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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`GUI GLOBAL PRODUCTS, LTD.,
`Patent Owner
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`Case IPR2021-01292
`Patent 10,589,320
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`PETITIONER’S NOTICE RANKING AND EXPLAINING MATERIAL
`DIFFERENCES BETWEEN PETITIONS
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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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`GUI GLOBAL PRODUCTS, LTD.,
`Patent Owner
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`Case IPR2021-01292
`Patent 10,589,320
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`PETITIONER’S NOTICE RANKING AND EXPLAINING MATERIAL
`DIFFERENCES BETWEEN PETITIONS
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`Atty. Dkt. 50095-0031IP2
`U.S. Patent No. 10,589,320
`Apple previously filed a petition in IPR2021-00473 (“Apple’s Petition”)
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`challenging claims of U.S. Patent No. 10,589,320 (“the ’320 Patent”) on February
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`5, 2021. The Board has yet to render an institution decision based on Apple’s
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`Petition. Apple now files an additional petition in IPR2021-01292 (“Copycat
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`Petition”) challenging claims of the ’320 Patent with a conditional motion for joinder
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`to Samsung’s IPR2021-00338 proceeding, which was instituted on July 2, 2021.
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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
`The merits of Apple’s Petition are particularly strong. As demonstrated in
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`Apple’s Petition with reference to Dr. Cooperstock’s testimony and additional
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`evidence, institution would result in invalidation of the challenged claims of the ’320
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`Patent. Apple respectfully requests that the Board prioritize institution of Apple’s
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`Petition over consideration of the Copycat Petition.
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`1
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`Atty. Dkt. 50095-0031IP2
`U.S. Patent No. 10,589,320
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`II. Material Differences Between the Petitions
`Apple’s Petition and the Copycat Petition each demonstrate the obviousness
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`of claims of the ’320 Patent, but they do so on the basis of different combinations of
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`references that address the respectively challenged claims in materially different
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`ways. At bottom, the petitions are non-redundant in their reliance on these different
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`combinations of references.
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`The grounds of rejection set forth in Apple’s Petition each feature U.S. Patent
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`Publication No. 2008/0132293 (Gundlach) as a primary reference. Gundlach
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`describes wireless headsets having “relatively thin shape[s] [that] may allow the
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`headset[s] to be stored and charged in…portable cradle[s]” that are described as
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`incorporating embedded magnets and/or mechanical elements for headset retention.
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`Gundlach, [0003], [0005], [0055]-[0056], [0068], [0073], [0075], Figures 10a-19b.
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`Further, and as explained at length in Apple’s Petition, a POSITA would have found
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`it obvious in view of U.S. Patent No. 7,548,040 (Lee) to modify Gundlach to
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`incorporate inductive charging components. See Apple’s Petition, 7-16.
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`In contrast, the grounds of rejection set forth in the Copycat Petition feature
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`U.S. Patent Publication No. 2010/0227642 (Kim) as a primary reference. Kim
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`describes mobile terminals (e.g., smart phones and devices with watch-type form
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`factors) that include “a main device (first device) 100 and one or more sub-devices
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`(second devices) 300a to 300n that can be detachably attached to the main device”
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`2
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`Atty. Dkt. 50095-0031IP2
`U.S. Patent No. 10,589,320
`using magnetic components. Kim, [0069], [0070], [0181], [0185], [0218].
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`As is apparent, Gundlach and Kim offer very different disclosures that, in
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`combination with non-overlapping secondary
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`references, demonstrate
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`the
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`obviousness of the ’320 Patent’s claims in materially different ways. Additionally,
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`the motivations to combine the distinct sets of references presented in each of the
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`two petitions materially differ. In at least these ways, Apple’s Petition and the
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`Copycat Petition offer non-redundant, non-duplicative, and substantially dissimilar
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`challenges to a patent that has been simultaneously asserted against each of Apple
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`and Samsung. In summary, each petition provides strong showings of obviousness,
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`without repeating the same theories.
