UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`QUALCOMM INCORPORATED,
`Patent Owner.
`
`———————
`
`Case IPR2018-01316
`Patent 8,063,674
`
`———————
`
`
`PETITIONER’S OPENING REMAND BRIEF
`
`
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`QUALCOMM INCORPORATED,
`Patent Owner.
`
`———————
`
`Case IPR2018-01316
`Patent 8,063,674
`
`———————
`
`
`PETITIONER’S OPENING REMAND BRIEF
`
`
`
`I.
`
`Introduction
`No dispute remains that the AAPA, Majcherczak, and (where applicable)
`
`Matthews render claims 8, 9, 12, 13, and 16-22 of the ’674 Patent (the “challenged
`
`claims”) obvious. The sole issue on remand is instead “whether Majcherczak
`
`forms the basis of Apple’s challenge, or whether the validity challenge
`
`impermissibly violated the statutory limit in Section 311.” Qualcomm Inc. v.
`
`Apple Inc., 24 F.4th 1367, 1377 (Fed. Cir. 2022).
`
`Apple’s challenge is permissibly based on Majcherczak under a
`
`straightforward application of the Director’s June 9, 2022, “Updated Guidance on
`
`the Treatment of Statements of the Applicant in the Challenged Patent in Inter
`
`Partes Reviews Under § 311” (the “Guidance”), as well as the Federal Circuit
`
`precedent applied in the Guidance.
`
`II. The Majcherczak Grounds Are Permissible
`A. The Petition Relies on Majcherczak for the Alleged Invention
`The ’674 Patent’s Alleged Invention Is an Improvement to a
`“Standard” “Prior Art” Device
`The ’674 Patent generally relates to “power up/down detectors for multiple
`
`1.
`
`supply voltage devices.” Ex. 1001, 1:6-8; Paper 2 (Pet.), 2-4; Paper 26 (FWD), 4.
`
`Its background section states that “[o]ne hardware solution currently in use
`
`provides power-up/down detectors to generate a power-on/off-control (POC)
`
`1
`
`
`
`
`signal internally.” Ex. 1001, 1:55-57.1 The ’674 Patent further states that Figure 1,
`
`labeled “PRIOR ART,” illustrates “a standard POC system 10 for multiple supply
`
`voltage devices.” Id., 1:58-60; Ex. 1003, ¶60.
`
`The ’674 Patent asserts that this “conventional” approach has “problems
`
`with leakage and switching times.” Ex. 1001, 2:25-3:11; Ex. 1003, ¶61. It
`
`purports to solve these problems by the addition of “one or more feedback circuits
`
`coupled to the up/down detector” that “are configured to provide feedback signals
`
`to adjust a current capacity of said up/down detector.” Ex. 1001, 3:31-34; see also,
`
`e.g., id., 5:29-38 (explaining how the feedback network may “reduce the amount of
`
`leakage current”), 6:4-28 (explaining how the feedback network may allow the
`
`device to “power[] down more quickly than the existing POC networks”); Ex.
`
`1003, ¶61; Pet., 3-4; FWD, 6. Other than the addition of one or more feedback
`
`networks, the ’674 Patent does not identify any other differences between the
`
`purported invention and the “standard POC system” shown in Figure 1, and the
`
`patent does not identify any other claim feature, alone or in combination, as
`
`allegedly helping to solve the leakage and switching time problems identified with
`
`this prior art. See Ex. 1001; Ex. 1003, ¶60; Pet., 3-4.
`
`
`1 All emphasis herein is added unless otherwise noted.
`
`2
`
`
`
`
`Indeed, the Petition shows that the “standard POC system” of Figure 1
`
`satisfies every limitation of the challenged claims other than (1) those relating to
`
`the functionality of the disclosed “feedback network,” and (2) claims 16 and 22,
`
`which do not describe any feature of the power up/down detector but instead recite
`
`certain devices in which it may be used. Pet., 45-76. In its Patent Owner
`
`Response, Qualcomm did not dispute that all these other elements were present in
`
`the “prior art” of Figure 1. See generally Paper 12 (POR).2 Further, in the Final
`
`Written Decision, the Board found that Apple had carried its burden to show that
`
`these elements are present in the prior art system of Fig. 1. FWD, 51-53.
