IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Seung Jin Kim
`In re Patent of:
`10,455,066 Attorney Docket Nos.: 39521-0092IP2
`U.S. Patent No.:
`Oct. 22, 2019
`39521-0092IP3
`Issue Date:
`Appl. Serial No.: 15/563,937
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`Filing Date:
`Oct. 2, 2017
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`Title:
`MOBILE SYSTEM WITH WIRELESS EARBUD
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`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`PETITIONER’S NOTICE RANKING AND EXPLAINING MATERIAL
`DIFFERENCES BETWEEN PETITIONS FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 10,455,066
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`Seung Jin Kim
`In re Patent of:
`10,455,066 Attorney Docket Nos.: 39521-0092IP2
`U.S. Patent No.:
`Oct. 22, 2019
`39521-0092IP3
`Issue Date:
`Appl. Serial No.: 15/563,937
`
`Filing Date:
`Oct. 2, 2017
`
`Title:
`MOBILE SYSTEM WITH WIRELESS EARBUD
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`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
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`PETITIONER’S NOTICE RANKING AND EXPLAINING MATERIAL
`DIFFERENCES BETWEEN PETITIONS FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 10,455,066
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`Attorney Docket No. 39521-0092IP2 & IP3
`IPR of U.S. Patent No. 10,455,066
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`Apple previously filed a petition in PGR2020-00066 (“Petition 1”)
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`challenging claims of U.S. Patent No. 10,455,066 (“the ’066 Patent”) on June 11,
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`2020. Apple now files two additional petitions in IPR2021-00220 (“Petition 2”)
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`and IPR2021-00221 (“Petition 3”), each also challenging claims of the ’066 Patent.
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`Pursuant to the November 2019 Consolidated Trial Practice Guide (“CTPG”), this
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`paper provides: “(1) a ranking of the petitions in the order in which [Petitioner]
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`wishes the Board to consider the merits, if the Board uses its discretion to institute
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`any of the petitions, and (2) a succinct explanation of the differences between the
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`petitions, why the issues addressed by the differences are material, and why the
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`Board should exercise its discretion to institute additional petitions.” CTPG, 59-61.
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`I.
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`Ranking of Petitions
`All three petitions are meritorious and institution of each is justified, in
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`isolation and together. Petition 1 advances references establishing that features
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`recited by the ’066 Patent claims would have been obvious as early as 2007, almost
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`eight years before the ’066 Patent’s purported priority date. Petition 2 advances
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`several distinct references that each independently establish prior art disclosure of
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`every limitation recited by the challenged claims, and these disclosures are
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`acknowledged by Pinn itself. Petition 2, Section II. Petition 3 demonstrates that
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`Apple possessed a system that discloses every limitation of the challenged claims
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`before the ’066 Patent’s purported priority date. Still, if the Board decides that
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`discretion should be exercised to deny one or more of these worthy petitions,
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`Attorney Docket No. 39521-0092IP2 & IP3
`IPR of U.S. Patent No. 10,455,066
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`Petitioner requests that the Board institute at least two petitions and prioritize
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`institution among them as follows: Petition 1, Petition 2, and Petition 3.
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`II. Material Differences and Additional Factors that Compel Permitting
`Multiple Petitions
`Priority Date—Petition 2 exposes a defect in the priority claim of the ’066
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`patent, and thus, applicability of prior art advanced within the petition.
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`Specifically, the ’066 Patent is not entitled to the filing date of U.S. Provisional
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`Application No. 62/142,978 (“the ’978 Provisional”) and, as Petition 2 points out,
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`the earliest effective filing date of the ’066 patent is therefore July 31, 2015.
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`Petition 2, Section III.B. Petition 2 relies on primary references that pre-date this
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`earliest effective filing date, but which do not predate the ’978 Provisional filing
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`date. In fact, a further priority analysis is required under Dynamic Drinkware to
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`apply Petition 2 primary references to this earliest effective filing date. Petition 2,
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`Sections V.A.1, V.D.1. Thus, with respect to Petition 2, two opportunities for
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`dispute on priority exist. While each is addressed thoroughly within Petition 2,
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`absent concession by Pinn, a full resolution of priority-related issues will not be
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`known until well after institution of either Petition 1 or 2. Notably, Pinn
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`acknowledges that each Watson reference provides disclosure of essentially all of
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`the accused features in the litigation. Petition 2, Section II. This issue distinguishes
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`2
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`Petition 2 from Petitions 1 and 3, as Petition 1 and Petition 3 prior art do not
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`Attorney Docket No. 39521-0092IP2 & IP3
`IPR of U.S. Patent No. 10,455,066
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`require any priority date analysis.
