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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD., and SAMSUNG ELECTRONICS
`AMERICA, INC.,
`Petitioners,
`
`v.
`
`ANCORA TECHNOLOGIES, INC.
`Patent Owner.
`
`
`
`Case No. IPR2020-01184
`U.S. Patent No. 6,411,941
`
`
`
`PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`IPR2020-01184
`
`TABLE OF CONTENTS
`
`I.
`II.
`
`Fintiv Factor 1: Neutral Due to Lack of Evidence on Stay .................. 1
`Fintiv Factor 2: Ancora Unduly Relies on Proximity of the Trial
`Date ....................................................................................................... 1
`III. Fintiv Factor 3: Petitioner Did Not Delay Filing for Strategic
`Advantage and the Court Has Not Invested Significant
`Resources on Invalidity ........................................................................ 3
`IV. Fintiv Factor 4: No Issue Overlap Supports Institution ....................... 4
`V.
`Fintiv Factor 5: Petitioner and Defendant Are the Same Party;
`This Factor is Neutral ........................................................................... 5
`VI. Fintiv Factor 6: Other Considerations .................................................. 5
`VII. Ancora’s Characterization Regarding the Reexamination
`Examiner’s Rejection of Schwartz is Not Correct ............................... 5
`VIII. Ancora’s Characterization of Its Construction of “Memory of
`the BIOS” in the Litigation is Incorrect ............................................... 6
`
`
`
`
`
`
`i
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`IPR2020-01184
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`LIST OF EXHIBITS
`
`U.S. Patent No. 6,411,941 (“’941 Patent’)
`Declaration of Dr. Erez Zadok
`Curriculum Vitae of Dr. Erez Zadok
`Prosecution History of U.S. Patent No. 6,411,941
`U.S. Patent No. 6,153,835 (“Schwartz”)
`Ph.D. Thesis of Bennett Yee, “Using Secure Coprocessors”,
`Carnegie-Mellon University, CMU-CS-94-149 (“Yee”)
`
`U.S. Patent No. 5,935,243 (“Hasebe”)
`U.S. Patent No. 5,852,736 (“Shipman”)
`Plaintiff’s Opening Claim Construction Brief (Corrected), dated April
`9, 2020 in Ancora Technologies, Inc. v. Samsung Electronics Co.,
`Ltd. and Samsung Electronics America, Inc., Case No. 1:20-cv-
`00034-ADA (W.D. Tex.)
`Israel Application No. 124,571, filed May 21, 1998 (“the IL’571
`application”)
`“Final Claim Constructions of the Court”, Claim Construction Order
`dated June 2, 2020 in Ancora Technologies, Inc. v. Samsung
`Electronics Co., Ltd. and Samsung Electronics America, Inc., Case
`No. 1:20-cv-00034-ADA (W.D. Tex.)
`Desktop Management BIOS Specification, Version 2.0, March 6,
`1996 (“DMI Specification”)
`Microsoft Computer Dictionary, 3rd edition (1997)
`Silberschatz, Operating System Concepts, 5th edition (1997)
`Declaration of Dr. S.D. Hall-Ellis
`Curriculum Vitae of Dr. S.D. Hall-Ellis
`Supplemental Order Regarding Court Operations Under the Exigent
`Circumstances Created by the Covid-19 Pandemic, dated June 18,
`2020 (W.D. Tex.)
`Prosecution History for Ex Parte Reexamination of U.S. Patent No.
`6,411,941, filed May 28, 2009, Control No. 90/010,560
`Scheduling Order, dated January 2, 2020, in Ancora Technologies,
`Inc. v. Samsung Electronics Co., Ltd. and Samsung Electronics
`America, Inc., Case No. 6:19-cv-00384 (W.D. Tex.)
