UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`
`
`SAMSUNG ELECTRONICS CO., LTD.;
`SAMSUNG ELECTRONICS AMERICA, INC.,
`
`Petitioners,
`
`v.
`
`SLYDE ANALYTICS, LLC,
`
`Patent Owner.
`
`
`
`Patent No. 10,198,085
`Filing Date: October 31, 2017
`Issue Date: February 5, 2019
`
`Inventors: Alex Bezinge, Adrian Mohni, Daniel Pfeifer, and Musa Dogan
`Title: METHOD AND CIRCUIT FOR SWITCHING A WRISTWATCH
`FROM A FIRST POWER MODE TO A SECOND POWER MODE
`
`
`__________________________________________________________________
`
`PATENT OWNER’S PRELIMINARY SUR-REPLY
`
`Case No. IPR2024-00041
`__________________________________________________________________
`
`
`
`
`
`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`
`
`SAMSUNG ELECTRONICS CO., LTD.;
`SAMSUNG ELECTRONICS AMERICA, INC.,
`
`Petitioners,
`
`v.
`
`SLYDE ANALYTICS, LLC,
`
`Patent Owner.
`
`
`
`Patent No. 10,198,085
`Filing Date: October 31, 2017
`Issue Date: February 5, 2019
`
`Inventors: Alex Bezinge, Adrian Mohni, Daniel Pfeifer, and Musa Dogan
`Title: METHOD AND CIRCUIT FOR SWITCHING A WRISTWATCH
`FROM A FIRST POWER MODE TO A SECOND POWER MODE
`
`
`__________________________________________________________________
`
`PATENT OWNER’S PRELIMINARY SUR-REPLY
`
`Case No. IPR2024-00041
`__________________________________________________________________
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`IPR2024-00041
`PATENT NO. 10,198,085
`
`
`Page(s)
`
`THE BOARD SHOULD DISREGARD PETITIONER’S LATE
`SOTERA STIPULATION ............................................................................... 1
`
`
`
`I.
`
`
`
`i
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`IPR2024-00041
`PATENT NO. 10,198,085
`
`
` Page(s)
`
`Cases
`BMW of N. Am., LLC v. NorthStar Sys. LLC,
`IPR2023-01017, Paper No. 12 (P.T.A.B., Dec. 8, 2023) ..................................... 1
`Statutes
`35 U.S.C. § 314(b)(1)................................................................................................. 2
`
`
`
`
`ii
`
`
`
` IPR2024-00041
`PATENT NO. 10,198,085
`
`
`LIST OF EXHIBITS
`
`Description of Document
`Second Amended Docket Control Order, Dkt. 33, Slyde Analytics
`LLC v. Samsung Elecs. Co., No. 2:23-cv-00083-RWS-RSP (E.D.
`Tex., October 5, 2023)
`Defendants’ Joint Patent L.R. 3-3 Invalidity Contentions and
`Subject Matter Ineligibility Contentions, Slyde Analytics LLC v.
`Samsung Elecs. Co., No. 2:23-cv-00083-RWS-RSP, served
`November 14, 2023
`
`Exhibit No.
`
`2001
`
`2002
`
`
`
`
`
`iii
`
`
`
`
`I.
`
`IPR2023-00041
`PATENT NO. 10,198,085
`
`THE BOARD SHOULD DISREGARD PETITIONERS’ LATE
`SOTERA STIPULATION
`A Sotera stipulation is not a carte blanche to sidestep the Board’s discretion
`
`to deny institution. This Board may still exercise its discretion to deny institution,
`
`where Patent Owner shows that it had been prejudiced by the timing of the
`
`stipulation. Accord BMW of N. Am., LLC v. NorthStar Sys. LLC, IPR2023-01017,
`
`Paper No. 12, at 10 (P.T.A.B., Dec. 8, 2023) (“Patent Owner [does not] allege that
`
`it has been prejudiced by the timing of the stipulation. Therefore, we are not
`
`persuaded that we should disregard Petitioner’s Sotera stipulation because of its
`
`timing.”) (footnote omitted).
