IPR2023-00939
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`U.S. Patent No. 8,510,407
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner
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`v.
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`DODOTS LICENSING SOLUTIONS LLC,
`Patent Owner
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`Case No. IPR2023-00939
`U.S. Patent No. 8,510,407
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`PETITIONER’S PRELIMINARY REPLY TO PATENT OWNER’S
`PRELIMINARY RESPONSE
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`U.S. Patent No. 8,510,407
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner
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`v.
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`DODOTS LICENSING SOLUTIONS LLC,
`Patent Owner
`________________
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`Case No. IPR2023-00939
`U.S. Patent No. 8,510,407
`________________
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`PETITIONER’S PRELIMINARY REPLY TO PATENT OWNER’S
`PRELIMINARY RESPONSE
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`Table of Contents
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`IPR2023-00939
`U.S. Patent No. 8,510,407
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`I. Petitioner Relies Exclusively on the Slivka Patent ......................................... 1
`II. Slivka’s Appendices are Incorporated by the Slivka Patent ......................... 1
`III. The Appendices Are Properly Part of the Slivka Patent .............................. 1
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`I.
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`IPR2023-00939
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`U.S. Patent No. 8,510,407
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`Petitioner Relies Exclusively on the Slivka Patent
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`Contrary to PO’s mischaracterizations, the Slivka patent is the sole asserted
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`§102(e) reference, and the Petition does not rely on Slivka’s file history or its
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`application. The Petition cites to the file history only because Slivka’s appendices—
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`not printed with the patent—are made available to the public in the file history.
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`II.
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`Slivka’s Appendices are Incorporated by the Slivka Patent
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`The incorporation of Slivka’s appendices are evidenced by (1) clear and
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`consistent references to the appendices throughout the specification (Ex. 1004, 6:41,
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`12:34-36, 15:32-33, 18:56-57, 64-65, 17:1-3, 22-24, 19:24-29), (2) the inclusion of
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`the appendices with the originally filed application, stamped with the filing date (Ex.
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`1005, 69-245), and (3) Applicant expressly noting the incorporation of the
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`appendices to the Examiner during prosecution of the Slivka patent (Id., 254). Thus,
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`it was made clear in multiple ways that the appendices were properly disclosed and
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`incorporated at the time of filing and are thus part of the Slivka patent.
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`III. The Appendices Are Properly Part of the Slivka Patent
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`PO ignores that other types of appendices are allowed, mischaracterizes
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`Slivka’s appendices as “Computer Program Listings,” and fails to engage with the
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`policy rationale underlying §102(e). As PO acknowledges, at the time of the Slivka
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`patent, the MPEP expressly acknowledged “Computer Program Listings” as a type
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`IPR2023-00939
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`U.S. Patent No. 8,510,407
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`of disclosure that is part of the patent but is not printed with the patent. POPR, at 14,
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`25-26; Ex. 2008. Based on logistical challenges related to submitting such materials,
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`the MPEP set forth specific procedures for submitting appendices in the form of
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`Computer Program Listings. Ex. 1017, 42793. The PTO has since expanded the
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`types of appendices with similar requirements. See MPEP 608.05 (imposing
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`submission requirements for “Sequence Listing” and “Large Tables”).
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`The MPEP recognizes (1) that the three expressly identified types of
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`appendices are not exclusive, and (2) that all appendices are treated identically with
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`respect to publication. See MPEP 1121 (noting “[a]ppendices, other than those
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`containing ‘Sequence Listings’ . . . or ‘Large Tables’, are not printed if they are
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`contained on pages located after the claims,” and similarly noting that “‘Computer
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`Program Listing Appendices’ . . . are not printed as part of the patent”).
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`PO mischaracterizes Slivka’s appendices as “Computer Program Listings,”
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`claiming they are not deemed part of the Slivka disclosure because the applicant did
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`not comply with the MPEP’s requirements for such appendices. POPR, at 14, 25-26.
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`PO is wrong for at least two key reasons. First, Slivka’s appendices are not
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`“Computer Program Listings” at all. Indeed, only 24 of the 177 pages of appendices
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`relate to computer code, and those pages are merely HTML templates, which do not
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`rise to the level of a “computer program.” The remaining 153 pages of appendices
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`IPR2023-00939
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`are not directed toward any type of computer code at all, and instead comprise
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`material such as textbook excerpts. POPR, at 13-14, 25-26; Ex. 1005, 69-245.
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`Second, even if the “Computer Program Listings” requirements did apply to Slivka’s
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`appendices, PO cites no support for its assertion that failure to comply with such
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`requirements results in the appendices being excluded from the patent disclosure.
