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.
`
`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.107(a)
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`NANOCO TECHNOLOGIES LTD.,
`Patent Owner.
`
`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.107(a)
`
`
`
`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
`
`3.
`
`4.
`
`5.
`
`6.
`
`I.
`II.
`
`TABLE OF CONTENTS
`INTRODUCTION AND SUMMARY OF ARGUMENT .............................. 1
`THE BOARD SHOULD DENY INSTITUTION UNDER 35 U.S.C.
`§314(a) ............................................................................................................. 4
`A.
`All of the factors considered under Fintiv support a
`discretionary denial in order to promote the most efficient and
`fair adjudication of the parties’ dispute. ................................................ 5
`1.
`The district court denied Petitioner’s motion for a stay ............. 5
`2.
`The district court’s trial date will precede the Board’s
`projected statutory deadline for a final written decision
`by approximately seven months.................................................. 6
`The parties have invested significant resources in the
`Parallel Proceeding ................................................................... 10
`There is substantial overlap between the issues raised in
`the petition and in the Parallel Proceeding ............................... 11
`The Petitioner and the Defendant in the Parallel
`Proceeding are the same party .................................................. 13
`Additional circumstances weigh in favor of the Board’s
`exercise of discretion ................................................................ 13
`III. OVERVIEW OF QUANTUM DOTS ........................................................... 15
`IV. OVERVIEW OF NANOPARTICLE SYNTHESIS METHODS ................. 20
`A.
`Nanorods and Nanowires .................................................................... 22
`1.
`Vapor-Liquid-Solid Method ..................................................... 22
`2.
`Solution-Liquid-Solid Method .................................................. 24
`Quantum Dots ...................................................................................... 26
`1.
`The Solid-State Method ............................................................ 26
`
`B.
`
`i
`
`
`
`The Hot-Injection Method ........................................................ 27
`2.
`The Heat-Up Method ................................................................ 29
`3.
`The Molecular Cluster-Assisted Method .................................. 31
`4.
`THE CHALLENGED ’423 PATENT ........................................................... 32
`V.
`VI. CLAIM CONSTRUCTION .......................................................................... 34
`A. Molecular Cluster Compound ............................................................. 34
`VII. THE PETITION SHOULD BE DENIED BECAUSE IT DOES NOT
`ESTABLISH THE REQUIRED REASONABLE LIKELIHOOD OF
`SUCCESS OF PROVING CHALLENGED CLAIMS
`UNPATENTABLE ........................................................................................ 36
`A.
`The Proposed Grounds 1-3: Banin ...................................................... 36
`1.
`Banin Does Not Disclose a Molecular Cluster Compound ...... 36
`2.
`Because Banin Does Not Disclose a Molecular Cluster
`Compound, It Cannot Anticipate or Render Obvious Any
`of the Challenged Patent Claims ............................................... 40
`Grounds 4-6: Zaban in View of Ptatschek .......................................... 42
`1.
`A Person of Skill in the Art Would Not Combine Zaban’s
`Group III-V Quantum Dot Process with Ptatschek’s
`Group II-VI Precursors ............................................................. 42
`A Person of Skill in the Art Would Not Swap Zaban’s
`Zinc Acetate for Ptatschek’s 10-Zinc Precursor Because
`It Would Change the Nature of Zaban’s Quantum Dots .......... 43
`Ground 7: Lucey in View of Ahrenkiel .............................................. 46
`1.
`Lucey Uses the Hot-Injection Method to make Quantum
`Dots, While Ahrenkiel Uses the SLS Method to Make
`Quantum Rods ........................................................................... 46
`Even Replacing Lucey’s Single Precursor with
`Ahrenkiel’s Multiple Precursors Would Not Practice the
`
`B.
`
`2.
`
`2.
`
`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
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`ii
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`C.
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`
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`Case No. IPR2021-00184
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`3.
