Apple, Inc.
`Petitioner
`v.
`Proxense, LLC
`Patent Owner
`
`IPR2024-00232 and IPR2024-00233
`
`
`
`April 22, 2025
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`1
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`

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`Introduction
`
`• The claimed transaction allows a user to access an application
`
`• The grounds for invalidity do not match the claims
`
`• The petition was built on a bad foundation
`
`IPR2024-00232 and IPR2024-00233.
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`

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`The claimed transaction allows a user access to an application
`
`730 Patent, 9:10-45.
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`954 Patent, 10:5-27.
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`3
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`

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`Both Petitions Assert Ludtke's Disclosure of a Purchase
`
`IPR2024-00232, Petition (Paper 1), 26.
`
`IPR2024-00233, Petition (Paper 1), 31-32.
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`The Petition Does Not Match the Claims
`
`730 Patent, claim 1;
`see also 954 Patent claim 1.
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`IPR2024-00232, Petition (Paper 1), 26;
`see also IPR2024-00233, Paper 1, 31-32.
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`5
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`The Petitions were Built on a Bad Foundation (the 905 Patent)
`
`Petitions rely on U.S. Patent No. 9,298,905
`to argue Ludtke discloses a
`"third-party trusted authority":
`
`But the 905 Patent claimed a
`different transaction:
`
`IPR2024-00232, Petition (Paper 7), 4.
`
`905 patent, claim 1.
`
`730 patent, claim 1.
`
`IPR2024-00233, Petition (Paper 7), 4.
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`954 patent, claim 1.
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`6
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`A Much Stronger Foundation is Before the Board
`
`EPR 90/015,052, Non-Final Office Action, mailed Sep. 12, 2024;
`See also IPR2024-00232, Paper 6, 14 ("these [EPRs] are cumulative of the art and arguments raised here: Ludtke"); Exs. 1024, 2020-
`2027 (concerning EPR 90/015,052).
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`4
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`The EPR is Not New/Supplemental Evidence
`
`37 C.F.R. § 42.23
`
`(b) A sur-reply may only respond to
`arguments raised in the corresponding
`reply and may not be accompanied by
`new evidence other than deposition
`transcripts of the cross-examination of
`any reply witness.
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`The EPR is Not New/Supplemental Evidence
`
`•
`
`Federal Circuit caselaw is clear that an EPR is part of the intrinsic record that must be considered here --
`"Statements made during reexamination procedures before the PTO are part of the prosecution
`•
`history. See Krippelz v. Ford Motor Co., 667 F.3d 1261, 1266 (Fed. Cir. 2012) (citing Am. Piledriving Equip., Inc. v.
`Geoquip, Inc., 637 F.3d 1324, 1336 (Fed.Cir.2011)." Northpeak Wireless, LLC v. 3COM Corporation, 674 Fed.Appx.
`982, 986, fn.1 (Fed. Cir. 2016).
`"A patent's specification, together with its prosecution history,3 constitutes intrinsic evidence to which the PTAB gives
`priority when it construes claims. Fn.3: A patent's prosecution history 'consists of the complete record of the
`proceedings before the [US]PTO,' which provides 'evidence of how the [US]PTO and the inventor understood
`the patent.' Phillips v. AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (en banc) (citations omitted). See Microsoft
`Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1297–98 (Fed. Cir. 2015)." Knowles Electronics LLC v. Cirrus Logic, Inc., 883
`F.3d 1358, 1361–62 (Fed. Cir., 2018); see also Data Engine Technologies LLC v. GOOGLE LLC, 906 F. 3d 999, FN 2
`(Fed. Cir. 2018) (holding that public records, including prosecution histories, are properly considered when raised in
`opposition of a motion).
