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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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`APPLE INC.,
`Petitioner,
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`v.
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`PINN, INC.,
`Patent Owner.
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`Case IPR2021-00220
`Patent No. 10,455,066
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`PATENT OWNER PINN, INC.’S PRELIMINARY
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`RESPONSE UNDER 37 C.F.R. § 42.107
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`I.
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`IPR2021-00220
`U.S. Pat. No. 10,455,066
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`TABLE OF CONTENTS
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`PRELIMINARY STATEMENT .................................................................... 2
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`II. BACKGROUND ........................................................................................... 5
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`A. The ’066 Patent ......................................................................................... 5
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`B.
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`Patent Owner’s Patent Infringement Action ..............................................16
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`C.
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`Petitioner’s Grounds of Challenge ............................................................17
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`1. Watson-350 and Watson-510 .................................................................19
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`2. Hankey ..................................................................................................20
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`3. Rabu ......................................................................................................20
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`4. Kalayjian ...............................................................................................21
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`5. Lydon ....................................................................................................21
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`III. CLAIM CONSTRUCTION .........................................................................21
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`IV. THE DIRECTOR SHOULD EXERCISE DISRECTION UNDER 35 U.S.C.
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`§ 314(a) AND DENY INSTITUTION OF APPLE’S FOLLOW-ON PETITION
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`UNDER GENERAL PLASTICS. ...........................................................................22
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`1. Apple Previously Filed a Petition Directed to the Same Claims of the Same
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`Patent. ................................................................................................................23
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`2. Apple Knew of the Prior Art Asserted in the Second Petition at the Time of
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`Filing the First Petition. .....................................................................................24
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`3. Apple had Already Received Patent Owner’s Preliminary Response to its
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`First Petition at the Time of Filing its Second Petition. ......................................25
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`4. Apple has Known of the Prior Art Asserted in the Second Petition Since
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`2015. ..................................................................................................................25
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`5. Apple Provides No Explanation for the Time Elapsed Between the Filings of
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`its First Petition and its Second Petition. ............................................................26
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`6. The Board’s Resources Would Be Better Spent Elsewhere. .........................27
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`7. The Final Determination Will Not be Made until 2022, Likely a Year After
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`the Underlying District Court Proceeding is Decided. ........................................28
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`V. THE DIRECTOR SHOULD EXERCISE DISCRECTION UNDER 35 U.S.C.
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`§ 314(a) AND DENY INSTITUTION UNDER FINTIV.......................................29
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`1. The Court Denied Apple’s Motion to Stay. ..................................................30
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`2. The Court’s Trial Date is Set for Almost a Year Before the Board’s Projected
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`Statutory Deadline. ............................................................................................30
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`3. Significant Investment Has Been Made in the Parallel Proceeding by the
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`Court and the Parties. .........................................................................................32
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`4. There is Complete Overlap Between Issues Raised in the Second Petition and
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`in the Parallel Proceeding. .................................................................................33
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`5. The Petitioner Here and the Defendant in the Parallel Proceeding are the
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`Same Party. ........................................................................................................34
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`6. Other Circumstances, Including the Lack of Merit in Petitioner’s Arguments,
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`Favor Denial of Institution. ................................................................................34
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`VI. THE PETITION SHOULD BE DENIED BECAUSE NO GROUND
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`ESTABLISHES A REASONABLE LIKELIHOOD OF SUCCESS. ....................35
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`A. Wireless Pairing Between a Wireless Earbud and a Smartphone is
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`Supported by the ’978 Provisional. ....................................................................36
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`B.
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`Initiating Pairing Between the Smartphone and the Wireless Earbud by
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`Pressing a User Input Button is Supported by the ’978 Provisional. ...................43
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`VII.