`
`Claims of the ’423 Patent Because Both of Ahrenkiel’s
`Precursors Provide the Same Ions ............................................ 47
`Lucey’s Expressly Teaches Away from Ahrenkiel’s
`Chlorine-Based Precursors ........................................................ 48
`There Is No Motivation to Combine Lucey and
`Ahrenkiel, and No Reasonable Expectation of Success ........... 49
`VIII. CONCLUSION .............................................................................................. 52
`
`4.
`
`iii
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`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Federal Cases
`Apple Inc., v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (PTAB March 20, 2020) ...................................passim
`Apple Inc. v. Seven Networks, LLC,
`IPR2020-00235, Paper 10 (PTAB July 28, 2020) ............................................ 7, 8
`Apple Inc. v. Fintiv Inc.,
`IPR2020-00019, Paper 15 (PTAB May 13, 2020) ........................................... 7, 9
`
`Google Inc. et al v. AGIS Software Development,
`IPR2020-00870, Paper 16 (PTAB Nov. 25, 2020) ......................................... 9, 12
`Google Inc. et al v. AGIS Software Development,
`IPR2020-00871, Paper 16 (PTAB Nov. 25, 2020) .............................................. 9
`Google Inc. et al v. AGIS Software Development,
`IPR2020-00872, Paper 16 (PTAB Nov. 25, 2020) ............................................... 9
`Google Inc. et al v. AGIS Software Development,
`IPR2020-00873, Paper 16 (PTAB Nov. 25, 2020) ............................................... 9
`In re Fine,
`837 F.2d 1071(Fed. Cir. 1988) ........................................................................... 46
`In re Fritch,
`972 F.2d 1260 (Fed. Cir. 1992) .......................................................................... 46
`Nanoco Technologies Ltd. v. Samsung Electronics Co., Ltd.,
`No. 2:20-cv-00038 (E.D. Tex.) ......................................................................... 4, 5
`NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc.,
`IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) ....................................... 5, 7, 14
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc). ......................................................... 34
`
`iv
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`U.S. Patent No. 7,803,423
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`Sand Revolution II, LLC v. Cont’l Intermodal Grp.-Trucking LLC,
`IPR2019-01393, Paper 24 (PTAB June 16, 2020) ............................................... 7
`Sanofi-Synthelabo v. Apotex, Inc.,
`550 F.3d 1075 (Fed. Cir. 2008) .......................................................................... 46
`Snap, Inc. v. SRK Technology LLC,
`IPR2020-00820, Paper 15 (PTAB Oct. 21, 2020) ................................................ 5
`Sotera Wireless, Inc. v. Masimo Corp.,
`IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) ........................................... 5, 12
`Federal Statutes
`35 U.S.C. § 314(a) ............................................................................................... 7, 14
`35 U.S.C. § 315 ........................................................................................................ 12
`37 CFR § 42.100(b) ................................................................................................. 34
`37 CFR § 42.100(c) .................................................................................................... 6
`37 CFR § 42.24(d) ................................................................................................... 53
`
`v
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`Case No. IPR2021-00184
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`Exhibit
`2001
`2002
`2003
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`2013
`
`2014
`
`TABLE OF EXHIBITS
`
`Description
`Declaration of Michael C. Newman
`Declaration of Thomas H. Wintner
`Declaration of Matthew S. Galica
`Periodic table of the elements, Encyclopaedia Britannica, Inc.,
`available at https://www.britannica.com/science/periodic-table (last
`visited Feb. 23, 2021)
`Samsung Global Newsroom. Quantum Dot Artisan: Dr. Eunjoo Jang,
`Samsung Fellow, November 30, 2017
`ACS Energy Lett. 2020, 5, 1316-1327. “Environmentally Friendly
`InP-Based Quantum Dots for Efficient Wide Color Gamut Displays”
`Wang, F., Dong, A. and Buhro, W.E., Solution–liquid–solid
`synthesis, properties, and applications of one-dimensional colloidal
`semiconductor nanorods and nanowires. Chemical Reviews,
`116(18):10888-10933 (2016)
`Wang, F., et al., Solution− liquid− solid growth of semiconductor
`nanowires. Inorganic chemistry, 45(19):7511-7521 (2006).