`U.S. Patent No. 5,892,900 (“Ginter”)
`
`ii
`
`
`
`Ex. 1001
`Ex. 1002
`Ex. 1003
`Ex. 1004
`Ex. 1005
`Ex. 1006
`
`Ex. 1007
`Ex. 1008
`Ex. 1009
`
`Ex. 1010
`
`Ex. 1011
`
`Ex. 1012
`
`Ex. 1013
`Ex. 1014
`Ex. 1015
`Ex. 1016
`Ex. 1017
`
`Ex. 1018
`
`Ex. 1019
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`Ex. 1020
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`
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`IPR2020-01184
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`Ex. 1021
`Ex. 1022
`
`Ex. 1031
`
`Ex. 1032
`
`U.S. Patent No. 5,748,084 (“Isikoff”)
`DocketNavigator printout on Judge Albright’s case load June 22,
`2020
`Ex. 1023 West Texas Cements Its Place As Patent Hotbed, Law 360 (February
`26, 2020)
`B. Schneier, Applied Cryptography, Second Edition (1996)
`Ex. 1024
`Ex. 1025 W.R. Cheswick et al., Firewalls and Internet Security (1994)
`Ex. 1026
`Intel-28F001BX-B-datasheet.pdf
`Ex. 1027
`U.S. Patent No. 6,009,524 (“Olarig”)
`Ex. 1028
`U.S. Patent No. 5,802,592 (“Chess”)
`Ex. 1029
`U.S. Patent No. 6,138,236 (“Mirov”)
`Ex. 1030
`Supplemental Order Regarding Court Operations Under the Exigent
`Circumstances Created by the Covid-19 Pandemic, dated April 15,
`2020 (W.D. Tex.)
`Supplemental Order Regarding Court Operations Under the Exigent
`Circumstances Created by the Covid-19 Pandemic, dated May 8,
`2020 (W.D. Tex.)
`Order Regarding Court Operations Under the Exigent Circumstances
`Created by the Covid-19 Pandemic, dated March 13, 2020 (W.D.
`Tex.)
`U.S. Patent No. 5,684,951 (“Goldman”)
`U.S. Patent No. 6,189,146 (“Misra”)
`U.S. Patent No. 5,479,639 (“Ewertz”)
`Transcript of June 15, 2020 Telephonic Status Conference in MV3
`Partners, LLC v. Roku, Inc., Case No. W-18-CV308 (W.D. Tex.)
`U.S. Patent No. 6,009,177 (“Sudia”)
`Tenth Supplemental Order Regarding Court Operations Under the
`Exigent Circumstances Created by the COVID-19 Pandemic, United
`States District Court for the Western District of Texas dated
`November 18, 2020
`Fourth Standing Order Relating to Entry Into the United States
`Courthouse Waco, Texas, United States District Court for the
`Western District of Texas dated October 27, 2020
`A. Morris, With Infections ‘Dangerously Rising,' East Texas Federal
`Judge Halts Jury Trials Through March 2021 (November 23, 2020),
`https://www.law.com/texaslawyer/2020/11/23/with-infections-
`dangerously-rising-east-texas-federal-judge-halts-jury-trials-through-
`march-2021/
`
`Ex. 1033
`Ex. 1034
`Ex. 1035
`Ex. 1036
`
`Ex. 1037
`Ex. 1038
`
`Ex. 1039
`
`Ex. 1040
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`iii
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`IPR2020-01184
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`Order, dated November 20, 2020 in Solas OLED Ltd., v. Samsung
`Display Co., Ltd. et al, Case No. 2:19-cv-00152-JRG (E.D. Tex.),
`Dkt. No. 302
`S. Graham, It Will Be Months Before We See the Next Patent Jury
`Trial (November 25, 2020), https://www.law.com/2020/11/25/it-will-
`be-months-before-we-see-the-next-patent-jury-trial/
`Order Transferring Trial Venue, VLSI Technology LLC v. Intel
`Corporation, Case No. 1:19-cv-977-ADA (Lead Case) (W.D. Tex.),
`Dkt. No. 352
`S. McKeown, District Court Trial Dates Tend to Slip After PTAB
`Discretionary Denials (July 24, 2020), https://www.patentspostgrant.
`com/district-court-trial-dates-tend-to-slip-after-ptab-discretionary-
`denials/
`MV3 Partners LLC v. Roku, Inc., 6-18-cv-00308-ADA (W.D. Tex.),
`Dkt. Nos. 51, 271, 301, 306, 308 (collected orders rescheduling trial
`dates)
`Allie Morris, White House says Texas has ‘full resurgence’ of
`COVID-19 and must do more to slow spread, Dallas Morning News
`(Nov. 30, 2020)
`Kathryn Watson, Emily Tillett, Gottlieb says vaccine will likely be
`widely available by middle of 2021, CBS News (Nov. 22, 2020)
`
`Ex. 1041
`
`Ex. 1042
`
`Ex. 1043
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`Ex. 1044
`
`Ex. 1045
`
`Ex. 1046
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`Ex. 1047
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`
`
`
`
`iv
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`IPR2020-01184
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`Pursuant to the Board’s email dated November 19, 2020, Petitioner submits
`
`this Reply to Patent Owner’s Preliminary Response (“POPR) of October 30, 2020.
