From:
`To:
`Cc:
`
`Subject:
`Date:
`Attachments:
`
`Jim Glass
`Director_PTABDecision_Review
`hendifar@lowensteinweatherwax.com; weatherwax@lowensteinweatherwax.com; Nathan Lowenstein; Colette
`Woo; Cobblestone_IPRs@lowensteinweatherwax.com; Reza Mirzaie; rak_cobblestone@raklaw.com; Amy E.
`Hayden; Neil A. Rubin; ptong@raklaw.com; QE-Cobblestone-Samsung; QE-Samsung-Cobblestone-IPRs
`IPR2024-00319 Request for Director Review
`Wednesday, July 24, 2024 11:41:35 PM
`IPR2024-00319 Request for Director Review.pdf
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
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`
`Dear Honorable Director Vidal,
`
`I am lead counsel for Petitioners Samsung Electronics America, Inc. and Samsung Electronics Co., Ltd.
`in IPR2024-00319. As required by the Revised Interim Director Review Process, Petitioners notify the
`Director that Petitioners have filed a Request for Director Review of the Board’s decision not to
`institute. Pursuant to the Interim Guidance, §3 ¶5, Petitioner notifies the Director that it believes
`this request presents an issue of first impression. A courtesy copy of the request is attached.
`
`Petitioners respectfully submit that review is warranted because the Panel’s decision implicates an
`important issue of law and policy on which there is a split of authority. The Panel in this case
`adopted a ruling from a six-year old decision that is contrary to both current Board practice and
`recent PTAB authority. Specifically, the ID rejects the Board’s current practice of allowing petitioners
`to rely on patent owner’s litigation claim constructions. The ID would allow a petitioner to do so
`only if it concedes those constructions are correct. This is contrary to both current Board practice
`and recent decisions that have held precisely the opposite, that Petitioners are permitted to rely on
`Patent Owner’s litigation constructions, even if Petitioner believes they are incorrect. Petitioners
`respectfully submit that the Board’s current practice and more recent line of authority are correct,
`and that allowing petitioners to rely on a patent owner’s broad infringement positions would
`prevent patent owners from applying a broad construction in litigation for purposes of infringement
`while simultaneously arguing for denial when a petitioner attempts to apply those same
`constructions in an IPR. Given the important issue of law and policy presented here, the de novo
`standard of review should be applied. Thus, this issue is ripe for the Director’s definitive guidance to
`resolve this panel split.
`
`Petitioners also respectfully submit that Review is warranted because the Board abused its
`discretion as: (1) the Board’s decision is manifestly unfair to Petitioners and inconsistent with the
`bulk of recent Board decisions as well as Congressional intent and the policy goals for inter partes
`review, and (2) the Board had no basis to deny institution on the merits without first construing the
`scope of the claims and analyzing the prior art.
`
`Petitioners respectfully request that the decision be vacated, and this IPR instituted.
`
`Respectfully submitted,
`
`IPR2024-00319
`Ex. 3100
`
`

`

`James Glass
`Lead Counsel for Petitioners
`
`
`James M. Glass |Chair, Post-Grant Patent Practice| Quinn Emanuel Urquhart & Sullivan, LLP | 51 Madison
`Avenue, 22nd Floor, New York, NY 10010 | Office: +1.212.849.7142| Web Bio
`
`
`