UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`LG ELECTRONICS INC. AND LG ELECTRONICS USA, INC.,
`Petitioners,
`
`v.
`
`IMAGE PROCESSING TECHNOLOGIES, LLC
`Patent Owner.
`
`____________
`
`Case IPR2023-00104
`U.S. Patent No. 6,959,293
`
`____________
`
`PATENT OWNER IMAGE PROCESSING TECHNOLOGIES, LLC’S
`PRELIMINARY SUR-REPLY
`
`
`
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`LG ELECTRONICS INC. AND LG ELECTRONICS USA, INC.,
`Petitioners,
`
`v.
`
`IMAGE PROCESSING TECHNOLOGIES, LLC
`Patent Owner.
`
`____________
`
`Case IPR2023-00104
`U.S. Patent No. 6,959,293
`
`____________
`
`PATENT OWNER IMAGE PROCESSING TECHNOLOGIES, LLC’S
`PRELIMINARY SUR-REPLY
`
`
`
`
`
`
`
`Patent Owner’s Preliminary Sur-Reply
`IPR2023-00104 (U.S. Patent No. 6,959,293)
`
`
`TABLE OF CONTENTS
`
`I.
`
`The Office Has Repeatedly Considered The Pirim References in
`Relation to Claim 1 of the ’293 Patent ............................................................ 1
`
`II.
`
`U.S. Patent No. 5,546,475 (“Bolle,” Ex-1019) Is Cumulative ........................ 3
`
`III. The Office Has Not Erred in the Multiple Earlier Proceedings
`Regarding Claim 1 ........................................................................................... 4
`
`IV. This Board Need Not Credit Petitioners’ Prognostication of the
`District Court Proceedings ............................................................................... 4
`
`
`
`
`
`i
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`
`
`Patent Owner’s Preliminary Sur-Reply
`IPR2023-00104 (U.S. Patent No. 6,959,293)
`
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Page(s)
`
`Cisco Sys., Inc. v. Estech Sys., Inc.,
`Case No. IPR2021-00333, Paper No. 12, 2021 Pat. App. LEXIS 4508
`(P.T.A.B. July 7, 2021) ......................................................................................... 5
`
`Cisco Sys., Inc. v. Oyster Optics, LLC,
`Case No. IPR2021-00238, Paper No. 10, 2021 Pat. App. LEXIS 4508
`(P.T.A.B. July 7, 2021) ......................................................................................... 5
`
`Global Tel*Link Corp. v. HLFIP Holding, Inc.,
`Case No. IPR2021-00444, Paper No. 14, 2021 Pat. App. LEXIS 4463
`(P.T.A.B. July 22, 2021) ....................................................................................... 5
`
`LG Display Co. v. Solas OLED Ltd.,
`Case No. IPR2020-01238, Paper No. 10, 2021 Pat. App. LEXIS 3238
`(P.T.A.B. Jan. 22, 2021) ....................................................................................... 5
`
`Teso LT, UAB v. Luminati Networks Ltd.,
`Case No. IPR2021-00249, Paper No. 12, 2021 Pat. App. LEXIS 3245
`(P.T.A.B. June 2, 2021) ........................................................................................ 5
`
`
`
`ii
`
`
`
`Patent Owner’s Preliminary Sur-Reply
`IPR2023-00104 (U.S. Patent No. 6,959,293)
`
`
`Petitioners offer nothing but attorney argument in their Reply to Patent
`
`Owner’s Preliminary Response (Paper No. 8) and variously:
`
`•
`
`•
`
`•
`
`misstate the record of the U.S. Patent & Trademark Office’s (“the
`Office”) multiple and detailed reviews of the validity of claim 1 of U.S.
`Patent No. 6,959,293 (“the ’293 Patent”);
`
`misrepresent Patent Owner’s arguments
`Preliminary Response; and
`
`in
`
`the Patent Owner
`
`misinterpret the consequence of the District Court’s denial of their
`Motion to Stay the parallel litigation.
`
`Petitioners’ Reply simply re-argues positions that Patent Owner has already rebutted
`
`in its Preliminary Response. The Board should deny institution of Inter Partes
`
`Review (“IPR”) of claim 1 of the ’293 Patent.
`
`I.
`
`THE OFFICE HAS REPEATEDLY CONSIDERED THE PIRIM
`REFERENCES IN RELATION TO CLAIM 1 OF THE ’293 PATENT
`
`Petitioners continue to assert that their “Petition presents new arguments and
`
`art.” (Paper No. 8 at 1.) But that assertion is belied by their previous admissions.
