From: Gordon, Lori (Perkins Coie) <LoriGordon@perkinscoie.com>
`Sent: Wednesday, December 27, 2023 2:42 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Jonathan.Strang@lw.com; giri.pathmanaban@lw.com; Diane.Ghrist@lw.com;
`Jake.Vannette@lw.com; David.Hlavka@lw.com; Amit.Makker@lw.com; Lauren.Rosen@lw.com;
`Carter, Jon R. (Perkins Coie) <JCarter@perkinscoie.com>; Hindman, Matthew (Perkins Coie)
`<MHindman@perkinscoie.com>; Banks, Bryan (Perkins Coie) <bbanks@perkinscoie.com>;
`Kevin.Wheeler@lw.com
`Subject: IPR2023-01135 to 1140, -1143 to -1146: Authorization to Reply to Patent Owner's
`Preliminary Response
`
`GROUP A:
`
` GROUP B:
`
`IPR2023-01135: U.S. Patent 9,973,361 IPR2023-01143: U.S. Patent
`9,584,262
`IPR2023-01136: U.S. Patent 10,079,707 IPR2023-01144: U.S. Patent 9,145,566
`IPR2023-01137: U.S. Patent 10,291,449
`IPR2023-01138: U.S. Patent 10,554,459 GROUP C:
`IPR2023-01139: U.S. Patent 10,917,272 IPR2023-01145: U.S. Patent 11,212,146
`IPR2023-01140: U.S. Patent 10,917,272 IPR2023-01146: U.S. Patent 11,212,146
`
`Your Honors –
`
`The parties jointly submit this email regarding Petitioner’s request for authorization to reply to
`Patent Owner’s Preliminary Response filed on November 17 in IPR2023-01135 to -1140 and -01143
`and December 11 for IPR2023-01144 to -1146. Because of the significant overlap in issues among
`the 10 IPR matters pending between the parties, for ease of the Board, Petitioner is presenting a
`consolidated request. Petitioner further notes that the Sotera stipulations in these cases,
`necessitated by Patent Owner’s selection of litigation forum, are being offered by the real parties-in-
`interest of Petitioner in two separate litigations for 8 asserted patents and required sufficient time
`
`

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`for consideration. However, to alleviate issues regarding any timing raised by Patent Owner,
`Petitioner agrees to a 5 business day due date for each of its filings while affording Patent Owner 7
`business days in response.
`
`Petitioner and Patent Owner are available for a call on Friday December 29, from 9am-2pm and 3pm
`to 5pm, and January 3-5 during normal business hours should the Board deem a call necessary.
`
`Summary:
`
`Petitioner seeks to reply on the following issues which overlap across multiple cases. Good cause
`exists to grant Petitioner’s request for each issue as set forth below.
`
`Patent Owner objects to Petitioner’s email that impermissibly briefs the merits without Board
`authorization, and asks the Board to strike Petitioner’s impermissibly argumentative email from the
`administrative record without further consideration.
`
`Patent Owner further opposes Replies on Topics #2-5, as Petitioner lacks the good cause necessary
`to justify further briefing on these mine-run disputes over the merits. “[T]he Board does not expect
`that such a reply will be granted in many cases due to the short time period the Board has to reach a
`decision on institution.” Consolidated Trial Practice Guide at 51-52. On that point, Petitioner’s lack
`of good cause is further evidenced by its excessive delay in reaching out to Patent Owner to request
`these Replies, and that delay’s prejudice to Patent Owner. Patent Owner filed the vast majority of its
`POPRs (all of Group A and one of Group B) on November 17, 2023, well over a month before
`Petitioner first reached out to Patent Owner just before the holidays on Friday, December 22.
`Granting Petitioner’s untimely request will give Petitioner six to seven weeks to gather new evidence
`(e.g., Topic 2 supplemental declaration) and formulate new arguments that could have and should
`have been included in its Petitions and before the one-year bar expired.
`
`Should the Board grant Petitioner’s request for Replies on the merits (Topics #2-5), Patent Owner
`requests a Sur-reply of the same length and with the same ability to submit additional evidence in
`rebuttal (e.g., Topic #2). While looming Institution Decision deadlines make it is impossible to give
`Patent Owner the same amount of time to address Petitioner’s new arguments and evidence,
`Petitioner asks for 15 business days to prepare sur-replies on these four topics in the event the
`Board grants Petitioner’s request(s).
`
`Petitioner’s proposed reply topics are:
`
`
`1. PO’s Fintiv arguments: Common across all 10 IPRs (Group A, Group B, and Group C)
`
`Petitioner’s Position: Petitioner seeks authorization to file a response to Patent Owner’s
`(“PO’s”) Fintiv argument and to document Sotera stipulations to be offered by Dell and
`Lenovo, the Real-Parties in Interest to Petitioner, in the co-pending District Court litigations.
`Petitioner seeks 3-pages to address Issue 1. Petitioner does not oppose a Sur-Reply of equal
`length.
`
`PO’s Position: Patent Owner does not oppose a Reply on this discretionary topic, so long as
`
`