`
`I.
`Fintiv Factor 1: Neutral Due to Lack of Evidence on Stay
`Petitioner will move to stay the related litigation if institution is granted.
`
`This factor may be neutral because Patent Owner (“Ancora”) points to no specific
`
`evidence in this case of how the district court will rule on the intended motion.
`
`Sand Revolution II, LLC v. Cont’l Intermodal Grp–Trucking LLC, IPR2019-01393,
`
`Paper 24 at 7 (PTAB June 16, 2020) (“Sand”) (informative) (absent specific
`
`evidence for any individual case, the Board will not predict the court’s decision
`
`“based on a variety of circumstances and facts beyond [the Board’s] control and to
`
`which . . . [it] is not privy”); Google LLC et al v. Parus Holdings, Inc., IPR2020-
`
`00846, Paper 9 at 10–12 (PTAB Oct. 21, 2020) (“Parus”) (same).
`
`II.
`Fintiv Factor 2: Ancora Unduly Relies on Proximity of the Trial Date
`Ancora points out that the related litigation trial is scheduled for April 2021,
`
`approximately nine months before the final written decision (“FWD”) is due.
`
`POPR 37. But, even if the related litigation proceeds on schedule and the jury
`
`verdict occurs approximately nine months before the FWD, the related litigation is
`
`expected to continue for another several months until post-trial motions are briefed
`
`and decided. Rule 50(b) motions are generally due 28 days after judgment, Fed. R.
`
`Civ. P. 50(b), and responses and replies are due within 14 days and then 7 days,
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`1
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`IPR2020-01184
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`respectively. Western District of Texas (“WDTX”) L.R. CV-7(e), (f).
`
`The Board, however, has recognized that district court trial dates, including
`
`in the WDTX, are uncertain given the ongoing COVID-19 pandemic. See Parus,
`
`Paper 9 at 14 (“[W]e cannot ignore the substantial uncertainty in the Texas court’s
`
`‘Predicted Jury Selection/Trial’ date and the fact that the scheduled trial date is
`
`nine months from now and much can change during this time.”); Sand, Paper 24 at
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`8–10 (recognizing the uncertainty of scheduled trial dates during the COVID-19
`
`pandemic); Ex. 1038 (Nov. 18, 2020 order postponing all pending WDTX trials);
`
`Ex. 1039 (Oct. 27, 2020 order on entry into US courthouse in Waco, Texas). Covid
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`is currently resurging throughout Texas, which has already seen over 1 million
`
`cases, and any vaccines may not be generally available before the April 2021 trial
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`date (Exs. 1046, 1047).
`
`Chief Judge Gilstrap recently postponed patent trials in the Eastern District
`
`of Texas until March 2021. Exs. 1040, 1041. In the WDTX, Judge Albright will
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`not resume patent jury trials until mid-January 2021. Exs. 1042, 1043. Judge
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`Albright has held only one patent jury trial, and that occurred after delays. Ex.
`
`1045 (setting trial for June 2020, but rescheduling for October 5, 2020, due to
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`pandemic and litigants’ concerns). Thus, that trial did not begin until nearly two
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`years after the complaint was filed.
`
`Judge Albright currently has ten patent cases that are currently scheduled to
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`2
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`IPR2020-01184
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`go to trial before the trial in the related litigation.1 Even under ordinary, non-
`
`pandemic circumstances, trial dates are frequently delayed, as in NHK itself, where
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`following denial of institution, the district court trial date was delayed by six
`
`months and ultimately trailed the FWD deadline (had the Board instituted trial).
`
`Intri-Plex Technologies v. NHK International Corp., 3:17-cv-01097-EMC (N.D.
`
`Cal.) (docket entries 173, 175). Indeed, according to one study, in “70% of trial
`
`dates . . . relied upon by the [Board] to [discretionarily] deny petitions” in view of
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`WDTX litigation, the trial dates were continued after the Board’s denial. Ex. 1044.