`Madkour, L.H., Synthesis Methods For 2D Nanostructured
`Materials, Nanoparticles (NPs), Nanotubes (NTs) and Nanowires
`(NWs). In Nanoelectronic Materials (pp. 393-456). Springer, Cham.
`(2019)
`Mushonga, P., et al., Indium phosphide-based semiconductor
`nanocrystals and their applications. Journal of Nanomaterials, 1-11
`(2012)
`Luo, H., Understanding and controlling defects in quantum confined
`semiconductor systems, Doctoral dissertation, Kansas State
`University (2016).
`Sinatra, L., et al. Methods of synthesizing monodisperse colloidal
`quantum dots. Material Matters, 12:3-7 (2017)
`Pu, Y., et al., Colloidal synthesis of semiconductor quantum dots
`toward large-scale production: a review. Industrial & Engineering
`Chemistry Research, 57(6):1790-1802 (2018)
`Rao, C. N. R.; Gopalakrishnan, J., Chapter 3: Preparative Strategies
`from New Directions in Solid State Chemistry; Cambridge University
`Press: Cambridge, UK (1986)
`
`vi
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`
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`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
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`Exhibit
`2015
`
`2016
`
`2017
`
`2018
`
`2019
`
`2020
`
`2021
`
`2022
`
`2023
`
`2024
`
`2025
`
`Description
`Glossary of Common Wafer Related Terms, BYU Electrical &
`Computer Engineering Integrated Microfabrication Lab, definition of
`degenerate semiconductor, available at
`https://cleanroom.byu.edu/ew_glossary (last visited Feb. 19, 2021)
`October 22, 2006 email between Eunjoo Jang and Nigel Pickett Re:
`Cd free quantum dots
`Weare, W.W., Reed, S.M., Warner, M.G. and Hutchison, J.E.,
`Improved synthesis of small (d core≈ 1.5 nm) phosphine-stabilized
`gold nanoparticles. Journal of the American Chemical
`Society, 122(51):12890-12891 (2000).
`Samsung’s Motion to Stay Pending Inter Partes Review of the
`Asserted Patents in Case 2:20-cv-00038-JRG, filed on November 30,
`2020
`Order denying Samsung’s Motion to Stay Pending Inter Partes
`Review in Case 2:20-cv-00038-JRG, filed on January 8, 2021
`Standing Order Regarding the Novel Coronavirus (Covid-19) for the
`Eastern District of Texas Marshall Division, signed March 3, 2020
`Standing Order Regarding Pretrial Procedures In Civil Cases
`Assigned to Chief District Judge Rodney Gilstrap During the Present
`Covid-19 Pandemic, signed April 20, 2020
`Samsung’s Preliminary Invalidity Contentions and Disclosures
`Pursuant To Patent Rules 3-3 and 3-4 (served November 9, 2020)
`Merriam-Webster Dictionary, online edition. Definition of
`“Halogen”, available at https://www.merriam-
`webster.com/dictionary/halogen (last visited Feb. 23, 2021)
`Illustrated Glossary of Organic Chemistry, UCLA. Illustration of
`Halide, available at
`http://www.chem.ucla.edu/~harding/IGOC/H/halide.html (last
`visited Feb. 23, 2021)
`Mortvinova, N.E., Vinokurov, A.A., Lebedev, O.I., Kuznetsova,
`T.A., and Dorofeev, S.G., Addition of Zn during the phosphine-based
`synthesis of indium phospide quantum dots:doping and surface
`passivation, Beilstein J Nanotechnol. 2015; 6: 1237-1246
`
`vii
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`
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`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
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`Exhibit
`2026
`
`2027
`
`2028
`
`2029
`
`Description
`Samsung’s Proposed Claim Constructions (served December 11,
`2020)
`He, Z., Yang, Y., Liu, J.W. and Yu, S.H., Emerging tellurium
`nanostructures: controllable synthesis and their applications.
