UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC.,
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`Petitioners
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`v.
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`RESONANT SYSTEMS, INC.,
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`Patent Owner.
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`IPR2023-00993
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`U.S. Patent No. 9,941,830
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`PETITIONERS’ NOTICE OF MULTIPLE PETITIONS
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC.,
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`Petitioners
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`v.
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`RESONANT SYSTEMS, INC.,
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`Patent Owner.
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`IPR2023-00993
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`U.S. Patent No. 9,941,830
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`PETITIONERS’ NOTICE OF MULTIPLE PETITIONS
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`Petitioners Samsung Electronics Co., Ltd. and Samsung Electronics
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`IPR2023-00993
`U.S. Patent No. 9,941,830
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`America, Inc. (“Petitioners”) have requested Inter Partes Review (“IPR”) of
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`claims 1–9, 11, 14–17, and 19–20 of U.S. Patent No. 9,941,830 (“the ’830 patent”)
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`in IPR2023-00993 and claims 1–20 of the ’830 patent in IPR2023-01025.
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`Petitioners have presented two materially distinct, non-cumulative petitions, with
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`one addressing a break in the ’830 priority chain, leading to a significantly later
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`priority date for all ’830 claims than the priority date Patent Owner (“PO”) asserts.
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`See IPR2023-00993 (the “Priority Petition”) and IPR2023-01025 (the “Third
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`Party Prior Art Petition”). Petitioners respectfully request institution of both
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`petitions for the reasons detailed below.
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`I.
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`Detailed Reasons for Multiple Petitions Against the ’830 Patent.
`The ’830 patent purports to claim priority through a series of applications to
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`Provisional Application No. 61/179,109 (“the ’109 application”), filed May 18,
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`2009. Petitioners understand that Patent Owner (“PO”) is asserting a priority date
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`no later than the date of that provisional application in the co-pending district court
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`litigation. See EX1029. Thus, Petitioners have presented challenges in the Third
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`Party Prior Art Petition based on that priority date (or showing for certain claims
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`why those claims are entitled to a later priority date).
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`On the other hand, the Priority Petition details that PO introduced new matter
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`into the application leading to the ’830 patent, which severed the potential for
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`- 2 -
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`IPR2023-00993
`U.S. Patent No. 9,941,830
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`priority benefit to any earlier application in the ’830 patent’s priority chain.
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`Specifically, the application leading to the ’830 patent claimed, for the first time, a
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`vibration module genus rather than the species linear vibration module to which
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`all previous applications were directed. As explained in detail in the Priority
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`Petition, the only support for this new matter is the originally-filed claims of the
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`application leading to the ’830 patent. The Priority Petition demonstrates that the
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`earliest effective filing date for claims 1–20 of the ’830 Patent is no earlier than
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`June 13, 2016, and presents an anticipation ground based on that priority date.
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`The priority dispute between the parties justifies two petitions. The Patent
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`Trial and Appeal Board’s Consolidated Trial Practice Guide expressly
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`acknowledges that “a dispute about priority date requiring arguments under
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`multiple prior art references” is a situation in which it is appropriate to file multiple
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`petitions against the same patent. See Office Consolidated Trial Practice Guide, 84
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`Fed. Reg. 64280 (Nov. 20, 2019) (“TPG”). Although the TPG states that multiple
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`petitions should be rare, the facts here justify institution of two petitions
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`challenging the ’830 patent. See, e.g., 10X Genomics, Inc. v. Bio-Rad Labs., Inc.,
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`IPR2020-00088, Paper 8, at 46-47 (PTAB April 27, 2020).
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`The Third Party Prior Art and Priority Petitions rely on completely different
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`prior art references to address the different effective filing dates for the challenged
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`claims. The Third Party Prior Art Petition relies on multiple references needed to
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`IPR2023-00993
`U.S. Patent No. 9,941,830
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`address means-plus-function constructions for “component” claim terms as well as
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`potential PO arguments. The asserted references in the Third Party Prior Art
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`Petition all qualify as prior art assuming PO’s asserted priority date, other than two
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`references which Petitioners show qualify as prior art based on a later priority date
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`for claims 9, 14, 16, and 19.
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`The Priority Petition, in contrast, presents a ground of anticipation based on
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`U.S. Patent App. Publication No. 2012/0133308 (the “’308 publication”), which is
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`the publication of the application that led to parent patent U.S. Patent No.
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`8,860,337. The Priority Petition relies exclusively on PO’s own prior art (a parent
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`to the ’830 patent with the same specification), removing the burden for PO and
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`the Board to analyze additional prior art in a second petition.
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`II. Ranking of the Petitions
`As set forth in the following table, Petitioners rank the Third Party Prior Art
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`Petition higher than the Priority Petition. Petitioners believe, however, that
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`instituting both petitions is warranted because of the dispute regarding priority
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`benefit between the parties. Petitioners have also relied on PO’s own prior art in
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`the Priority Petition, limiting the burden imposed on PO to analyze unfamiliar art.
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`1
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`Petition
`IPR2023-00993
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`Claims
`1–9, 11,
`14–17,
`19–20
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`Summary of Grounds
`Obviousness grounds based on two
`primary references (Fukumoto and Ogusu)
`with combinations with other references to
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`- 4 -
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`IPR2023-00993
`U.S. Patent No. 9,941,830
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`address specific dependent claims and/or
`potential claim construction issues
`Anticipation by the ’308 Publication
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`Respectfully submitted,
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`/Jessica Kaiser/
`Jessica Kaiser, Lead Counsel
`Reg. No. 58,937
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`2
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`IPR2023-01025
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`1-20
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`Date: June 14, 2023
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`IPR2023-00993
`U.S. Patent No. 9,941,830
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`CERTIFICATE OF SERVICE
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`I certify that on June 14, 2023, I caused a true and correct copy of the foregoing
`PETITIONERS’ NOTICE OF MULTIPLE PETITIONS to be served via overnight
`delivery on the Patent Owner at the following correspondence address of record as
`listed on PAIR:
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`Olympic Patent Works PLLC
`4979 Admiral Street
`Gig Harbor, WA 98332
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`A courtesy copy was also sent via electronic mail to Patent Owner’s litigation counsel
`listed below:
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`Reza Mirzaie (rmirzaie@raklaw.com)
`Kristopher R. Davis (kdavis@raklaw.com)
`Christian W. Conkle (cconkle@raklaw.com)
`Jason Wietholter (jwietholter@raklaw.com)
`Qi Tong (ptong@raklaw.com)
`Paul Anthony Kroeger (pkroeger@raklaw.com)
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`/Jessica Kaiser/
`Jessica Kaiser (Reg. No. 58,937)
`Lead Counsel
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