UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________________________
`
`SAMSUNG ELECTRONICS CO., LTD. and
`
`SAMSUNG ELECTRONICS AMERICA, INC.,
`
`Petitioners
`
`v.
`
`ACQIS LLC,
`Patent Owner
`
`____________________
`
`CASE IPR: IPR2021-00668
`____________________
`
`PETITIONERS’ STATEMENT ON PARALLEL PETITIONS
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`_______________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________________________
`
`SAMSUNG ELECTRONICS CO., LTD. and
`
`SAMSUNG ELECTRONICS AMERICA, INC.,
`
`Petitioners
`
`v.
`
`ACQIS LLC,
`Patent Owner
`
`____________________
`
`CASE IPR: IPR2021-00668
`____________________
`
`PETITIONERS’ STATEMENT ON PARALLEL PETITIONS
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`IPR2021-00668
`U.S. Patent No. 9,703,750
`
`Petitioners Samsung Electronics Co. Ltd. and Samsung Electronics America,
`
`Inc. (“Petitioners”) have filed two inter partes review petitions against claims of the
`
`’750 Patent (IPR2021-00604 and IPR2021-00668). Following the Trial Practice
`
`Guide, Petitioners submit this five-page paper to explain why both petitions are
`
`necessary and deserve to be instituted. Patent Trial and Appeal Board Consolidated
`
`Trial Practice Guide, November 2019, at 59-60.
`
`Here, both petitions are necessary for three principal reasons. First, the parties
`
`dispute the priority date of the Challenged Claims of the ’750 Patent. Second,
`
`grounds raised in IPR2021-00604 are based on using a provisional application as a
`
`printed publication, which is also anticipated as being disputed by the PO. Third,
`
`IPR2021-00668 challenges all of the 51 claims of the ’750 Patent, including all of
`
`the 26 claims the PO asserts in litigation. Thus, the Board should institute both of
`
`Petitioners’ petitions. See, e.g., 10X Genomics, Inc. v. Bio-Rad Labs., Inc., IPR2020-
`
`00088 Paper 8, IPR2020-00089 Paper 8 (PTAB Apr. 27, 2020) (PTAB Apr. 27,
`
`2020). But, if the Board only institutes one, Petitioners respectfully request that the
`
`Board institute IPR2021-00604, its top-ranked petition.
`
`I.
`
`Legal Standard
`
`“[T]he Board recognizes that there may be circumstances in which more than
`
`one petition may be necessary, including, for example, when the patent owner has
`
`asserted a large number of claims in litigation or when there is a dispute about
`
`1
`
`
`
`IPR2021-00668
`U.S. Patent No. 9,703,750
`
`priority date requiring arguments under multiple prior art references.” Consolidated
`
`Trial Practice Guide at 59. “In such cases two petitions by a petitioner may be
`
`needed, although this should be rare.” Id.
`
`II.
`
`Reasons Warranting Two Parallel Petitions
`
`This is one of those circumstances that warrants instituting two petitions: PO
`
`has asserted 26 claims in litigation, and the parties dispute those claims’ priority
`
`dates. Further, the grounds presented in both petitions are materially different:
`
`Grounds in IPR2021-00604 either assert the PO’s own prior art, including U.S.
`
`Provisional Application 60/083,886 (“Chu’886”) as a printed publication
`
`(anticipated as being disputed by PO), and grounds based on U.S. Patent No.
`
`8,253,750 (“Huang”) that discloses PCIe bus transactions – the same technology
`
`alleged as infringing the ’750 Patent.
`
`A.
`
`PO Has Asserted a Large Number of Claims Against Petitioners
`in Co-pending Litigation
`PO has asserted Claims 1-7, 10, 11, 21-24, 31-35, 37, 44-50 against
`
`Petitioners in co-pending litigation involving the ’750 Patent—26 claims in all.
`
`EX10_ACQIS Contentions Cover pleading, p. 3. The high number of asserted claims
`
`warrants instituting both petitions against those claims.
`
`2
`
`
`
`IPR2021-00668
`U.S. Patent No. 9,703,750
`
`B.
`
`PO and Petitioners Have a Dispute Over the Priority Date of the
`Challenged Claims
`In its infringement contentions, PO contends that the Challenged Claims of
`
`the ’750 Patent are entitled to the priority of U.S. Provisional Application
`
`60/134,122 and are thus entitled to a priority date of May 14, 1999, the filing date of
`
`that application. EX10_ACQIS Contentions Cover pleading, p. 6. But, in IPR2021-
`
`00604, Petitioners assert that none of the Challenged Claims can have a priority date
`
`any earlier than April 15, 2011. IPR2021-00604, Petition 9-18.
`
`Petitioners Petitions are Materially Different from One Another
`C.