`
`Qualcomm did not appeal that determination.
`
`Accordingly, the purported invention of the ’674 Patent is the addition of
`
`one or more feedback networks to a “conventional” POC system already “known”
`
`to a skilled artisan. Ex. 1001, 1:55-60, 3:10-11, Figs. 1, 4; Pet., 3.
`
`2.
`
`The Petition Established that Majcherczak Discloses Both
`the Alleged Invention and Other Claim Elements
`The Petition highlights the facts set forth above to establish that the
`
`“‘standard’ POC system 10 for multiple supply voltage devices” depicted in Figure
`
`1 “was known at the time of the filing of the ’674 Patent.” Pet., 2-4. The Petition
`
`
`2 Qualcomm also did not dispute that Matthews renders the additional limitations
`
`of claims 16 and 22 obvious. See POR, 31-32; FWD, 56.
`
`3
`
`
`
`
`further explains that “the only substantive difference from the perspective of the
`
`claims between the prior art POC system 10 described in the AAPA and the
`
`purportedly inventive POC network 40 illustrated in Fig. 4 of the ’674 Patent is the
`
`inclusion of a feedback network 310.” Pet., 47 (citing Ex. 1001, Figs. 1, 4; Ex.
`
`1003, ¶128).
`
`To show that this “purported invention” would have been obvious in view of
`
`the Majcherczak grounds, the Petition relies on Majcherczak. Pet., 47-76. In
`
`particular, the Petition explains that Majcherczak includes a “feedback transistor
`
`M6” which “provides similar feedback to the feedback transistor M8 of the ’674
`
`Patent’s POC network.” Pet., 50; see also Ex. 1008, ¶0037; Ex. 1003, ¶138. The
`
`Petition further explains that “a POSITA would have found it obvious to integrate”
`
`this “feedback transistor M6 from Majcherczak’s voltage detector into the POC
`
`system 10 of the AAPA.” Pet., 51-53 (citing Ex. 1003, ¶¶139-151).
`
`The Petition then demonstrates how Majcherczak’s feedback transistor
`
`satisfies the relevant claim language. Pet., 54-73. For example, it explains that
`
`“the transistor M8 of the feedback network 310” in Figure 4 of the ’674 Patent is
`
`one of the disclosed structures “for performing the function of decreasing a current
`
`capacity of a power on/off detector of said POC network in response to said
`
`power-on detection,” and Majcherczak’s “feedback transistor M6, when integrated
`
`into the prior art POC network 10 of the AAPA” would perform the same function.
`
`4
`
`
`
`
`Pet., 55-57 (citing Ex. 1003, ¶¶141-143). The Petition likewise relies on
`
`Majcherczak’s feedback transistor M6 as satisfying the additional functional
`
`limitations of the challenged claims which correspond to the ’674 patent’s
`
`disclosed feedback network. E.g., Pet., 54-60, 63-65, 68-72; see also Ex. 1003,
`
`¶¶139-151; Ex. 1008, ¶¶0037-0038. The Petition does not rely on Qualcomm’s
`
`admissions or a skilled artisan’s general knowledge as providing the claimed
`
`invention of incorporating a feedback network into a standard POC system;
`
`instead, it relies on Majcherczak. Pet., 47-76. That alone shows that the
`
`obviousness challenge presented in the Majcherczak grounds is grounded in
`
`Majcherczak.
