UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS CO., LTD., and
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`SAMSUNG ELECTRONICS AMERICA, INC.,
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`Petitioner,
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`v.
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`ANCORA TECHNOLOGIES, INC.,
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`Patent Owner.
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`Case No. IPR2020-01184
`U.S. Patent No. 6,411,941
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`PATENT OWNER’S SUR-REPLY TO
`PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
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`3291617.v2
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS CO., LTD., and
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`SAMSUNG ELECTRONICS AMERICA, INC.,
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`Petitioner,
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`v.
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`ANCORA TECHNOLOGIES, INC.,
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`Patent Owner.
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`Case No. IPR2020-01184
`U.S. Patent No. 6,411,941
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`PATENT OWNER’S SUR-REPLY TO
`PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
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`3291617.v2
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`Table of Contents
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`Fintiv Factor 2: The scheduled trial date precedes the Board’s projected
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`Fintiv Factor 3: The district court and the parties have invested
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`I.
`Fintiv Factor 1: A stay is unlikely even if IPR were instituted ................... 1
`II.
`statutory deadline for a final written decision ............................................. 2
`III.
`substantially in the district court litigation .................................................. 4
`IV. Fintiv Factor 4: There is substantial overlap between issues raised in the
`Petition and in the district court litigation ................................................... 5
`Fintiv Factor 5: The parties are the same in both proceedings .................... 5
`V.
`VI. Fintiv Factor 6: The Petition merits weigh against institution .................... 6
`VII. The Petition should be denied for failure to meet burden of providing a
`claim construction position of key terms ..................................................... 6
`VIII. Petitioner’s remaining Reply arguments are insubstantial .......................... 7
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`i
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`3291617.v2
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`Case IPR2020-01184
`U.S. Patent No. 6,411,941
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`Cases
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`Table of Authorities
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`Apple Inc. v. Fintiv, Inc., No. IPR2020-00019, Paper 15 ............................... 3
`Continental Intermodal Group-Trucking LLC v. Sand Revolution LLC et al.,
`7:18-cv-00147, (W.D. TX) ......................................................................... 1
`Fintiv Precedential Decision, IPR2020-00019, Paper 11 ............................... 5
`MV3 Partners LLC v. Roku Inc., 6:18-cv-00308, (W.D. TX) ........................ 1
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`Statutes
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`35 U.S.C. § 314(a) .......................................................................................................... 8
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`3291617.v2
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`ii
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`Case IPR2020-01184
`U.S. Patent No. 6,411,941
`Patent Owner’s List of Exhibits
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`Description
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`First Amended Scheduling Order
`July 27, 2020 Telephonic Discovery Hearing
`September 9, 2020 Telephonic Discovery Hearing
`August 19, 2020 Divisional Standing Order Regarding Trials
`in Waco
`MV3 Partners LLC v. Roku Inc., 6:18-cv-00308, (W.D. TX)
`DI 83
`Virus Precautions (https://news.bloomberglaw.com/ip-
`law/busy-ip-judge-albright-holds-first-patent-trial-four-
`takeaways)
`Optis Wireless Technology, LLC et al v. Apple Inc., Case No.
`2:19-CV-00066, DI 483 in the United States District Court for
`the Eastern District of Texas Marshall Division
`Notice of Compliance
`Defendants’ Notice of Compliance
`Standing Order re: Scheduled Hearings re Judge Garcia's
`March 24, 2020 Amended Order
`Plaintiff’s Opening Claim Construction Brief
`Defendants’ Opening Claim Construction Brief
`Plaintiff’s Responsive Claim Construction Brief
`Defendants’ Response Claim Construction Brief
`Plaintiff’s Reply Claim Construction Brief
`Defendants’ Reply Claim Construction Brief
`Parties’ Joint Claim Construction Statement
`Supplemental Claim Construction Order
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`iii
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`Exhibit
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`2001
`2002
`2003
`2004
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`2005
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`2006
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`2007
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`2008
`2009
`2010
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`2011
`2012
`2013
`2014
`2015
`2016
`2017
`2018
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`3291617.v2
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`Case IPR2020-01184
`U.S. Patent No. 6,411,941
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`Description
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`Order Granting Joint Motion to Amend Scheduling Order
`Order Transferring Trial Venue for -00254 Case in VLSI
`Technology LLC v. Intel Corporation, Case 1:19-cv-00977-
`ADA, DI 252, filed November 20, 2020 (W.D. TX)
`Continental Intermodal Group-Trucking LLC v. Sand
`Revolution LLC et al., 7:18-cv-00147, (W.D. TX) (text order
`July 22, 2020)
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`Exhibit
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`2019
`2020
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`2021
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`3291617.v2
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`iv
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`Case IPR2020-01184
`U.S. Patent No. 6,411,941
`Pursuant to the Board’s email dated November 24, 2020, Patent Owner
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`(“Ancora”) submits this Sur-Reply to Petitioner’s Reply (“Reply”) of November
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`30, 2020.
