Case 2:23-cv-00083-RWS-RSP Document 76-8 Filed 07/12/24 Page 1 of 9 PageID #: 931
`Case 2:23-cv-00083-RWS-RSP Document 76-8 Filed 07/12/24 Page 1 of 9 PagelD#: 931
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`EXHIBIT 7
`EXHIBIT 7
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`Case 2:23-cv-00083-RWS-RSP Document 76-8 Filed 07/12/24 Page 1 of 9 PagelD#: 931
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`EXHIBIT 7
`EXHIBIT 7
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`Case 2:23-cv-00083-RWS-RSP Document 76-8 Filed 07/12/24 Page 2 of 9 PageID #: 932
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`
`
`SAMSUNG ELECTRONICS CO., LTD.;
`SAMSUNG ELECTRONICS AMERICA, INC.,
`
`Petitioners,
`
`v.
`
`SLYDE ANALYTICS, LLC,
`
`Patent Owner.
`
`
`
`Patent No. 9,651,922
`Filing Date: December 22, 2011
`Issue Date: May 16, 2017
`
`Inventors: Jörg Hysek and Pascal Pozzo Di Borgo
`Title: WRISTWATCH WITH A TOUCH SCREEN AND
`METHOD FOR DISPLAYING ON A TOUCH-SCREEN WATCH
`
`
`__________________________________________________________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`Case No. IPR2024-00002
`__________________________________________________________________
`
`
`
`
`
`
`
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`Case 2:23-cv-00083-RWS-RSP Document 76-8 Filed 07/12/24 Page 3 of 9 PageID #: 933
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`Claim 24 is an independent claim, which is not rendered obvious by Louch in
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` IPR2024-00002
`PATENT NO. 9,651,922
`
`
`view of Duarte, for at least the same reasons as noted for Ground 1 on which
`
`Petitioner’s Ground 3 relies. Pet. at 48-49.
`
`D. Ground 4: Claim 1 is Not Obvious Over the Combination of
`Louch in view of Park
`Claim 23 is an independent claim, which is not rendered obvious by Louch in
`
`view of Park, for at least the same reasons as noted for Ground 1 on which
`
`Petitioner’s Ground 4 relies. Pet. at 51.
`
`E. Ground 5: Claim 1 is Not Obvious Over the Combination of
`Duarte, Biggs, and Hotelling
`The Petition Does Not Show that the Combination of Duarte,
`1.
`Biggs, and Hotelling Discloses “wherein said processing
`circuit is specifically laid out so as to cause said several
`available cards to scroll past in order to lastingly replace the
`initially displayed card with a replacement card selected
`between said several available cards, wherein each card of said
`several available cards has a distinct fixed or periodically
`refreshed image,” as Required by Claim Element 1[e]
`Claim 1 of the ’922 Patent recites “wherein said processing circuit is
`
`specifically laid out so as to cause said several available cards to scroll past in order
`
`to lastingly replace the initially displayed card with a replacement card selected
`
`between said several available cards, wherein each card of said several available
`
`cards has a distinct fixed or periodically refreshed image.” Petitioner only relies on
`
`Duarte to disclose this claim limitation. Pet. at 59-61.
`
`14
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`
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`Case 2:23-cv-00083-RWS-RSP Document 76-8 Filed 07/12/24 Page 4 of 9 PageID #: 934
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`The Petition does not cite any evidence that Duarte discloses the claimed “said
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` IPR2024-00002
`PATENT NO. 9,651,922
`
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`several available cards to scroll past.” The sole portion of Duarte’s specification
`
`relied on by Petitioner, Ex. 1010, 7:51-56, shows that the display’s focus can move
`
`from window 301B to window 301E. Pet., 60. The Petition does not disclose how
`
`Duarte accomplishes this change in focus. In fact, the specification discloses that
`
`“the user can repeatedly drag windows 301 in a leftward direction to cause windows
`
`301C, 301D, and 301E to successively occupy the central position.” Ex. 1010, 7:60-
`
`63. In another embodiment, the user can click on a partially displayed window to
`
`move it to a central position. Id., 7:63-8:2. Petitioner points to no evidence that
`
`Duarte discloses a scrolling operation that causes “several available cards to scroll
`
`past.”
`
`Additionally, the Petition does not cite evidence that Duarte discloses the
`
`claimed “said several available cards has a distinct fixed or periodically refreshed
`
`image.” With respect to this claim limitation, Petitioner only describes that Duarte’s
`
`windows “show applications or other activities in operation.” Pet., 60-61 (citing Ex.
`
`1010, 7:18-21). However, just because applications or activities are operating does
`
`not automatically imply that images of those applications are refreshed or even that
`
`they have a distinct fixed image associated with them. Notably, Petitioner relies
`
`solely on one sentence of unsupported expert testimony to close the gap between
`
`Duarte’s disclosure and the claimed limitation. See Pet. at 61 (“[t]o reflect the
`
`15
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`
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`Case 2:23-cv-00083-RWS-RSP Document 76-8 Filed 07/12/24 Page 5 of 9 PageID #: 935
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`progress of the activities, windows 301 would be “periodically refreshed”) (citing
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` IPR2024-00002
`PATENT NO. 9,651,922
`
`
`Ex-1002 ¶ 276).
`
`For these reasons, the Petition is deficient because it fails to show that the
`
`combination of Duarte, Biggs, and Hotelling renders obvious claim element 1[e].