`
`
`
`Patent Owner has been prejudiced by Petitioners’ late Sotera stipulation.
`
`Petitioners filed their Petition for this proceeding on November 2, 2023. Petitioners
`
`filed invalidity contentions in the related district court litigation on November 14,
`
`2023, which included the same prior art and combinations relied upon in this
`
`proceeding. See generally Ex. 2002, at 128-168 (describing various combinations of
`
`Yeung, Ruiz, Alameh, Joselli, and Yano). Petitioners’ invalidity contentions
`
`specifically include a footnote that “Defendants further incorporate its IPR Petition
`
`IPR2024-00041 and accompanying exhibits.” Id., 128, n.6. Therefore, despite
`
`knowing its alleged bases of invalidity, Petitioners nonetheless filed a Petition with
`
`the same bases without a Sotera stipulation. Petitioners only filed a Sotera stipulation
`
`1
`
`
`
`on January 31, 2024. The parties are scheduled to exchange proposed claim terms
`
` IPR2024-00041
`PATENT NO. 10,198,085
`
`
`and preliminary constructions on March 22, 2024 and April 19, 2024, respectively.
`
`Ex. 2001, at 5.
`
`Petitioners’ late filing of a Sotera stipulation forces Patent Owner to litigate
`
`validity on the same prior art and combinations in both the PTAB and the district
`
`court under different standards (preponderance of the evidence and clear and
`
`convincing evidence, respectively), and craft claim constructions based on these
`
`standards prior to the statutory deadline for institution, May 21, 2024. Id.; see 35
`
`U.S.C. § 314(b)(1) (“three months after receiving a preliminary response to the
`
`petition under section 313”). In view of the prejudice to Patent Owner due to the
`
`timing of Petitioner’s late Sotera stipulation, Patent Owner’s Fintiv arguments
`
`should be considered and the Petition should be discretionarily denied.
`
`
`
`Dated: March 1, 2024
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By:
`
`
`
`/ Peter Lambrianakos
`/
`
`Peter Lambrianakos (Reg. No. 58,279)
`Lead Counsel for Patent Owner
`FABRICANT LLP
`411 Theodore Fremd Avenue,
`Suite 206 South
`Rye, New York 10580
`Tel. 212-257-5797
`Fax. 212-257-5517
`Email: plambrianakos@fabricantllp.com
`
`
`
`2
`
`
`
`CERTIFICATE OF SERVICE
`A copy of PATENT OWNER’S PRELIMINARY SUR-REPLY has been
`
` IPR2023-00002
`PATENT NO. 9,651,922
`
`
`
`
`served on Petitioner’s counsel of record as follows:
`
`William M. Fink
`E-mail: tfink@omm.com
`O’Melveny & Myers LLP
`1625 Eye Street, NW
`Washington, DC 20006
`
`Benjamin M. Haber
`E-Mail: bhaber@omm.com
`Brian Cook
`E-mail: bcook@omm.com
`Nicholas Whilt
`E-mail: nwhilt@omm.com
`O’Melveny & Myers LLP
`400 South Hope Street, 18th Floor
`Los Angeles, CA 90071
`
`Jeff Baxter
`E-mail: jbaxter@omm.com
`O’Melveny & Myers LLP
`2501 North Harwood Street, Suite 1700
`Dallas, TX 75201
`
`Attorneys for Samsung Electronics Co., Ltd.;
`Samsung Electronics America, Inc.
`
`
`
`
`
`
`
`By:
`
`
`/
`/ Peter Lambrianakos
`
`Peter Lambrianakos (Reg. No. 58,279)
`Lead Counsel for Patent Owner
`FABRICANT LLP
`411 Theodore Fremd Avenue,
`Suite 206 South
`Rye, New York 10580
`Tel. 212-257-5797
`
`
`March 1, 2024
`
`
`
`
`
`
`
`
` IPR2023-00002
`IPR2023-00002
`PATENT NO. 9,651,922
`PATENT NO. 9,651,922
`
`
`Fax. 212-257-5517
`Fax. 212-257-5517
`
`
`
`
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