`
`III. Fintiv Factor 3: Petitioner Did Not Delay Filing for Strategic
`Advantage and the Court Has Not Invested Significant Resources on
`Invalidity
`Petitioner filed the Petition only three weeks after the district court issued its
`
`
`
`claim construction order. Ex 1012. This was reasonable and efficient in avoiding the
`
`submission of conflicting claim construction positions to the Board, and also reduces
`
`the likelihood of inconsistent claim construction findings. This efficiency does not
`
`prejudice Ancora, as any uncertainty about the claim scope has already been
`
`resolved by the district court.
`
`
`
`No preliminary injunction has been sought and summary judgment motion
`
`
`1 Petitioner has reviewed the trial dates and scheduling orders in Judge Albright’s
`
`docket from public databases and Docket Navigator.
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`
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`3
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`IPR2020-01184
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`filings are nearly two months away. Pet. 69–70. Aside from the Court’s Claim
`
`Construction Order (Ex. 1012), “much of the district court’s investment [would]
`
`relate to ancillary matters untethered to validity itself” by the time of institution.
`
`Sand, at 11.
`
`IV. Fintiv Factor 4: No Issue Overlap Supports Institution
`The issues before the Board would not completely overlap with those before
`
`
`
`the district court because here Petitioner challenges claims 3, 8, and 13–17, which
`
`are not asserted in the related litigation.
`
`Further, if this IPR is instituted, Petitioner stipulates that “the art used in the
`
`grounds in this Petition will not be raised during trial in the related litigation,[]
`
`notwithstanding that such art was part of the Petitioner’s preliminary invalidity
`
`contentions in the litigation.” Pet. 70–71; Sand, at 11–12 (stipulation eliminates the
`
`risk of duplicative efforts and potentially conflicting decisions). Petitioner instead
`
`will rely in court on different references (e.g., Arbaugh and Jablon), and also
`
`stipulates to not rely on the DMI specification. Cf. POPR 43-44. Thus, this factor
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`should weigh against discretionary denial because “the Board proceeding would
`
`not be directly duplicative of the District Court[’s] consideration of validity.”
`
`Oticon Medical AB v. Cochlear Ltd., IPR2019-00975, Paper 15 at 23–24 (PTAB
`
`Oct. 16, 2019) (precedential).
`
`4
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`IPR2020-01184
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`V.
`Fintiv Factor 5: Petitioner and Defendant Are the Same Party; This
`Factor is Neutral
`Petitioner is a defendant in the related litigation. This factor should be neutral
`
`
`
`given the AIA’s goal to provide an alternative forum for questions of patentability.
`
`VI. Fintiv Factor 6: Other Considerations
`Discretionary denial is inappropriate under factor 6 because the Petition
`
`merits institution. In addition, the dispute over the patentability of the ’941 Patent
`
`is not between Petitioner and Ancora alone. The ’941 Patent is currently at issue in
`
`six district court proceedings in four different judicial districts. See Ancora’s
`
`Updated Mandatory Notices, Paper 6 at 2–3 (Oct. 9, 2020). The Board is well-
`
`positioned to resolve the unpatentability issue rather than having multiple courts
`
`and juries reach multiple—potentially inconsistent—decisions.
`
`VII. Ancora’s Characterization Regarding the Reexamination Examiner’s
`Rejection of Schwartz is Not Correct
`Regarding the first (Schwartz-based) ground in the Petition, Ancora asserts
`
`
`
`that the Examiner in the Ex Parte Reexamination did not apply the printed matter
`
`doctrine in rejecting that ground. (POPR 20–21.) This characterization is incorrect.
`
`The Examiner cited “functional descriptive matter” in construing “BIOS” which, in
`
`turn, provided the basis for the Examiner’s rejection. (Ex 1018, at 163–64.) The
`
`Examiner’s reliance of “functional descriptive material” clearly invokes the printed
`
`matter doctrine. See MPEP (version 8, revision 7) § 2106.01. The Federal Circuit,
`
`however, has stated that "the printed matter cases have no factual relevance where
`
`5
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`IPR2020-01184
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`the invention as defined by the claims requires that the information be processed not
`
`by the mind but by a machine, the computer." In re Lowry, 32 F.3d 1579, 1583 (Fed.
`
`Cir. 1994). (Pet. at 63.) Thus, the Examiner’s application of the printed matter
`
`doctrine to reject the Schwartz reference was in error.