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`THE DIRECTOR SHOULD DENY INSTITUTION UNDER 35 U.S.C. §
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`325(d) BECAUSE SUBSTANTIALLY THE SAME PRIOIR ART WAS
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`PREVIOUSLY PRESENTED TO THE OFFICE. ................................................44
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`1. Substantially the Same Art was Previously Presented to the Office .............45
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`2. Petitioner has Failed to Demonstrate that the Office Committed Material
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`Error. .................................................................................................................50
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`VIII. CONCLUSION ........................................................................................51
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`Cases
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`IPR2021-00220
`U.S. Pat. No. 10,455,066
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`TABLE OF AUTHORITIES
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`Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH, IPR2019-
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`01469 ......................................................................................................... passim
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`Apple Inc. v. Fintiv, Inc., IPR2020-00019 ....................................................... passim
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`Apple Inc. v. Pinn, Inc., IPR2021-00221 ...............................................................24
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`Apple Inc. v. Pinn, Inc., PGR2020-00066 ............................................. 2, 24, 25, 27
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`Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010) (en banc) ..42
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`General Plastic Industrial Co., Ltd. v. Canon Kubushiki Kaisha, IPR2016-01357
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` ................................................................................................................... passim
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`NHK Spring Co., Ltd. v. Intri-Plex Technologies, Inc., IPR2018-00752 ........... 4, 29
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`Statutes
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`35 U.S.C. § 314(a) ................................................................................ 4, 22, 32, 44
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`35 U.S.C. § 325(d) ................................................................................ 5, 44, 46, 51
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`Other Authorities
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`Consolidated Trial Practice Guide (“TPG”), November 2019 (available at
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`https://www.uspto.gov/TrialPracticeGuideConsolidated) ................................ 4, 29
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`IPR2021-00220
`U.S. Pat. No. 10,455,066
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`PATENT OWNER’S EXHIBIT LIST
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`PINN-2001
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`Excerpts of Wells Report (redacted)
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`PINN-2002
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`PINN-2003
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`Order Denying Apple’s Motion to Stay Litigation
`Pending Outcome of IPR Proceedings
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`Transcript of March 16, 2020, Scheduling
`Conference
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`PINN-2004
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`Transcript of June 11, 2020, Discovery Hearing
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`PINN-2005
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`PINN-2006
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`PINN-2007
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`Docket Sheet of Pinn, Inc. v. Apple Inc., Case No.
`8:19-cv-1805
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`Special Master’s Report & Recommendation on
`Claim Construction
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`Excerpts from the Prosecution History of the ’066
`Patent
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`PINN-2008
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`RESERVED
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`PINN-2009
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`RESERVED
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`PINN-2010
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`U.S. Pat. App. Pub. No. 2010/0245585 (“Fisher”)
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`PINN-2011
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`RESERVED
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`PINN-2012
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`RESERVED
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`PINN-2013
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`Defendant Apple Inc.’s Answer, Affirmative
`Defenses, and Counterclaims to Plaintiff Pinn,
`Inc.’s Second Amended Complaint
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`PINN-2014
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`Declaration of Dr. Scott M. Nettles
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`PINN-2015
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`Order Adopting Technical Special Master’s Report
`and Recommendation Regarding Claims
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`IPR2021-00220
`U.S. Pat. No. 10,455,066
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`Construction
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`PINN-2016
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`Scheduling Notice (Dkt. 322, December 18, 2020)
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`PINN-2017
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`Civil Minutes (Dkt. 311)
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`I.
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`PRELIMINARY STATEMENT
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`IPR2021-00220
`U.S. Pat. No. 10,455,066
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`This is Apple’s second petition (its first for Inter Partes Review) challenging
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`claims 1, 4, 6, 9, 10, 14, 21, 30, 34, 36 and 38 of U.S. Patent No. 10,455,066 (the
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`“’066 Patent”). On December 8, 2020, the Board denied institution of Apple’s first
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`petition, PGR2020-00066.
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`The General Plastics factors heavily favor denial of this follow-on petition
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`under 35 U.S.C. § 314(a). Apple asserts alleged prior art that it owns, has known
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`about since it came into existence, and that overlaps with the denied petition in
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`PGR2020-00066. See, e.g., Apple Inc. v. Pinn, Inc., PGR2020-00066, Paper No. 2.
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`The advanced state of the parallel district court proceeding (Pinn Inc. v.
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`Apple Inc., Case No. 19-1805-DOC-JDE (C.D. Cal.)) strongly favors denial under
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`35 U.S.C. § 314(a). The parties are proceeding with pretrial matters, argued
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`motions in limine last week, and trial is scheduled to start March 16, 2021,
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`although the Court has indicated that it likely will be reset to September 14, 2021,
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`more than a year before the Board’s projected statutory deadline to issue a final
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`written decision.
