Apple Inc. v. Smith Interface Techs., LLC
`IPR2024-01116 | Smith EX2006
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`Page 1 of 19
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`

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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`www.uspto.gov
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`Fish & Richardson P.C.
`P.O. Box 1022
`
`Minneapolis, MN 55440-1022
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO. 90/019,646 .
`
`PATENT UNDER REEXAMINATION 10656754 .
`
`ART UNIT 3992.
`
`Enclosedis a copyof the latest communication from the United States Patent and Trademark
`Office in the above identified exparte reexamination proceeding (37 CFR 1.550(f)).
`
`Wherethis copy is supplied after the reply by requester, 37 CFR 1.535, or the timefor filing a
`reply has passed, no submission on behalf of the exoarfe reexamination requesterwill be
`acknowledged or considered (37 CFR 1.550(g)).
`
`PTOL-465 (Rev.07-04)
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`Page 2 of 19
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`Page 2 of 19
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`

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`.
`Order Granting Request For
`Ex Parte Reexamination Art Unit|AIA (FITF) StatusExaminer
`
`
`MICHAEL R ROSWELL
`3992
`No
`
`90/019,646
`
`10656754
`
`Control No.
`
`Patent Under Reexamination
`
`
`
`--The MAILING DATEof this communication appears on the cover sheet with the correspondence address--
`
`The requestfor exgarfe reexamination filed 09/05/2024 has been considered and a determination has
`been made. Anidentification of the claims, the references relied upon, and the rationale supporting the
`determination are attached.
`
`Attachments: a)
`Form
`
`PTO-892,
`
`bj
`
`PTO/SB/08,
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`c)¥} Other: Substitute Disclosure
`
`1.
`
`The requestfor exgarfe reexamination is GRANTED.
`
`RESPONSE TIMES ARE SET AS FOLLOWS:
`
`For Patent Owner's Statement (Optional): TWO MONTHS from the mailing date of this communication
`(37 CFR 1.530 (b)). EXTENSIONS OF TIME ARE GOVERNED BY37 CFR 1.550(c).
`
`For Requester's Reply (optional): TWO MONTHS from the date of service of any timely filed
`Patent Owner's Statement (87 CFR 1.535). NO EXTENSION OF THIS TIME PERIOD IS PERMITTED.
`lf Patent Owner does notfile a timely statement under 37 CFR 1.530(b), then no reply by requester
`is permitted.
`
`MICHAEL ROSWELL/
`Primary Examiner, Art Unit 3992
`
`cc:Requester ( if third party requester }
`U.S. Patent and Trademark Office
`PTOL-471G(Rev. 01-13)
`
`Office Action in £x Parte Reexamination
`
`Part of Paper No. 20241008
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`Page 3 of 19
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`Page 3 of 19
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`

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`Application/Control Number: 90/019,646
`Art Unit: 3992
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`Page 2
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`DECISION ON REQUESTFOR EX PARTE REEXAMINATION
`
`This Office action is in response to a request for reexamination of claims 2, 83, 85, 86,
`
`101, 108-115, 118-120, 123-127, 130-132, 134, 136, 137, 142-148, 150-186, 188, 193, 195,
`
`196, 198, 205-208, 217-221, 225, 230, and 232 of US Patent 10,656,754(‘the ‘754 Patent”),
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`submitted by Third Party Requester (PR) on 5 September 2024.
`
`A substantial new question of patentability affecting claims 2, 83, 85, 86, 101, 108-115,
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`118-120, 123-127, 130-132, 134, 136, 137, 142-148, 150-186, 188, 193, 195, 196, 198, 205-
`
`208, 217-221, 225, 230, and 232 of US Patent 10,656,754 is raised by the request for ex parte
`
`reexamination.
`
`The Requesterdid not request reexamination of claims 1, 3-82, 84, 87-100, 102-107,
`
`116, 117, 121, 122, 128, 129, 133, 135, 138-141, 149, 187, 189-192, 194, 197, 199-204, 209-
`
`216, 222-224, 226-229, 231, and 233-365 of the ‘754 Patent and did not assert the existenceof
`
`a substantial new question of patentability for such claims. Subsequently, claims 1, 3-82, 84,
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`87-100, 102-107, 116, 117, 121, 122, 128, 129, 133, 135, 138-141, 149, 187, 189-192, 194,
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`197, 199-204, 209-216, 222-224, 226-229, 231, and 233-365 will not be reexamined. The
`
`Office’s determination in both the order for reexamination and the examination stage of the
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`reexamination ordered will generally be limited solely to a review of the claim(s) for which
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`reexamination was requested (see MPEP §§ 2240 and 2243). Additionally, if a Requester fails
`
`to set forth the pertinency and mannerof applying the cited art to a claim as required by 37 CFR
`
`1.510(b), that claim will generally not be reexamined’.
