closer
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`review of the supplemental declaration reveals that Samsung is attempting to do
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`more—namely, Samsung is trying to clean up and bolster deficiencies in its
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`invalidity positions after seeing DoDots’ POPR and Preliminary Sur-Reply. For
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`example, though paragraph 54 in Dr. Schmidt’s original declaration cites to a
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`single paragraph (paragraph 29) to support an argument, the Supplemental
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`Declaration cites to Section I.C.2. Likewise, in paragraph 63 of his original
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`2
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`IPR2023-00701 (U.S. Patent No. 8,510,407)
`PO’s Opposition
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`declaration, Dr. Schmidt argues without any citation that a “POSITA would have
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`recognized that script files are style-focused data structures . . . .” But in his
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`supplemental declaration, Dr. Schmidt cites to the entirety of Section III.A to
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`support this same opinion. Further, Dr. Schmidt’s declaration was amended in
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`paragraph 74 to modify the argument to refer to “both Grounds 1A and 1B.” The
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`changes Samsung made “relate[] to a ground[s] for which the trial was instituted,
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`rather than only to a claim of the patent, for which the trial was instituted.” Redline
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`Detection, 811 F.3d at 448. In fact, what is troubling, is that in its motion papers,
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`Samsung does not even mention to the Board or to Patent Owner the various
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`changes made to Schmidt’s declaration. Samsung only discusses the issue
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`regarding Schmidt’s use of the BRI standard. Patent Owner only learned of the
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`various revisions to Schmidt’s declaration by running a compare. But changing
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`citations to evidence supporting an entire ground and changing claim construction
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`standards for both grounds affecting all claims post-institution are not supplements
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`to evidence.
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`Samsung’s changes attempt to revise the grounds on which trial is instituted.
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`Section 42.123(a) and the Federal Circuit’s decision in Redline prohibit this. For
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`this reason, Samsung’s motion fails to meet the threshold requirement under
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`42.123(a) and should be denied.
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`3
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`IPR2023-00701 (U.S. Patent No. 8,510,407)
`PO’s Opposition
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`III. Petitioner improperly brought this motion under 37 CFR § 42.123(a)
`rather than under 37 CFR § 42.104(c).
`Petitioner has repeatedly argued that the error made in Dr. Schmidt’s
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`original declaration was merely a typographical error. If taken as true, there is only
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`one way for a party to correct typographical errors under the rules governing an
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`IPR proceeding—i.e., under 37 C.F.R. § 42.104(c). Given this singular way to
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`correct typographical errors (which are by definition minor in nature), this
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`provision understandably provides that the grant of a motion under this provision
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`“does not change the filing date of the petition.” 37 C.F.R. § 42.104(c). Here, the
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`Petitioner did not file a § 42.104(c) motion. Instead, the Petitioner seeks to
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`introduce its revised declaration as supplemental information under 37 C.F.R.
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`§42.123(a). And this is improper for at least two reasons.
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`First, Petitioner fails to meet its burden by providing any support for its
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`position that typographical errors in expert declarations can be corrected using
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`§42.123(a). In fact, the rules governing IPR proceedings do not provide any
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`authority to correct typographical errors under §42.123(a), and the Petitioner has
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`not provided any legal support for this position. Samsung’s failure to carry its
`burden in this regard should lead to a denial of its motion.
`Second, a motion pursuant to §42.104(c) is the only way for a petitioner to
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`make changes to documents it submits with its IPR petition, while preserving the
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`4
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`IPR2023-00701 (U.S. Patent No. 8,510,407)
`PO’s Opposition
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`filing date of that petition. But §42.123 does not make any such allowance.
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`Therefore, given the presumption that “Congress acts intentionally and
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`purposefully in the disparate inclusion or exclusion” of regulatory/statutory
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`language, it is proper to conclude that §42.123 does not contemplate preserving the
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`filing date when documents submitted with the petition are changed in the middle
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`of the IPR proceeding. Redline Detection, 811 F. 3d at 444. In other words,
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`submitting a new expert declaration pursuant to §42.123, which changes the claim
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`construction standard used in the petition along with several revised citations to
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`evidence, should change the petition filing date. Accordingly, Samsung’s use of
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`§42.123(a) to revise the papers supporting the original IPR Petition under the guise
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`of submitting supplemental information is improper and also time barred for being
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`beyond the one year deadline for seeking an IPR.