`

`the Board grants Patent Owner a Sur-Reply of the same length to be filed seven business
`days after Petitioner files its Replies.
`
`2. Public Availability of WWiSE proposal: Common across 9 IPRS (all Group A and Group B IPRs,
`IPR2023-01145 from Group C)
`
`Petitioner’s Position: Petitioner seeks authorization to address PO’s argument in the
`preliminary response that the WWiSE proposal does not qualify as a printed publication.
`Petitioner could not have foreseen that, for example, PO would ignore Federal Circuit and
`PTAB decisions establishing that submissions to IEEE and similar standards bodies qualify as
`prior art, and would assert that a skilled person would not have taken steps to locate the
`WWiSE IEEE proposal submission. Petitioner further seeks authorization to file a
`supplemental declaration of Jim Lansford on public availability in accordance with the
`Federal Circuit case Valve Corp. v. Ironburg Inventions Ltd, 8 F.4th 1364, 1370 fn.6 (Fed. Cir.
`2021) (“A petitioner may provide evidence of public accessibility of a reference after the
`petition stage if the patent owner raises a challenge to public accessibility”). See also, M & K
`Holdings, Inc. v. Samsung Elecs. Co., Ltd., 985 F.3d 1376 (Fed. Cir. 2021). Petitioner seeks 4-
`pages to address Issue 2. Petitioner does not oppose a Sur-Reply of equal length.
`
`PO’s position: See above summary. In addition, the WWiSE proposal is not an IEEE article or
`the like (as Petitioner apparently suggests above for the first time), and Petitioner’s
`inapposite case law does not address supplementing the Petition while still in the “petition
`stage” with new evidence (another declaration from Jim Lansford) and new argument that
`could have and should have been included in its Petitions.
`
`3. Mischaracterizations of Motivation to Combine: Common across 9 IPRs (all Group A and
`Group B IPRs, IPR2023-01145 from Group C)
`
`Petitioner’s Position: Petitioner further seeks authorization to address PO’s arguments that a
`POSITA would not have been motivated to combine Hansen and WWiSE as proposed
`because, for example, a receiver would be unable to properly receive PPDUs, the 802.11n
`standard did not adopt extended range functionality, and other techniques existed to extend
`range. Petitioner could not have foreseen that PO would use the majority of its Preliminary
`Response (approximately 10,000 words (over 70% of Petitioner’s total word allocation for
`the entire petition) for the Group A IPRs and approximately 8,000 words for Group B IPRs
`and Group C, IPR2023-001145) attacking Petitioner’s motivation to combine and would in its
`arguments mischaracterize receiver operation, for example, ignoring the well-known process
`of blind decoding implemented in receivers and would ignore the fact that the 802.11ax
`standard PO alleges to infringe these claims did adopt extended range capability despite
`PO’s criticism. If not addressed, PO’s mischaracterizations and omissions present a risk of
`misleading the Board, severely prejudicing Petitioner. Petitioner seeks 5-pages to address
`Issue 3. Petitioner does not oppose a Sur-Reply of equal length.
`
`PO’s position: See above summary.
`
`For Group C, IPR2023-01146, Petitioner seeks authorization to respond to the following two issues
`unique to this IPR:
`
`

`

`
`
`4. Inconsistent Claim Construction Positions:
`
`Petitioner’s Position: Petitioner seeks authorization to address PO’s claim construction
`positions in the POPR which are inconsistent with positions taken in the district court. Good
`cause therefore exists to grant Petitioner’s request because if not identified, Patent Owner’s
`inconsistent statements present the risk of allowing Patent Owner to twist its patent one
`way to avoid invalidity at the PTAB and another way to find infringement in the District
`Court, severely prejudicing Petitioner. See Amazon.com, Inc. v. Barnesandnoble.com, 239
`F.3d 1343, 1351 (Fed. Cir. 2001).
`
`PO’s position: See above summary.
`
`5. Mischaracterization of Prior Art References:
`
`Petitioner’s Position: Petitioner seeks authorization to address PO’s mischaracterization of
`the prior art references that (i) attempts to conflate the process of FFT demodulation with
`the process of packet decoding in the receive pipeline when a POSITA would understand
`that these are two distinct operations, and (ii) attempts to conflate the process of detecting
`the repeated header fields with the process of decoding the repeated header fields. If not
`addressed, PO’s mischaracterizations and omissions present a risk of misleading the Board,
`severely prejudicing Petitioner.
`
`Petitioner seeks 5-pages total to address both Issues #4 and #5. Petitioner does not oppose
`a Sur-Reply of equal length.
`
`PO’s position: See above summary.
`
`For ease of the Board, Petitioner summarizes its request on a per-IPR basis below.
`
`GROUP A: IPR2023-01135 to IPR2023-01140
`GROUP B: IPR2023-01143 and IPR2023-01144
`GROUP C: IPR2023-01145
`
`Issue 1: Fintiv Reply
`
`Issue 2: Public Availability of WWiSE Proposal
`
`Issue 3: Motivation to Combine
`
`Petitioner requests a total of 12-pages (3 for Issue 1, 4 for Issue 2, and 5 for Issue 3), due 5 business
`days after authorization for each Reply. Petitioner does not oppose a Sur-Reply of 12-pages, due 7
`business days after Petitioner’s filing.
`
`
`GROUP C: IPR2023-00146
`
`Issue 1: Fintiv Reply
`
`

`

`Issue 4: Inconsistent Claim Construction Positions
`
`Issue 5: Mischaracterization of Prior Art References
`
`Petitioner requests a total of 8-pages (3 for Issue 1, 5 for Issues 4 and 5), due 5 business days after
`authorization for each Reply. Petitioner does not oppose a Sur-Reply of 8-pages, due 7 business days
`after Petitioner’s filing.
`
`
`Regards-
`Lori A. Gordon
`Counsel for Petitioner
`
`
`Lori Gordon | Perkins Coie LLP
`PARTNER
`700 Thirteenth Street, N.W., Suite 800,
`Washington, DC 20005-3960
`D. +1.202.661.5883
`E. LoriGordon@perkinscoie.com
`Pronouns: she/her/hers
`
`
`
`
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