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`I.
`Fintiv Factor 1: A stay is unlikely even if IPR were instituted
`The Reply fails to rebut Ancora’s evidence that a stay is unlikely even if
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`institution were instituted. Petitioner argues that it “will move to stay the related
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`litigation if institution is granted” and that “[t]his factor may be neutral because
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`Patent Owner (“Ancora”) points to no specific evidence in this case of how the
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`district court will rule on the intended motion.” Reply, 1 (emphases added). This is
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`entirely speculative and flatly contradicted by past precedent from Judge Albright,
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`who is presiding over the parallel litigation to this Petition. For example, in MV3
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`Partners LLC v. Roku Inc., 6:18-cv-00308, (W.D. TX) DI 83 (Ex. 2005, 53), Judge
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`Albright declined to even consider a motion to stay when an IPR was instituted
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`after claim construction was fully briefed and shortly before the claim construction
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`hearing—explaining “I'm not going to stay the case based on the IPR institution
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`and we are set for trial.” Id. Here, the parties’ parallel litigation is much further
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`along than was MV3 Partners at the time Judge Albright declined to consider a
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`stay, which strongly suggests that Judge Albright likewise would deny any motion
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`Petitioner may file. POPR, 37. Similarly, in Continental Intermodal Group-
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`Trucking LLC v. Sand Revolution LLC et al., 7:18-cv-00147, (W.D. TX) (text
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`U.S. Patent No. 6,411,941
`order July 22, 2020) (Ex. 2021), Judge Albright denied a stay after an IPR was
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`instituted prior to the start of expert discovery, stating in his order that “staying the
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`case would only further delay its resolution,” and “[d]enying the stay would allow
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`the Parties to obtain a more timely and complete resolution of infringement,
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`invalidity, and damages issues.” This is further evidence Judge Albright will not
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`stay the case even if the Board institutes a trial.
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`II. Fintiv Factor 2: The scheduled trial date precedes the Board’s
`projected statutory deadline for a final written decision
`The Reply fails to rebut Ancora’s evidence that the scheduled trial date
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`precedes by 9 months the Board’s projected statutory deadline for a final written
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`decision (“FWD”). Petitioner states, generically, that COVID-19 is causing delays,
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`without providing any evidence of the likely impact on the particular litigation at
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`issue. Notwithstanding Petitioner’s generic catastrophizing, government
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`institutions continue to perform essential functions. It is well known that district
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`court judges have wide discretion over their courtrooms, and that the response to
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`COVID-19 has been nonuniform, with various degrees of risk tolerance and
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`adaptability, even across Texas. Thus, the most important factor here is that Judge
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`Albright has demonstrated a commitment to continuing to hold jury trials. Indeed,
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`Petitioner omits from its Reply the most telling development on this issue. On
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`November 20, 2020, Judge Albright ordered in another patent case that, “if the
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`U.S. Patent No. 6,411,941
`Austin courthouse does not reopen in time for a January trial,” he would hold the
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`trial in the Waco courthouse, which Judge Albright had “reopened in September
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`2020 and has since successfully conducted three in-person trials.” Ex. 2020, 3. In
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`short, contrary to Petitioner’s speculation, the evidence to date shows that Judge
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`Albright will continue to shepherd the lawsuit to a timely conclusion long before
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`the Board’s projected FWD. Again, the key facts are: Judge Albright has not
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`changed the April 2020 trial date and this Board has not extended deadlines, which
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`means trial in this matter will occur 9 months ahead of the Board’s projected FWD.
