`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MICROSOFT CORPORATION and HP INC.
`Petitioners,
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`v.
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`SYNKLOUD TECHNOLOGIES, LLC,
`Patent Owner.
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`________________________
`Inter Partes Review No. IPR2021-00174
`U.S. Patent No. 7,870,225
`________________________
`PETITIONERS’ EXPLANATION REGARDING THE NECESSITY FOR
`MULTIPLE PETITIONS
`________________________
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`I. INTRODUCTION
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`Petitioners have filed two petitions challenging U.S. Patent No. 7,870,225 to
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`Kim (“the 225 Patent”), both of which are principally based on the same prior art
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`and largely include substantively identical analysis. Two petitions were required
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`because the analysis of all 22 claims of the 225 Patent could not reasonably fit
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`within the word limit for a single petition. In considering how best to divide the
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`analysis between the petitions, Petitioners determined that addressing claim 1 (the
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`only independent claim) and dependent claims 5-12 in one petition, and claim 1,
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`and dependent claims 2-4 and 13-22 in a separate petition, was the most efficient
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`path forward. Petitioners observe, however, that the analysis of claim 1 in each
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`petition is the same, such that the Board need only address that analysis once. That
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`claim 1 analysis is included in both petitions solely to support the analysis of
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`different dependent claims addressed in the different petitions.
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`The Board has found that a Petitioner may file multiple petitions against a
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`single patent when, for example, the asserted claims in the litigation are uncertain
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`and where petitions rely on the same prior art. See, e.g., Microsoft Corp. v. IPA
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`Techs. Inc., IPR2019-00810, Paper 12 at 11-16 (Oct. 16, 2019). The Board further
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`observed that “any duplication of effort that may place unnecessary burdens on the
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`parties and the Board may be avoided or reduced by consolidating the instituted
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`1
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`IPRs (if institution of review is granted in more than one proceeding), including
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`consolidating the parties’ briefing, motion practice, and the oral hearings. Id. at
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`15.
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`Petitioners made this decision to file two petitions given the length of the
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`claims and its assessment it could not reasonably fits its analysis in fewer petitions,
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`and based on certain distinctions between the scope of claims challenged. For
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`example, claims 18-22 disclose a “filter program” and functions performed by such
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`a program while claims 6-12 primarily disclose device driver functions and disk
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`characteristics. By analyzing the most similar independent and dependent claims
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`in separate petitions, Petitioners have presented the analysis in the most efficient
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`manner while maintaining appropriate word count limits.
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`In addition, Petitioners have challenged all 22 claims of the 225 Patent
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`because they do not know, at this time, which claims would be asserted against
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`Petitioner HP Inc. (“HP”) in district court. For example, HP was served with a
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`complaint alleging infringement of the 225 Patent on November 12, 2019. The
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`complaint asserts that HP infringes at least claim 1, and that it reserves the right to
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`assert additional claims. Thus, HP does not know which claims, other than claim
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`1, Patent Owner will assert against it in district court litigation, thus supporting the
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`need to challenge all the claims of the 225 patent. See, e.g., id. at 14 (finding that
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`2
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`Petitioner had provided “a reasoned explanation” for filing multiple petitions
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`where Petitioner was “in the position of not knowing which claims…Patent Owner
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`would assert against Petitioner in district court litigation.”)
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`Further, pursuant to the Trial Practice Guide recommendations, Petitioners
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`identify the following sections as the sections that are substantively identical across
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`the two petitions, and again note that claim 1 is the only independent claim of the
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`225 Patent:
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`IPR2021-00174
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`Introduction
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`IPR2021-00175
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`Introduction
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`Compliance with the Requirements for
`a Petition for Inter Partes Review
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`The 225 Patent
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`Principal Prior Art
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`Patentability Analysis
`A. 1. Claim 1
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`Compliance with the Requirements for
`a Petition for Inter Partes Review
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`The 225 Patent
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`Principal Prior Art
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`Patentability Analysis
`A. 1. Claim 1
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`Finally, Petitioners recognize that the recent amendments to the Trial
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`Practice Guide state that a petitioner filing multiple petitions against the same
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`patent “should” identify “a ranking of the petitions in order in which [the
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`petitioner] wishes the Board to consider the merits.” See pgs. 59-60. Petitioners
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`3
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`respectfully suggest that doing so here would be somewhat anomalous. This is not
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`a situation where the petitions challenge the same claims on different prior art
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`bases. The basic prior art analysis of the independent claims is identical in both
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`petitions. Thus, a comparison of the strengths and weaknesses between the two
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`petitions, which would be necessary to determine a preference, would seem to be a
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`nonsensical exercise in these unique circumstances.
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`Accordingly, given the structure of the claims of the 225 Patent, and the
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`differences in claims addressed in IPR2021-00174 and IPR2021-00175, Petitioners
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`respectfully requests that the Board consider and institute Inter Partes reviews on
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`both petitions. Nevertheless, to the extent the Board deems it necessary to only
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`consider a single petition, Petitioners rank IPR2021-00174 ahead of IPR2021-
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`00175.
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`Dated: November 11, 2020
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`Respectfully submitted,
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`/Joseph A. Micallef/
`Joseph A. Micallef
`Reg. No. 39,772
`SIDLEY AUSTIN LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`jmicallef@sidley.com
`Attorney for Petitioners
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`4
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`CERTIFICATE OF SERVICE
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`I hereby certify that on November 11, 2020, a copy of the Petitioners’
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`Explanation Regarding The Necessity For Multiple Petitions, and exhibits thereto,
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`has been served in its entirety on the patent owner and counsel for patent owner,
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`via Federal Express, at the following:
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`Rothwell, Figg, Ernst & Manbeck P.C.
`607 14th Street N.W.
`Suite 800
`Washington, DC 20005
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`Synkloud Technologies, LLC
`124 Broadkill Road, #415
`Milton, DE 19968
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`David S. Eagle
`Sean M. Brennecke
`919 Market Street, Suite 1000
`Wilmington, DE 19801
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`Dr. Gregory J. Gonsalves
`Capitol IP Law Group, PLLC
`1918 18th St, Unit 4, NW
`Washington, DC 20009
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`Dated: November 11, 2020
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`Respectfully submitted,
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`/Joseph A. Micallef/
`Joseph A. Micallef
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`5
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