U.S. Patent No. 10,198,085
`Request for Director Review
`Case No. IPR2024-00041
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________________________
`
`
`
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner
`
`v.
`
`SLYDE ANALYTICS, LLC
`Patent Owner.
`
`________________________
`
`Case No. IPR2024-00041
`U.S. Patent No. 10,198,085
`_______________________
`
`
`PETITIONER’S REQUEST FOR DIRECTOR REVIEW
`
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`U.S. Patent No. 10,198,085
`Request for Director Review
`Case No. IPR2024-00041
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`Page
`
`
`B.
`
`INTRODUCTION .......................................................................................... 1
`I.
`BACKGROUND ............................................................................................ 2
`II.
`III. ARGUMENT .................................................................................................. 5
`A. A panel must, or should as a matter of fairness, allow parties to
`be heard on a sua sponte claim construction before a panel
`renders its decision whether to institute. .............................................. 5
`The panel failed to give the parties notice and opportunity to
`respond to its claim construction, issued an erroneously narrow
`construction, and failed to consider Samsung’s evidence even
`under that construction. ........................................................................ 8
`The panel abused its discretion or committed an error of law by
`penalizing Samsung for not proffering an express claim
`construction at the institution stage. ................................................... 13
`IV. CONCLUSION ............................................................................................. 15
`
`
`C.
`
`ii
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`

`

`TABLE OF AUTHORITIES
`
`U.S. Patent No. 10,198,085
`Request for Director Review
`Case No. IPR2024-00041
`
`Page(s)
`
`CASES
`
`Assa Abloy AB v. CPC Patent Techs. Pty., Ltd.,
`IPR2022-01006, 2024 WL 1184586 (P.T.A.B. Mar. 15, 2024) ........................... 6
`
`Axonics, Inc. v. Medtronic, Inc.,
`75 F.4th 1374 (Fed. Cir. 2023) ...........................................................................13
`
`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) ............................................................................ 5
`
`Hamilton Beach Brands, Inc. v. f'real Foods, LLC,
`908 F.3d 1328 (Fed. Cir. 2018) ............................................................................ 6
`
`Intellectual Ventures II LLC v. Ericsson Inc.,
`686 F. App’x 900 (Fed. Cir. 2017) ....................................................................... 6
`
`Nearmap US, Inc. v. Eagle View Techs. Inc.,
`IPR2022-00734, 2024 WL 922247 (P.T.A.B. Feb. 20, 2024) ............................. 7
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ..........................................................................10
`
`Qualcomm Inc. v. Intel Corp.,
`6 F.4th 1256 (Fed. Cir. 2021) ............................................................................... 6
`
`SAS Inst. Inc. v. Iancu,
`138 S. Ct. 1348 (2018) .......................................................................................... 5
`
`SAS Inst., Inc. v. ComplementSoft, LLC,
`825 F.3d 1341 (Fed. Cir. 2016) ............................................................................ 5
`
`TQ Delta, LLC v. Dish Network LLC.,
`929 F.3d 1350 (Fed. Cir. 2019) ............................................................................ 6
`
`REGULATIONS
`
`37 C.F.R. § 42.104(b)(3) ..........................................................................................14
`
`37 C.F.R. § 42.108 (c) ................................................................................................ 9
`
`37 C.F.R. § 42.23 ....................................................................................................... 9
`
`
`
`

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`U.S. Patent No. 10,198,085
`Request for Director Review
`Case No. IPR2024-00041
`
`TABLE OF AUTHORITIES
`(continued)
`
`Page(s)
`37 C.F.R. § 42.24(c) ................................................................................................... 9
`
`OTHER AUTHORITIES
`
`89 Fed. Reg. 28693 (Apr. 19, 2024) .......................................................................... 8
`
`
`
`iv
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`

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`U.S. Patent No. 10,198,085
`Request for Director Review
`Case No. IPR2024-00041
`
`I.
`
`INTRODUCTION
`
`The Federal Circuit held in Qualcomm that the Board cannot diverge from
`
`an agreed-to construction of a claim term sua sponte without affording the parties
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`an opportunity to be heard. And, in March of this year, citing the same Qualcomm
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`decision, Director Vidal vacated the Assa Abloy decision where a Board panel sua
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`sponte switched from plain and ordinary meaning in its institution decision to a
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`construction not advanced by either party in its final written decision. The rule
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`from these and similar decisions is clear. The Board cannot issue a new claim
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`construction, not advanced by either party, without notice and an opportunity to be
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`heard. Yet this is what happened in the institution decision here.