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`Further favoring discretionary denial under 35 U.S.C. § 325(d) is the fact
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`that Apple’s Second Petition offers substantially the same prior art that was already
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`before the Office during prosecution of the ’066 Patent. Every challenge ground
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`set forth by Apple relies on either Watson-510, Watson-350, or both, and neither
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`Watson reference is prior art to the ’066 Patent unless Apple proves that the ’066
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`Patent is not entitled to priority to the ’978 Provisional Application. Otherwise, on
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`its face, Apple’s Second Petition fails to establish any reasonable likelihood that
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`the challenged claims would be found to be unpatentable. The parties have fully
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`litigated the priority issue in the district court, and the court denied Apple’s
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`summary judgment motion on the issue. The ’066 Patent’s priority to the ’978
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`Provisional Application will be decided by the jury.
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`On the merits, Apple’s Second Petition fails to show certain limitations lack
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`support in the ’978 Provisional for two reasons: (i) it ignores the state of the art at
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`the time of the invention; and (ii) it disregards the perspective of one of ordinary
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`skill in the art who would find all claim elements clearly disclosed and supported
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`explicitly and/or inherently as explained by Dr. Scott Nettles in his declaration.
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`Apple’s Second Petition should be denied on the merits because there is no
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`“reasonable likelihood that the petitioner would prevail with respect to at least one
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`of the claims challenged in the petition.” 35 U.S.C. § 314(a).
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`The Consolidated Trial Practice Guide (“TPG”) and precedential Board
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`decisions enumerate several factors for the Board to consider in evaluating a
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`petition, particularly a follow-on petition like this one. Here, every one of these
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`General Plastics factor favors denial. The TPG also makes clear that the advanced
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`state of a parallel proceeding favors denial of petitions for post-grant proceedings
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`before the Board, and precedential cases such as Apple Inc. v. Fintiv, Inc. and NHK
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`Spring Co., Ltd. v. Intri-Plex Techs., Inc. show that advanced district court
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`litigation generally “implicates considerations of efficiency and fairness” in such a
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`way that the Board favors institutional denial. Apple Inc. v. Fintiv, Inc., IPR2020-
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`00019, Paper 15 at 11 (precedential); see also TPG, November 2019 (available at
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`https://www.uspto.gov/TrialPracticeGuideConsolidated) at 58; NHK Spring Co.,
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`Ltd. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 20 (precedential).
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`The parallel district court case here is farther along than in both Fintiv and
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`NHK. The parties started the claim construction process in March 2020, and the
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`Special Master held a Markman hearing in June 2020. Fact discovery closed in
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`early August 2020. The parties served expert reports and completed expert
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`discovery. The Court has ruled on the parties’ summary judgment and Daubert
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`motions, heard objections and adopted the Special Master’s Report and
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`Recommendation Regarding Claims Construction (PINN-2015, Case No. 1805,
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`ECF 312), and, as part of the pretrial process, has authorized the Special Master
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`hear motions in limine and resolve two additional claim construction issues in
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`advance of trial. Trial remains officially set for March 16, 2021 (PINN-2016, Case
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`No. 1805, ECF 312) but is expected to be reset to September 14. Denial of
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`Apple’s Second Petition is appropriate under § 314(a) in view of the advanced
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`state of the district court case and the resources already spent and dedicated by the
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`court and parties preparing for the upcoming trial. See Fintiv, Paper 15; NHK,
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`Paper 8; APPLE-1032 at 2.
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`Finally, the Board also considers, under 35 U.S.C. § 325(d), whether the
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`Second Petition presents substantially the same prior art or arguments as was
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`already before the Office, and if that is the case, then the Board requires that the
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`Petitioner demonstrate how the Office erred in a way material to patentability. See
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`Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH, IPR2019-
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`01469, Paper 6 at 7 (precedential). Apple has failed to make the requisite showing
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`because Apple’s Second Petition, like its first, offers prior art that is substantially
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`the same as that which was before the Office during prosecution. Apple does not
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`even attempt to demonstrate that the Office erred in any way, much less in a way
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`material to patentability. Therefore, the Board should exercise discretion under §
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`325(d) and deny institution.
