UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ASUSTeK COMPUTER INC.; ASUS GLOBAL PTE. LTD.;
`DELL TECHNOLOGIES INC.; DELL INC.; AND HP INC.
`Petitioners
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`v.
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`LITL LLC,
`Patent Owner
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`Case IPR2024-00532
`U.S. Patent No. 8,289,688
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`PETITIONERS’ PRELIMINARY REPLY
`TO PATENT OWNER’S PRELIMINARY RESPONSE
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P. O. Box 1450
`Alexandria, VA 22313-1450
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ASUSTeK COMPUTER INC.; ASUS GLOBAL PTE. LTD.;
`DELL TECHNOLOGIES INC.; DELL INC.; AND HP INC.
`Petitioners
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`v.
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`LITL LLC,
`Patent Owner
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`——————————
`Case IPR2024-00532
`U.S. Patent No. 8,289,688
`——————————
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`PETITIONERS’ PRELIMINARY REPLY
`TO PATENT OWNER’S PRELIMINARY RESPONSE
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P. O. Box 1450
`Alexandria, VA 22313-1450
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`Pursuant to the April 8, 2024 e-mail from the Board, Petitioners respectfully
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`submit this Preliminary Reply to Patent Owner’s Preliminary Response (“POPR”)
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`to address Patent Owner’s arguments regarding co-pending Ex Parte Reexamination
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`No. 90/015,035 (“EPR”) and quotation of MPEP § 2258.IV.B in Patent Owner’s
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`argument for discretionary denial under § 325(d).
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`This Petition challenges Claims 1-10 and 23 of the ’688 Patent. In the EPR,
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`the Office has rejected all other claims of this patent (except Claim 29, which Patent
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`Owner had previously disclaimed) in a final office action citing prior art that includes
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`the prior art of record in this Petition. (Exh. 1011 at 2.) In the Petition, Petitioners
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`argue that the two-part framework in Advanced Bionics does not apply here because
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`(1) the same art was previously presented to the Office against only the other claims
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`of this patent, alleviating the concerns of duplicative efforts and due deference to
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`prior evaluations by the Office underlying Section 325(d), and (2) the material error
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`requirement applies only if the challenged claims have survived a prior challenge
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`citing the same art, as was the case in Becton, Dickinson. (Paper 1 at 57-58.)
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`Despite admitting “that Lenovo did not request that the Office reexamine the
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`claims of the ’688 Patent challenged here,” Patent Owner contends that “the Office
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`made a ‘decision’ and chose to not reexamine and reject the claims challenged here,”
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`merely because MPEP § 2258.IV.B grants the Office “the sole discretion” in “[t]he
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`decision to reexamine any claim for which reexamination has not been requested.”
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`1
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`(Paper 9 at 30; see also id. at 32.) Patent Owner further contends that Petitioners do
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`not even allege that the Office made a material error in this “decision.” (Id. at 31-
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`34.) Patent Owner apparently reasoned (incorrectly) that because the Office had the
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`discretion to include claims for which reexamination was not requested, the fact that
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`the challenged claims here were not reexamined in the EPR must mean that the
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`Office had somehow decided to exclude them from the EPR.
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`However, this logical fallacy is soundly refuted by the preceding paragraph of
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`§ 2258.IV.B, which tellingly is not referenced in the POPR. That paragraph states,
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`in relevant part:
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`The Office’s determination in both the order for
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`reexamination and
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`the examination stage of
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`the
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`reexamination will generally be limited solely to a review
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`of the “live” claims … for which reexamination has been
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`requested. If the requester was interested in having all of
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`the claims reexamined, requester had the opportunity to
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`include them in its request for reexamination. However,
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`if the requester chose not to do so, those claim(s) for which
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`reexamination was not requested under 35 U.S.C. 302 will
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`generally not be reexamined by the Office.
