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`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
`GOOGLE LLC
`Petitioner,
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`v.
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`IRON OAK TECHNOLOGIES, LLC,
`Patent Owner.
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`
`___________________________
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`IPR2018-015521
`U.S. Patent No. 5,699,275
`___________________________
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`
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`PATENT OWNER NOTICE OF APPEAL
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`
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`1 Google LLC, who filed a petition in IPR 2019-00110, has joined as a petitioner in this proceeding.
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`Pursuant to 37 C.F.R. § 90.2(a), notice is hereby given that Patent Owner Iron
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`Oak Technologies, LLC (“Iron Oak”) appeals to the United States Court of Appeals
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`for the Federal Circuit all issues ripe for appeal from the Final Written Decision of
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`the Patent Trial and Appeal Board (“PTAB”) entered on February 7, 2020 (Paper
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`29) in Case No. IPR20118-01552, and from all underlying orders, decisions, rulings,
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`and opinions.
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), and without waiver or prejudice,
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`Iron Oak anticipates that the issues on appeal may include, but are not limited to:
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`I.
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`The PTAB’s express and implicit construction of claim terms and
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`phrases, lack of construction of claim terms or phrases, and its
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`determination that the clam terms and phrases in U.S. Patent No.
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`5,699,275 (“the ‘275 patent”) were disclosed by the cited references.
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`II.
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`The PTAB’s determination that Petitioners Samsung Electronics Co.,
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`LTD (“Samsung”) and Google LLC (“Google”) have shown, by a
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`preponderance of the evidence, that claim 1 of the ‘275 patent is
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`determined to be unpatentable under 35 U.S.C. § 102 in light of JP
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`Published Patent Application No. 1993-128022 (“Sugita”.)
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`III. The PTAB’s determination that Petitioners Samsung and Google have
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`shown, by a preponderance of the evidence, that claim 1 of the ‘275
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`patent is determined to be unpatentable under 35 U.S.C. § 103 in light
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`- 1 -
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`of Australian Patent Application No. 77395/91, published May 12,
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`1991 (“Ballard”) in view of JP Published Patent Application No. 05-
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`66937, published Mar. 19, 1993 (“Shimizu”).
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`IV. The PTAB’s retroactive application of inter partes review to the ’275
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`Patent, which issued prior to the Leahy-Smith America Invents Act,
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`Pub. L. No. 112–29, 125 Stat. 284 (2011) (effective September 16,
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`2012).
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`V. Any findings or determinations relating to the foregoing issues, as
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`well as all other issues decided adversely to Iron Oak in any orders,
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`decisions, rulings, or opinions, and all other issues ripe for appeal.
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`Pursuant to 37 C.F.R. § 90.2(a), this Notice of Appeal is being filed with the
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`Director of the United States Patent and Trademark Office as provided in 37 C.F.R.
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`§ 104.2; with the Patent Trial and Appeal Board as provided in 37 C.F.R. § 42.6(b);
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`and with the Clerk’s Office for the United States Court of Appeals for the Federal
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`Circuit as provided in Fed. Cir. R. 15(a)(1) and 25(b)(1), along with payment of the
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`required fee.
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`Date: April 10, 2020
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`Respectfully submitted,
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`By: /Al Deaver/
`Albert B. Deaver, Jr.
`Reg. No. 34,318
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`Lead Counsel for Patent Owner
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`CERTIFICATE OF FILING AND SERVICE
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`I hereby certify that on April 10, 2020 I caused a true and correct copy of the
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`foregoing Patent Owner’s Notice of Appeal to be served via email, as previously
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`agreed by the parties, on the following Counsel for Petitioner:
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`For Samsung:
`Joseph E. Palys, (Reg. No. 46,508) at josephpalys@paulhastings.com
`Naveen Modi (Reg. No. 46,224) at naveenmodi@paulhastings.com
`Phillip W. Citroën (Reg. No. 66,541) at phillipcitroen@paulhastings.com
`Howard Herr
`All at the email alias of PHSamsung-IronOak-IPR@paulhastings.com.
`Paul Hastings LLP
`875 15th St. N.W.
`Washington, D.C., 20005
`Tel.: 202.551.1700
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`For Google:
`Matthew A. Smith (Reg. No. 49,003) at smith@smithbaluch.com
`SMITH BALUCH LLP
`1100 Alma St., Ste. 109
`Menlo Park, CA 94025
`(202) 669-6207
`
`Andrew S. Baluch (Reg. No. 57,503) at baluch@smithbaluch.com
`SMITH BALUCH LLP
`100 M ST SE, Ste 600
`Washington, DC 20003
`(847) 863-1645
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`The undersigned hereby also certifies that in addition to being filed and served
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`electronically through the Board’s E2E System, the foregoing document was filed
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`on April 10, 2020 with the Director of the United States Patent and Trademark Office
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`by way of UPS overnight delivery to:
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`Office of the General Counsel
`U.S. Patent and Trademark Office
`10B20, Madison Building East
`600 Dulany Street
`Alexandria, Virginia 22314
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`The undersigned hereby also certifies that the foregoing document was filed
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`on April 10, 2020 with the Clerk’s Office of the United States Court of Appeals for
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`the Federal Circuit through the court’s Case Management and Electronic Case Files
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`(CM/ECF) system along with the requisite fee. As per Administrative Order 20-01
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`of March 20, 2020, of the Court of Appeals for the Federal Circuit, no paper copies
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`of this document were served to the Court.
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`Respectfully submitted,
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`By: /Al Deaver/
`Albert B. Deaver, Jr.
`Reg. No. 34,318
`Lead Counsel for Patent Owner
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`Date: April 10, 2020
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`- 4 -
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