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`Here, both Samsung and Patent Owner agreed that no claim terms required
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`construction. However, the panel decided that the terms “first power mode” and
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`“second power mode” needed to be expressly construed. But, rather than ordering
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`the parties to brief the issue, the panel engaged in its own claim construction
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`analysis in the first instance, citing large portions of the specification that neither
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`party relied on, resulting in a technical and narrow construction that even the
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`Patent Owner did not seek. The panel further faulted Samsung for failing to proffer
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`an express construction (something it is not required to do) when it was the Patent
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`Owner whose arguments were based on applying a narrow scope to the claims. The
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`panel then compounded its errors by attempting to apply the art to its new
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`1
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`U.S. Patent No. 10,198,085
`Request for Director Review
`Case No. IPR2024-00041
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`construction without the benefit of briefing on how the art would or would not
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`meet it. In doing so, the panel ignored relevant evidence from the Petition that
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`would satisfy even its narrow construction.
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`Therefore, the panel’s institution decision is legally wrong and lacking in
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`substantial evidence. But it also presents important questions of law and policy: (1)
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`whether a panel must, or should as a matter of fairness, allow parties to be heard on
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`a sua sponte claim construction before a panel renders its institution decision and
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`(2) whether the Board can penalize a petitioner for not proffering an express claim
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`construction at the institution stage when Board guidance states that express
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`constructions are not required.
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`II. BACKGROUND
`
`The ’085 patent, filed on October 31, 2017, is directed to a wristwatch that
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`can change “power modes” by sensing a “wristturn.” Samsung challenged all 10
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`claims under multiple grounds based on one § 102(b) primary reference, U.S.
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`Patent Application Publication No. 2009/0164219 (“Yeung”), which teaches the
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`limitations of the sole independent claim at issue here. This is the only reference at
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`issue for purposes of this request.
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`Claim 1 is representative and recites, in relevant part, “a method for
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`switching a wristwatch from a first power mode to a second power mode . . . when
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`2
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`

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`U.S. Patent No. 10,198,085
`Request for Director Review
`Case No. IPR2024-00041
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`a wristturn has been detected.”1 Ex-1001 (10:59-64). The claimed steps for
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`detecting the wristturn are not at issue here. The dependent claims are also not at
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`issue.
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`Samsung stated that no terms required construction and argued that Yeung
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`teaches switching from a first power mode to a second power mode (recited in the
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`preamble and element 1[b]), when Yeung’s watch/recorder activates “a voice
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`recorder” and turns on a display “to indicate the status of the recording” after
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`detecting a wrist-turn. Paper 3 at 8, 20, 25-26, 29. Relying on its expert, Dr.
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`Benjamin Bederson, Samsung further explained that switching to audio recording
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`mode (and activating the display) results in “higher power consumption.” Paper 3
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`at 20; see also Ex-1002 ¶¶70-77 (discussing how battery-powered devices have
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`had features to conserve battery power, such as “sleep” or “standby,” since the
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`1990s). Samsung cited to the ’085 specification’s examples of switching from a
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`“power saving” first mode to a “time display” or other display second mode to
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`support its argument that Yeung teaches switching power modes. Paper 3 at 29
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`(citing Ex-1001, 6:2-6, 9:40-42).
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`In its Preliminary Response, Patent Owner “agree[d] that claim construction
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`is not warranted” and argued that Yeung’s “activating” the audio recorder, even if
`
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`1 Emphasis added unless otherwise noted.
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`3
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`U.S. Patent No. 10,198,085
`Request for Director Review
`Case No. IPR2024-00041
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`it means consuming more power and switching from an “idle” mode, is not
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`switching “power modes,” it is merely activating a “functionality.” Paper 9 at 7,
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`10-12. Patent Owner argued that the specification discusses that “various
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`‘functionalities’ can be activated and displayed by the user” without switching
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`power modes. Paper 9 at 10-11. As an example of different functionalities that can
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`occur within the same power mode, Patent Owner pointed to different “display
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`modes” (“current time, date, chrono, reverse counter, calendar, etc. . . . or phases of
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`the moon”). Id. (citing Ex-1001, 4:60-5:4).
