Trials@uspto.gov Paper 4
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
` ZOPHONOS INC,
`Patent Owner.
`____________
`
`IPR2026-00083
`Patent 10,656,906
`____________
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`Mailed: November 17, 2025
`
`Before Andrew Kellogg, Deputy Chief Clerk, Trials
`
`NOTICE OF FILING DATE ACCORDED TO PETITION
`AND
`TIME FOR FILING PATENT OWNER PRELIMINARY RESPONSE
`
`The petition for inter partes review filed in the above proceeding has
`been accorded the filing date of November 3, 2025.
`Patent Owner may file a preliminary response to the petition no later
`than three months from the date of this notice. The preliminary response is
`limited to setting forth the reasons why the requested review should not be
`instituted. Patent Owner may also file an election to waive the preliminary
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`IPR2026-00083
`Patent 10,656,906
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`response to expedite the proceeding. For more information, please consult
`the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012),
`which is available on the Board Web site at http://www.uspto.gov/PTAB.
`Patent Owner is advised of the requirement to submit mandatory
`notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of
`the petition. Mandatory notices include identifying any other judicial or
`administrative matter that would affect, or be affected by, a decision in the
`proceeding. 37 C.F.R. § 42.8(b)(2). Such administrative matters include
`requests for certificates of correction.
`The parties are encouraged to use the heading on the first page of this
`Notice for all future filings in the proceeding.
`In general, all represented parties must designate a lead counsel and at
`least one back-up counsel, and lead counsel must be a registered practitioner.
`37 C.F.R. § 42.10(a). The Board, however, may permit a party to proceed
`without back-up counsel upon a showing of good cause, so long as lead
`counsel is a registered practitioner. Id. Once a party has designated a
`registered practitioner as lead counsel pursuant to 37 C.F.R. § 42.10(a) and
`filed a power of attorney for lead counsel if required by 37 C.F.R.
`§ 42.10(b), that party is authorized to file a motion seeking leave to proceed
`without back-up counsel. Such a motion shall not be filed earlier than 21
`days after service of the petition, which is the time for filing patent owner
`mandatory notices. A party that files such a motion need not designate
`back-up counsel unless and until its motion to proceed without back-up
`counsel is denied. The parties are advised that the types of good cause
`sufficient to permit a party to proceed without back-up counsel are limited.
`See Expanding Opportunities To Appeal Before the Patent Trial and Appeal
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`IPR2026-00083
`Patent 10,656,906
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`Board, 89 C.F.R. 82172, 82174 (Oct. 10, 2024), which is available at
`https://www.federalregister.gov/d/2024-23319. The parties are also advised
`that permission to proceed without back-up counsel may be revoked at the
`Board’s discretion at any time during a proceeding. See id. For example,
`permission to proceed without back-up counsel may be revoked if the
`absence of back-up counsel causes scheduling problems or impedes Board
`proceedings. See id.
`Once a party has designated a registered practitioner as lead counsel
`pursuant to 37 C.F.R. § 42.10(a) and filed a power of attorney for lead
`counsel if required by 37 C.F.R. § 42.10(b), that party is also authorized to
`file one or more motions for pro hac vice recognition of back-up counsel
`pursuant to 37 C.F.R. § 42.10(c)(1) and/or one or more notices of intent to
`designate a provisionally recognized PTAB attorney as back-up counsel
`pursuant to 37 C.F.R. § 42.10(c)(2). A motion or notice seeking pro hac
`vice recognition shall not be filed earlier than 21 days after service of the
`petition, which is the time for filing patent owner mandatory notices.
`A motion for pro hac vice recognition filed pursuant to 37 C.F.R.
`§ 42.10(c)(1) shall be accompanied by the fee set forth in 37 C.F.R.
`§ 42.15(e). Such motion must:
`a. Contain a statement of facts showing there is good cause for the
`Board to recognize counsel pro hac vice during the proceeding; and
`b. Be accompanied by an affidavit or declaration in which the
`individual seeking pro hac vice recognition attests to the following:
`i. Membership in good standing of the Bar of at least one State
`or the District of Columbia;
`ii. No suspensions or disbarments from practice before any
`court or administrative body;
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`IPR2026-00083
`Patent 10,656,906
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`iii. No application for admission to practice before any court or
`administrative body ever denied;
`iv. No sanctions or contempt citations ever imposed by any
`court or administrative body;
`v. The individual seeking to appear has read and will comply
`with the Office Patent Trial Practice Guide and the Board's
`Rules of Practice for Trials set forth in 37 CFR part 42;
`vi. The individual will be subject to the USPTO Rules of
`Professional Conduct set forth in 37 CFR 11.101 et seq. and
`disciplinary jurisdiction under 37 CFR 11.19(a);
`vii. All other proceedings before the Office for which the
`individual has applied to appear pro hac vice in the last three
`years; and
`viii. Familiarity with the subject matter at issue in the
`proceeding.1
`If the affiant or declarant is unable to provide any of the information
`requested above or make the required statements or representations under
`oath, the individual must provide a full explanation of the circumstances as
`part of the affidavit or declaration. A party must also file a power of
`attorney for the person seeking pro hac vice recognition pursuant to 37
`C.F.R. § 42.10(b).