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`II. BACKGROUND
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`A. The ’066 Patent
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`In certain embodiments, the ’066 Patent generally relates to a personal
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`wireless media station that includes a base station and a wireless earbud. ’066
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`Patent at Abstract. The base station is separate and apart from, for example, a
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`smartphone.
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`’066 Patent, Fig. 4A.
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`The base station comprises a connection hole that receives the wireless
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`earbud, a user input button, at least one processor, at least one memory, and
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`circuitry. Id. at 33:19-21. When the earbud is inserted into the connection hole, it
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`forms an integrated body with the base station. In certain embodiments, the ’066
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`Patent recites a mobile system, comprising an apparatus with a main body and
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`wireless earbud, as well as a smartphone with a mobile application.
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`’066 Patent, Fig. 7.
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`The wireless earbud has wireless communication capability for wirelessly
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`pairing with a smartphone to receive and play back audio data from the
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`smartphone. Id. at 33:31-34. The main body can charge the earbud when the
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`earbud is inserted within the connection hole. Id. at 28:30-34. A user can initiate
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`pairing between the wireless earbud and the smartphone by pressing the user input
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`button on the main body. Id. at 33:28-34. The ’066 Patent discloses that pressing
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`the user input button causes the processor of the main body to execute instructions
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`in the memory of the main body to initiate the pairing. Id. No wired connection
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`between the smartphone and the base station is necessary for the base station to
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`initiate processing for pairing between the wireless earbud and the smartphone.
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`Apple challenges the validity of Claims 1, 4, 6, 9, 10, 14, 21, 30, 34, 36 and
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`38 of the ’066 Patent. In a Notice of Allowability of the ’066 Patent, the Examiner
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`determined all of the claims to be patentable over the prior art, explaining and
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`specifying claim elements that prior art failed to teach or disclose.. APPLE-1002
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`at 433-437. Independent Claim 1 is provided below:
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`1. A mobile system comprising:
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`a base station comprising a connection hole, a user input button, at
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`least one processor, at least one memory, and circuitry; and
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`a wireless earbud configured for plugging into the connection hole
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`of the base station to form an integrated body with the base
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`station,
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`wherein the system is capable of wirelessly pairing with a
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`smartphone for the wireless earbud to receive audio data
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`originated from the smartphone,
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`wherein, in response to pressing of the user input button, the at least
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`one processor is configured to execute computer program
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`instructions stored in the at least one memory to initiate
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`processing for the wireless pairing with the smartphone such that
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`the wireless earbud receives audio data originated from the
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`smartphone and plays audio using the audio data from the
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`smartphone,
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`wherein, in response to plugging the wireless earbud into the
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`connection hole, the at least one processor is configured to
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`execute computer program instructions stored in the at least one
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`memory to initiate charging of a battery of the wireless earbud,
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`wherein, when the wireless earbud is plugged into the connection
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`hole of the base station, the wireless earbud is configured to
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`electrically connect with the circuitry of the base station and
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`further configured to performing wired data communication with
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`the base station.
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`Claim 4 further limits Claim 1 in that when the wireless earbud is
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`plugged into the connection hole, the system is configured such that the
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`smartphone wirelessly communicates with at least one of the base station
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`and the wireless earbud.
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`Claim 6 further limits Claim 1 in that the at least one processor is
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`configured to determine whether the wireless earbud is plugged into the
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`connection hole or unplugged out of the connection hole, and in that the
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`system is configured such that there is no data transmission wirelessly
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`between the wireless earbud and the base station.
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`Claim 9 further limits Claim 1 in that while the wireless earbud is
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`plugged in the connection hole of the base station, the circuitry of the base
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`station is configured to obtain characteristics of the wireless earbud and send
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`the characteristics to the at least one processor, and in that the mobile system
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`is configured to generate sound when a mobile application installed on the
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`smartphone is searching for the mobile system while the wireless earbud is
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`paired with the smartphone.