`Chemical Society Reviews, 46(10): 2732-2753 (2017)
`INTENTIONALLY LEFT BLANK
`
`Makkar, M. and Viswanatha, R., Frontier challenges in doping
`quantum dots: synthesis and characterization. Rsc
`Advances, 8(39):22103-22112 (2018)
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`viii
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`Case No. IPR2021-00184
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`I.
`
`INTRODUCTION AND SUMMARY OF ARGUMENT
`For at least the following independent reasons, Samsung Electronics Co., Ltd.
`
`and Samsung Electronics America, Inc.’s (collectively, “Samsung” or “Petitioner”)
`
`Petition should be denied institution.
`
`First, the Board should deny institution of the Petition in view of its
`
`precedential NHK and Fintiv decisions because Nanoco Technologies Ltd. (“Patent
`
`Owner” or “Nanoco”) and Petitioner are scheduled to try the validity of the
`
`challenged patent in a district court jury trial seven months before the deadline of a
`
`Final Written Decision in this requested inter partes review. All six Fintiv factors
`
`weigh in favor of denying institution.
`
`Second, Samsung’s Petition fails to establish the required likelihood that it
`
`will prove that any challenged claim of Nanoco’s U.S. Patent No. 7,803,423 (Ex.
`
`1001) (the “’423 patent”) is unpatentable.
`
`First, some background. The ’423 patent claims methods of producing
`
`quantum dots. Quantum dots are man-made semiconductor nanoparticles that can
`
`emit light at very particular wavelengths. Quantum dots were traditionally made of
`
`compounds such as cadmium selenide (CdSe). But cadmium is highly toxic, so there
`
`was a push to create cadmium-free quantum dots out of material such as indium
`
`phosphide (InP). While it is difficult to make any quantum dot in commercially
`
`viable quantities, these problems are compounded when cadmium is not used. The
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`methods claimed by the ’423 patent are useful in making commercial quantities of
`
`quantum dots, including cadmium-free indium phosphide quantum dots.
`
`The claimed method involves creating a quantum dot by using multiple
`
`precursors. Precursors are compounds that contain atoms to be incorporated into the
`
`quantum dot. For example, the ’423 patent claims require a first precursor species
`
`that contains a first ion (such as indium), and a separate second precursor species
`
`that contains a second ion (such as phosphorus), with each precursor providing a
`
`different ion to be incorporated into the growing quantum dot core (such as indium
`
`phosphide). Ex. 1001 (’423 patent) at 4:36-43. An important feature of the invention
`
`is that this conversion takes place in the presence of a molecular cluster compound.
`
`Id. at 4:57-61. A molecular cluster compound is a small cluster of 3 or more metal
`
`or nonmetal atoms and their associated ligands of sufficiently well-defined chemical
`
`structure such that all molecules of the cluster compound possess the same relative
`
`molecular mass. Ex. 1001 at 5:3-9. Thus, for example, molecular clusters are
`
`identical to one another in the same way that one H2O molecule is identical to
`
`another H2O. Id. at 5:10-13
`
`Petitioner’s proposed Grounds 1-3 rely on Banin as a primary reference.
`
`Banin does not disclose a molecular cluster compound. Banin’s alleged “clusters”
`
`are simply melted gold droplets that have up to a 25% variation in their composition,
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`and contain impurities. These metal droplets lack the sufficiently well-defined
`
`chemical structure of a molecular cluster compound. See Section VII.A infra.
`
`Petitioner’s Grounds 4-6 rely on Zaban as a primary reference. While Zaban
`
`makes indium phosphide quantum dots, Petitioner does not even allege that Zaban
`
`uses any “clusters” at all. And the cluster disclosed by the secondary Ptatschek
`
`reference is a precursor for making zinc selenide (ZnSe) and zinc sulfide (ZnS)
`
`quantum dots, not indium phosphide. Moreover, using Ptatschek’s cluster in
`
`combination with Zaban would not work. Zaban very deliberately adds a single zinc
`
`atom to each of its quantum dots. Ptatschek’s zinc-based cluster would result in up
`
`to 10 times the amount of zinc in Zaban’s quantum dots, fundamentally changing
`
`their properties. VII.B infra.
