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`Paper No. __
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`GOOGLE LLC,
`SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioners,
`
`v.
`
`MULLEN INDUSTRIES LLC,
`Patent Owner.
`_____________
`
`Case No. IPR2025-00366
`Patent No. 11,234,117
`_____________
`
`PETITIONERS’ NOTICE RANKING PETITIONS
`AND EXPLAINING MATERIAL DIFFERENCES
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`Petitioners are filing three parallel petitions for inter partes review against
`
`U.S. Patent No. 11,234,117 (“the ’117 patent”). Pursuant to the Board’s
`
`Consolidated Trial Practice Guide (November 2019) (“TPG”)1 at 59-60, Petitioners
`
`submit this notice to (1) identify a ranking of the petitions and (2) explain the
`
`differences between the petitions, why issues addressed by the differences are
`
`material, and why the Board should use its discretion to institute all three petitions.
`
`I.
`
`RANKING OF PETITIONS
`Petitioners do not believe a ranking of petitions to be appropriate here, as
`
`there is no duplicative overlap of the same claims across petitions, and the three
`
`petitions are pursued solely for word-count purposes that preclude all claims from
`
`being challenged in a single petition. For example, the petition in IPR2025-00365
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`challenges claims 1-14 and 73-92 and has a word count of 13,992 words, while the
`
`petition in IPR2025-00366 challenges claims 15-41 and has a word count of
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`13,971 words, and the petition in IPR2025-00367 challenges claims 42-72 and has
`
`a word count of 13,890 words. Due to word-count constraints and the different
`
`limitations recited in the different independent claims of the ’117 patent requiring
`
`application of different prior art and arguments, different sets of claims have been
`
`presented separately in the separate petitions. See TPG at 59-61 (permitting
`
`parallel petitions where a large number of claims are asserted).
`
`
`1 https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf?MURL=
`
`1
`
`

`

`The parallel petitions are not unnecessarily duplicative, because they
`
`challenge different independent claims of the ’117 patent, together with their
`
`dependent claims. The parallel petitions will not substantially burden the Board or
`
`the parties because they use overlapping prior-art references in the grounds of
`
`unpatentability, and because the different claims, while directed to different
`
`features of an overall system, include overlapping limitations that have overlapping
`
`unpatentability arguments. Primary references “Sheha” and “Randall” are
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`common to all three petitions, and are applied in various combinations with
`
`secondary references (many of which are common to all three petitions), with the
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`combinations differing to address the different features recited in different claims.
`
`Petitioners only submit three petitions out of necessity. The Board should
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`not exercise discretion to deny any of the petitions. See, e.g., Samsung Elecs. Co.
`
`Ltd. v. Mojo Mobility Inc., IPR2023-01090, Paper 11 at 25-26 (Jan. 11, 2024)
`
`(granting institution and declining to deny a parallel petition where, “in effect, the
`
`two petitions were filed instead of one merely because [PTAB] Rules have page
`
`limit restrictions”).
`
`To the extent ranking is necessary, Petitioners rank the petitions as follows:
`
`Petition
`IPR2025-00365
`IPR2025-00366
`IPR2025-00367
`
`Claims
`1-14, 73-92
`15-41
`42-72
`
`Rank
`1
`2
`3
`
`
`
`2
`
`

`

`II. EXPLANATION OF MATERIAL DIFFERENCES
`IPR2025-00365 challenges independent claims 1 and 73 together with
`
`their dependents (totalling 34 claims). IPR2025-00366 challenges independent
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`claims 15 and 29 together with their dependents (totalling 27 claims). IPR2025-
`
`00367 challenges independent claim 42 together with its dependents (totalling 31
`
`claims). The different independent claims recite different configurations of
`
`elements, calling for application of different combinations of prior-art references.
`
`For example, “Froeberg” is used as a secondary reference as to independent
`
`claim 1; “Smith,” “Degnbol,” “McNulty,” and “De-Vries” are used as secondary
`
`references as to independent claims 15 and 29; while “Darling” and “Futagami”
`
`are used as secondary references as to independent claim 42:
`
`Petition Claims Grounds for Independent Claims
`
`IPR2025-
`00365
`
`IPR2025-
`00366
`
`IPR2025-
`00367
`
`1-14,
`73-92
`
`Claim 1: Sheha+Froeberg
` Randall+Froeberg
`Claim 73: Sheha
` Randall
`15-41 Claim 15: Sheha+Smith
` Randall
`Claim 29: Sheha+Degnbol+McNulty
` Randall+De-Vries
`42-72 Claim 42: Randall+Darling+Futagami
` Sheha+Darling+Futagami
`
`Prior Art for
`Dependent
`Claims
`De-Vries,
`Degnbol,
`Bechtolsheim,
`Boling, Smith
`
`De-Vries,
`Degnbol,
`Bechtolsheim,
`Boling, Wako
`
`De-Vries,
`Degnbol,
`Bechtolsheim,
`Boling, Smith,
`Wako
`
`3
`
`