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`Independent Claim 10 is provided below:
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`10. A mobile system comprising:
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`a mobile base station comprising a connection hole, a user input
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`button, at least one processor, at least one memory, and
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`circuitry; and
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`a wireless earbud configured for plugging into the connection
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`hole of the mobile base station to form an integrated body
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`with the mobile base station,
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`wherein, while the wireless earbud is plugged in the connection
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`hole of the mobile base station, the wireless earbud is
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`configured to electrically connect with the circuitry of the
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`mobile base station and further configured to perform wired
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`data communication with the mobile base station,
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`wherein, while the wireless earbud is plugged in the connection
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`hole of the mobile base station, the circuitry of the mobile
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`base station is configured to obtain characteristics of the
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`wireless earbud and send the characteristics to the at least
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`one processor,
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`wherein, while the wireless earbud is plugged in the connection
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`hole of the mobile base station, the mobile base station is
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`configured to charge a battery of the wireless earbud,
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`wherein the wireless earbud has wireless communication
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`capability for wireless pairing with a smartphone to perform
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`data communication with the smartphone,
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`wherein the mobile system is configured to generate sound
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`when a mobile application installed on the smartphone is
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`searching for the mobile system while the wireless earbud is
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`paired with the smartphone,
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`wherein, in response to pressing of the user input button of the
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`mobile base station, the at least one processor is configured
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`to execute computer program instructions stored in the at
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`least one memory to initiate processing for the wireless
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`pairing.
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`Claim 14 further limits Claim 10 in that the at least one processor
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`is configured to determine whether the wireless earbud is plugged into
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`the connection hole or unplugged out of the connection hole of the
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`mobile base station, and in that the mobile base station is configured
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`such that battery charging of the wireless earbud is performed while the
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`wireless earbud is plugged in the connection hole of the mobile base
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`station.
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`Claim 21 further limits Claim 10 in that the at least one processor
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`is configured to execute computer program instructions stored in the at
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`least one memory to turn off the wireless pairing while the wireless
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`earbud is being charged.
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`Independent Claim 30 is reproduced below:
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`30. A mobile system comprising:
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`a smartphone comprising at least one mobile application
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`installed thereon;
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`a mobile apparatus comprising a main body and a wireless
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`earbud;
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`the main body comprising a connection hole, a user input
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`button, at least one processor, at least one memory, and
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`circuitry; and
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`the wireless earbud configured for plugging into the connection
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`hole of the main body to form an integrated body with the
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`main body,
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`wherein, while the wireless earbud is plugged in the connection
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`hole of the main body, the wireless earbud is configured to
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`electrically connect with the circuitry of the main body and
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`further configured to perform wired data communication
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`with the main body,
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`wherein, while the wireless earbud is plugged in the connection
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`hole of the main body, the circuitry of the main body is
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`configured to obtain characteristics of the wireless earbud
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`and send the characteristics to the at least one processor,
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`wherein, while the wireless earbud is plugged in the connection
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`hole of the main body, the at least one processor is
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`configured to execute computer program instructions stored
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`in the at least one memory to initiate charging of a battery of
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`the wireless earbud,
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`wherein the wireless earbud and the smartphone are configured
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`to
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`establish wirelessly pairing
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`for wireless data
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`communication therebetween,
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`wherein the mobile apparatus is configured to generate sound
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`when the at least one mobile application is searching for the
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`mobile apparatus while the wireless earbud and
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`the
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`smartphone are paired,
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`wherein, in response to pressing of the user input button on the
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`main body, the at least one processor is configured to execute
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`computer program instructions stored in the at least one
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`memory to initiate processing for the wireless pairing,
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`wherein, when the wireless earbud is plugged into the
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`connection hole of the main body, the system is configured
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`such that the smartphone wirelessly communicates with at
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`least one of the main body and the wireless earbud.