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`IV. Petitioner's motion and actions fail to address the four factor test under
`both 37 C.F.R § 42.64(b)(2) and 37 C.F.R § 42.123(a).
`The Board in Ivantis, Inc. v. Glaukos Corp., IPR2018-01180 Paper 14 at 9
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`(PTAB Dec. 6, 2018) set forth the following non-exclusive factors in determining
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`whether to exercise discretion and allow correction due to clerical or typographical
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`errors: “(1) the nature of the error, and whether the party requesting relief provides
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`adequate explanation for how the error occurred, including how the error was
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`discovered; (2) the length of time elapsed between learning of the error and
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`5
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`IPR2023-00701 (U.S. Patent No. 8,510,407)
`PO’s Opposition
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`bringing the error to our attention; (3) prejudice to the other party, if any, by
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`allowing the proposed corrections; and (4) whether the proposed corrections have
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`any impact on the proceeding.”1
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`In its motion, Petitioner fails to address any of these four factors in its
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`motion.2
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`1.
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`The nature of the error, and whether the party requesting relief
`provides adequate explanation for how the error occurred, including
`how the error was discovered.
`Under 27 C.F.R. § 42.20(c) Petitioner, as the moving party, has the sole
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`burden of proof to establish with facts and evidence the relief it requests. Here
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`Samsung fails to meet this burden.
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`In his Supplemental Declaration, Dr. Schmidt fails to provide an adequate
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`explanation for how the error occurred or why he made the same error on three
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`separate declarations that he submitted. Instead, Samsung’s expert merely avers
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`that it was a typographical error and that he, “understand(s) that all claim terms in
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`1 Though Ivantis involved 42.104(c), the Federal Circuit’s instructions
`in Redline that § 42.123 should not be “read to the exclusion of the remaining [37
`C.F.R.] subsections,” warrant using a similar test to determine correction
`of typographical errors if the Petitioner (erroneously) relies upon §42.123 for
`submission of a revised document. Redline Detection, 811 F. 3d at 445.
` Samsung’s motion characterizes the relief it seeks as fixing a typographical error
`in its expert declaration. Submission of supplemental declarations for fixing
`typographical errors are considered under the four-factor test. See Sweegren, Inc.,
`vs. Pure Circle SDN BHD and Purecircle USA Inc., PGR2020-00070 Paper 9 at 4
`(PTAB Sept. 22, 2020).
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` 2
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`6
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`IPR2023-00701 (U.S. Patent No. 8,510,407)
`PO’s Opposition
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`an IPR should be construed according to the Phillips standard, not the broadest
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`reasonable construction standard.” Suppl. Decl. para. 2. Notably, Dr. Schmidt does
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`not even mention that he maintained this understanding at the time of his original
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`declaration. Again, Schmidt does not explain any of the facts leading up to and
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`underlying his purported typographical error. In all, Samsung fails to provide any
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`information required by this factor in its “do-over” supplemental declaration.
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`2.
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`The length of time elapsed between learning of the error and
`bringing the error to the Board’s attention.
`Samsung willfully chose to delay its request to the Board by nearly a month
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`after institution of the IPR. Samsung offers no explanation as to the delay and
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`(falsely) claims that Patent Owner is not substantially prejudiced by this delay.
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`There is no reason why Samsung could not have provided the Supplemental
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`Declaration of Dr. Schmidt at an earlier time and properly moved under
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`§42.104(c). Instead, Samsung unjustifiably and inexplicably waited nearly a month
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`post-Institution to submit so-called supplemental declaration and, thereby,
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`shortened the time that DoDots has to respond to this new information.
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`3.
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`Prejudice to the other party, if any, by allowing the proposed
`corrections.
`Petitioner has offered no explanation as to why the various changes
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`Samsung made to Schmidt’s declaration do not prejudice the Patent Owner.
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`Petitioner’s motion does not even acknowledge the various changes in the
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`7
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`IPR2023-00701 (U.S. Patent No. 8,510,407)
`PO’s Opposition
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`supplemental declaration and, instead, Samsung maintains that it is only seeking to
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`correct the “typographical error” to the expert’s claim construction standard.