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`In its decision, the panel acknowledged that neither party proffered an
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`express construction of “power mode,” but it stated that “on this record, we
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`determine the claim 1 terms ‘first power mode’ and ‘second power mode’ require
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`explicit claim construction as a principal threshold issue in our institution
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`decision.” Dec. 16. Although there is no requirement for either party to expressly
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`construe a term during an inter partes review, the panel stated multiple times that
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`Samsung failed to proffer a construction. Id. at 16, 20-21. The panel went on to
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`engage in a detailed claim construction analysis without input from the parties,
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`spending about five pages on claim construction and block quoting almost 80 lines
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`from the specification—much of which had not been discussed by either party. Id.
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`at 17-20. The panel then issued a narrow construction that even Patent Owner did
`
`not ask for: “switching between first and second power modes seems to generally
`
`4
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`

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`U.S. Patent No. 10,198,085
`Request for Director Review
`Case No. IPR2024-00041
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`require switching physical components, e.g., electrodes, on or off as needed to
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`conserve power.” Dec. 20 (emphasis in original). The panel further narrowed the
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`construction, concluding that: “The conservation of power comes from a device
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`being ready or not ready, set or not set, to perform a function, rather than actually
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`performing or not performing a function.” Id. This claim construction analysis was
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`the basis for the panel’s decision not to institute on any ground. The panel did not
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`reach the arguments on discretionary denial, which are moot. See Dec. 23-24;
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`Paper 10 at 1-3.
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`III. ARGUMENT
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`A. A panel must, or should as a matter of fairness, allow parties to be
`heard on a sua sponte claim construction before a panel renders
`its decision whether to institute.
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`It is well established that “IPR proceedings are formal administrative
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`adjudications subject to the procedural requirements of the Administrative
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`Procedure Act (‘APA’).” SAS Inst., Inc. v. ComplementSoft, LLC, 825 F.3d 1341,
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`1351 (Fed. Cir. 2016), rev’d on other grounds sub nom., SAS Inst. Inc. v. Iancu,
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`138 S. Ct. 1348 (2018). The APA requires due process in the form of “notice” and
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`a “fair opportunity” to be heard. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064,
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`1080 (Fed. Cir. 2015).
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`As to claim construction issues, the Federal Circuit has held that the Board
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`cannot diverge from an agreed-to construction of a claim term sua sponte without
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`5
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`U.S. Patent No. 10,198,085
`Request for Director Review
`Case No. IPR2024-00041
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`affording the parties an opportunity to be heard. Qualcomm Inc. v. Intel Corp., 6
`
`F.4th 1256, 1265 (Fed. Cir. 2021). As noted above, the Director recently applied
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`Qualcomm to vacate the decision in Assa Abloy, where a panel sua sponte switched
`
`from plain and ordinary meaning in its institution decision to a construction not
`
`advanced by either party in its final written decision. Assa Abloy AB v. CPC Patent
`
`Techs. Pty., Ltd., IPR2022-01006, 2024 WL 1184586 (P.T.A.B. Mar. 15, 2024).
`
`Where the Federal Circuit has found a panel’s new claim construction to be
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`APA compliant, it has relied on the development of the record after institution.
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`See, e.g., TQ Delta, LLC v. Dish Network LLC, 929 F.3d 1350, 1354 (Fed. Cir.
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`2019) (relying on exchange “[d]uring the Oral Hearing”); Hamilton Beach Brands,
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`Inc. v. f'real Foods, LLC, 908 F.3d 1328 (Fed. Cir. 2018) (relying on “adequate
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`notice in [patent owner’s] post-institution response”); Intellectual Ventures II LLC
`
`v. Ericsson Inc., 686 F. App’x 900, 906 (Fed. Cir. 2017) (relying on “continuous
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`focus on [the claim term] before and during oral arguments”).
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`Here, Samsung had no opportunity to respond to the panel’s construction
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`after institution because the panel’s construction was presented as the reason to
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`deny institution. Moreover, Samsung could not have anticipated that the panel
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`would engage in a detailed claim construction analysis and issue a narrow
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`construction not even requested by Patent Owner.