`
`Additionally, while the number of claim limitations identified in
`
`Majcherczak is not relevant to whether Majcherczak is the basis of the
`
`Majcherczak grounds, see Guidance, 5, the Petition further explains that many
`
`other claim limitations are also present in Majcherczak. It shows that Majcherczak
`
`“relates to the same multiple supply voltage devices described in the ’674 Patent,”
`
`Pet., 47 (citing Ex. 1003, ¶129), and discloses a “voltage detector” that “perform[s]
`
`a commensurate function as the ’674 Patent’s POC system/network.” Pet., 48
`
`(citing Ex. 1003, ¶130). More specifically, the Petition explains that
`
`Majcherczak’s “input stage E1” functions “as a power up/down detector,” Pet., 48-
`
`49 (citing Ex. 1003, ¶¶131-132; Ex. 1008, ¶¶0026, 0035-0037), and that inverter
`
`5
`
`
`
`
`IV of Majcherczak’s output stage functions as “the signal process of the ’674
`
`Patent’s POC network,” Pet., 49-50 (citing Ex. 1003, ¶137; Ex. 1008, ¶0037-
`
`0038). These disclosures further show that the “prior art” features identified as
`
`“standard” and “conventional” by the ’674 Patent, see Ex. 1001, 1:55-60, 3:10-11,
`
`Fig. 1, were “known at the time of the filing of the ’674 Patent,” and further
`
`support the Petition’s argument that combining Majcherczak with a known POC
`
`systems would have been obvious. E.g., Pet., 2-4, 47-53; Ex. 1003, ¶60.
`
`In sum, the obviousness argument presented in the Majcherczak grounds
`
`relies on Majcherczak both to show that the purported invention would have been
`
`obvious and as evidence that many other claim limitations were known to those of
`
`skill in the art prior to the ’674 Patent. Pet., 2-4, 47-76. The Majcherczak grounds
`
`are thus plainly based on Majcherczak. See id.
`
`B.
`
`The Petition’s Reliance on Qualcomm’s Admissions Is Proper
`Under Section 311
`The Petition’s use of Qualcomm’s admissions to show what was known to a
`
`skilled artisan before the alleged invention falls squarely within permissible use of
`
`AAPA under the Guidance and relevant Federal Circuit precedent. As detailed
`
`above, Majcherczak is at the heart of the Petition’s relevant obviousness argument
`
`for every challenged claim. Pet., 2-4, 47-76. No claim is challenged “relying on
`
`solely AAPA without also relying on a prior art patent or printed publication.”
`
`Qualcomm, 24 F.4th at 1377. Rather, Qualcomm’s admissions are used to
`
`6
`
`
`
`
`establish “what a skilled artisan would have known at the time of the invention.”
`
`Id. at 1376; see also; Pet., 3, 45-47 (“[T]he ’674 Patent acknowledges that a
`
`“standard” POC system 10 for multiple supply voltage devices was known at the
`
`time of the filing of the ’674 Patent . . . . This known POC system 10 is labeled as
`
`“PRIOR ART” in Fig. 1 . . . .”). Both the Federal Circuit’s decision and the
`
`Guidance explicitly permit such use. Guidance, 3 (“Admissions are ‘permissible
`
`evidence in an inter partes review for establishing the background knowledge
`
`possessed by a person of ordinary skill in the art.’” (quoting Qualcomm, 24 F.4th at
`
`1376)).
`
`Indeed, as the Guidance recognizes, “a properly conducted § 103 inquiry
`
`‘necessarily depends’ on the knowledge possessed by the ordinarily-skilled
`
`artisan”; thus, “such knowledge must be considered in an IPR, notwithstanding the
`
`provisions of § 311(b).” Guidance, 3 (quoting Koninklijke Philips v. Google, LLC,
`
`948 F.3d 1330, 1337-39 (Fed. Cir. 2020)). Admissions may be used to “supply
`
`missing claim limitations that were generally known in the art prior to the
`
`invention.” Guidance, 4; Qualcomm, 24 F.4th at 1376. Thus, the Petition’s focus
`
`on Qualcomm’s admissions for claim elements described in the ’674 Patent as
`
`“conventional,” Ex. 1001, 1:55-3:11, would be proper even if those elements were
`
`missing from Majcherczak. Guidance, 4; Pet., 47-76. That the Petition goes even
`
`further here and argues that many of those elements are also present in
`
`7
`
`
`
`
`Majcherczak makes it even more clear that the obviousness challenge of the
`
`Majcherczak grounds is fundamentally rooted in Majcherczak. See Pet., 47-51.