`
`The Petition’s Ground 7 is weaker still. Ground 7 relies upon Lucey as a
`
`primary reference. Petitioner does not allege that Lucey discloses a “first precursor
`
`species containing a first ion and a second precursor species containing a second
`
`ion” as required by all claims. The Ahrenkiel secondary reference that Petitioner
`
`relies upon does not disclose this element either. Ahrenkiel’s two precursors both
`
`provide the same ions. Worse, Ahrenkiel’s precursors have chlorine atoms in them—
`
`expressly what Lucey states should not be used in a precursor. See Section VII.C
`
`infra.
`
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`Because Petitioner’s grounds fail to disclose critical claim elements, and there
`
`is no reason to combine Zaban with Ptatschek or Lucey with Ahrenkiel other than
`
`Petitioner’s improper hindsight effort to assemble portions of divergent references
`
`to create something that might approximate the invention of the ’423 patent, there is
`
`no reasonable likelihood of success that Petitioner will prove any of the challenged
`
`claims are unpatentable, and the Board should thus deny institution.
`
`II.
`
`THE BOARD SHOULD DENY INSTITUTION UNDER 35 U.S.C.
`§314(a)
`The ’423 Patent is owned by Nanoco, a leading pioneer in the development of
`
`nanomaterials and quantum dots for use in TV displays. Nanoco sued Petitioner for
`
`infringement of the ’423 patent in the District Court for the Eastern District of Texas,
`
`captioned Nanoco Technologies Ltd. v. Samsung Electronics Co., Ltd., No. 2:20-cv-
`
`00038 (E.D. Tex.), filed February 14, 2020 (“Parallel Proceeding”). Petition at 69.
`
`In that Parallel Proceeding, Petitioner has raised a plethora of invalidity defenses,
`
`including all of the ones presented in the Petition. Ex. 2022 at 184-199. As Petitioner
`
`concedes, the district court has scheduled a trial to begin in October 2021, more than
`
`seven months before any final written decision deadline will become due in the
`
`requested IPR. Petition at 65. In light of the overlapping invalidity issues presented,
`
`as well as the resources required by both parties in the Parallel Proceeding, a
`
`discretionary denial of the Petition under the Board’s controlling precedent is
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`appropriate. See, e.g., Apple Inc., v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB
`
`Mar. 20, 2020) (precedential) (“Fintiv”); NHK Spring Co., Ltd. v. Intri-Plex Techs.,
`
`Inc., IPR2018-00752, Paper 8 at 20 (PTAB Sept. 12, 2018).1
`
`A.
`
`All of the factors considered under Fintiv support a discretionary
`denial in order to promote the most efficient and fair adjudication
`of the parties’ dispute.
`1.
`The district court denied Petitioner’s motion for a stay
`The first factor favors denying the Petition in light of the earlier-scheduled
`
`district court trial and the district court’s denial of a motion to stay. As noted in
`
`Patent Owner’s Mandatory Notice, both Petitioner and the Patent Owner are
`
`involved in the Parallel Proceeding, filed over a year ago, involving the same patent:
`
`See Nanoco Technologies Ltd. v. Samsung Electronics Co., Ltd., No. 2:20-cv-00038
`
`(E.D. Tex.). Petition at 68. Petitioner discusses Fintiv factor 1 by contending that the
`
`Board “finding the Challenged Claim unpatentable will relieve the district court of
`
`the need to continue with the District Court case,” and that Petitioner would move
`
`to stay the district court proceeding to further promote “simplification.” Id. at 65.
