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`Paper No. __
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
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`GOOGLE LLC,
`SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioners,
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`v.
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`MULLEN INDUSTRIES LLC,
`Patent Owner.
`_____________
`
`Case No. IPR2025-00367
`Patent No. 11,234,117
`_____________
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`PETITIONERS’ NOTICE RANKING PETITIONS
`AND EXPLAINING MATERIAL DIFFERENCES
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`Petitioners are filing three parallel petitions for inter partes review against
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`U.S. Patent No. 11,234,117 (“the ’117 patent”). Pursuant to the Board’s
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`Consolidated Trial Practice Guide (November 2019) (“TPG”)1 at 59-60, Petitioners
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`submit this notice to (1) identify a ranking of the petitions and (2) explain the
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`differences between the petitions, why issues addressed by the differences are
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`material, and why the Board should use its discretion to institute all three petitions.
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`I.
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`RANKING OF PETITIONS
`Petitioners do not believe a ranking of petitions to be appropriate here, as
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`there is no duplicative overlap of the same claims across petitions, and the three
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`petitions are pursued solely for word-count purposes that preclude all claims from
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`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
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`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
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`a word count of 13,890 words. Due to word-count constraints and the different
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`limitations recited in the different independent claims of the ’117 patent requiring
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`application of different prior art and arguments, different sets of claims have been
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`presented separately in the separate petitions. See TPG at 59-61 (permitting
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`parallel petitions where a large number of claims are asserted).
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`1 https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf?MURL=
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`1
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`The parallel petitions are not unnecessarily duplicative, because they
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`challenge different independent claims of the ’117 patent, together with their
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`dependent claims. The parallel petitions will not substantially burden the Board or
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`the parties because they use overlapping prior-art references in the grounds of
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`unpatentability, and because the different claims, while directed to different
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`features of an overall system, include overlapping limitations that have overlapping
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`unpatentability arguments. Primary references “Sheha” and “Randall” are
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`common to all three petitions, and are applied in various combinations with
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`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.
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`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.
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`Ltd. v. Mojo Mobility Inc., IPR2023-01090, Paper 11 at 25-26 (Jan. 11, 2024)
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`(granting institution and declining to deny a parallel petition where, “in effect, the
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`two petitions were filed instead of one merely because [PTAB] Rules have page
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`limit restrictions”).
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`To the extent ranking is necessary, Petitioners rank the petitions as follows:
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`Petition
`IPR2025-00365
`IPR2025-00366
`IPR2025-00367
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`Claims
`1-14, 73-92
`15-41
`42-72
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`Rank
`1
`2
`3
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`2
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`II. EXPLANATION OF MATERIAL DIFFERENCES
`IPR2025-00365 challenges independent claims 1 and 73 together with
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`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-
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`00367 challenges independent claim 42 together with its dependents (totalling 31
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`claims). The different independent claims recite different configurations of
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`elements, calling for application of different combinations of prior-art references.
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`For example, “Froeberg” is used as a secondary reference as to independent
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`claim 1; “Smith,” “Degnbol,” “McNulty,” and “De-Vries” are used as secondary
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`references as to independent claims 15 and 29; while “Darling” and “Futagami”
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`are used as secondary references as to independent claim 42:
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`Petition Claims Grounds for Independent Claims
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`IPR2025-
`00365
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`IPR2025-
`00366
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`IPR2025-
`00367
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`1-14,
`73-92
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`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
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`Prior Art for
`Dependent
`Claims
`De-Vries,
`Degnbol,
`Bechtolsheim,
`Boling, Smith
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`De-Vries,
`Degnbol,
`Bechtolsheim,
`Boling, Wako
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`De-Vries,
`Degnbol,
`Bechtolsheim,
`Boling, Smith,
`Wako
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`3
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`III. THE BOARD SHOULD INSTITUTE ALL THREE PETITIONS
`The TPG (at 59) recognizes that “more than one petition may be
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`necessary…when the patent owner has asserted a large number of claims in
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`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
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`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:
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`4
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`’117 Patent
`Claim
`1
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`15
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`29
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`42
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`73
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`Related Patent
`Claim
`’575 patent,
`claim 1
`’283 patent,
`claim 1
`’039 patent,
`claim 1
`’540 patent,
`claim 1
`’418 patent,
`claim 1
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`Related IPR
`Petition
`IPR2025-00124
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`IPR2025-00019
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`IPR2025-00021
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`IPR2025-00227
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`IPR2025-00018
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`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
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`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.
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`IV. CONCLUSION
`Petitioners respectfully request that the Board institute all three petitions on
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`the ’117 patent.
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`Date: 2024-12-30
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`Respectfully submitted,
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`/Elisabeth Hunt/
`Elisabeth Hunt, Reg. No. 67,336
`WOLF, GREENFIELD & SACKS, P.C.
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`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:
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`Jeffrey D. Mullen
`2212 Hassinger Lane
`Glenshaw, PA 15116
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`/Dara Del Rosario/
`Dara Del Rosario
`Paralegal
`WOLF, GREENFIELD & SACKS, P.C.
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`Date: December 30, 2024
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