UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner
`
`v.
`
`NANOCO TECHNOLOGIES LTD.,
`Patent Owner
`
`
`U.S. PATENT NO. 7,803,423
`
`Case No. IPR2021-00184
`
`
`PETITIONER’S REQUEST FOR ORAL HEARING
`
`
`
`
`
`
`
`
`
`
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner
`
`v.
`
`NANOCO TECHNOLOGIES LTD.,
`Patent Owner
`
`
`U.S. PATENT NO. 7,803,423
`
`Case No. IPR2021-00184
`
`
`PETITIONER’S REQUEST FOR ORAL HEARING
`
`
`
`
`
`
`
`
`
`
`
`IPR2021-00184: Petitioner’s Request for Oral Hearing
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`Pursuant to 37 C.F.R. § 42.70(a), Petitioners Samsung Electronics Co, Ltd.
`
`and Samsung Electronics America, Inc. (collectively, “Petitioner”) respectfully
`
`request oral argument. The oral argument is presently scheduled for February 23,
`
`2022. Paper 18. The issues to be argued with respect to IPR2021-00184 include the
`
`following:
`
`(i) Whether claims 1-3, 10-11, 13, and 22-24 of U.S. Patent No.
`7,803,423 are anticipated by Banin;
`(ii) Whether claims 1-6, 10-14, and 21-25 of U.S. Patent No. 7,803,423
`are rendered obvious by Banin;
`(iii) Whether claims 7-9 of U.S. Patent No. 7,803,423 are rendered
`obvious by the combination of Banin and Bawendi;
`(iv) Whether claims 1, 10-16, and 21-24 of U.S. Patent No. 7,803,423 are
`rendered obvious by the combination of Zaban and Ptatschek;
`(v) Whether claims 4-6 and 25 of U.S. Patent No. 7,803,423 are rendered
`obvious by the combination of Zaban, Ptatschek, and Yu;
`(vi) Whether claims 7-9 of U.S. Patent No. 7,803,423 are rendered
`obvious by the combination of Zaban, Ptatschek, and Bawendi;
`(vii) Whether claims 1, 4, 11-16, 21, and 25 of U.S. Patent No. 7,803,423
`are rendered obvious by the combination of Lucey and Ahrenkiel;
`(viii) Procedural and evidentiary issues raised, e.g., in Motions to Strike or
`Exclude;
`(ix) Any additional issues on which the Board seeks information or
`clarification.
`Petitioner requests that the argument in this proceeding be consolidated with
`
`and heard at the same time as the arguments in three other proceedings involving the
`
`same parties currently scheduled for the same day: IPR2021-00183, -00185, and -
`
`
`
`1
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`
`
`IPR2021-00184: Petitioner’s Request for Oral Hearing
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`00186. The patents at issue in these four proceedings relate to similar technology,
`
`preparing nanoparticles, and three of the four patents are in the same family.
`
`Petitioner’s challenges to the validity of these patents is also based on the same prior
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`art and similar grounds in each of IPR2021-00183, -00184, -00185, and -00186, and
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`Patent Owner’s arguments in response to Petitioner’s challenges are similar in each
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`proceeding. A consolidated hearing in these proceedings would minimize repetitive
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`argument and lead to an efficient presentation of the evidence and argument. Due
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`to the number of challenged claims and grounds in each proceeding, and the number
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`of issues Patent Owner raises in response, Petitioner requests that each party be
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`allowed a total of ninety (90) minutes for its arguments in that consolidated
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`proceeding, with the opportunity to reserve a portion of that time for rebuttal.
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`Petitioner conferred with Patent Owner prior to filing this request, and while the
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`parties are in agreement regarding consolidating argument on IPR2021-00183, -
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`00184, -00185, and -00186, the parties could not reach agreement regarding the time
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`for the consolidated argument.
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`Petitioner also requests that the consolidated hearing for IPR2021-00183, -
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`00184, -00185, and -00186 be combined with the hearing for IPR2021-00182, which
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`involves the same parties and has been scheduled for the same day. Petitioner
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`conferred with Patent Owner, and the parties are in agreement that argument for
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`IPR2021-00182 should be combined with the consolidated hearing on IPR2021-
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`
`
`2
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`IPR2021-00184: Petitioner’s Request for Oral Hearing
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`00183, -00184, -00185, and -00186, and that the parties should each have thirty (30)
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`minutes per side for argument regarding IPR2021-00182.
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`In total, Petitioner requests a total of one hundred and twenty (120) minutes
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`per side for argument in the five proceedings involving the same parties scheduled
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`for the same day, with each side allocated thirty (30) minutes of the argument time
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`for IPR2021-00182 and ninety (90) minutes of the argument time for the
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`consolidated hearing on proceedings IPR2021-00183, -00184, -00185, and -00186.
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`Petitioner requests the services of a court reporter to transcribe the proceeding,
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`with one transcript for the combined argument on IPR2021-00182, -00183, -00184,
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`-00185, and -00186. Petitioner understands that the oral hearing will be remote, but
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`if not, Petitioner requests the use of audio-visual equipment to assist its arguments
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`and to display its demonstrative exhibits, including a computer-connectable
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`projector, an ELMO, and a screen.
`
`
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`3
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`IPR2021-00184: Petitioner’s Request for Oral Hearing
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`
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`Dated: January 6, 2022
`
`Gregory S. Arovas, P.C. (No. 38,818)
`Stefan Miller (No. 57,623)
`KIRKLAND & ELLIS LLP
`601 Lexington Avenue
`New York, NY 10022
`P: 212.446.4800; F: 212.446.4900
`greg.arovas@kirkland.com
`stefan.miller@kirkland.com
`
`
`
`
`
`Respectfully submitted,
`
`/s/ F. Christopher Mizzo, P.C.
`F. Christopher Mizzo, P.C. (No. 73,156)
`W. Todd Baker (No. 45,265)
`Stephen C. DeSalvo (pro hac vice)
`KIRKLAND & ELLIS LLP
`1301 Pennsylvania Ave., N.W.
`Washington, D.C. 20004
`P: 202.389.5000; F: 202.389.5200
`chris.mizzo@kirkland.com
`todd.baker@kirkland.com
`stephen.desalvo@kirkland.com
`
`Attorneys For Petitioner Samsung
`Electronics Co., Ltd. and Samsung
`Electronics America, Inc.
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`4
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`
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`IPR2021-00186: Petitioner’s Request for Oral Hearing
`
`
`CERTIFICATE OF SERVICE
`The undersigned certifies that the above-captioned “PETITIONER’S
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`REQUEST FOR ORAL HEARING” was served in its entirety on January 6, 2022,
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`via electronic service on lead and back-up counsel, as consented to by the parties:
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`NanocoIPRs@mintz.com
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`WAMeunier@mintz.com
`
`PJCuomo@mintz.com
`
`MCNewman@mintz.com
`
`TWintner@mintz.com
`
`MSGalica@mintz.com
`
`/s/ F. Christopher Mizzo, P.C.
`F. Christopher Mizzo, P.C.
`
`5
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