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`Institution of Petition 2 with either of Petition 1 or Petition 3 is fully
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`consistent with the guidance offered by the CTPG. CTPG, 59. Notably, page 59 of
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`the CTPG indicates that “the Board recognizes that there may be circumstances in
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`which more than one petition may be necessary, including, for example,… when
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`there is a dispute about priority date requiring arguments under multiple prior art
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`references.” Here, in Petition 2, Petitioner notes the existence of two disputes
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`involving priority date, and the unresolved nature of these priority date issues
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`creates uncertainty, which leads Petitioner to rank Petition 2 lower than Petition 1,
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`despite the clear case of unpatentability demonstrated through Petition 2 prior art,
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`endorsed by Pinn’s acknowledgement that each of the Watson references discloses
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`essentially all of the accused features in the litigation. Petition 2, Section II.
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`Substantive Differences Between the Petitions—At bottom, the Petitions
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`are non-redundant, and this is evident when considering their respective reliance
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`on different combinations of references that address the claim elements in
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`materially different ways. To this point, Petition 1 highlights disclosure within
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`Hankey Group of a docking/charging device with a user-selectable button
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`(APPLE-1005, 6:17-19) and of soliciting user input prior to performing wireless
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`pairing via a user prompt that requires a user response (APPLE-1005, 15:65-16:3).
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`Petition 1 explains how Lydon complements wireless pairing functionality of the
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`Attorney Docket No. 39521-0092IP2 & IP3
`IPR of U.S. Patent No. 10,455,066
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`type found in, e.g., Hankey Group, by promoting input using an existing charging
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`device button to solicit user input as a condition precedent to pairing. APPLE-
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`1007, 23:23-33. As such, the Hankey Group and Lydon combination promotes
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`convenience, particularly when user access to a smartphone may be limited and
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`where the earbud case may be readily available for physical manipulation in
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`response an inbound call whose ring creates an exigent circumstance.
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`By contrast, Petition 2 applies Watson-350 and Watson-510 as primary
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`references, and each reveals to a POSITA access to a button on a charging case
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`configured to initiate a process, when pressed, whereby an ear bud is placed into
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`discovery mode for pairing via Bluetooth with a smartphone. APPLE-1053,
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`[0038]-[0040]; APPLE-1054, [0037]-[0039]; APPLE-1051, [0047]; APPLE-1052,
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`[0046]. In particular, Watson-350’s “wireless ear bud case determines whether a
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`user has performed an action, (e.g., pushed a button on the wireless ear bud case),
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`the action indicating that the user wants the wireless ear buds to be discoverable
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`for connections to other communication devices” and “as the button 360 has been
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`pressed, the wireless ear bud case 300 causes the wireless ear buds 305, 310 to
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`become discoverable to new connections with other communication devices.”
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`APPLE-1053, [0050], [0039]-[0040]; APPLE-1054, [0049], [0038]-[0039]; see
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`Petition 2, Ground 1A, 1[d]. Similarly, Watson-510’s “wireless ear bud case 400
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`also includes an input 460, such as a depressible button, to receive manual input to
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`Attorney Docket No. 39521-0092IP2 & IP3
`IPR of U.S. Patent No. 10,455,066
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`cause the wireless ear buds 405, 410 in the wireless ear bud case 400 to pair to
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`each other and/or to become discoverable to other devices, such as to companion
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`communication devices.” APPLE-1051, [0047]; APPLE-1052, [0046]; see Petition
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`2, Ground 2A, 1[d].
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`Petition 3 applies references that collectively describe Apple’s Bluetooth
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`Headset system, which reveal Apple possessed a system that discloses every
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`limitation of the challenged claims before the ’066 Patent’s purported priority date.
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`The references describe Apple’s Bluetooth Headset system as including a wireless
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`earbud and charging stations, and when the iPhone and earbud are connected to the
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`charging station, the earbud pairs with the iPhone automatically and the iPhone
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`screen shows the headset’s battery level. APPLE-1100, 2-3, 7.
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`These distinct primary references, in combination with various secondary
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`references, apply differently to the claims of the ’066 Patent. Additionally,
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`motivation to combine the distinct sets of references presented in the three
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`Petitions materially differs. In summary, the Petitions are not redundant,
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`duplicative, or substantially similar. Each Petition provides a strong showing of
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`unpatentability and/or obviousness, without repeating the same theory.
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`Accordingly, Petitioner requests that the Board institute trial on all Petitions.
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`Dated: November 23, 2020
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`Attorney Docket No. 39521-0092IP2 & IP3
`IPR of U.S. Patent No. 10,455,066
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`Respectfully submitted,
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` /W. Karl Renner/
`W. Karl Renner, Reg. No. 41,265
`Kim Leung, Reg. No. 64,399
`Usman Khan, Reg. No. 70,439
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
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`Attorneys for Petitioner
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`Attorney Docket No. 39521-0092IP2 & IP3
`IPR of U.S. Patent No. 10,455,066
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4)(i) et seq. and 42.105(b), the under-signed
`certifies that on November 23, 2020, a complete and entire copy of this Notice
`Ranking Petitions was provided via FedEx, to the Patent Owner by serving the
`correspondence address of record as follows:
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`KASHA LAW LLC
`14532 Dufief Mill Rd.
`North Potomac, MD 20878
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`/Edward G. Faeth/
`Edward G. Faeth
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(202) 626-6420
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