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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 IPR2021-00221
`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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`IPR2021-00221
`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 ........................................................................................... 6
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`A. The ’066 Patent ......................................................................................... 6
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`B.
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`Patent Owner’s Patent Infringement Action ..............................................17
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`C.
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`Petitioner’s Grounds of Challenge ............................................................18
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`1. Apple BT Headset .................................................................................19
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`2. Lydon ....................................................................................................21
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`3. Rabu ......................................................................................................21
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`4. Kalayjian ...............................................................................................22
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`5. Kim .......................................................................................................22
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`III. CLAIM CONSTRUCTION ..........................................................................22
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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 PLASTIC. .............................................................................23
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`1. Apple Previously Filed Two Petitions Directed to the Same Claims of the
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`Same Patent. ......................................................................................................24
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`2. Apple Knew of the Prior Art Asserted in the Third Petition at the Time of
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`Filing the First Petition. .....................................................................................25
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`3. Apple Already Had Received Patent Owner’s Preliminary Response to its First
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`Petition at the Time of Filing its Third Petition. .................................................26
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`4. Apple has Known of the Prior Art Asserted in the Third Petition Since as Early
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`as 2007...............................................................................................................26
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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 Third Petition. ...............................................................27
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`6. The Board’s Resources Would Be Better Spent Elsewhere. .........................28
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`7. The Final Determination Will Not be Made until 2022, Long After the
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`Underlying District Court Proceeding is Decided. .............................................29
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`V. THE DIRECTOR SHOULD EXERCISE DISCRECTION UNDER 35
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`U.S.C. § 314(a) AND DENY INSTITUTION UNDER FINTIV. ......................30
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`1. The Court Denied Apple’s Motion to Stay. ..................................................31
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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. ............................................................................................31
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`3. Significant Investment Has Been Made in the Parallel Proceeding by the Court
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`and the Parties. ...................................................................................................33
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`4. There is Complete Overlap Between Issues Raised in the Third Petition and in
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`the Parallel Proceeding. .....................................................................................34
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`5. The Petitioner Here and the Defendant in the Parallel Proceeding are the Same
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`Party. .................................................................................................................35
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`6. Other Circumstances, Including the Lack of Merit in Petitioner’s Arguments,
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`Favor Denial of Institution. ................................................................................35
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`VI. THE PETITION SHOULD BE DENIED BECAUSE NO GROUND
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`ESTABLISHES A REASONABLE LIKLIHOOD OF SUCCESS ..................36
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`A. None of the BT Headset, Rabu, or Lydon, Nor Any Combination Thereof
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`Renders Obvious Key Limitations of the Challenged Claims .............................37
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`B.
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`The Addition of Kalayjian to the BT Headset, Rabu, and Lydon Combination
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`Fails to Render Obvious the Challenged Claims ................................................44
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`C.
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`The Addition of Kim to the BT Headset, Rabu, Lydon, and Kalayjian
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`Combination Fails to Render Obvious the Challenged Claims ...........................45
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`D.
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`Petitioner Has Failed to Show that a Person Having Ordinary Skill in the Art
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`Would Be Motivated to Combine Petitioner’s Asserted References ...................46
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`E.
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`Invalidity Grounds Are Redundant ...........................................................49
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`VII. THE DIRECTOR SHOULD DENY INSTITUTION UNDER 35 U.S.C. §
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`IPR2021-00221
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`325(d) BECAUSE SUBSTANTIALLY THE SAME PRIOIR ART WAS
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`PREVIOUSLY PRESENTED TO THE OFFICE. ...........................................50
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`1. Substantially the Same Art was Previously Presented to the Office .............51
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`2. Petitioner has Failed to Demonstrate that the Office Committed Material Error.
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`VIII. CONCLUSION .........................................................................................57
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`
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`Cases
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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., IPR2021-00220 ......................................................... 25, 39
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`Apple Inc. v. Pinn, Inc., PGR2020-00066 ............................................. 2, 25, 26, 28
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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, 30
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`TQ Delta, LLC v. Cisco Sys., 942 F.3d 1352, 2019 U.S. App. LEXIS 34865 (Fed.
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`Cir. 2019) ...................................................................................................... 4, 46
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`Statutes
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`35 U.S.C. § 314(a) ................................................................................ 5, 23, 33, 50
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`35 U.S.C. § 325(d) ................................................................................ 6, 50, 52, 57
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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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`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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`PINN-2008
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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, Case No. 19-cv-1805
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`Excerpts from the Prosecution History of the ’066
`Patent
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`Excerpts of Expert Report and Disclosure of Scott
`M. Nettles, Ph.D., Rebuttal Expert Report of Dr.
`Scott Nettles, Ph.D. to the Report of Jonathan
`Wells Concerning Validity of U.S. Patent Nos.
`9,807,491, 10,455,066, and 10,609,198, Pinn, Inc.
