Trials@uspto.gov
`571-272-7822
`
`Paper 27
`Entered: March 27, 2025
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`PROXENSE, LLC,
`Patent Owner.
`____________
`
`IPR2024-002321
`Patent 8,352,730 B2
`____________
`
`
`Before THU A. DANG, KEVIN F. TURNER, and DAVID C. McKONE,
`Administrative Patent Judges.
`
`
`MCKONE, Administrative Patent Judge.
`
`
`ORDER
` Staying Concurrent Reexamination
`35 U.S.C. § 325(d)
`
`
`
`
`
`
`1 IPR2024-01333 has been joined with this proceeding.
`
`
`
`
`571-272-7822
`
`Paper 27
`Entered: March 27, 2025
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`PROXENSE, LLC,
`Patent Owner.
`____________
`
`IPR2024-002321
`Patent 8,352,730 B2
`____________
`
`
`Before THU A. DANG, KEVIN F. TURNER, and DAVID C. McKONE,
`Administrative Patent Judges.
`
`
`MCKONE, Administrative Patent Judge.
`
`
`ORDER
` Staying Concurrent Reexamination
`35 U.S.C. § 325(d)
`
`
`
`
`
`
`1 IPR2024-01333 has been joined with this proceeding.
`
`
`
`
`
`IPR2024-00232
`Patent 8,352,730 B2
`Google LLC filed a Petition (Paper 1, “Pet.”) requesting inter partes
`review of claims 1–6 and 8–17 of U.S. Patent No. 8,352,730 B2 (Ex. 1001,
`“the ’730 patent”). Pet. 5. We instituted a trial on July 24, 2024. Paper 10.
`Apple, Inc. (“Petitioner”) joined the proceeding as a party on October 8,
`2024, filing a duplicate petition. Paper 13. We terminated the proceeding as
`to Google, leaving Apple as the sole Petitioner. Paper 21. An oral argument
`in this proceeding is scheduled for April 22, 2025. Paper 26. A final written
`decision is due by July 24, 2025. See 35 U.S.C. 316(a)(11).
`In the Petition, Petitioner stated that the ’730 patent is the subject of
`ex parte reexamination in In re Proxense, LLC, Application No. 90/015,052
`(filed June 8, 2022) (“the ’052 reexam”). Pet. 75. Patent Owner’s
`Mandatory Notices omitted the ’052 reexam from the listed Related Matters
`pursuant to 37 C.F.R. § 42.8(b)(2). Paper 4. Patent Owner filed no updated
`Mandatory Notices pursuant to 37 C.F.R.§ 42.8(a)(3).2
`By email to the Board on March 25, 2025 (Ex. 3003), the parties
`notified the panel of a March 3, 2025, Office Action in the ’052 reexam in
`which the Examiner proposed an Examiner’s amendment to the claims. The
`parties indicate that the claims of the ’730 patent pending before the Office
`may change if the Examiner enters the amendment. Also on March 25,
`2025, in violation of the Scheduling Order (Paper 11, at 2), Patent Owner
`submitted an unauthorized brief by email detailing communications in the
`’052 reexamination that occurred at least as early as December 2024.
`Although we do not consider these arguments, Patent Owner’s email
`illustrates its awareness of the ’052 reexam and the impact it might have on
`
`
`2 Patent Owner’s Mandatory Notices filed in IPR2024-01333 (Paper 5) lists
`the ’052 reexam as a related matter.
`
`2
`
`
`
`IPR2024-00232
`Patent 8,352,730 B2
`this proceeding. Nevertheless, Patent Owner did not file updated Mandatory
`Notices identifying such developments in the ’052 reexam.
`We held a conference call with the parties on March 27, 2025.
`Petitioner urges us to stay the ’052 reexam because it would be more
`efficient and because of the risk of inconsistent results if it were to proceed.
`Patent Owner argues that a stay would be prejudicial to Patent Owner and
`would be inefficient given the work that the reexamination Examiner has
`already done. Patent Owner further stated that, if the Examiner does issue
`such an amendment, Patent Owner likely would ask us to dispose of the
`current proceeding adverse to Petitioner, either through dismissal or a final
`written decision.
`The Board will not ordinarily stay a reexamination because, in
`absence of good cause, reexaminations are conducted with special dispatch.