`
`1 See Sony Computer Entertainment America Inc. v. Dudas, 85 USPQ2d 1594 (E.D. Va 2006).
`The decision of the District Court upheld the Office’s discretion to not reexamine claims in an
`Inter Partes Reexamination proceeding other than those claims for which reexamination had
`specifically been requested.
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`Page 4 of 19
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`Application/Control Number: 90/019,646
`Art Unit: 3992
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`Page 3
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`Scope of Reexamination
`
`Claims 2, 83, 85, 86, 101, 108-115, 118-120, 123-127, 130-132, 134, 136, 137, 142-148,
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`150-186, 188, 193, 195, 196, 198, 205-208, 217-221, 225, 230, and 232 will be reexamined as
`
`requested.
`
`Claims 1, 3-82, 84, 87-100, 102-107, 116, 117, 121, 122, 128, 129, 133, 135, 138-141,
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`149, 187, 189-192, 194, 197, 199-204, 209-216, 222-224, 226-229, 231, and 233-365 are not
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`subject to reexamination.
`
`Information Disclosure Statement
`
`Regarding Information Disclosure Statement (IDS) submissions, MPEP § 2256recites:
`
`“Where patents, publications, and other such items of information are submitted by a party
`
`(Patent Owner or Requester) in compliance with the requirements of the rules, the requisite
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`degree of consideration to be given to such information will normally be limited by the degree to
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`whichthe partyfiling the information citation has explained the content and relevance of the
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`document. The initials of the examiner placed adjacentto the citations on the form PTO/SB/08
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`or its equivalent, without an indication to the contrary in the record, do not signify that the
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`documenthas been considered by the examinerany further than to the extent noted above.”
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`Accordingly, the IDS submission filed by 3PR on 5 September 2024 has been
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`considered by the Examiner only within the scope required by MPEP § 2256, unless otherwise
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`noted.
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`Page 5 of 19
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`Application/Control Number: 90/019,646
`Art Unit: 3992
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`Page 4
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`Summaryof Prosecution History
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`US Application 16/438,455
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`The ‘754 Patent wasfiled as US Application 16/438,455 (“the ‘455 Application”) on 11
`
`June 2019, claiming an earliest priority date from provisional patent application 61/515,835, filed
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`5 August 2011. The ‘455 Application originally presented claims 1-16, including independent
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`claims 1, 9, and 16.
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`The Office mailed a first action on 1 August 2019, principally rejecting claims 1-15 on the
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`groundsof statutory double patenting, and claim 16 on the grounds of non-statutory double
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`patenting.
`
`Patent Ownerfiled a responseto the first action on 6 September 2019, amending at
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`least independent claim 1, cancelling claims 8-16, and adding new claims 17-202. A substitute
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`amendmentto the claims wasfiled 23 September 2019, amending independentclaim 1,
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`cancelling claims 2-16, and adding claims 17-237. Patent Ownerfiled a series of terminal
`
`disclaimers between 6 September 2019 and 20 November2019 in an effort to obviate the
`
`outstanding double patenting rejections.
`
`Subsequent to a 19 November 2019 interview, a Notice of Allowability was mailed
`
`indicating allowanceof claims 1, 17-234, and 238-242. The Notice of Allowability included an
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`Examiner's Amendment amending at least independent claims 1 and 17, cancelling claims 235-
`
`237, and adding new claims 238-242. The Notice of Allowability included an examiner’s
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`statement for reasons of allowance, which emphasized the following similar limitations from
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`independent claims 1 and 17 (see 27 November 2019 Notice of Allowability at 26):
`
`during detection of at least a portion of the gesture before a completion thereofis
`detected, blur, based on a change in the magnitude of the gesture being
`detected on the [display/touchscreen], at least a portion of the at least one other
`object
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`Application/Control Number: 90/019,646
`Art Unit: 3992
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`Page 5
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`Assuch, limitations relating to blurring at least a portion of “other” objects on a display
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`during detection of a gesture and “based on” a change in the magnitude of the gesture are
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`central to patentability.
`
`On 13 January 2020, Patent Owner filed an amendment to clarify existing claims, as well
`
`as add newclaims 243-384.
`
`Claims 1, 17-234, 238-240, and 242-384 were subsequently allowed by the Office on 7
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`February 2020, noting the reasons for allowance of 27 November2019.
`
`US Patent 10,656,754 was published 19 May 2020, with 365 claims.