`
`
`
`Additionally, Ancora’s POPR impliedly agrees with the Examiner’s
`
`construction by stating that the district court rejected Petitioner’s construction “with
`
`good reason.” (POPR 25.) However, Ancora fails to consider that the Examiner
`
`provided no support for that construction in either the intrinsic or extrinsic evidence.
`
`(Ex. 1018, at 163–64.) And Ancora also fails to provide any support for such a
`
`construction. (POPR 25.) Thus, the Examiner’s construction was erroneous, as noted
`
`in the Petition, and section 325(d) discretion should not be invoked to deny
`
`institution of the Schwartz ground.
`
`VIII. Ancora’s Characterization of Its Construction of “Memory of the
`BIOS” in the Litigation is Incorrect
`Contrary to the POPR, Petitioner did not misrepresent Ancora’s claim
`
`
`
`construction position in the litigation. (POPR 12–13.) Ancora itself stated that
`
`memory “associated with” BIOS is “memory of the BIOS.” In its opening claim
`
`construction brief in the parallel litigation, Ancora stated that any memory
`
`“associated with the computer’s basic input/output system (BIOS)” is memory of
`
`the BIOS (Ex. 1009 at 12.) Ancora argued in the parallel litigation, inconsistent with
`
`its position in the POPR, that mere association of a memory with BIOS renders it to
`
`6
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`
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`IPR2020-01184
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`be “memory of the BIOS.”
`
`
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`The POPR also contains an additional construction of “memory of the BIOS”
`
`that conflicts with Ancora’s POPR claim construction position discussed above. The
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`POPR states that “memory of the BIOS” includes both the BIOS module and any
`
`other physical memory space used by the BIOS as part of its “normal operations.”
`
`(POPR 25.) Ancora, however, provides no intrinsic or extrinsic support for such a
`
`position.
`
`
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`Finally, and more recently in its infringement expert report, Ancora has
`
`asserted yet another inconsistent position regarding the construction of “memory of
`
`the BIOS” in the parallel litigation. Ancora alleges that a specific "verification
`
`structure" is stored in "memory of the BIOS." But the operating system, and not the
`
`BIOS, writes this alleged verification structure into the accused memory. The license
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`record in the verification structure is not created by the BIOS.
`
` Thus, contrary to its POPR, Ancora argues that a license record is in “memory
`
`of the BIOS” even if (i) the BIOS does not create the license record in the memory,
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`and (ii) the BIOS merely accesses the license record after it is created in that memory
`
`by the operating system. (Cf. POPR 25.) The Board should reject Ancora’s
`
`mischaracterizations and varying arguments about the construction of “memory of
`
`the BIOS” and institute the Petition based on the plain and ordinary meaning that
`
`was applied in the Petition.
`
`7
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`
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`IPR2020-01184
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`Respectfully submitted,
`
`
`
`
`
` By: /Anupam Sharma/
`Anupam Sharma (Reg. No. 55,609)
`Peter P. Chen (Reg. No. 39,631)
`Covington & Burling LLP
`3000 El Camino Real
`5 Palo Alto Square, 10th Floor
`Palo Alto, CA 94306
`Phone: (650) 632-4700
`Fax: (650) 632-4800
`
`
`Gregory S. Discher (Reg. No. 42,488)
`Sinan Utku (Reg. No. 39,631)
`Richard L. Rainey (Reg. No. 47,879)
`Covington & Burling LLP
`One CityCenter, 850 Tenth Street, NW
`Washington, DC 20001
`Phone: (202) 662-6000
`Fax: (202) 778-5485
`
`Counsel for Petitioner
`
`Dated: November 30, 2020
`
`
`
`
`
`
`8
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`IPR2020-01184
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. §42.6, I certify that on the date listed below, a copy of
`
`this paper and every exhibit filed with this paper was served on the Patent Owner
`
`by electronic mail to the following counsel of record for the Petition at the
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`following.
`
`Lawrence P. Cogswell III, Ph.D. (Lawrence.Cogswell@hbsr.com)
`
`Timothy J. Meagher (Timothy.Meagher@hbsr.com)
`
`Keith J. Wood (Keith.Wood@hbsr.com)
`
`Dated: November 30, 2020
`
`
`
`Respectfully submitted,
`
`
`
`
` By: /Anupam Sharma/
`Anupam Sharma (Reg. No. 55,609)
`
`Counsel for Petitioner
`
`9
`
`
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