`
`Although the Petition in this IPR shows that most claim elements are present
`
`in both the admitted prior art and Majcherczak, see Pet., 47-76, “the number of
`
`claim limitations or claim elements the admission supplies” is not a basis to
`
`“exclude the use of admissions” in any event. Guidance, 5 (citing Qualcomm, 24
`
`F.4th at 1376). After all, there is no basis for treating admissions any differently
`
`than other sources of proof of a skilled artisan’s knowledge, such as expert
`
`testimony, background references, and so on. See, e.g., Koninklijke Philips, 948
`
`F.3d at 1337; Dow Jones & Co. v. Ablaise Ltd., 606 F.3d 1338, 1349-50 (Fed. Cir.
`
`2010). Further, as the Guidance explains, “the order in which the petition presents
`
`the obviousness combination (e.g., prior art modified by admission or admission
`
`modified by prior art)” is not relevant. Guidance, 5; see also In re Mouttet, 686
`
`F.3d 1322, 1333 (Fed. Cir. 2012) (“[W]here the relevant factual inquiries
`
`underlying an obviousness determination are otherwise clear, characterization by
`
`the examiner of prior art as ‘primary’ and ‘secondary’ is merely a matter of
`
`presentation with no legal significance.”).
`
`At bottom, the Petition identifies Qualcomm’s admissions and asserts that
`
`the ’674 Patent’s description of certain “prior art” as “standard,” “conventional,”
`
`and “already in use,” means that those elements, alone and in combination, were
`
`8
`
`
`
`
`within a skilled artisan’s knowledge. Pet., 2-4, 45-47; Ex. 1001, 1:55-3:11, Fig. 1.
`
`The Petition further combines Qualcomm’s admissions regarding a skilled artisan’s
`
`knowledge with Majcherczak for every challenged claim, showing that
`
`Majcherczak discloses every allegedly-novel feature recited in the challenged
`
`claims, as well as many other claim elements. Pet., 47-76. Qualcomm could have
`
`“dispute[d] the significance or meaning of” the alleged admissions, “including
`
`disputing whether [they] constitute admissions or evidence of the background
`
`knowledge possessed by a person of ordinary skill in the art,” Guidance, 4-5, but it
`
`chose not to do so. See POR, 18-32. This case is thus one where “the petition
`
`relies on admissions in the specification in combination with reliance on at least
`
`one prior art patent or printed publication” and “those admissions do not form ‘the
`
`basis’ of the ground and must be considered by the Board in its patentability
`
`analysis.” Guidance, 4 (citing Qualcomm, 24 F.4th at 1377); MED-EL
`
`Elektromedizinische Geräte Ges.m.b.H. v. Advanced Bionics AG, IPR2020-01016,
`
`Paper 44 at 3-4 (PTAB Aug. 22, 2022) (decision on Director review). The Board
`
`should therefore find that the Majcherczak grounds are permissible and reaffirm
`
`that they render all challenged claims obvious under § 103. Id.; see also FWD, 22-
`
`56.
`
`
`
`
`
`9
`
`
`
`
`III. Conclusion
`The Board should find that the Majcherczak grounds are based on
`
`Majcherczak and therefore permissible under § 311 and cancel the challenged
`
`claims as unpatentable.
`
`
`
`
`
`
`Date:
`
`
`
`
`
`
`
`
`August 31, 2022
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`/W. Karl Renner/
`
`W. Karl Renner, Reg. No. 41,265
`Thomas A. Rozylowicz, Reg. No. 50,620
`Timothy W. Riffe, Reg. No. 43,881
`David L. Holt, Reg. No. 65,161
`Whitney A. Reichel, Reg. No. 59,173
`
`Attorneys for Petitioner
`
`10
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR §§ 42.6(e), the undersigned certifies that on August 31,
`
`2022, a complete and entire copy of this Petitioner’s Opening Remand Brief was
`
`provided via email to the Patent Owner by serving the email correspondence
`
`address of record as follows:
`
`Joseph M. Sauer
`David B. Cochran
`Joshua R. Nightingale
`Matthew W. Johnson
`David M. Maiorana
`Jones Day
`901 Lakeside Avenue
`Cleveland, OH 44114
`
`Email: jmsauer@jonesday.com
`dcochran@jonesday.com
`jrnightingale@jonesday.com
`mwjohnson@jonesday.com
`dmaiorana@jonesday.com
`
`/Crena Pacheco/
`Crena Pacheco
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`(617) 956-5938
`
`
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