`
`1 See also Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB
`
`Dec. 1, 2020) (precedential); Snap, Inc. v. SRK Technology LLC, IPR2020-00820,
`
`Paper 15 (PTAB Oct. 21, 2020) (precedential).
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`Petitioner brought a motion to stay at the district court, and similarly argued that “[a]
`
`stay would save precious judicial and party resources.” Ex. 2018 at 6.
`
`Petitioner’s arguments about efficiency and simplification are greatly
`
`diminished by the unnecessary duplication and overlap between the grounds
`
`presented in the Petition and the all-inclusive grounds in the invalidity contentions
`
`served in the Parallel Proceeding. See Section II.A.4, infra (discussing the fourth
`
`Fintiv factor). Moreover, since the district court promptly denied Petitioner’s motion
`
`for a stay, this factor weighs in favor of the Board exercising discretion to deny the
`
`Petition. Ex. 2019 at 3.
`
`2.
`
`The district court’s trial date will precede the Board’s
`projected statutory deadline for a final written decision by
`approximately seven months
`Factor two weighs in favor of denying institution, and Petitioner does not
`
`argue otherwise. Petition at 66 (“[T]his factor is neutral or weighs at most only
`
`slightly in favor of PO.”) (emphasis added). Indeed, as Petitioner acknowledges, the
`
`district court has scheduled jury selection for October 4, 2021. Petition at 65; Ex.
`
`1019. This is more than seven months earlier than the projected statutory deadline
`
`for a final written decision of the requested IPR, which would issue sometime in
`
`May 2022. See Ex. 1019; IPR2021-00185 at Paper 4; 37 CFR § 42.100(c).
`
`This factor is nowhere close to being “neutral.” The circumstances here are
`
`even more compelling than those in Fintiv, where the trial was scheduled to begin
`
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`only two months before the final written decision was due, or those of NHK, where
`
`the Board determined that an inter partes review that would not conclude until
`
`almost six months after a district court trial “would be an inefficient use of Board
`
`resources.” See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 13; NHK,
`
`IPR2018-00752, Paper 8 at 20. The circumstances of this proceeding are also the
`
`exact opposite of what Fintiv identified as those in which “the Board may be less
`
`likely to deny institution under 35 U.S.C. § 314(a) based on district court trial
`
`timing,” i.e., where “the district court has set a date after the Board’s deadline to
`
`issue a final written decision.” Fintiv at 3 (emphasis in original).
`
`Despite acknowledging that this factor is not favorable to them, Petitioner
`
`attempts to cast doubt on the anticipated trial date due to the Covid-19 pandemic.
`
`While short-citing to non-precedential Board institution decisions, Petitioner
`
`represents that the Board has recognized that Fintiv factor 2 is diminished by
`
`uncertainties due to the ongoing pandemic. Petition at 64 (citing Apple Inc. v. Seven
`
`Networks, LLC, IPR2020-00235, Paper 10 at 8-9 (PTAB July 28, 2020) and Sand
`
`Revolution II, LLC v. Cont’l Intermodal Grp.-Trucking LLC, IPR2019-01393, Paper
`
`24 at 9-10 (PTAB June 16, 2020)). These cases are inapposite. In both, the Board
`
`relied heavily on the fact that the parties had previously agreed to extend scheduled
`
`dates, including the trial date. See Sand Revolution, IPR2019-01393, Paper 24 at 9-
`
`10 (relying in particular on “the number of times the parties have jointly moved for
`
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`and the district court agreed to extend the scheduling order dates.”); see also Apple,
`
`IPR2020-00235, Paper 10 at 9 (noting the parties’ agreements to move the trial date
`
`while determining that Fintiv factor 2 still weighs in favor of Patent Owner).