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`6
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`

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`U.S. Patent No. 10,198,085
`Request for Director Review
`Case No. IPR2024-00041
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`Samsung appreciates that the Director requires the Board to resolve disputed
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`claim construction issues. See Nearmap US, Inc. v. Eagle View Techs. Inc.,
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`IPR2022-00734, 2024 WL 922247 at *4 n.5 (P.T.A.B. Feb. 20, 2024) (“where [a
`
`claim construction] dispute materially affects the Board’s determinations, it is
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`necessary to resolve the dispute.”). But a panel should not engage in a detailed
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`claim construction analysis resulting in a narrow construction not advocated for by
`
`either party without notice to either party. This is particularly problematic when
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`the construction is the basis not to institute. Had the panel engaged in the same
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`exercise, but instituted first, the parties would have been able to respond during
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`trial phase briefing and oral argument. For this reason, in circumstances like this,
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`panels often institute and advise parties to brief disputed claim construction issues
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`during the trial phase of an IPR.
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`Even if APA due process is not mandated as to institution decisions, as a
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`matter of fairness, the Office should require due process be afforded. In fact, the
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`fairness and due process concerns are arguably greater at the institution phase
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`given the limited development of the record and the fact that there is effectively no
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`right to judicial review of a decision whether to institute an IPR. The Office
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`acknowledged the importance of Director Review at the institution stage last year,
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`when, in response to comments on the Director Review process, it changed the
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`process to permit review of institution decisions even though such review was not
`
`7
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`

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`U.S. Patent No. 10,198,085
`Request for Director Review
`Case No. IPR2024-00041
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`legally required.2 And, just last month, the Office underscored the importance of
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`due process at the institution phase when it proposed rules requiring that both
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`parties be heard before the Board can sua sponte deny institution based on
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`discretionary institution factors. 89 Fed. Reg. 28693 (Apr. 19, 2024) (“The
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`proposed amendment also provides that the Board may sua sponte raise
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`discretionary denial, in which case the Board will provide the parties with the
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`opportunity for briefing on the relevant factors set forth in this section.”).
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`B.
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`The panel failed to give the parties notice and opportunity to
`respond to its claim construction, issued an erroneously narrow
`construction, and failed to consider Samsung’s evidence even
`under that construction.
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`As explained in the background section of this request, notice and
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`opportunity was not provided here. Neither party advanced an express claim
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`construction nor engaged in a claim construction analysis. But the panel issued a
`
`
`2 Revised Interim Director Review Process, UNITED STATES PATENT AND
`TRADEMARK OFFICE, https://www.uspto.gov/patents/ptab/decisions/revised-
`interim-director-review-process (Accessed Apr. 25, 2024) (“In Arthrex, the
`Supreme Court exclusively addressed the Director’s ability to review final
`decisions of the Board in inter partes review proceedings. . . . Nonetheless, for
`consistency and uniformity, Director Review requests are available for other areas
`of Board jurisdiction.”).
`
`8
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`

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`U.S. Patent No. 10,198,085
`Request for Director Review
`Case No. IPR2024-00041
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`dispositive construction Patent Owner never requested and based it on portions of
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`the specification neither party cited or discussed. See Paper 9 at 10-12.3
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`Moreover, the construction was too narrow. There is nothing in the claims or
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`specification that limits the meaning of “switching” “power modes” to “switching
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`physical components, e.g., electrodes, on or off as needed to conserve power.”
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`Dec. 20, 14-21 (on/off emphasis in original). Nor do the claims or specification
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`require, as the panel found, that: “The conservation of power comes from a device
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`being ready or not ready, set or not set, to perform a function, rather than actually
`
`performing or not performing a function.” Id.
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`The panel did not consider the language of the claims. “Power mode” is a
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`broad term that is not narrowed by the claim elements around it. Ex-1001 (10:59-
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`64). In fact, the focus of claim 1 and the dependent claims is the method of
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`detecting the wrist-turn to “switch” between power modes. Id. (10:59-12:28). No
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`claim other than claim 1 uses any form of the term “power mode.” Id.