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`2
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`MPEP § 2258.IV.B (emphasis in original). Thus, the MPEP makes clear that the
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`challenged claims here were absent from the EPR by default, rather than an Office
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`decision to exclude them, as Patent Owner incorrectly contends.
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`Moreover, the Order Granting the Request for Reexamination confirms that
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`the Office did not consider or make a decision to exclude the challenged claims here
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`from the EPR. (Exh. 1009 at 2 & 13-45 (discussing only the other claims of the ’688
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`Patent).)
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`For the foregoing reasons, Petitioners submit that discretionary denial under
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`Section 325(d) is not warranted here.
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`Respectfully submitted,
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`/s/ Raymond K. Chan
`Raymond K. Chan
`Registration No. 66,164
`Attorney for Petitioners
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`3
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`CERTIFICATE OF COMPLIANCE
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`I, the undersigned, hereby certify that the above Petitioners’ Preliminary
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`Reply to Patent Owner’s Preliminary Response complies with the type-volume
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`limitations of 37 C.F.R. § 42.24(a)(1)(i). Exclusive of the portions exempted by 37
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`C.F.R. § 42.24(a)(1), this Petition, including footnotes, contains 561 words as
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`counted by the word count function of Microsoft Word.
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`By:
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`/Raymond K. Chan/
`Raymond K. Chan (Reg. No. 66,164)
`PROCOPIO, CORY, HARGREAVES
` & SAVITCH LLP
`E-mail: raymond.chan@procopio.com
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`Dated: April 12, 2024
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`CERTIFICATE OF SERVICE
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`I, the undersigned, hereby certify that a copy of the above Petitioners’
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`Preliminary Reply to Patent Owner’s Preliminary Response of U.S. Patent No.
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`8,289,688 was served on April 12, 2024 via electronic means, as agreed by the Patent
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`Owner, at the following email addresses:
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`Counsel for Patent
`Owner
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`Back-Up Counsel
`for Petitioners
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`Richard F. Giunta
`Gerald B. Hrycyszyn
`Scott A. McKeown
`WOLF, GREENFIELD & SACKS, P.C.
`600 Atlantic Avenue, 23rd Floor
`Boston, MA 02210
`Tel.: 617.646.8000
`Fax: 617.646.8646
`RGiunta-PTAB@WolfGreenfield.com
`GHrycyszyn-PTAB@WolfGreenfield.com
`SMcKeown-PTAB@WolfGreenfield.com
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`James Heintz (Reg. No. 41,828)
`DLA PIPER LLP US
`One Fountain Square
`11911 Freedom Drive, Suite 300
`Reston, Virginia 20190-5602
`Tel.: 703-773-4000
`Fax.: 703-773-5000
`E-mail: Jim.Heintz@us.dlapiper.com
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`Jackob Ben-Ezra (pro hac vice to be applied for)
`DLA PIPER LLP US
`845 Texas Avenue, Suite 3800
`Houston, Texas 77002
`Tel.: 713-425-8422
`Fax.: 713-425-8401
`E-mail: Jackob.Ben-Ezra@us.dlapiper.com
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`James L. Day (Reg. No. 72,681)
`FARELLA BRAUN + MARTEL LLP
`One Bush Street, Suite 900
`San Francisco, California 94104
`Tel.: 415-954-4400
`Fax.: 415-954-4480
`E-mail: jday@fbm.com
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`Daniel Callaway (Reg. No. 74,267)
`FARELLA BRAUN + MARTEL LLP
`One Bush Street, Suite 900
`San Francisco, California 94104
`Tel.: 415-954-4400
`Fax.: 415-954-4480
`E-mail: dcallaway@fbm.com
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`Dated: April 12, 2024
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`By:
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`/Raymond K. Chan/
`Raymond K. Chan (Reg. No. 66,164)
`PROCOPIO, CORY, HARGREAVES
` & SAVITCH LLP
`E-mail: raymond.chan@procopio.com
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