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`The Reply invites the Board to indulge in policy-based speculation and
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`armchair quarterbacking, rather than respect the court’s decisions at face value,
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`thereby departing from the guidance to “take courts’ trial schedules at face value
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`absent some strong evidence to the contrary.” Apple Inc. v. Fintiv, Inc., No.
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`IPR2020-00019, Paper 15, 12-13 (PTAB May 13, 2020) (informative). Petitioner
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`thus provides zero evidence, much less “strong evidence,” to demonstrate that the
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`trial will not proceed as scheduled or that post-trial briefing will extend over 9
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`months. To the contrary, Ancora understands that post-trial briefing will not take
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`more than a few weeks.
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`U.S. Patent No. 6,411,941
`III. Fintiv Factor 3: The district court and the parties have invested
`substantially in the district court litigation
`The Reply fails to rebut Ancora’s evidence that the district court and the
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`parties have invested substantially in the district court litigation. In its Reply,
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`Petitioner asserts that the court has not invested significant resources on invalidity.
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`This is simply not true. Petitioner served four separate expert reports relating to
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`invalidity on November 20, 2020. Ancora’s rebuttals to those reports are due
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`December 18, 2020. Thus, due to Petitioner’s decision to delay filing its Petition,
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`Ancora and its experts will have spent considerable time and resources analyzing
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`and responding to Petitioner’s Invalidity Contentions and invalidity reports long
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`before the Board’s deadline to issue its institution decision, much less its FWD.
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`Even this shortcoming understates the issue, which is the extent of the court’s (and
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`parties’) investment in the litigation as a whole. Due to Petitioner’s delay, that
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`investment has been and continues to be considerable. POPR, 41-42. Petitioner
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`does not dispute the extent of investment in the litigation.
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`Further, Petitioner admits intentionally waiting to file its Petition until after
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`the Markman ruling, showing that Petitioner understands how important claim
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`construction (“CC”) is for the Petition. Petitioner essentially admits strategically
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`using the parallel litigation for purposes of its future IPR petition. Petitioner,
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`hoping for a favorable CC, caused the district court and Ancora to invest
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`U.S. Patent No. 6,411,941
`significantly in CC, while planning all along to file the Petition and ask for a stay.
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`Once Petitioner's plan failed when the Court’s Markman ruling sided with Ancora,
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`Petitioner then failed to advance CC in the Petition altogether. POPR, 1, 10-12, 14-
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`17. Petitioner freely elected to invest significantly in the parallel litigation—it
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`should not be allowed to turn its back to that litigation now by disclaiming the
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`investments the parties and the district court have made and are currently making.
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`IV. Fintiv Factor 4: There is substantial overlap between issues raised
`in the Petition and in the district court litigation
`The Reply fails to rebut Ancora’s evidence of a substantial overlap in issues.
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`The Reply restates its old offer to stipulate to removal of the cited grounds if
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`instituted and further offers to stipulate to removal of the DMI specification (Ex.
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`1012). Such stipulations deliberately sidestep the elephant in the room: Petitioner’s
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`co-defendants, LG Electronics Inc. and LG Electronics U.S.A., Inc., who remain
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`free to pursue invalidity on the pending grounds, notwithstanding the “stipulation.”
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`Furthermore, Petitioner continues to ignore its burden to show “the non-
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`overlapping claims differ significantly in some way” or that “it would be harmed if
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`institution of the non-overlapping claims is denied.” Fintiv Precedential Decision,
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`IPR2020-00019, Paper 11, 6; POPR, 44.
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`V. Fintiv Factor 5: The parties are the same in both proceedings
`The Reply fails to rebut Ancora’s evidence that this factor is neutral.
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`U.S. Patent No. 6,411,941
`VI. Fintiv Factor 6: The Petition merits weigh against institution
`The Reply fails to rebut Ancora’s evidence that the merits of the Petition
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`weigh against institution. Petitioner observes that the ’941 Patent is currently at
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`issue in six district court proceedings in four different judicial districts. This
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`observation is simply irrelevant to the matter of merit, on which the Petition is
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`woefully deficient, and Petitioner does not rebut, except to attempt belatedly to
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`remedy its deliberate failure to provide a CC position, as addressed further below.