`Different Priority Dates – Both petitions address the Challenged Claims
`
`under different priority dates. IPR2021-00604 assumes that the Challenged Claims
`
`are not entitled to a priority date any earlier than April 15, 2011. The IPR2021-
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`00668 Petition assumes that the Challenged Claims are entitled to PO’s alleged
`
`priority date in 1999.
`
`Different Prior Art – Because of the parties’ priority date dispute, each
`
`petition presents different prior art. The IPR2021-00604 Petition relies on Chu’886
`
`and other PO patents that published before April 15, 2011. Because the PO will
`
`likely dispute that Chu’886 is a printed publication, the IPR2021-00604 Petition also
`
`relies on grounds based on Huang. Huang specifically discloses the technology being
`
`asserted against the Petitioners in the co-pending litigation. EX1014, 22. The
`
`3
`
`
`
`IPR2021-00668
`U.S. Patent No. 9,703,750
`
`IPR2021-00668 Petition, however, relies on references that qualify as prior art even
`
`under PO’s alleged May 14, 1999 priority date.
`
`Different Unpatentability Theories – The IPR2021-00604 Petition contends
`
`that subject matter allegedly incorporated by reference during the priority chain of
`
`the ’750 Patent renders all challenged claims obvious. That same petition asserts
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`grounds based on Huang, which discloses the same technology accused of infringing
`
`the ’750 Patent. The IPR2021-00668 Petition, on the other hand, contends that prior
`
`art in existence before May 14, 1999 renders the Challenged Claims unpatentable.
`
`Thus, each petition presents a different, distinct unpatentability approach.
`
`III. Ranking Petitions
`
`Although Petitioners respectfully submit that the Board should institute both
`
`petitions, Petitioners request that its petitions be considered in the following order:
`
`Rank Petition
`
`Grounds
`
`1
`
`IPR2021-
`00604
`
`Ground 1: Claims 1-7, 10, 11, 21-24, 31-35,
`37, 39, 44-50 obvious over Chu’886 in view of
`Chu’330.
`Ground 2: Claims 25, 27 obvious over
`Chu’886 in view of Chu’330 and Chu’185.
`Ground 3: Claims 1-7, 10, 11, 21-24, 31-35,
`37, 39, 44-50 obvious over Huang in view of
`Chu’330.
`Ground 4: Claims 25, 27 obvious over Huang
`in view of Chu’330 and Chu’185.
`
`Challenged
`Claims
`
`1-7, 10, 11,
`21-25, 27,
`31-35, 37,
`39, and 44-
`50
`
`4
`
`
`
`IPR2021-00668
`U.S. Patent No. 9,703,750
`
`Challenged
`Claims
`1-51
`
`Rank Petition
`
`Grounds
`
`2
`
`IPR2021-
`00668
`
`Ground 1: Claims 1-3, 5, 6, 10, 11, 14-23, 25-
`28, 31-34, 44, 45 obvious over Gulick in view
`of Goodrum.
`Ground 2: Claims 12, 13, 35-43 obvious over
`Gulick in view of Goodrum and Sauber.
`Ground 3: Claims 4, 7-9, 24, 46-50 obvious
`over Gulick in view of Goodrum and McAlear.
`Ground 4: Claim 51 obvious over Gulick in
`view of Goodrum, McAlear and Sauber.
`Ground 5: Claims 29 and 30 obvious over Hart
`in view of Goodrum.
`
`IV. Conclusion
`
`Both of Petitioners petitions are necessary to address the large number of asserted
`
`claims and the parties’ priority date and other disputes. Further, both petitions
`
`present materially distinct grounds with no overlapping prior art references. The
`
`Board should therefore institute both petitions. But if it only institutes one, it should
`
`institute IPR2021-00604.
`
`Dated: March 17, 2021
`
`Respectfully Submitted,
`
` / Gianni Minutoli /
`
`Attorney for Petitioners
`
`5
`
`
`
`IPR2021-00668
`U.S. Patent No. 9,703,750
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies service pursuant to 37 C.F.R. §42.6(e) and
`
`§42.105(b) on the Patent Owner by courier of a copy of this PETITIONERS’
`
`STATEMENT ON PARALLEL PETITIONS at the following correspondence
`
`address of record for U.S. Patent No. 9,703,750:
`
`Cooley LLP
`ATTN: IP Docketing Department
`1299 Pennsylvania Avenue, NW
`Suite 700
`Washington DC 20004
`
`The undersigned also certifies service pursuant to 37 C.F.R. §§42.6(e) and
`
`42.105(b) on Patent Owner’s lead litigation counsel by electronic service of a copy
`
`of this Petition for Inter Partes Review and all Exhibits at the following email
`
`address:
`
`Drew Logan
`Robins Kaplan LLP
`800 Lasalle Ave., Suite 2800
`Minneapolis, MN 55402-2015
`Ldrew@robinskaplan.com
`
`Dated: March 17, 2021
`
`Respectfully Submitted,
`
`/Gianni Minutoli/
`
`Attorney for Petitioners
`
`6
`
`
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