`A notice of intent to designate a provisionally recognized PTAB
`attorney as back-up counsel filed pursuant to 37 C.F.R. § 42.10(c)(2) must:
`
`1 The type of familiarity referenced in the Board’s rules regarding pro hac
`vice admission is legal familiarity; technical familiarity, though expected, is
`not required. See Expanding Opportunities To Appear Before the Patent
`Trial and Appeal Board, 89 F.R. 82172, 82175 (Oct. 10, 2024); 37 C.F.R.
`§ 42.10(c)(1).
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`(a) Identify the registered practitioner who will serve as lead counsel;
`(b) Identify the most recent prior proceeding in which the person
`seeking to appear was recognized pro hac vice by order of the
`Patent Trial and Appeal Board pursuant to a motion of the type
`described in 37 C.F.R. § 42.10(c)(1); and
`(c) Be accompanied by Certification in the form of an affidavit or
`declaration in which the individual seeking pro hac vice
`recognition attests to the following:
`i. Membership in good standing of the Bar of at least one State
`or the District of Columbia;
`ii. No suspensions or disbarments from practice before any
`court or administrative body;
`iii. No application for admission to practice before any court or
`administrative body ever denied;
`iv. No sanctions or contempt citations ever imposed by any
`court or administrative body;
`v. The individual seeking to appear has read and will comply
`with the Office Patent Trial Practice Guide and the Board's
`Rules of Practice for Trials set forth in 37 CFR part 42;
`vi. The individual will be subject to the USPTO Rules of
`Professional Conduct set forth in 37 CFR 11.101 et seq. and
`disciplinary jurisdiction under 37 CFR 11.19(a);
`vii. All other proceedings before the Office for which the
`individual has applied to appear pro hac vice in the last three
`years; and
`viii. Familiarity with the subject matter at issue in the
`proceeding.
`The Certification should be a separate document that is filed as an exhibit.
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`If the affiant or declarant is unable to provide the information
`requested above or make the required statements or representations under
`oath, or if the affiant or declarant does not qualify as a provisionally
`recognized PTAB attorney pursuant to 37 C.F.R. § 42.10(c)(2), the
`procedure set forth in 37 C.F.R. § 42.10(c)(2) is not available, and pro hac
`vice recognition may only be obtained via the process set forth in 37 C.F.R.
`§ 42.10(c)(1). See 37 C.F.R. § 42.10(c)(2)(iv). A party must also file a
`power of attorney for the person seeking pro hac vice recognition pursuant
`to 37 C.F.R. § 42.10(b). Pro hac vice recognition will not be effective until
`the party files an updated mandatory notice after the expiration of the
`applicable time period (5 or 10 days) set forth in 37 C.F.R. § 42.10(c)(2)(iii).
`The parties are also reminded that unless otherwise permitted by 37
`C.F.R. § 42.6(b)(2), all filings in this proceeding must be made
`electronically in the Patent Trial Appeal Case Tracking System (P-TACTS),
`accessible from the Board Web site at http://www.uspto.gov/PTAB.
`To file documents, users must first obtain a user ID by registering with
`MyUSPTO. Information regarding how to register with MyUSPTO and use
`P-TACTS is available at the Board Web site at
`https://www.uspto.gov/patents/ptab/patent-trial-and-appeal-case-tracking-
`system-p-tacts.
`The parties may request a conference call as needed. An email
`requesting a conference call with the Board shall: (a) copy all parties, (b)
`indicate generally the relief being requested or the subject matter of the
`conference call, (c) include multiple times when all parties are available, (d)
`state whether the opposing party opposes any relief requested, and (e) if
`opposed, either certify that the parties have met and conferred telephonically
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`IPR2026-00083
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`or in person in an attempt to reach agreement, or explain why such meet and
`confer did not occur. If a party is unable to include any of the above
`information, the party shall explain in the email why doing so was not
`possible. The email may not contain substantive argument and, unless
`otherwise authorized, may not include attachments. See Trial Practice Guide
`at 9–10. If practicable, in order to ensure emails are consistent with the
`above, the parties shall send a single, joint email that includes items (a)–(e).