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`The policy rationale underlying §102(e) also supports finding Slivka’s
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`appendices prior art. §102(e) dictates that prior art disclosed to the patent office
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`before the priority date qualifies as prior art even if it does not become publicly
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`available until later. 35 U.S.C. §102(e)(2); Hazeltine Research, Inc. v. Brenner, 382
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`U.S. 252, 255-256, 86 S. Ct. 335, 15 L. Ed. 2d 304 (1965) (explaining that prior art
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`for a §103 analysis is accorded the filing date because “[t]he delays of the patent
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`office ought not to cut down the effect of what has been done.”) (quoting Alexander
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`Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390, 46 S. Ct. 324, 70 L. Ed. 651
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`(1926)) (internal quotations omitted). Indeed, the MPEP specifies that “[u]nder 35
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`U.S.C. §102(e), the entire disclosure of a U.S. patent having an earlier filing date
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`can be relied on to reject the claims.” MPEP 2136.02 (emphasis added). Because
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`Slivka’s appendices were incorporated in the Slivka patent disclosure at the time of
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`filing, it is proper for Petitioner to rely on the appendices as part of “the entire
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`disclosure” of the Slivka patent as a §102(e) reference. Id.
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`IPR2023-00939
`U.S. Patent No. 8,510,407
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`Respectfully submitted,
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`BY: /s/ Paul R. Hart
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`Paul R. Hart, Reg. No. 59,646
`Adam Seitz, Reg. No. 52,206
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`COUNSEL FOR PETITIONER
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`IPR2023-00939
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`U.S. Patent No. 8,510,407
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`UPDATED EXHIBIT LIST
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`Previously Filed by Petitioner
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`Exhibit 1001 U.S. Patent No. 8,510,407 (“’407 Patent”)
`Exhibit 1002 Prosecution History for the ’407 Patent (“’407 File History”)
`Exhibit 1003 Declaration of Loren Terveen (“Dec.”)
`Exhibit 1004 U.S. Patent No. 6,061,695 to Slivka et al. (“Slivka”)
`Exhibit 1005 File History of U.S. Patent No. 6,061,695 (“Slivka FH”)
`Exhibit 1006 U.S. Patent No. 6,091,518 to Anabuki (“Anabuki”)
`Exhibit 1007 Declaration of June Munford (“Munford Dec.”)
`Exhibit 1008 PTAB - IPR2019-01279 (“Lenovo ’407 FWD”)
`Exhibit 1009 Lenovo Holding Company, Inc. v. DoDots Licensing Solutions LLC,
`21-1521, No. 41 (Fed. Cir. Dec. 8, 2021) (“Federal Circuit Claim
`Construction”)
`Exhibit 1010 PTAB – IPR2023-00701, Paper 2 (“Samsung ’407 IPR”)
`Exhibit 1011
`Intentionally Left Blank
`Exhibit 1012
`Intentionally Left Blank
`Exhibit 1013 HTML: The Complete Reference, Osborne/McGraw-Hill, by
`Thomas A. Powell 1998 (“Powell”)
`Exhibit 1014 U.S. Patent No. 6,185,589 to Votipka (“Votipka”)
`Exhibit 1015 U.S. Patent No. 6,031,989 to Cordell (“Cordell”)
`Exhibit 1016 Dkt. 98, Joint Claim Construction Statement
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`Currently Filed by Petitioner
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`Exhibit 1017 Federal Legislative History for 37 CFR, 61 FR 42790-01 (August
`19, 1996)
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`IPR2023-00939
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`U.S. Patent No. 8,510,407
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`CERTIFICATE OF SERVICE ON PATENT OWNER
`UNDER 37 C.F.R. § 42.6
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on October 25,
`2023, the foregoing Petitioner’s Reply to Patent Owner’s Preliminary Response and
`Exhibits were served via electronic filing with the Board and via Electronic Mail on
`the following counsel of record for Patent Owner:
`Jason S. Charkow (jcharkow@daignaultiyer.com)
`Richard Juang (rjuang@daignaultiyer.com)
`Chandran B. Iyer (cbiyer@daignaultiyer.com)
`Ronald M. Daignault (rdaidnault@daignaultiyer.com)
`dodotslit@daignaultiyer.com
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`BY: /s/ Paul R. Hart_______
`Paul R. Hart, Reg. No. 59,646
`Paul.Hart@eriseip.com
`Erise IP, P.A.
`717 17th St., Suite 1400
`Denver, CO 80202
`P: (913) 777-5600
`F: (913) 777-5601
`COUNSEL FOR PETITIONER
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