`
`Grounds 1 and 2 of Petitioners’ Petition rely on (1) Pirim1, and (2) Pirim 2.2 (Paper
`
`No. 1 at 4.) Petitioners confess that both Pirim and Pirim 2 were of record during
`
`original prosecution of claim 1 of the ’293 Patent. As they wrote in their Petition:
`
`
`1 WIPO International Publication No. WO 99/36893 (Ex-1018).
`
`2 PCT Application Serial No. PCT/EP98/05383 (Ex-1021).
`
`1
`
`
`
`Patent Owner’s Preliminary Sur-Reply
`IPR2023-00104 (U.S. Patent No. 6,959,293)
`
`
`During the original prosecution, Pirim was of record . . . .
`
`Additionally, [Pirim 2], discussed further in Part VII.A.2, below) was
`of record . . . .
`
`(Paper No. 1 at 4 (emphases added) (citations omitted).) In other words, Petitioners
`
`concede that their Petition does not present new art.
`
`Unable to argue that their Petition actually presents any new art, Petitioners
`
`are forced to assert that they have discovered two previously unrecognized details—
`
`details that Petitioners allege escaped even their own counsel at O’Melveny & Myers
`
`LLP when that firm represented Samsung in the ’336 IPR and ’056 EPR. (See Paper
`
`No. 6 at 13 n.3.) First, Petitioners assert that Pirim incorporates Pirim 2. Second,
`
`they assert that Pirim 2 allegedly contains invalidating disclosures of the “common
`
`parameter” requirement.
`
`As Patent Owner has already explained, the extent of any incorporation of
`
`Pirim 2 in Pirim (if any) is irrelevant in these circumstances. (Paper No. 6 at 5–6.)
`
`If Pirim incorporates Pirim 2 today as Petitioners assert, then Pirim has always
`
`incorporated Pirim 2 and the Office has considered Pirim 2 every time it previously
`
`considered Pirim in the process of confirming the validity of claim 1 of the
`
`’293 Patent. (Id.) Alternatively, if Pirim does not incorporate Pirim 2 as Petitioners
`
`claim, then Pirim 2 is irrelevant to either their anticipation (Ground 1) or
`
`single-reference-obviousness (Ground 2) theories. (Id. at 5.)
`
`2
`
`
`
`Patent Owner’s Preliminary Sur-Reply
`IPR2023-00104 (U.S. Patent No. 6,959,293)
`
`
`Petitioners misrepresent Patent Owner’s arguments when they assert that
`
`Patent Owner “does not dispute the merits of [Pirim 2] . . . .” (Paper No. 8 at 1.)
`
`Patent Owner does indeed dispute that Pirim 2 discloses the “common parameter”
`
`requirement. Indeed, the Office previously and repeatedly confirmed the validity of
`
`claim 1 of the ’293 Patent over Pirim and Pirim 2.
`
`Petitioners’ litigation-driven arguments castigating the Office’s prior work
`
`confirming the validity of claim 1 of the ’293 Patent do not justify instituting an IPR.
`
`The mere fact that Petitioners disagree with the Office’s apparent (and repeated)
`
`views that claim 1 of the ’293 Patent is valid over Pirim 2 does not mean that “the
`
`substance of it [Pirim 2] has never been addressed.” (Contra Paper No. 8 at 1.)
`
`Rather, it means that Petitioners’ argument has been rejected. The Board need not
`
`institute IPR just to write up its prior conclusions to Petitioners’ liking.
`
`II. U.S. PATENT NO. 5,546,475 (“BOLLE,” EX-1019) IS CUMULATIVE
`
`Petitioners reiterate their view that “Hirota is not the same as or cumulative
`
`of Bolle.” (Paper No. 8 at 2 (quoting Paper No. 1 at 24).) That conclusory statement
`
`does not disprove that “Bolle’s disclosure and operation is substantially the same as
`
`Hirota,” as Patent Owner explained in its Patent Owner Preliminary Response.
`
`(Paper No. 6 at 23.) Nor does Petitioners’ attorney argument change the fact that
`
`Bolle is also cumulative of Siegel. (Paper No. 6 at 25.) The Petition simply parades
`
`3
`
`
`
`Patent Owner’s Preliminary Sur-Reply
`IPR2023-00104 (U.S. Patent No. 6,959,293)
`
`the same argument and theories that the Office has previously rejected on multiple
`
`occasions. Nothing has changed.