`
`Here, there have been no extensions of the trial schedule in the Parallel
`
`Proceeding, nor has Judge Gilstrap indicated that he has any intention of moving the
`
`trial date until after the deadline for a final written decision. In addition to rejecting
`
`Petitioner’s motion to stay in the Parallel Proceeding, Judge Gilstrap issued a
`
`standing order on March 3, 2020 that counsels the parties to come together to
`
`minimize the impact of any potential issues related to Covid-19, including exploring
`
`any “appropriate means to conduct the hearing, trial, or deposition,” such as by
`
`videoconference. Ex. 2020; see also Ex. 2021 (Standing Order Regarding Pretrial
`
`Procedures). Notably, in Google LLC, Samsung Electronics Co., Ltd., and Samsung
`
`Electronics America, Inc. v. AGIS Software Development LLC, which also involved
`
`a parallel proceeding before Judge Gilstrap, the petitioners similarly argued that the
`
`trial date was uncertain, but the Board rejected the argument:
`
`On the record before us at this time, the only persuasive facts that we
`have regarding the proximity of the court’s trial date to the Board’s
`projected statutory deadline for a final written decision is an Order by
`the District Court that sets trial for April 5, 2021, which will require
`“good cause” to be changed, and our projected statutory deadline,
`which would be toward the end of November 2021. While we
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`U.S. Patent No. 7,803,423
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`appreciate that the trial date is susceptible to change if and when the
`District Court determines good cause exists to do so, we decline to
`speculate whether such a contingency will occur. Instead, we must base
`our evaluation on the existing facts supported by the evidence of record.
`This factor, therefore, significantly favors the exercise of discretionary
`denial.
`
`IPR2020-00870, Paper 16 at 11 (PTAB Nov. 25, 2020) (denying institution)
`
`(emphasis in original).2
`
`The outcome should be the same here. The seven month gap between the start
`
`of trial and a final written decision from the Board should control in the absence of
`
`any evidence demonstrating that the trial will be postponed. See Apple, IPR2020-
`
`00019, Paper 15 at 13 (“We generally take courts’ trial schedules at face value absent
`
`some strong evidence to the contrary.”) (emphasis added). Fintiv factor 3 weighs in
`
`favor of the Board exercising its discretion to deny the Petition.
`
`2 The Board offered the same analysis while denying institution of the other IPR
`
`petitions brought by the same petitioners in IPR2020-00871, Paper 16 at 11 (PTAB
`
`Nov. 25, 2020), IPR2020-00872, Paper 16 at 9-10 (PTAB Nov. 25, 2020), and
`
`IPR2020-00873, Paper 16 at 9-10 (PTAB Nov. 25, 2020).
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`Case No. IPR2021-00184
`U.S. Patent No. 7,803,423
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`3.
`
`The parties have invested significant resources in the
`Parallel Proceeding
`The Parallel Proceeding is already well underway. The parties began
`
`producing documents and serving their infringement and invalidity contentions last
`
`year. Ex. 1018. The parties have already substantially completed discovery. Id. Well
`
`before the Board decides whether or not to institute, the parties will have filed and
`
`exchanged claim construction briefs and conducted the Markman hearing, which is
`
`scheduled for March 26, 2021. Id. Moreover, by the time the Board issues its
`
`decision on whether to institute the requested IPR, the parties will have served initial
`
`expert exports, fact discovery will have closed, and dispositive motions will be a
`
`month out. Id. This will require immense time and effort for both sides. Petitioner’s
`
`argument that “[t]he parties and district court will have invested limited resources in
`
`the District Court case” prior to the deadline for the Board’s institution decision,
`
`(Petition at 66), simply does not hold water.
`
`Moreover, while Petitioner applauds its purported efforts to file the Petition
`
`“promptly,” (Petition at 67), it was served concurrently with Petitioner’s invalidity
`
`contentions in the Parallel Proceeding. Petitioner’s statement that “Here, Petitioner
`
`filed its Petition before serving its invalidity contentions,” is untrue or even if
`
`technically true, highly misleading. See Petition at 67. The Petition was filed and
`
`served on the same day that Petitioner served its Invalidity Contentions in the
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`U.S. Patent No. 7,803,423
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`Parallel Proceeding. Compare Petition at Certificate of Service with Ex. 2022 at 204
`
`(Certificate of Service). Given how far along the Parallel Proceeding will be by the
`
`time of an institution decision and the resources both Parties will have to expend
`
`before that time, this factor strongly favors denial.