`v. Apple Inc., Case No. 8:19-cv-01805, C.D. Cal.,
`Sept. 8, 2020 (Non-Confidential Sections)
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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,
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`Inc.’s Second Amended Complaint
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`PINN-2014
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`RESERVED
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`PINN-2015
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`Order Adopting Technical Special Master’s Report
`and Recommendation Regarding Claims
`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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`IPR2021-00221
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`As indicated in its notice ranking petitions, this is Petitioner Apple, Inc.’s
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`third petition (its second for Inter Partes Review) to the Board challenging claims
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`1, 4, 6, 9, 10, 14, 21, 30, 34, 36 and 38 of U.S. Patent No. 10,455,066 (the “’066
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`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 Plastic factors and the Fintiv factors heavily favor denial of
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`this additional follow-on petition under 35 U.S.C. § 314(a). Apple asserts prior art
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`that it owns, has known about since it came into existence, and that overlaps with
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`the denied petition in PGR2020-00066. See, e.g., Apple Inc. v. Pinn, Inc.,
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`PGR2020-00066, Paper No. 2. The advanced state of the parallel district court
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`proceeding (Pinn Inc. v. Apple Inc., Case No. 19-1805-DOC-JDE (C.D. Cal.))
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`strongly favors denial under 35 U.S.C. § 314(a). The parties are proceeding with
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`pretrial matters, argued motions in limine last week, and trial is scheduled to start
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`March 16, 2021, although the Court has indicated that it likely will be reset to
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`September 14, 2021, more than a year before the Board’s projected statutory
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`deadline to issue a final written decision. Further, the overlap of the issues between
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`the district court proceeding and this Third Petition are complete, as can be seen
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`from a comparison of Apple’s expert report in the district with the grounds asserted
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`in the Third Petition. See, e.g., PINN-2001 at 161-207; Third Petition at 1. The
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`Third Petition also overlaps significantly with the First and Second Petitions. For
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`example, as put before the district court (see, e.g., PINN-2008 at ¶¶ 100, 217, 332)
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`and acknowledged by the Board in deciding to deny Apple’s First Petition, Apple’s
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`primary reference in this Third Petition (the BT Headset) is cumulative and
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`redundant of the references already put in front of the Board in the First and
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`Second Petitions. See Apple Inc. v. Pinn, Inc., PGR2020-00066 Paper 16 at 13.
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`Additionally, the Board should exercise its discretion to deny under 35
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`U.S.C. § 325(d), because Apple’s Third Petition presents substantially the same
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`prior art that was already before the Office during prosecution of the ’066 Patent
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`(as well as substantially the same prior art as was before the Board in the First and
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`Second Petitions). Petitioner has also failed to show a reasonable likelihood that at
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`least one of the challenged claims would be found invalid. The asserted references
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`explicitly teach away from the combinations put forth in the Petition and fail to
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`teach limitations of the challenged claims. For example, no grounds asserted teach
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`a mobile base station, and no cited reference teaches a button on a base station that
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`initiates “wireless” pairing between an earbud and a smartphone. Apple’s Petition,
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`exhibits, and expert declaration additionally fail to establish that a PHOSITA
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`would have been motivated to combine the asserted references as Apple does in
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`Grounds 1A-1C of the Third Petition, because the references teach away from such
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`combinations. See, e.g., TQ Delta, LLC v. Cisco Sys., 942 F.3d 1352, 2019 U.S.
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`App. LEXIS 34865, *8-9 (Fed. Cir. 2019). Instead, Petitioner and its expert have
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`improperly used the ’066 Patent as a roadmap to piece together their invalidity
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`arguments. This Third Petition should be denied, and no trial instituted, because
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`the facts of this case heavily favor discretionary denial, and there is no “reasonable
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`likelihood that the petitioner would prevail with respect to at least one of the
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`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 Plastic factors 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 Tech., Inc. show that advanced district court litigation
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`generally “implicates considerations of efficiency and fairness” that militate in
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`favor of institutional denial. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at
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`11 (precedential); see also TPG, November 2019 (available at https://www.
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`uspto.gov/TrialPracticeGuideConsolidated) at 58; NHK Spring Co., Ltd. v. Intri-
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`Plex Tech., Inc., IPR2018-00752, Paper 8 at 20 (precedential); Apple Inc. v. Pinn,
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`Inc., PGR2020-00066, Paper 16. The parallel district court case here is farther
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`along than in both Fintiv and NHK. The parties started the claim construction
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`process in March 2020, and the Special Master held a Markman hearing in June
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`2020. Fact discovery closed in early August, 2020. The parties served expert
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`reports and completed expert discovery. The Court has ruled on the parties’
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`summary judgment and Daubert motions, heard objections and adopted the Special
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`Master’s Report and Recommendation Regarding Claims Construction (PINN-
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`2015, Case No. 1805, ECF 312), and, as part of the pretrial process, has authorized
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`the Special Master to hear motions in limine and to resolve two additional claim
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`construction issues in advance of trial. Trial remains officially set for March 16,
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`2021 (PINN-2016, Case No. 1805, ECF 312) but is expected to be reset to
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`September 14. Denial of Apple’s Third Petition is appropriate under § 314(a) in
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`view of the advanced state of the district court case and the resources already spent
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`and dedicated by the court and parties preparing for the upcoming trial. See Fintiv,
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`Paper 15; NHK, 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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`Third Petition presents substantially the same prior art or arguments as was already
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`before the Office, and, if that is the case, then the Board requires that the Petitioner
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`demonstrate how the Office erred in a way material to patentability. See Advanced
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`Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH, IPR2019-01469,
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`Paper 6 at 7 (precedential). Apple has failed to make the requisite showing because
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`Apple’s Third Petition, like its First and Second Petitions, offers prior art that is
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`substantially the same as that which was before the Office during prosecution.