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`Independent Claim 34 is reproduced below:
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`34. A system comprising:
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`a mobile base station comprising a connection hole, a user input
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`button, at least one processor, at least one memory, and
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`circuitry; and
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`a wireless earbud capable of wireless pairing with a smartphone
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`and configured for plugging into the connection hole of the
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`U.S. Pat. No. 10,455,066
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`mobile base station to form an integrated body with the
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`mobile base station,
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`wherein, in response to pressing of the user input button of the
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`mobile base station, the at least one processor is configured
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`to execute computer program instructions stored in the at
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`least one memory to initiate processing for the wireless
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`pairing with the smartphone,
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`wherein, while the wireless earbud is plugged in the connection
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`hole of the mobile base station, the wireless earbud is
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`configured to electrically connect with the circuitry of the
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`mobile base station and further configured to perform wired
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`data communication with the mobile base station,
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`wherein, while the wireless earbud is plugged in the connection
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`hole of the mobile base station, the mobile base station is
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`configured to initiate charging of a battery of the wireless
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`earbud,
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`wherein while the wireless earbud is wirelessly paired with the
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`smartphone, the wireless earbud is configured to perform
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`data communication with the smartphone,
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`U.S. Pat. No. 10,455,066
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`wherein the system is configured to generate sound when a
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`mobile application installed on the smartphone is searching
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`for the system while the wireless earbud is paired with the
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`smartphone.
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`Claim 36 further limits Claim 34 in that in response to plugging
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`the wireless earbud into the connection hole of the mobile base station,
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`the circuitry of the mobile base station is configured to obtain
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`characteristics of the wireless earbud and send the characteristics to the
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`at least one processor, and in that, when the wireless earbud is plugged
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`into the connection hole, the system is configured such that the
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`smartphone wirelessly communicates with at least one of the mobile
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`base station and the wireless earbud.
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`Claim 38 further limits Claim 34 in that the system is configured
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`such that, subsequent to unplugging the wireless earbud out of the
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`connection hole of the mobile base station, the wireless earbud
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`generates sound using audio data from the smartphone without a user
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`input to the wireless earbud.
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`B.
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`Patent Owner’s Patent Infringement Action
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`On September 20, 2019, patent owner Pinn, Inc. filed a Complaint for Patent
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`Infringement (APPLE-1022) against Petitioner in the United States District Court
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`for the Central District of California, alleging that Apple infringes Claims 1, 9, and
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`10 of U.S. Pat. No. 9,807,491 and that Apple will infringe certain claims of the
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`then-pending ’066 Patent that had been allowed. When they issued, Pinn amended
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`its complaint to allege infringement of Claims 1, 2, 4, 6, 9, 10, 12, 14, 24-28, 30,
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`34, and 36 of the ’066 Patent. Pinn alleges and intends to present evidence and
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`argument to the jury that Apple infringes Claims 9, 10, 14, 30, and 34 of the ’066
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`Patent. The Opening Report of Apple’s expert, Jonathan Wells, served August 14,
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`2020 (see PINN-2001 at 1) demonstrates the complete overlap between this
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`Second Petition and the district court case. In his invalidity report, Dr. Wells relies
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`on all the same art asserted here, presented in the same combinations and grounds,
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`which Apple admits. See, e.g., Second Petition at 3; PINN-2001 at 97-160, 258-
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`566.
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`Judge Carter denied Apple’s motion to stay the district court case on August
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`27, 2020. PINN-2002, Order Denying Apple’s Motion to Stay Litigation Pending
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`Outcome of IPR Proceedings.
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`Petitioner’s Grounds of Challenge
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`C.
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`All of the asserted grounds identified in the Second Petition rely upon one of
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`two references or both: U.S. Pat. App. Pub. No. 2016/0360350 (“Watson-350”) and
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`U.S. Pat. App. Pub. No. 2016/0357510 (“Watson-510”). On their face, neither
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`Watson references are prior art to the ’066 Patent. Petitioner additionally relies on
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`U.S. Pat. No. 8,401,219 to Hankey et al. (“Hankey”), U.S. Pat. No. 8,086,281 to
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`Rabu et al. (“Rabu”), U.S. Pat. No. 8,078,787 to Lydon et al. (“Lydon”), and U.S.
