From:
`To:
`Cc:
`
`Subject:
`Date:
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`Chang, Shawn
`Trials
`Arner, Erika; Specht, Kara; Bell, Cory; Chang, Shawn; Aguilar, Safiya; dhecht@hechtpartners.com;
`jzak@hechtpartners.com; proxense@hechtpartners.com; Google-Proxense-IPRs
`Google v. Proxense (IPR2024-00782, -00783, -00784)
`Tuesday, August 27, 2024 2:57:00 PM
`
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`
`Your Honors,
`
`Pursuant to Rule 42.108(c), Petitioner Google requests authorization to file 5-page pre-
`institution replies in each of IPR2024-00782, -00783, and -00784 to address Proxense’s
`inconsistent and unforeseeable claim construction positions, particularly as they relate to
`alleged means-plus-function constructions for various terms.
`
`Proxense’s claim construction positions are inconsistent because Proxense merely
`speculates whether “35 U.S.C. § 112, paragraph 6, may be considered” without
`affirmatively arguing that the claims are means-plus-function claims. These inconsistent
`positions also could not have been anticipated by the Petitioner because (1) Patent Owner
`did not raise these constructions before the district court in the pending litigation (Ex. 1016)
`and (2) Petitioner’s petitions were filed before the Patent Owner Preliminary Responses
`were filed in instituted IPRs Nos. 2024-00405, 2024-00407, and 2024-00573. Google will
`not oppose a sur-reply of equal length.
`
`Patent Owner opposes the request because “the constructions advanced were previously
`ordered by the District Court and explained in Court's Memo in Support of Clam
`Construction Order issued in Proxense, LLC v. Samsung Electronics, Co., Ltd. et al., No.
`6.21-CV-00210 (W.D. Tex. March 5, 2021) (Exhibits 2001 and 2002),” and “the same
`constructions were advanced in the Patent Owner Preliminary Responses filed in IPRs
`Nos. 2024-00405, 2024-00407, and 2024-00573, which asserted substantially the same
`art.” According to Patent Owner, “Google had full opportunity to challenge the District's
`Court constructions as expressed in its previous Order and Memo, and did so
`unsuccessfully for select terms.” “Given the foregoing, it is incorrect to characterize the
`constructions advanced in the Preliminary Responses as ‘inconsistent and unforeseeable’.
`Furthermore, it would create inconsistency between the proceedings for Google to request
`the Board to disregard the District Court's Orders and Memo.”
`
`The parties are available for a conference call this week if needed.
`
`Best regards,
`Shawn
`
`Shawn S. Chang | Bio
`Associate
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`271 17th Street, NW, Suite 1400, Atlanta, GA 30363-6209
`+1 404 653 6455 | fax +1 404 653 6444 | shawn.chang@finnegan.com | www.finnegan.com | LinkedIn
`Profile
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