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`Apple does not even attempt to demonstrate that the Office erred in any way, much
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`less in a way material to patentability. Therefore, the Board should exercise
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`discretion under § 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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`wireless pairing between the wireless earbud and the smartphone by pressing the
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`user input button on the main body. Id. at 33:28-34. The ’066 Patent discloses that
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`pressing the user input button causes the processor of the main body to execute
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`instructions in the memory of the main body to initiate the pairing. Id. No wired
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`connection between the smartphone and the base station is necessary (or
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`contemplated) for the base station to initiate processing for wireless pairing
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`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 at
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`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 and
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`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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`10
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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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`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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`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. (“Patent Owner” or “Pinn”)
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`filed a Complaint for Patent Infringement (APPLE-1022) against Petitioner in the
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`United States District Court for the Central District of California, alleging that
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`Apple infringes Claims 1, 9, and 10 of U.S. Pat. No. 9,807,491, and that would
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`infringe certain claims of the then-pending ’066 Patent that had been allowed.
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`When they issued, Pinn amended its complaint to allege infringement of Claims 1,
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`2, 4, 6, 9, 10, 12, 14, 24-28, 30, 34, and 36 of the ’066 Patent. Pinn alleges and
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`intends to present evidence and argument to the jury that Apple infringes Claims 9,
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`10, 14, 30, and 34 of the ’066 Patent. The Opening Report or Apple’s expert,
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`Jonathan Wells, served August 14, 2020 (see PINN-2001 at 1) demonstrates the
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`complete overlap between this Third Petition and the district court case. In his
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`invalidity report, Dr. Wells relies on all the same art asserted here, presented in the
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`same combinations and grounds, which Apple admits. See, e.g., PINN-2001 at
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`161-207. Judge Carter denied Apple’s motion to stay the district court case on
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`August 27, 2020. PINN-2002, Order Denying Apple’s Motion to Stay Litigation
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`Pending 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 Third Petition rely upon one
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`reference: the Apple BT Headset. See Third Petition at 1. As explained by Patent
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`Owner’s expert in the district court proceedings, the BT Headset is almost (if not
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`completely) identical to the Rabu and Lydon references, rendering the grounds
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`presented herein both horizontally and vertically redundant. See PINN-2008 at ¶
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`100. Petitioner additionally relies on U.S. Pat. No. 8,086,281 to Rabu et al.
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`(“Rabu”), U.S. Pat. No. 8,078,787 to Lydon et al. (“Lydon”), U.S. Pat. App. Serial
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`No. 2008/0125040 to Kalayjian (“Kalayjian”), and U.S. Pat. App. Pub. No.
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`2017/0272561 to Kim (“Kim”). The petitioned grounds for rejection are as
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`follows:
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`Actual
`Ground
`Number
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`Petitioner’s
`Numbering
`Scheme
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`1
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`2
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`1A
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`1B
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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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`BT Headset, Lydon,
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`and Rabu
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`Obviousness
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`9, 10, 14, 21,
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`BT Headset, Lydon,
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`(§103)
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`30, 34, 36
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`Rabu, and Kalayjian
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`3
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`1C
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`Obviousness
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`(§103)
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`BT Headset, Lydon,
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`Rabu, Kalayjian, and
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`Kim
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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. Apple BT Headset
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`The Apple BT Headset is a device released by Apple in 2007. Third Petition
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`at 5. The BT Headset includes a docking station and an earbud, and the docking
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`station comes in two embodiments, called the “Dual Dock” and the “Travel
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`Cable”:
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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 Third Petition and supporting Exhibits later in this
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`proceeding, consistent with the Board’s Rules and practice.
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`Third Petition at 6; APPLE-1100 at 2, 3. Both embodiments of the BT Headset
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`docking station require the docking stations to be plugged in (for example, to a
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`computer) to function, which is evident from Apple’s proffered evidence:
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`power cable
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`power cable
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`Third Petition at 6; APPLE-1102 at 2 (cropped) (“power cable” labels added by
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`Patent Owner). The Dual Dock and the Travel Cable both further require the phone
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`to be physically connected to the docking station to affect any interaction with the
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`phone. See, e.g., APPLE-1100 at 2, 3. The BT Headset discloses no buttons or
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`operators at all on the docking station, but instead discloses that a button on the
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`earbud can be used to make the earbud discoverable. See APPLE-1100 at 8.
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`2. Lydon
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`“Lydon describes an ‘intermediate device,’ similar to the BT Headset
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