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`Pat. App. Serial No. 2008/0125040 to Kalayjian (“Kalayjian”). The petitioned
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`grounds for rejection are as follows:
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`Actual
`Ground
`Number
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`Petitioner’s
`Numbering
`Scheme
`
`1
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`2
`
`3
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`4
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`5
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`1A
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`1B
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`1C
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`2A
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`2B
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`Basis
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`Claims
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`References
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`Obviousness
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`(§103)
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`1, 4, 6
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`Watson-350, Hankey,
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`and Rabu
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`Obviousness
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`9, 10, 14, 21,
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`Watson-350, Hankey,
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`(§103)
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`30, 34, 36, 38
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`Rabu, and Kalayjian
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`Obviousness
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`Watson-350, Hankey,
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`(§103)
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`Rabu, and Lydon
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`21
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`Obviousness
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`Watson-510, Hankey,
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`1, 4, 6
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`(§103)
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`and Rabu
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`Obviousness
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`9, 10, 14, 30,
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`Watson-510, Hankey,
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`(§103)
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`34, 36, 38
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`Rabu, and Kalayjian
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`6
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`2C
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`Obviousness
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`(§103)
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`7
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`2D
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`Obviousness
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`(§103)
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`Watson-510, Hankey,
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`21
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`Rabu, Kalayjian, and
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`Watson-350
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`Watson-510, Hankey,
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`21
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`Rabu, Kalayjian, and
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`Lydon
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`Throughout this Preliminary Response, for ease of understanding, Patent
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`Owner will refer to these prior art references by the names indicated above, rather
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`than by exhibit number. The prior art references relied on are described and
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`addressed below, in conjunction with the argument represented in this Preliminary
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`Response.1
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`1. Watson-350 and Watson-510
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`Watson-350 and Watson-510 are patent applications essentially covering
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`Apple’s AirPods. See Second Petition at 4-5. Petitioner also claims that “Watson-
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`1 Patent Owner intends no waiver by any argument made or omitted at this stage and
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`reserves its right to present additional argument and evidence related to these prior
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`art references and the content of the Second Petition and supporting Exhibits later in
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`this proceeding, consistent with the Board’s Rules and practice.
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`510 and Watson-350 both are entitled to a filing date of June 5, 2015”—two months
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`after the ’066 Patent priority date, which Apple also challenges. Petitioner also
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`contends that in the parallel litigation, Dr. Nettles conceded that these references
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`disclose all but one of the limitations of the challenged claims, but that is inaccurate.
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`Dr. Nettles stated that the Watson references fail “to meet at least” those limitations;
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`neither he nor Pinn conceded that Watson discloses the other limitations. Second
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`Petition at 3-4.
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`2. Hankey
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`“Hankey describes a Bluetooth headset that wirelessly communicates with a
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`host device, like a cellular phone . . . The headset connects to, and communicates
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`with, a charging device, e.g., a dock or cable.” Second Petition at 16-17. Hankey
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`discloses that a processor can be disposed within the headset that can control the
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`“charging of a battery . . ..” Hankey at 9:51-63. Hankey clearly discloses that a
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`pairing button is disposed on the headset. See, e.g., Hankey at FIG. 68.
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`3. Rabu
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`“Rabu teaches the same charging device as in Hankey, plus other
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`embodiments.” Second Petition at 17. Rabu discusses the need to automate the
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`pairing process between, for example, Bluetooth-enabled master and slave devices,
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`because “[t]he pairing process is the cause of great frustration among many users.”
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`Rabu at 1:54-55; see also Rabu at Abstract; 2:7-18; 7:29-40; 8:57-67; 10:5-2; 11:50-
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`67; 14:5-17; 15:1-4; 16:4-11; 17:1-9. As Petitioner explains and admits, Rabu
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`discloses a charging device that requires both the master and the slave device to be
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`electrically or physically coupled to the charging device for the device to perform
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`the functions disclosed therein. See, e.g., Second Petition at 29.
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`4. Kalayjian
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`Kalayjian discloses a “method and system for locating objects using a
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`Bluetooth communications protocol . . ..” Kalayjian at Abstract. Kalayjian fails to
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`disclose a charging case, docking station, main body, or base station.
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`5. Lydon
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`“Lydon features an ‘intermediate device,’ such as a charging device” similar
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`to that seen and described in Hankey and Rabu. Second Petition at 50. The Lydon
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`device “connects to a host device, e.g., an ‘iPhoneTM mobile device,’ and an
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`accessory, e.g., a wireless headset.” Second Petition at 50. Like the Rabu device,
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`Lydon requires that the phone and the accessory both be coupled to the
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`intermediate device to enable functionality, such as “tunneling” commands
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`described throughout. Lydon 7:14-22.
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`III. CLAIM
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