`• Microsoft Corp v. Proxyconn, Inc., 789 F.3d 1292 (Fed. Cir. 2015) ("The PTO should also consult the patent's
`prosecution history in proceedings in which the patent has been brought back to the agency for a second
`review. ")
`Interconnect Planning Corp. v. Feil, 774. F.2d 1132, 1139 (Fed. Cir. 1985) ("[A]n examiner's decision on an original or
`reissue application is evidence the court must consider in determining whether the party asserting invalidity has met its
`statutory burden[.]")
`• Fromson v. Advance Offset Plate, Inc., 755 F. 2d 1549, 1355 (Fed. Cir. 1985) ("The Examiner's decision, on an original
`or reissue application, is ...evidence the court must consider in determining whether the party asserting invalidity has
`met its statutory burden by clear and convincing evidence.")
`
`•
`
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`The EPR is Not New/Supplemental Evidence
`
`37 CFR § 1.11 - Files open to the public.
`….
`(d) All papers or copies thereof relating to a reexamination
`proceeding which have been entered of record in the patent
`or reexamination file are open to inspection by the general
`public, and copies may be furnished upon paying the fee
`therefor.
`
`(emphasis added).
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`The EPR is Not New/Supplemental Evidence
`EPR public record under 37 CFR 1.11(d) and the EPRs were raised in both
`Patent Owner Preliminary Responses:
`
`IPR2024-00232, POPR (Paper 6), 14.
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`11
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`IPR2024-00233, POPR (Paper 6), 20-21.
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`The EPR is Not New/Supplemental Evidence
`
`The EPR was again raised in the Patent Owner's Pre-Institution Sur-Reply:
`
`IPR2024-00232, Paper 9, 5 (May 27, 2024).
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`IPR2024-00233, Paper 9, 5 (May 27, 2024.)
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`The EPR is Not New/Supplemental Evidence
`
`The Board Acknowledged the EPR when Instituting
`
`IPR2024-00232, Institution Decision, 2.
`
`IPR2024-00233, Institution Decision, 2-3.
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`The Proceedings are Cumulative
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`The Board Instituted without staying EPR:
`
`IPR2024-00232, Institution Decision, 38.
`
`Deferring to an office action and evaluation of the Examiner would
`have been proper. See In re Vivint, Inc., 14 4th 1342, 1350-1352 (Fed.
`Cir. 2021) (Holding that inconsistent determinations between the
`PTAB and the CRU on substantially the same prior art and arguments
`is arbitrary and capricious in violation of the APA.).
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`The Proceedings are Cumulative
`
`~6 weeks after Institution,
`an Office Action was issued in the
`EPR failing to advance
`substantially the same grounds on
`the same art as presented in the
`Petition.
`
`See EPR 90/015,053, Non-Final Office Action, mailed Sep. 12, 2024.
`See also IPR2024-00232, Paper 6, 14 ("these [EPRs] are cumulative
`of the art and arguments raised here: Ludtke"); Exs. 1024, 2020-2027
`(concerning EPR 90/015,052).
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`The Petitioner’s Attempt to Raise New Grounds by Invoking EPR
`
`IPR2024-00232, Pet. Reply (Paper 16).
`
`EPR 90/015,052, Non-Final Office Action, mailed Nov. 25, 2024.
`See also IPR2024-00232, Paper 6, 14 ("these [EPRs] are cumulative of the
`art and arguments raised here: Ludtke"); Exs. 1024, 2020-2027
`(concerning EPR 90/015,052).
`
`IPR2024-00232, Pet. Reply (Paper 16), 8-9.
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`The Petitioner’s Replies Attempt to Invoke the EPR
`
`IPR2024-00232, Pet. Reply (Paper 16).
`
`EPR 90/015,052 Request for Reexamination
`See also Paper 6, 14 ("these [EPRs] are cumulative of the
`art and arguments raised here: Ludtke"), IPR2024-00232;
`Exs. 1024, 2020-2027 (concerning EPR 90/015,052).
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`IPR2024-00232, Pet. Reply (Paper 16), 8-9.