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`Turning to the specification, the panel block quoted portions of the
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`specification but ignored the fact that the terms are not defined and are used
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`3 Had Patent Owner proffered the construction at issue, at least Samsung would
`have had the opportunity request a preliminary reply brief to respond before the
`panel adopted it. 37 C.F.R. § 42.108(c) (“A petitioner may seek leave to file a
`reply to the preliminary response in accordance with §§ 42.23 and 42.24(c). Any
`such request must make a showing of good cause.”).
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`9
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`

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`U.S. Patent No. 10,198,085
`Request for Director Review
`Case No. IPR2024-00041
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`broadly. For example, the specification provides numerous non-limiting examples:
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`“The first power mode could be a sleep mode, or standby mode, in which the
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`power consumption is reduced but no indications are displayed on the display.”
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`Ex-1001 (3:15-17). And “[t]he second power mode could be an operating mode
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`where indications are displayed on the display.” Id. (3:17-19). The specification
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`also says that a second power mode can be initiated by “a wristturn . . .
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`activat[ing] the display. Id. (9:38-42). It further states “more than two power
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`modes can be provided; for example, the real time clock 22 is preferably always
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`powered on in power saving mode, so that the real time is not lost when the display
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`4 and the touch panel 3b are switched off.” Id. (5:58-62). And it states: “Initially,
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`the microcontroller 21 is in a low power mode, for example completely off.” Id.
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`(9:43-44). Thus, a “first power mode” could be “sleep,” “standby,” or “low power”
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`mode or “completely off,” and a “second power mode” could be as simple as the
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`display turning on. Although disclosures are not limiting, the panel went to great
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`lengths to tease out limitations from them.4
`
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`4 It is not clear that the panel was certain about its construction, as it stated that it
`“seems” that the terms “generally require” certain limitations. Dec. 20. If the terms
`are generally limited, that does not mean they are always limited. See, e.g., Phillips
`v. AWH Corp., 415 F.3d 1303, 1320 (Fed. Cir. 2005) (describing “reading a
`limitation from the written description into the claims” as “one of the cardinal sins
`of patent law”).
`
`10
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`U.S. Patent No. 10,198,085
`Request for Director Review
`Case No. IPR2024-00041
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`But even if these disclosures were limiting, which they are not, they are
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`exactly what Yeung teaches. As to the sleep/standby/low power/off “mode,”
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`Samsung reproduced figure 1 and described the inactive state of the watch/recorder
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`when it shows only, for example, time of day. Paper 3 at 9-10, 25. And, as to
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`activating the display and/or switching to “operating mode,” Samsung cited to
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`Yeung’s teaching of “activating”/“turning on” the recording function, which in
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`turn activates the recording features of the display:
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`The wrist-worn audio recorder . . . is activated to record audio
`messages only when it is in a predetermined orientation and/or after it
`has completed a predetermined movement. . . .
`
`In the first embodiment, the audio recording function of audio
`recorder 30 turns on automatically when the user positions audio
`recorder 30 in a predetermined orientation . . . and an indicator . . .
`simultaneously turns on to inform the user that he or she may begin
`audio recording.
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`Ex-1005 ¶¶36, 48 (cited at Paper 3 at 20, 29). Yeung also teaches turning off the
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`audio recorder, in accordance with the panel’s “off” requirement:
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` . . . In all cases, the audio recording is stopped as soon as the user
`moves audio recorder 30 away from the predetermined orientation, so
`that recording of irrelevant audio information is minimized without
`requiring the user to consciously turn off the audio recording.
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`Ex-1005 ¶48 (cited at Paper 3 at 64). Thus, even though Samsung had no notice of
`
`the panel’s construction, its fulsome explanation shows that Yeung satisfies that
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`construction. Paper 3 at 11, 25-26, 29. Yet the panel failed to discuss or credit that
`
`11
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`

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`U.S. Patent No. 10,198,085
`Request for Director Review
`Case No. IPR2024-00041
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`evidence. See Dec. 14 (describing Samsung’s argument and evidence in two
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`sentences).