`
`4.
`
`There is substantial overlap between the issues raised in the
`petition and in the Parallel Proceeding
`Factor four also weighs in favor of denying the Petition. Petitioner does not
`
`deny the nearly complete overlap between the invalidity issues raised in the Petition
`
`and in the Parallel Proceeding. Petition at 67-68. All of the grounds raised in the
`
`Petition are being raised, or are reserved to be raised, in the Parallel Proceeding.
`
`Petitioner notes that it has represented that “if this IPR proceeding is instituted,
`
`[Petitioners] will not pursue invalidity on the same grounds or grounds based on the
`
`same primary references in the District Court case.” Petition at 67. But this is an
`
`empty promise.
`
`Petitioner’s representation that it will forgo pursuing the proposed grounds,
`
`or grounds based on the same primary references if the Board institutes a trial, is
`
`meaningless given that the primary references (Banin, Zabin and Lucey) identified
`
`in the Petition are just two of many references that Petitioner contends, through its
`
`district court invalidity contentions, either anticipate or render obvious the ’423
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`Patent claims. Ex. 2022 at 184-199. Petitioner’s kitchen-sink approach to invalidity
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`U.S. Patent No. 7,803,423
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`in the district court demonstrates that Petitioner intends to litigate validity issues in
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`both forums, no matter what. See, e.g., Google and Samsung, IPR2020-00870, Paper
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`16 at 15-16 (noting that such ambiguously worded “conditional stipulations” that
`
`limit any waiver to the conditional grounds in the petition do not alleviates the
`
`concerns of potential inefficiencies and conflicting decisions).
`
`Petitioner’s proposal gives up far less than the statutory estoppel to which
`
`Petitioner would already be subject after a final written decision. Compare Petition
`
`at 67 (representing that Petitioners will not pursue invalidity on the same grounds
`
`or grounds based on the same primary references in the District Court case”) with
`
`35 U.S.C. § 315 (barring a Petitioner from asserting in district court proceeding that
`
`a claim “is invalid on any ground that the petitioner raised or reasonably could have
`
`raised during that inter partes review”); see also Ex. 1022. Petitioner’s carefully
`
`worded stipulation also falls far short of the standard created by the precedential
`
`Sotera decision, where the Board cited and relied upon a stipulation from the
`
`Petitioner that eliminated any potential overlap with the related district court
`
`litigation. See Sotera, IPR2020-01019, Paper 12 at 18.
`
`Petitioner’s purported efforts to eliminate overlapping invalidity issues are
`
`illusory. And with regard to the Petitioner’s statement that the Board should favor
`
`an institution because the Petition includes challenges to additional claims that are
`
`not asserted in the related district court case,” (Petition at 67), Patent Owner is not
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`going to assert those claims in the Parallel Proceeding, regardless of whether the
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`Board institutes an inter partes review or not. Institution of this Petition would
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`unfairly subject Patent Owner to defending the patent’s validity in two proceedings
`
`at different times and with no coordination between the two. Factor four strongly
`
`favors a denial of the Petition.
`
`5.
`
`The Petitioner and the Defendant in the Parallel Proceeding
`are the same party
`Factor five also weighs in favor of a denial. Petitioner in this proceeding, and
`
`Defendant in the Parallel Proceeding, are the same party: Samsung Electronics Co.,
`
`Ltd. and Samsung Electronics America, Inc. Petition at 68 (“Petitioner here is the
`
`defendant in the District Court case[.]”). Petitioner’s argument that this factor alone
`
`does not control is irrelevant, particularly where every other factor also counsels
`
`against institution.
`
`6.
`
`Additional circumstances weigh in favor of the Board’s
`exercise of discretion
`Factor six also weighs in favor of a denial. The Parties are not strangers to
`
`each other
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