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`Prior Art Cited in the Request
`
`The instant Requestindicates that the following four (4) prior art references present
`
`substantial new questions of patentability with respect to claims 2, 83, 85, 86, 101, 108-115,
`
`118-120, 123-127, 130-132, 134, 136, 137, 142-148, 150-186, 188, 193, 195, 196, 198, 205-
`
`208, 217-221, 225, 230, and 232:
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`e Beaumier — US Publication 2011/0283236, filed 17 November 2011
`
`e Chaudhri — US Publication 2009/0198359, published 6 August 2009
`
`e Wang — US Publication 2012/0206399, filed 24 March 2011
`
`e
`
`Shiplacoff — US Publication 2010/0095240, published 15 April 2010
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`Asnotedin the Requestat 12, none of the prior art in the Request was applied
`
`during prosecution of the ‘754 Patent.
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`Page 7 of 19
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`Application/Control Number: 90/019,646
`Art Unit: 3992
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`Affidavits, Declarations, or Other Written Evidence
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`Page 6
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`The Examiner recognizes the declaration of Dr. Andrew Cockburn (Appendix C),
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`referenced in support of Third Party Requester. The declaration has been considered and
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`made of record. The Examiner further notes that affidavits or declarations or other written
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`evidence which explain the contents or pertinent dates of prior art patents or printed publications
`
`in more detail may be considered in reexamination (MPEP § 2258(1)(E)), but any rejection must
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`be based upon the prior art patents or printed publications as explained by the affidavits or
`
`declarations or other written evidence.
`
`Substantial New Questions of Patentability
`
`The presence or absence ofa “substantial new question of patentability” determines
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`whetheror not reexamination is ordered. For a substantial new question of patentability to be
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`present,it is only necessarythat: (A) the prior art patents and/or printed publications raise a
`
`substantial question of patentability regarding at least one claims, i.e., the teaching of the (prior
`
`art) patents and printed publications is such that a reasonable examiner would consider the
`
`teaching to be important in deciding whetheror not the claim is patentable; and (B) the same
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`question of patentability as to the claim has not been decided by the Office in an earlier
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`concluded examination or review of the patent, raised to or by the Office in a pending
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`reexamination or supplemental examination of the patent, or decidedin a final holding of
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`invalidity (after all appeals) by a federal court in a decision on the merits involving the claim. Ifa
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`reexamination proceeding wasterminated/vacated without resolving the substantial question of
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`patentability question, it can be re-presented in a new reexamination request.
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`It is not
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`necessary that a “prima facie” case of unpatentability exist as to the claim in order for a
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`substantial new question of patentability to be present. Thus, a substantial new question of
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`patentability as to a patent claim could be present even if the examiner would not necessarily
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`Application/Control Number: 90/019,646
`Art Unit: 3992
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`Page 7
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`reject the claim aseither fully anticipated by, or obvious in view of, the prior art patents of
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`printed publications (see MPEP § 2242(1)).
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`The instant request includes three proposed grounds of rejection, reproduced herein:
`
`AS
`
`SNS
`
`ahs
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`and DOS-2
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`193, fos. 96,
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`Of the requested claims, claims 2 and 225 are independent, with both being rejected
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`under proposed ground 1.
`
`SNQ 1: Claims 2, 101, 108-115, 118-120, 123-127, 130-132, 134, 136, 137, 142-148, 150-185,
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`225, 230, and 232
`
`The Request proposesa rejection of claims 2, 101, 108-115, 118-120, 123-127, 130-
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`132, 134, 136, 137, 142-148, 150-185, 225, 230, and 232 over Beaumier in view of Chaudhri.
`
`Claims 2 and 225 are independent, and are discussedin the Requestat 32-46 and 231-233.
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`In
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`the reproductions below, limitations determined to be central to patentability are italicized.
`
`Claim 2 recites:
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`An apparatus, comprising:
`
`Page 9 of 19
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`Application/Control Number: 90/019,646
`Art Unit: 3992
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`at least one non-transitory memory;
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`a touch screen; and
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`Page 8
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`one or more processors in communication with the at least one non-transitory memory,
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`and the touch screen, wherein the one or more processors executeinstructions in the at least
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`one non-transitory memory, to cause the apparatus to:
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`display an object and at least one other object;
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`detect at least part of a gesture on the touch screen; and
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`during detection ofat least a portion of the gesture before a completion thereofis
`
`detected, blur, based on a changein a magnitude of the gesture being detected on the
`
`touch screen, at least a portion of the at least one other object.
`
`Beaumier and Chaudhri
`
`The Beaumierreference generally discloses a “digital jukebox’ device that allows a user
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`to interact with the system through touch screen means. The touch screen of Beaumier
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`includes objects (artist/aloum artwork, song title labels, etc., at [0084]) that are manipulable
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`through touch gestures (swipe, press and hold, etc., at [0058)).