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`The Proceedings are Cumulative
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`730 Patent, 9:10-45.
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`954 Patent, 10:5-27.
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`Petitioner’s Grounds Were Traversed
`
`IPR2024-00232, Patent Owner Sur-Reply 11.
`
`EPR 90/015,052 Request for Reexamination, 65, 69.
`See also IPR2024-00232, Paper 6, 14 ("these [EPRs] are cumulative
`of the art and arguments raised here: Ludtke");
`Exs. 1024, 2020-2027 (concerning EPR 90/015,052).
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`Petitioner’s Grounds Were Traversed
`
`IPR2024-00233, Patent Owner Sur-Reply 11.
`
`EPR 90/015,052 Request for Reexamination, 65, 69.
`See also IPR2024-00232, Paper 6, 14 ("these [EPRs] are cumulative
`of the art and arguments raised here: Ludtke");
`Exs. 1024, 2020-2027 (concerning EPR 90/015,052).
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`730 Re-Exam Has Decided the Grounds of Patentability Presented in IPR2024-00232 and -0233
`
`Petitioner's Arguments
`
`CRU Decision
`
`New Evidence?
`
`-
`
`-
`
`-
`
`TPCH is a third-party
`trusted authority, due to
`processing a financial
`transaction
`
`Ludtke discloses an
`access message
`permitting additional
`services to be
`downloaded
`
`Ludtke discloses an
`access message
`permitting access to
`stored messages
`
`Grounds raised
`in the Petitions
`fail to establish
`Invalidity.
`
`See e.g. IPR2024-00232, Paper 6, 14 ("these [EPRs] are cumulative of the art and arguments raised here: Ludtke");
`Exs. 1024, 2020-2027 (concerning EPR 90/015,052).
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`Examiner Determined Substantially Similar Claims to the 954 Patent Are Patentable
`
`EPR 90/015,052, Examiner Interview Summary,
`mailed December 17, 2024, at 4.
`
`EPR 90/015,052, Response, filed January 27, 2025, at 37.
`See also IPR2024-00232, Paper 6, 14 ("these [EPRs] are cumulative of the art and arguments raised here: Ludtke");
`Exs. 1024, 2020-2027 (concerning EPR 90/015,052).
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`Examiner Determined Substantially Similar Claims to the 954 Patent Are Patentable
`
`EPR 90/015,052, Final Office Action, mailed March 3, 2025, at 31.
`See also IPR2024-00232, Paper 6, 14 ("these [EPRs] are cumulative of the art and arguments raised here: Ludtke");
`Exs. 1024, 2020-2027 (concerning EPR 90/015,052).
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`052 Re-Exam was Cumulative of IPR2024-00232
`
`Order Staying Concurrent Reexam,
`IPR2024-00232, Paper 27, 4
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`Patent Owner's Attempts to Achieve Consistency
`
`• Filed a statutory disclaimer under 35 U.S.C. 253(a) and 37 C.F.R. 1.321(a) of all claims, including
`those at issue in IPRs. See Ex. 2009, IPR2024-00776; Ex. 2001, IPR2024-01328.
`
`•Made the Board aware of all three related EPRs in Patent Owner Preliminary Response. See
`e.g. IPR-2024-00232, Paper 6, 14; IPR2024-00233. Paper 6, 20-21.
`
`•Presented consistent (“cut-and-paste”) arguments in all proceedings. See IPR2024-00232,
`Papers 6, 9, 14 and 22; IPR2024-00233, Papers 6, 9, 14 and 22
`
`•Detailed EPR proceedings in briefing. See IPR2024-00232, Papers 6, 9, and 22; IPR2024-
`00233, Papers 6, 9, and 22
`
`•Allowed EPR 90/015,054 to go abandoned.
`
`•Requested Adverse Judgement to allow for entry of Examiner’s Amendment. See IPR2024-
`00232, Paper 29.
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