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`Specifically, as noted above, Dr. Schmidt’s supplemental declaration not only
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`“corrects” the claim construction standard used in his declaration, but he also
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`necessarily introduces new arguments and evidence by adding new citations. For
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`example, citation changes were made in paragraphs 50, 54, 63, 157, 163, and 194
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`and an entirely new citation was added to paragraph 156. The citation at the end of
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`paragraph 50 was changed from “SAMSUNG-1001, 5:41-44; see paragraph 28,
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`above” to “SAMSUNG-1001, 5:41-44; Section I.C.1, above.” Additionally,
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`Schmidt’s supplemental declaration amends paragraph 74 by modifying the
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`argument to refer to, “both Grounds 1A and 1B.” (page 47). Obviously, Patent
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`Owner has never had an opportunity to respond to these new arguments. This is the
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`very definition of prejudice.
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`4. Whether the proposed corrections have any impact on the
`proceeding.
`Samsung’s proposed changes to the Schmidt declaration and the manner in
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`which they are being submitted have an adverse impact on the proceedings. It is
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`well known that the petitioner, “has the burden from the onset to show with
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`particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid
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`Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). This burden of persuasion never
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`8
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`IPR2023-00701 (U.S. Patent No. 8,510,407)
`PO’s Opposition
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`shifts to the patent owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800
`
`F.3d 1375, 1378 (Fed. Cir. 2015). But Samsung’s actions to date have caused the
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`burden to improperly shift to DoDots. Specifically, after Samsung’s delay and
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`various improper procedural maneuverings and submissions, DoDots will now
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`need to show that Dr. Schmidt did not make a typographical error, when as per the
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`rules governing IPRs, Samsung was required from the get-go under §104(c) to
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`prove with a showing of facts and evidence that its expert made a typographical
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`error. This improper burden shifting in and of itself results in this proceeding
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`becoming prejudicial to DoDots. In addition, Samsung’s failure to provide the
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`necessary evidence at any stage during this proceeding to show that Dr. Schmidt
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`made a typographical error, along with its decision to move to correct a purported
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`typographical error under the incorrect CFR provision (§123 as opposed to
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`§104(c)) further compounds the confusion that Samsung has brought to this
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`proceeding.
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`Indeed, admitting Schmidt’s new declaration will also require Patent Owner
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`to respond to two different sets of evidence and grounds. And the new declaration
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`with new evidence and new grounds cannot be admitted more than one year after
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`Samsung was served with the complaint in the district court action on or about
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`June 2 2022. Even the USPTO FAQ states, regarding clerical or typographical
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`errors, that “[a] substitution of new analysis for the analysis provided in the
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`IPR2023-00701 (U.S. Patent No. 8,510,407)
`PO’s Opposition
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`original petition is not an acceptable correction.”
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`See https://www.uspto.gov/patents/ptab/trials/aia-trials-faq. Therefore, Samsung’s
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`motion should be denied.
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`V.
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`Petitioner's motion fails to differentiate between supplemental evidence
`under 37 C.F.R § 42.64(b)(2) and supplemental information under 37
`C.F.R. § 42.123(a).
`Petitioner admits that it served Dr. Schmidt’s supplemental declaration in
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`response to DoDots’ evidentiary objections. Mot. at 2. This, however, is an
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`improper response to evidentiary objections. Serving supplemental evidence under
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`37 C.F.R § 42.64(b)(2) in response to evidentiary objections is offered solely to
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`support admissibility of the originally-filed evidence, as opposed to amending and
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`changing supporting arguments on the merits (as Samsung does here). See Handi
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`Quilter, Inc. v. Bernina Int’l AG, IPR2013-00364, Paper 30 at 2 (PTAB June 12,
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`2014). Samsung’s supplemental expert declaration, which changes the claim
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`construction standard used by Samsung and makes new invalidity arguments based
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`on revisions to citations, is an argument on the merits. As a result, Samsung’s
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`service of a supplemental declaration in response to an evidentiary objection is
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`wholly improper.
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`IPR2023-00701 (U.S. Patent No. 8,510,407)
`PO’s Opposition
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`Dated: November 29, 2023
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`Respectfully submitted,
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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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`11
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`IPR2023-00701 (U.S. Patent No. 8,510,407)
`PO’s Opposition
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that the foregoing PATENT OWNER’S
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`OPPOSITION TO PETITIONER’S MOTION TO SUBMIT SUPPLEMENTAL
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`INFORMATION PURSUANT TO 37 C.F.R. § 42.123(a) was served electronically
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`via email on November 29, 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 29, 2023
`
`
`
`Respectfully Submitted,
`By: / Jason S. Charkow /
`
`Jason S. Charkow
` USPTO Reg. No. 46,418
`
`
`
`12
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