`

`III. THE BOARD SHOULD INSTITUTE ALL THREE PETITIONS
`The TPG (at 59) recognizes that “more than one petition may be
`
`necessary…when the patent owner has asserted a large number of claims in
`
`litigation.” Here, Patent Owner has asserted all 92 claims of the ’117 patent,
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`including all five independent claims. EX1039 at 1.
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`In addition, the ’117 patent’s claims are long, spanning eight columns of the
`
`patent’s text, and containing over 3,700 words. They recite a multiplicity of
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`limitations that require significant numbers of words to address. As discussed
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`above, the five independent claims have differing limitations requiring different
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`mappings to prior-art combinations. The Board has concluded in prior cases that
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`such circumstances warrant institution of more than one petition. See, e.g., Adobe
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`Inc. v. SynKloud Techs., LLC, IPR2020-01392, Paper 8 at 9 (Mar. 11, 2021) (“[I]t
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`is reasonable to conclude that the length of the claims, and the difference in scope
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`of independent claims 1 and 12, warranted the filing of two petitions.”).
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`As discussed above, the parallel petitions are not unnecessarily duplicative,
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`and will not substantially burden the Board or the parties because they use
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`overlapping prior-art references. Additionally, as the Examiner noted in
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`prosecution, the ’117 patent’s independent claims are “similar to [Patent Owner’s]
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`claims in other patents with small word or small phrase changes” (EX1002 at
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`1503) which are the subject of other IPR petitions recently filed by Petitioners:
`
`4
`
`

`

`’117 Patent
`Claim
`1
`
`15
`
`29
`
`42
`
`73
`
`
`
`Related Patent
`Claim
`’575 patent,
`claim 1
`’283 patent,
`claim 1
`’039 patent,
`claim 1
`’540 patent,
`claim 1
`’418 patent,
`claim 1
`
`Related IPR
`Petition
`IPR2025-00124
`
`IPR2025-00019
`
`IPR2025-00021
`
`IPR2025-00227
`
`IPR2025-00018
`
`Grounds in Both
`Petitions
`Sheha+Froeberg
`Randall+Froeberg
`Sheha+Smith
`Randall
`Sheha+Degnbol+McNulty
`Randall+De-Vries
`Randall+Darling+Futagami
`Sheha+Darling+Futagami
`Sheha
`Randall
`
`Petitioners’ petitions on the ’117 patent’s independent claims present similar
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`grounds relying on the same prior art as in the petitions on the related patent
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`claims. The Board’s familiarity with the issues from the related IPRs on the
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`related patent claims provide a further reason why the parallel petitions on the
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`different ’117 patent claims will not substantially burden the Board.
`
`IV. CONCLUSION
`Petitioners respectfully request that the Board institute all three petitions on
`
`the ’117 patent.
`
`
`Date: 2024-12-30
`
`
`
`Respectfully submitted,
`
`
`/Elisabeth Hunt/
`Elisabeth Hunt, Reg. No. 67,336
`WOLF, GREENFIELD & SACKS, P.C.
`
`5
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`

`

`
`
`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6 (E)(4)
`I certify that on December 30, 2024, I will cause a copy of the foregoing
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`document, including any exhibits filed therewith, to be served via Overnight FedEx
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`at the following correspondence address of record for the patent:
`
`
`
`
`
`
`
`Jeffrey D. Mullen
`2212 Hassinger Lane
`Glenshaw, PA 15116
`
`
`
`
`
`
`/Dara Del Rosario/
`Dara Del Rosario
`Paralegal
`WOLF, GREENFIELD & SACKS, P.C.
`
`
`
`
`Date: December 30, 2024
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`
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