`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 21, 2023. DoDots objections are timely
`
`pursuant to 37 C.F.R. §42.64(b)(1).
`
`EXHIBIT 1003
`I.
`DoDots renews its objection as set forth in its prior objection dated
`
`11/15/2023.
`
`
`
`IPR2023-00701 (U.S. Patent No. 8,510,407)
`
`
`II. EXHIBIT 1005
`DoDots renews its objection as set forth in its prior objection dated
`
`11/15/2023.
`
`III. EXHIBIT 1017
`DoDots renews its objection as set forth in its prior objection dated
`
`11/15/2023.
`
`IV. SUPPLEMENTARY DECLARATION OF DR. DOUGLAS C.
`SCHMIDT UNDER 37 C.F.R § 42.64(B)(2), 37 C.F.R § 42.123(A),
`AND 37 C.F.R. §42.104(C)
`Petitioner seeks to introduce a Supplementary Declaration of its expert Dr.
`
`Douglas C. Schmidt under 37 C.F.R. §§ 42.64(b)(2), 42.123(a), and 42.104(c).
`
`DoDots renews its objection to the Supplementary Declaration Samsung provided
`
`on 11/15/2023. DoDots also objects to the supplementary declaration attached to
`
`Samsung’s motion under 37 C.F.R. § 42.123(a.) DoDots objects to both documents
`
`under F.R.E. 403 and 1000-1008 because the Supplemental Declaration, which
`
`contains new evidence that seeks to replace contents of the original Declaration,
`
`should have been submitted prior to the institution decision. DoDots renews its
`
`objection to the Supplementary Declaration. Accordingly, any reliance by the
`
`Petitioner or its expert on the Supplementary Declaration is now improper and
`
`unreliable.
`
`Moreover, Petitioner’s Supplementary declaration introduces new grounds
`
`by, for example, changing the claim construction standard.
`2
`
`
`
`
`
`IPR2023-00701 (U.S. Patent No. 8,510,407)
`
`
`Furthermore, substantive changes were made in the Corrected Version,
`
`Citation changes were made in paragraphs 50, 54, 63, 157, 163, and 194 and an
`
`entirely new citation was added to paragraph 156. For example, the citation at the
`
`end of paragraph 50 was changed from “SAMSUNG-1001, 5:41-44; see paragraph
`
`28, above” to “SAMSUNG-1001, 5:41-44; Section I.C.1, above.” Additionally, Dr.
`
`Schmidt’s declaration was amended in paragraph 74 to modify the argument to
`
`refer to, “both Grounds 1A and 1B.” (page 47). Lastly, an entire figure is omitted
`
`from page 71, although the caption to the omitted figure remains. All of these
`
`introduce substantial new questions post-institution of the IPR and should be
`
`excluded. as untimely.
`
`Substantive changes introduced in the petition are not permissible in a 37
`
`C.F.R. § 42.64(b)(2), document which goes beyond the original document. Nor is
`
`it permissible under 37 C.F.R. § 42.104(c) or 37 C.F.R. § 42.123(a.) Also, each of
`
`these changes supports the fact that Petitioner seeks to materially change the
`
`evidence in Dr. Schmidt’s declaration and are entirely new evidence that is
`
`impermissible after one year of service. Finally, each of these changes supports the
`
`fact that Petitioner seeks to materially change the evidence in Dr. Schmidt’s
`
`declaration and are entirely new evidence which is not a typographical error that
`
`qualifies for correction.
`
`
`
`3
`
`
`
`IPR2023-00701 (U.S. Patent No. 8,510,407)
`
`
`SCOTT ISSACS’S INSIDE DYNAMIC HTML
`V.
`DoDots renews its objection as set forth in its prior objection dated
`
`11/15/2023.
`
`
`
`Dated: November 29, 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
`
`
`
`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 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
`
`
`
`
`
`5
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`
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