`If there are any questions pertaining to this notice, please contact the
`Patent Trial and Appeal Board at trials@uspto.gov or 571-272-7822.
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`IPR2026-00083
`Patent 10,656,906
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`FOR PETITIONER:
`
`Ali Sharifahmadian
`Jeffrey Miller
`Patrick Reidy
`Mark Patrick
`Kyle Tsui
`ARNOLD & PORTER KAYE SCHOLER LLP
`ali.sharifahmadian@arnoldporter.com
`jeffrey.miller@apks.com
`patrick.reidy@arnoldporter.com
`mark.patrick@arnoldporter.com
`kyle.tsui@arnoldporter.com
`
`FOR PATENT OWNER:
`
`Gearhart Law LLC
`41 River Road
`Suite 1A
`Summit, NJ 07901
`
`eofficeaction@appcoll.com
`patent@gearhartlaw.com
`
`lwhite@susmangodfrey.com
`clangham@susmangodfrey.com
`ktuohy@susmangodfrey.com
`mgervais@susmangodfrey.com
`ahealy@susmangodfrey.com
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`IPR2026-00083
`Patent 10,656,906
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`NOTICE CONCERNING ALTERNATIVE DISPUTE RESOLUTION
`(ADR)
` The Patent Trial and Appeal Board (PTAB) strongly encourages parties
`who are considering settlement to consider alternative dispute resolution as a
`means of settling the issues that may be raised in an AIA trial proceeding.
`Many AIA trials are settled prior to a Final Written Decision. Those
`considering settlement may wish to consider alternative dispute resolution
`techniques early in a proceeding to produce a quicker, mutually agreeable
`resolution of a dispute or to at least narrow the scope of matters in dispute.
`Alternative dispute resolution has the potential to save parties time and
`money.
` Many non-profit organizations, both inside and outside the intellectual
`property field, offer alternative dispute resolution services. Listed below are
`the names and addresses of several such organizations. The listings are
`provided for the convenience of parties involved in cases before the PTAB;
`the PTAB does not sponsor or endorse any particular organization’s
`alternative dispute resolution services. In addition, consideration may be
`given to utilizing independent alternative dispute resolution firms. Such firms
`may be located through a standard keyword Internet search.
`
`
`CPR
`INSTITUTE
`FOR DISPUTE
`RESOLUTION
`AMERICAN
`INTELLECTUAL
`PROPERTY
`LAW
`ASSOCIATION
`(AIPLA)
`AMERICAN
`ARBITRATIO
`N
`ASSOCIATIO
`N (AAA)
`WORLD
`INTELLECTUA
`L PROPERTY
`ORGANIZATI
`ON (WIPO)
`AMERICAN
`BAR
`ASSOCIATION
`(ABA)
`Telephone:
`(212) 949-6490
`Telephone:
`(703) 415-0780
`Telephone:
`(212) 484-3266
`Telephone:
`41 22 338 9111
`Telephone :
`(202) 662-1000
`Fax: (212) 949-8859 Fax: (703) 415-0786 Fax: (212) 307-4387 Fax: 41 22 733 5428 N/A
`575 Lexington Ave
`241 18th Street, South,
`Suite 700
`140 West 51st
`Street
`34, chemin des
`Colombettes
`1050 Connecticut Ave,
`NW
`New York, NY 10022 Arlington, VA 22202 New York, NY
`10020
`CH-1211 Geneva 20,
`Switzerland
`Washington D.C. 20036
`www.cpradr.org www.aipla.org www.adr.org www.wipo.int www.americanbar.org
`
` If parties to an AIA trial proceeding consider using alternative dispute
`resolution, the PTAB would like to know whether the parties ultimately
`decided to engage in alternative dispute resolution and the reasons why or why
`not. If the parties actually engage in alternative dispute resolution, the PTAB
`would be interested to le arn what mechanism (e.g., arbitration, mediation,
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`IPR2026-00083
`Patent 10,656,906
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`etc.) was used and the general result. Such a statement from the parties is not
`required but would be helpful to the PTAB in assessing the value of alternative
`dispute resolution to parties involved in AIA trial proceedings. To report an
`experience with ADR, please forward a summary of the particulars to the
`following email address: PTAB_ADR_Comments@uspto.gov
`
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