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`VII. The Petition should be denied for failure to meet burden of
`providing a claim construction position of key terms
`Before the district court, Petitioner advocated for one CC of the term
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`“memory of the BIOS”; before this Board, Petitioner bases its invalidity arguments
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`on the opposite construction, which it falsely attributes to Ancora, and in any event
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`disagrees with—all without explanation. POPR, 15-17. Denial of the Petition is
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`warranted on this ground alone. Petitioner admits waiting to file the Petition
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`(Reply, 3) until after the district court issued its CC Order (Ex. 1011). Such delay
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`demonstrates that Petitioner understands the importance of CC for the Petition. But
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`notwithstanding the supposed importance of the district court’s CC decision,
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`Petitioner then fails to advance any CC for the key term in the Petition altogether.
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`Even worse, the Reply attempts to distract from the strategic failure of its Petition
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`to provide necessary CC positions. In contrast with Petitioner, Ancora has been
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`U.S. Patent No. 6,411,941
`consistent in its CC positions. POPR, 13. More significantly, Petitioner’s
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`accusations are a red herring, because it is the Petitioner’s duty to present this
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`Board with what Petitioner believes to be correct claim constructions of dispositive
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`claim terms. Petitioner has failed to do this and neither stated its construction of the
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`term “memory of the BIOS” nor explained how that construction is to be applied to
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`the Board’s analysis of the proffered prior art. POPR 15-17. The Board should
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`reject Petitioner’s transparent attempt at a second bite at the claim construction
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`apple. The Reply only underscores the extent of its gamesmanship.
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`VIII. Petitioner’s remaining Reply arguments are insubstantial
`Petitioner’s arguments regarding the “printed matter” doctrine are irrelevant.
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`The Examiner in the Ex Parte Reexamination defined “BIOS” as “the set of
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`essential software routines that test hardware at startup, starts the operating system,
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`and supports the transfer of data among hardware devices” (Ex. 1018, 163-64) and
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`such construction of “BIOS” is consistent with the district court’s final CC for the
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`same term (Ex. 1011, 2) and is not erroneous. Petitioner’s arguments are attempts
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`to distract the Board with an esoteric question about “printed matter.” No question
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`has ever been raised with regard to patentable weight of the claim terms, meaning
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`the Examiner had no reason to consider the printed matter doctrine. Petitioner’s CC
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`arguments render even more egregious Petitioner’s failure to provide the Board
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`with CC guidance.
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`Case IPR2020-01184
`U.S. Patent No. 6,411,941
`Respectfully submitted this 7th day of December, 2020.
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`/Lawrence P. Cogswell, III, Ph.D., 71,441/
`Lawrence P. Cogswell III, Ph.D.
`Lead Counsel
`Reg. No. 71,441
`Hamilton, Brook, Smith & Reynolds, P.C.
`155 Seaport Blvd.
`Boston, Massachusetts 02210
`Phone: (617) 607-5900
`Fax: (978) 341-0136
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`Timothy J. Meagher
`Back-up Counsel
`Reg. No. 39,302
`Hamilton, Brook, Smith & Reynolds, P.C.
`530 Virginia Road
`Concord, Massachusetts 01742
`Phone: (617) 607-5900
`Fax: (978) 341-0136
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`Keith J. Wood
`Second Back-up Counsel
`Reg. No. 45,235
`Hamilton, Brook, Smith & Reynolds, P.C.
`155 Seaport Blvd.
`Boston, Massachusetts 02210
`Phone: (617) 607-5900
`Fax: (978) 341-0136
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`Attorneys for Patent Owner
`Ancora Technologies, Inc.
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`Case IPR2020-01184
`U.S. Patent No. 6,411,941
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e), I hereby certify that on December 7, 2020, the
`foregoing Patent Owner’s Sur-Reply to Petitioner’s Reply to Patent Owner’s
`Preliminary Response, List of Exhibits, and Exhibits referred to herein are
`being served electronically by agreement of the parties at the following email
`address:
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`Samsung-Ancora-IPR@cov.com
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`/Lawrence P. Cogswell, III, Ph.D., 71,441/
`Lawrence P. Cogswell III, Ph.D.
`Reg. No. 71,441
`Hamilton, Brook, Smith & Reynolds, P.C.
`155 Seaport Blvd.
`Boston, Massachusetts 02210
`Phone: (617) 607-5900
`Fax: (978) 341-0136
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`Attorney for Patent Owner
`Ancora Technologies, Inc.
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`3291617.v2
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