`
`III. THE OFFICE HAS NOT ERRED IN THE MULTIPLE EARLIER
`PROCEEDINGS REGARDING CLAIM 1
`
`Next, Petitioners resort to asserting that the Office erred in confirming the
`
`validity of claim 1 of the ’293 Patent three times. Patent Owner respectfully submits
`
`that is simply not plausible on its face. Petitioners would have this Board conclude
`
`that the Office has erroneously confirmed the validity of claim 1 of the ’293 Patent
`
`three times, despite vociferous arguments from seasoned advocates incentivized to
`
`invalidate the claim.3 Enough is enough. The Board should deny another review
`
`of claim 1, especially without any actual new art or arguments.
`
`IV. THIS
`PETITIONERS’
`CREDIT
`NOT
`NEED
`BOARD
`PROGNOSTICATION OF THE DISTRICT COURT PROCEEDINGS
`
`While Petitioners accurately quote the District Court’s Order denying their
`
`Motion to Stay as stating that their Motion was “denied without prejudice as
`
`
`3 Notably, in the previous IPR, Samsung did not even argue that Pirim 2 discloses
`
`the “common parameter” requirement. Petitioners—represented by the same
`
`counsel as Samsung was—now claim that Pirim 2 discloses the missing link?
`
`Petitioners’ argument is simply illogical and inconsistent with their counsel’s own
`
`prior work.
`
`4
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`
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`Patent Owner’s Preliminary Sur-Reply
`IPR2023-00104 (U.S. Patent No. 6,959,293)
`
`premature,” (Paper No. 8 at 5 (quoting Ex-2016)), they carefully omit quotation
`
`marks around their own assessment that the Court’s decision was “only because the
`
`IPR is not yet instituted.” (Id.) To the contrary, the District Court did not indicate
`
`that the “only” reason Petitioners’ Motion to Stay was denied was because this Board
`
`has not instituted an IPR.
`
`Petitioners predictably prognosticate that “[t]he litigation will likely be stayed
`
`upon institution.” (Paper No. 8 at 5.) While Petitioners speculate on whether the
`
`district court will grant a stay, this Board has declined to do so. E.g., Global
`
`Tel*Link Corp. v. HLFIP Holding, Inc., Case No. IPR2021-00444, Paper No. 14,
`
`2021 Pat. App. LEXIS 4463, at *16 (P.T.A.B. July 22, 2021); Cisco Sys., Inc. v.
`
`Estech Sys., Inc., Case No. IPR2021-00333, Paper No. 12, 2021 Pat. App. LEXIS
`
`4508, at *9 (P.T.A.B. July 7, 2021); Teso LT, UAB v. Luminati Networks Ltd., Case
`
`No. IPR2021-00249, Paper No. 12, 2021 Pat. App. LEXIS 3245, at *8 (P.T.A.B.
`
`June 2, 2021); Cisco Sys., Inc. v. Oyster Optics, LLC, Case No. IPR2021-00238,
`
`Paper No. 10, 2021 Pat. App. LEXIS 3132, at *11 (P.T.A.B. June 1, 2021); LG
`
`Display Co. v. Solas OLED Ltd., Case No. IPR2020-01238, Paper No. 10, 2021 Pat.
`
`App. LEXIS 3238, at *6 (P.T.A.B. Jan. 22, 2021).
`
`Dated: March 15, 2023
`
`
`
`Respectfully submitted,
`By: /S/ Michael E. Shanahan
`Michael E. Shanahan
`Registration No. 43,914
`Lead Counsel for Patent Owner
`
`
`
`5
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`Patent Owner’s Preliminary Sur-Reply
`IPR2023-00104 (U.S. Patent No. 6,959,293)
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that on March 15, 2023, I
`
`electronically filed the foregoing document and served a copy of the same on counsel
`
`for Petitioner at the following e-mail address, as authorized in the Petition:
`
`LGIPT@omm.com.
`
`Benjamin Haber (Reg. No. 67,129)
`O’Melveny & Myers LLP
`400 S. Hope Street, 18th Floor
`Los Angeles, CA 90071
`bhaber@omm.com
`
`
`
`
`
`Dated: March 15, 2023
`
`
`
`Clarence A. Rowland
`(Reg. No. 73,775)
`O’Melveny & Myers LLP
`400 S. Hope Street, 18th Floor
`Los Angeles, CA 90071
`crowland@omm.com
`
`William M. Fink (Reg. No. 72,332),
`O’Melveny & Myers LLP
`1625 I Street NW
`Washington, D.C. 20006
`tfink@omm.com
`
`
`By: /S/ Michael E. Shanahan
`Michael E. Shanahan
`
`
`
`
`6
`
`
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