`However, good cause exists in this case.
`In deciding whether to grant a stay of a parallel
`proceeding involving the same patent within the Office, the
`Office (typically the Board) may consider a number of factors,
`including, but not limited to:
`• Whether the claims challenged in the AIA proceeding
`are the same as or depend directly or indirectly from
`claims at issue in the concurrent parallel Office
`proceeding;
`• Whether the same grounds of unpatentability or the
`same prior art are at issue in both proceedings;
`• Whether the concurrent parallel Office proceeding
`will duplicate efforts within the Office;
`• Whether the concurrent parallel Office proceeding
`could result in inconsistent results between
`proceedings (e.g., whether substantially similar issues
`are presented in the concurrent parallel Office
`proceeding);
`
`3
`
`
`
`IPR2024-00232
`Patent 8,352,730 B2
`• Whether amending the claim scope in one proceeding
`would affect the claim scope in another proceeding;
`• The respective timeline and stage of each proceeding;
`• The statutory deadlines of the respective proceedings;
`• Whether a decision in one proceeding would likely
`simplify issues in the concurrent parallel Office
`proceeding or render it moot.
`Notice Regarding Options for Amendments by Patent Owner through
`Reissue or Reexamination During a Pending AIA Trial Proceeding (April
`2019), 84 Fed. Reg. 16,654, 16,657 (April 22, 2019).
`All of the claims at issue in this proceeding are subject to the ’052
`reexam. Aug. 2, 2022, Decision on Request for ex parte Reexamination
`(Ex. 2022), 4. The ’052 reexam also considers the patentability of the
`claims over Ludtke, the primary reference in this proceeding. Id. Thus, the
`concurrent ’052 reexam has and will continue to duplicate efforts within the
`Office. These factors weigh in favor of staying the ’052 reexam.
`Continuing to conduct the ’052 reexam concurrently with the instant
`proceeding could potentially result in inconsistencies between the
`proceedings. Cf. CBS Interactive Inc. v. Helferich Patent Licensing, LLC,
`IPR2013-00033, Paper 15 (PTAB Nov. 6, 2012). In particular, the parties
`expect the Examiner to amend the claim scope in the ’052 in a way that
`could affect claim scope in the instant proceeding. The parties’ March 25,
`2025, email raises this issue specifically. Thus, these factors also favor
`staying the ’052 reexam.
`Both the instant proceeding and the ’052 reexam are far along.
`However, the instant proceeding is subject to a statutory deadline of July 24,
`2025, for issuing a final written decision. Thus, a stay of the ’052 reexam
`pending the outcome of this proceeding will be short, unless the parties
`
`4
`
`
`
`IPR2024-00232
`Patent 8,352,730 B2
`pursue appeals of any final written decision in this proceeding. A final
`written decision in this proceeding likely will simplify issues in the ’052
`reexam. Thus, these factors favor staying the ’052 reexam.
`Under the circumstances of this case, we find good cause to exercise
`our discretion to stay the ’052 reexam pending the termination or completion
`of this proceeding.
`
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that ex parte Reexamination No. 90/015,052 is stayed
`pending the termination or completion IPR2024-00232;
`FURTHER ORDERED that all time periods for filing further papers
`in Reexamination Control No. 90/015,052 are tolled for the duration of the
`stay, and no further papers shall be filed in the reexamination while this stay
`remains in place, without authorization; and
`FURTHER ORDERED that, when the stay is lifted, a paper will be
`sent resetting the time periods for responding to any outstanding papers in
`Reexamination Control No. 90/015,052.
`
`
`
`
`
`
`5
`
`
`
`IPR2024-00232
`Patent 8,352,730 B2
`FOR PETITIONER:
`
`Philip W. Woo
`D. Stuart Bartow
`Monte T. Squire
`Paul Belnap
`DUANE MORRIS
`pwwoo@duanemorris.com
`dsbartow@duanemorris.com
`mtsquire@duanemorris.com
`phbelnap@duanemorris.com
`
`FOR PATENT OWNER:
`
`David L. Hecht
`James Zak
`HECHT PARTNERS LLP
`dhecht@hechtpartners.com
`jzak@hechtpartners.com
`
`
`6
`
`
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