`
`2.
`
`The Petition Does Not Show that the Combination of Duarte,
`Biggs, and Hotelling Discloses “wherein the size of the image
`corresponds to the size of said digital matrix display so that the
`displayed card occupies the whole of said digital matrix
`display,” as Required by Claim Element 1[f]
`Claim 1 of the ’922 Patent recites “wherein the size of the image corresponds
`
`to the size of said digital matrix display so that the displayed card occupies the whole
`
`of said digital matrix display.” Petitioner only relies on Duarte to disclose this claim
`
`limitation. Pet. at 61.
`
`In particular, Petitioner relies on only one phrase from Duarte, which discloses
`
`a “full-screen mode.” Id. (citing Ex. 1010, 2:62-63). On its face, Duarte does not
`
`disclose this claim limitation because in Duarte’s “full-screen mode, one activity
`
`occupies substantially an entire display screen” – not the claimed “whole of said
`
`digital matrix display.” Id. (emphasis added).
`
`
`
`Therefore, the Petition is deficient because it fails to show that the
`
`combination of Duarte, Biggs, and Hotelling renders obvious this claim limitation.
`
`16
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`
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`Case 2:23-cv-00083-RWS-RSP Document 76-8 Filed 07/12/24 Page 6 of 9 PageID #: 936
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`to offer a stipulation related to the Fintiv factor 4 analysis is prior to the Board’s
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` IPR2024-00002
`PATENT NO. 9,651,922
`
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`decision of whether to institute review.”) (emphasis added).
`
`X. CONCLUSION
`For the foregoing reasons, Patent Owner respectfully requests that the Board
`
`deny institution of the Petition in its entirety.
`
`
`
`
`Dated: January 17, 2024
`
`
`
`
`
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`
`
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`
`
`
`
`
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`Respectfully submitted,
`
`By:
`
`
`
`/ Peter Lambrianakos
`/
`
`Peter Lambrianakos (Reg. No. 58,279)
`Lead Counsel for Patent Owner
`FABRICANT LLP
`411 Theodore Fremd Avenue,
`Suite 206 South
`Rye, New York 10580
`Tel. 212-257-5797
`Fax. 212-257-5517
`Email: plambrianakos@fabricantllp.com
`
`
`
`31
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`
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`Case 2:23-cv-00083-RWS-RSP Document 76-8 Filed 07/12/24 Page 7 of 9 PageID #: 937
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`CERTIFICATE OF WORD COUNT
`
` IPR2024-00002
`PATENT NO. 9,651,922
`
`
`The undersigned hereby certifies that the portions of the above-captioned
`
`PATENT OWNER’S PRELIMINARY RESPONSE specified in 37 C.F.R. § 42.24
`
`has 6,640 words in compliance with the 14,000 word limit set forth in 37 C.F.R.
`
`§ 42.24. This word count was prepared using Microsoft Word for Office 365.
`
`
`January 17, 2024
`
`
`
`
`
`
`
`
`
`
`By:
`
`
`
`
`
`Respectfully Submitted,
`
`/
`/ Peter Lambrianakos
`
`Peter Lambrianakos (Reg. No. 58,279)
`Lead Counsel for Patent Owner
`FABRICANT LLP
`411 Theodore Fremd Avenue,
`Suite 206 South
`Rye, New York 10580
`Tel. 212-257-5797
`Fax. 212-257-5517
`
`
`
`32
`
`
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`Case 2:23-cv-00083-RWS-RSP Document 76-8 Filed 07/12/24 Page 8 of 9 PageID #: 938
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`CERTIFICATE OF SERVICE
`A copy of PATENT OWNER’S PRELIMINARY RESPONSE and
`
` IPR2024-00002
`PATENT NO. 9,651,922
`
`
`
`
`EXHIBITS 2001 through 2002 have been served on Petitioner’s counsel of record
`
`as follows:
`
`William M. Fink
`E-mail: tfink@omm.com
`O’Melveny & Myers LLP
`1625 Eye Street, NW
`Washington, DC 20006
`
`Benjamin M. Haber
`E-Mail: bhaber@omm.com
`Brian Cook
`E-mail: bcook@omm.com
`Nicholas Whilt
`E-mail: nwhilt@omm.com
`O’Melveny & Myers LLP
`400 South Hope Street, 18th Floor
`Los Angeles, CA 90071
`
`Jeff Baxter
`E-mail: jbaxter@omm.com
`O’Melveny & Myers LLP
`2501 North Harwood Street, Suite 1700
`Dallas, TX 75201
`
`Attorneys for Samsung Electronics Co., Ltd.;
`Samsung Electronics America, Inc.
`
`
`
`
`
`
`
`By:
`
`
`/
`/ Peter Lambrianakos
`
`Peter Lambrianakos (Reg. No. 58,279)
`Lead Counsel for Patent Owner
`FABRICANT LLP
`411 Theodore Fremd Avenue,
`
`
`
`January 17, 2024
`
`
`
`
`
`
`
`
`Case 2:23-cv-00083-RWS-RSP Document 76-8 Filed 07/12/24 Page 9 of 9 PageID #: 939
`
` IPR2024-00002
`PATENT NO. 9,651,922
`
`
`Suite 206 South
`Rye, New York 10580
`Tel. 212-257-5797
`Fax. 212-257-5517
`
`
`
`
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