`
`Despite the above teachings, the panel stated that it would have had to
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`engage in “speculation” to determine whether “particular subcomponents” in
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`Yeung “are switched on or off.” Dec. 21 (emphasis in original). To the extent that
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`the panel had to speculate about “subcomponents,” it is because neither Samsung
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`nor Patent Owner had notice that the panel was going to construe the claims to
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`reference the operation of “physical components.” As shown above, the claims and
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`broad descriptions of “power modes” in the specification do not discuss “physical
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`components” or “subcomponents.” Regardless, Petitioner’s expert did point to
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`subcomponents activating during recording. See Ex-1002 ¶145 (cited at Paper 3 at
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`29) (citing Yeung’s “sample-and-hold circuit 62 and an analog-to-digital converter
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`64” used during recording). This exemplifies why the lack of notice is particularly
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`problematic—Petitioner would have pointed to this evidence that it submitted with
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`and cited in its Petition.
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`Additionally, while the panel cited the specification’s disclosure of taking
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`steps to avoid accidental switches from one power mode to another (Dec. 18-19
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`(citing Ex-1001 (6:23-29)), it ignored the almost identical corresponding teaching
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`in Yeung, cited by Samsung, that states: “To minimize accidental activation of
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`these audio-recorder functions by normal daily activities, recorder controller 48
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`12
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`U.S. Patent No. 10,198,085
`Request for Director Review
`Case No. IPR2024-00041
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`can be designed to activate an audio-recorder function such as recording or
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`playback only after audio recorder 30 remains in a static position for a
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`predetermined period of time after a predetermined wrist and arm movement
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`pattern has been detected.” Ex-1005 ¶52 (cited at Paper 3 at 20). The Board may
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`not ignore relevant evidence. See Axonics, Inc. v. Medtronic, Inc., 75 F.4th 1374
`
`(Fed. Cir. 2023) (finding an APA violation when the panel “considered Axonics’
`
`arguments against the new claim construction” but “refused to consider Axonics’
`
`evidence and argument under that construction”).
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`Finally, it is important to note that Yeung is not teaching switching between
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`various display features in the same power mode, as Patent Owner argued in its
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`Preliminary Response (Paper 9 at 11), or between “selective usage of
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`applications,” as the panel stated in its Decision (Dec. 20). Yeung is teaching
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`turning its core functionality on and off. This satisfies both the broad meaning of
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`“power mode” and the panel’s narrow construction.
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`C. The panel abused its discretion or committed an error of law by
`penalizing Samsung for not proffering an express claim
`construction at the institution stage.
`
`As noted above, the panel stated multiple times that Samsung was required
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`to proffer an express construction to show unpatentability but failed to do so,
`
`suggesting an independent reason not to institute. See Dec. 16 (“‘[i]n an [inter
`
`partes review], the petitioner has the burden from the onset to show with
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`13
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`U.S. Patent No. 10,198,085
`Request for Director Review
`Case No. IPR2024-00041
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`particularity why the patent it challenge is unpatentable. Here, . . . neither
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`Petitioner nor Dr. Bederson has proposed any claim construction for claim terms
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`‘first power mode’ and ‘second power mode’” (emphasis in original)), 20-21
`
`(“Given Petitioner’s lack of any proposed construction for the first and second
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`power modes of claim 1 . . . we are in general agreement with Patent Owner that
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`‘[t]he fact that a function may cause a device to consume more power than when
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`the device is idle does not demonstrate that the device has also changed power
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`modes.’”). But Samsung was not required to proffer an express construction.
`
`The panel cited 37 C.F.R. § 42.104(b)(3) for the proposition that “the
`
`petition must set forth ‘how the challenged claim is to be construed.’” Dec. 16. But
`
`the Board’s Trial Practice Guide clarifies that: “a petitioner may include a
`
`statement [in the petition] that the claim terms require no express construction.”
`
`TPG 44. The TPG further clarifies that “the petitioner must include a statement
`
`identifying a proposed construction of the particular term and where the intrinsic
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`and/or extrinsic evidence supports that meaning,” only “[i]f a petitioner believes
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`that a claim term requires an express construction.” Id.
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`Samsung, as countless other petitioners do, complied with the Board’s
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`guidance. In its Petition, it stated that: “To resolve this Petition, Petitioner does not
`
`believe that any term requires construction.” Paper 3 at 8. Patent Owner agreed. By
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`penalizing Samsung for failing to provide an express construction, even though
`
`14
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`

`U.S. Patent No. 10,198,085
`Request for Director Review
`Case No. IPR2024-00041
`
`Board guidance explicitly states express constructions are not required, and even
`
`though Patent Owner agreed that no construction was needed, the panel abused its
`
`discretion if not erred as a matter of law. Failure to correct this aspect of the
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`decision has the potential to impact many AIA proceedings before the Office
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`because it could result in other institution denials or adverse final written decisions
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`based on a petitioner’s failure to carry an initial burden it does not have.