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`III. Additional Factors that Support Institution in the Alternative
`The purpose of the Copycat Petition and the accompanying conditional
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`motion for joinder is twofold: (1) to avoid the unnecessary cost of duplicative
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`litigation in different forums on the subject of validity over printed publication prior
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`art; and (2) to avoid potentially inconsistent decisions from different forums
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`addressing the same prior art grounds. If the Board were to deny both Apple’s
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`Petition and the Copycat Petition, Apple would have no choice but to pursue its
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`printed publication invalidity grounds in district court, separate and apart from the
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`already-instituted proceeding in IPR2021-00338. Additionally, because Apple is
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`unrelated to the petitioner in IPR2021-00338, settlement and termination of
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`3
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`Atty. Dkt. 50095-0031IP2
`U.S. Patent No. 10,589,320
`IPR2021-00338 would harm Apple if both Petitions were denied. See Iron Oak
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`Techs., LLC v. Samsung Elecs. Co., LTD., IPR2018-01554, Paper 9 at 29 (PTAB
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`Feb. 13, 2019). Patent Owner’s infringement suit against Apple would remain, and
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`the ’320 Patent’s challenged claims would go untested at the PTAB.
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`On the other hand, institution in the alternative of either Apple’s Petition or
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`the Copycat Petition would promote adjudication of all printed publication prior art
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`by the PTAB, and likely also result in a stay of the district court litigation. EX1116,
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`2 (noting that stay will be unopposed if Apple’s originally-filed petitions are
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`instituted). As such, the present circumstances offer a prime opportunity for IPR to
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`serve its intended role as a true alternative to district court litigation. The Board’s
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`final written decision in a proceeding involving the ’320 Patent and Apple as a
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`petitioner would bind Apple via the § 315(e)(2) estoppel before a jury trial, and
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`thereby promote judicial efficiency.1 See Apple Inc. v. Fintiv, Inc., IPR2020-00019,
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`Paper 11 at 6 (PTAB 2020).
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`More specifically, Apple respectfully requests that the Board institute Apple’s
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`Petition, which would promote adjudication of Apple’s and Samsung’s printed
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`publication invalidity grounds by a single forum—the PTAB—which could serve as
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`1 The district court as yet to set a trial date, and there is no reasonable expectation
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`that it will schedule a trial ahead of the Board’s final written decision.
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`4
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`Atty. Dkt. 50095-0031IP2
`U.S. Patent No. 10,589,320
`a true alternative to the district court litigation. Cf. Snap, Inc. v. SRK Technology
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`LLC, IPR2020-00820 Pap. 15 at 9, 19 (PTAB Oct. 21, 2020)(precedential); Sotera
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`Wireless, Inc. v. Masimo Corp., IPR2020-01019 Pap. 12 at 19-21 (PTAB Dec. 1,
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`2020)(precedential). However, if the Board were to decline to institute Apple’s
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`Petition, the next-most efficient course of action would be for the Board to institute
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`the Copycat Petition. That would enable the parties to avoid the unnecessary costs
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`of duplicative litigation in different forums on the subject of validity over the same
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`prior art grounds, and would also avoid the possibility of potentially inconsistent
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`decisions from different forums addressing those grounds. Indeed, a single Board
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`decision may dispose of the issues raised in IPR2021-00338 for all interested parties.
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`IV. CONCLUSION
`For at least these reasons, Apple respectfully submits that efficiency and
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`integrity of the system as whole would be best served by instituting Apple’s Petition,
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`and requests that the Board prioritize institution of Apple’s Petition. However, if
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`the Board were to deny institution of Apple’s Petition, Apple alternatively requests
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`that the Board institute review of IPR2021-01292 and grant Apple’s conditional
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`motion to join Samsung’s already-instituted IPR2021-00338 proceeding.
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`5
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`Atty. Dkt. 50095-0031IP2
`U.S. Patent No. 10,589,320
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`Dated: July 30, 2021
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`(Control No. IPR2021-01292)
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`Respectfully submitted,
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` /Andrew B. Patrick/
`W. Karl Renner, Reg. No. 41,265
`Andrew B. Patrick, Reg. No. 63,471
`Roberto Devoto, Reg. No. 55,108
`Kenneth Wayne Darby Jr., Reg. No. 65,068
`Kim Leung, Reg. No. 64,399
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` Attorneys for Petitioner
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`6
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`CERTIFICATE OF SERVICE
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`Atty. Dkt. 50095-0031IP2
`U.S. Patent No. 10,589,320
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`Pursuant to 37 CFR § 42.6(e), the undersigned certifies that on July 30, 2021,
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`a complete and entire copy of this Notice Ranking Petitions was provided via
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`Express Mail, to the Patent Owner by serving the correspondence address of record
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`as follows:
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`Mossman, Kumar & Tyler PC
`P.O. Box 421239
`Houston TX 77242
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`/Crena Pacheco/
`Crena Pacheco
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(202) 783-5070
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