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`IV. CONCLUSION
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`For the reasons herein, Samsung respectfully requests that the Director review
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`the panel’s decision and reverse or vacate the panel’s conclusions and findings so
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`that the inter partes review proceeding can be instituted.
`
`Respectfully Submitted,
`
`
`/s/ William M. Fink
`William M. Fink (Reg. No. 72,332)
`
`
`15
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`U.S. Patent No. 10,198,085
`Request for Director Review
`Case No. IPR2024-00041
`
`CERTIFICATION OF WORD COUNT
`
`Pursuant to 37 C.F.R. § 42.24(d), the undersigned certifies that this Request
`
`for Director Review complies with the 15-page limit exclusive of the parts
`
`exempted as provided in 37 C.F.R. § 42.24(a).
`
`Respectfully Submitted,
`
`
`/s/ William M. Fink
`William M. Fink (Reg. No. 72,332)
`
`
`
`
`
`16
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`U.S. Patent No. 10,198,085
`Request for Director Review
`Case No. IPR2024-00041
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies pursuant to 37 C.F.R. §§ 42.6(e) and 42.105 that
`
`on May 8, 2024, a true and correct copy of REQUEST FOR DIRECTOR REVIEW
`
`was served in its entirety by filing this document through the PTAB P-TACTS
`
`System, as well as by email to counsel of record for the Patent Owner.
`
`Concurrently, notification is being provided to the Director of the USPTO at
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`Director_PTABDecision_Review@uspto.gov.
`
`Lead Counsel
`Peter Lambrianakos (Reg. No. 58,279)
`FABRICANT LLP
`411 Theodore Fremd Avenue,
`Suite 206 South
`Rye, New York 10580
`Tel. 212-257-5797
`Fax. 212-257-5796
`PTAB@fabricantllp.com
`plambrianakos@fabricantllp.com
`
`
`
`Back-up Counsel
`Vincent J. Rubino, III (Reg. No.
`68,594)
`FABRICANT LLP
`411 Theodore Fremd Avenue,
`Suite 206 South
`Rye, New York 10580
`Tel. 212-257-5797
`Fax. 212-257-5796
`vrubino@fabricantllp.com
`Alfred R. Fabricant (subject to motion
`to appear pro hac vice)
`FABRICANT LLP
`411 Theodore Fremd Avenue,
`Suite 206 South
`Rye, New York 10580
`Tel. 212-257-5797
`Fax. 212-257-5796
`ffabricant@fabricantllp.com
`
`17
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`
`
`
`U.S. Patent No. 10,198,085
`Request for Director Review
`Case No. IPR2024-00041
`
`Enrique W. Iturralde (Reg. No.
`72,883)
`FABRICANT LLP
`411 Theodore Fremd Avenue,
`Rye, New York 10580
`Tel. 212-257-5797
`Fax. 212-257-5796
`eiturralde@fabricantllp.com
`Richard Cowell (Reg. No. 79,143)
`FABRICANT LLP
`411 Theodore Fremd Avenue,
`Suite 206 South
`Rye, New York 10580
`Tel. 212-257-5797
`Fax. 212-257-5796
`rcowell@fabricantllp.com
`Jacob Ostling (Reg. No. 77,624)
`FABRICANT LLP 411 Theodore
`Fremd Avenue, Suite 206 South Rye,
`New York 10580 Tel. 212-257-5797
`Fax. 212-257-5796
`jostling@fabricantllp.com
`
`
`Dated: May 8, 2024
`
`
`
`
`
` Respectfully submitted,
`
`
`/s/ William M. Fink
`William M. Fink (Reg. No. 72,332)
`O’Melveny & Myers LLP
`1625 Eye Street, NW
`Washington, DC 20006
`Telephone: (202) 383-5300
`Fax: (202) 383-5414
`E-Mail: tfink@omm.com
`Attorney for Petitioner
`
`
`
`18
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`