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`Chaudhri generally discloses a portable electronic device having a touch screen display
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`for allowing a user to manipulate an associated graphical user interface, utilizing gestures
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`similar to those disclosed by Beaumier.
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`Regarding the limitation during detection ofat least a portion of the gesture before a
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`completion thereof is detected, blur, based on a change in a magnitude of the gesture being
`
`detected on the touch screen, at least a portion of the at least one other object, it is noted that
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`the claim does not explicitly define the “completion” of a gesture, or to what extent an objectis
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`blurred “based on” a change in the magnitudeof a gesture.
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`The specification of the ‘754 Patent does not provide a standard for the “completion” of a
`
`gesture. For example, the specification variously states that a gestures with two contact points
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`Page 10 of 19
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`Application/Control Number: 90/019,646
`Art Unit: 3992
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`Page 9
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`“is completed by altering the contact pressures on the two contact points such that the pressure
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`exerted on [contact point] 2004 now exceedsthat being exerted on [contact point] 2002” (see
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`the ‘754 Patent at col. 62, lines 9-24), but also that such a gesture “is completed by ending one
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`of both contacts, or by performing a different gesture” (infra at col. 63, lines 35-48). As a result,
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`the broadest reasonable interpretation (BRI) of the term gesture “completion” is the performance
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`of a different gesture.
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`The term “based on” similarly provides no definition as to the correlation between the
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`change in magnitude of a gesture and the blur effect itself. The examiner contends that the BRI
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`of the limitation “blur, based on a change in magnitude of the gesture being detected on the
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`touch screen” is analogous to implementing any level of a blur effect in response to any change
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`in magnitude of an associated gesture.
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`With respectto the limitations determined to be central to patentability, both Beaumier
`
`and Chaudhri have been demonstrated supra to be related to touch screen graphical user
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`interfaces. Beaumier and Chaudhri both similarly disclose touch input gestures that may have a
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`measurable magnitude; for example, Beaumier discussesthe holding of a touch for a time
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`period greater than a threshold. With regard to a blurring effect, Beaumier discloses that upon
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`the selection of an aloum jacket object, background user interface (UI) elements may be blurred
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`to help bring focus to the selected object. See Beaumier at [0127]. Furthermore, Beaumier
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`states at [0102] that “[p]Jressing and holding’ a particular object “may indicate a selection”.
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`Assuch, it is agreed that Beaumier and Chaudhri raise an SNQ asto claims 2 and 225
`
`of the ‘754 Patent.
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`Inasmuch as claims 101, 108-115, 118-120, 123-127, 1380-132, 134, 136,
`
`137, 142-148, 150-185, 230, and 232 depend from either independentclaim 2 or 225, Beaumier
`
`and Chaudhri raise an SNQ as to such claims. There is substantiallikelinood that a reasonable
`
`examiner would consider these teachings important in deciding whether or not these claims are
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`patentable.
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`Page 11 of 19
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`

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`Application/Control Number: 90/019,646
`Art Unit: 3992
`
`Page 10
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`The Beaumier and Chaudhri references werenotof record in the prior original
`
`examination and thus were not previously discussed by the examiner nor applied to any of the
`
`claims in the prior original examination
`
`Accordingly, Beaumier and Chaudhri raise a substantial new question of claims 2, 101,
`
`108-115, 118-120, 123-127, 130-132, 134, 136, 137, 142-148, 150-185, 225, 230, and 232.
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`Such question has not been decided in a previous examination of the ‘754 Patent, nor was there
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`a final holding of invalidity by the Federal courts regarding the ‘754 Patent.
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`SNQ 2: Claims 83, 85, 86, 186, 188, 193, 195, 196, 198, and 205-207
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`The Request proposesa rejection of claims 83, 85, 86, 186, 188, 193, 195, 196, 198,
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`and 205-207 over Beaumier in view of Chaudhri and Wang (see Requestat 238). Claims 83,
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`85, 86, 186, 188, 193, 195, 196, 198, and 205-207 depend from independent claim 2 either
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`directly or as part of a chain of dependency.
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`Wang discloses systems and methods for processing touch screen inputs. Taken alone,
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`Wang is not sufficient to raise an SNQ with respect to the subject matter identified as central to
`
`the patentability of the ‘754 Patent. However, when taken in combination with Beaumier and
`
`Chaudhri, andin light of the application of Wang to claims depending from independent claim 2,
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`such combination is sufficient to raise an SNQ with respect to claims 83, 85, 86, 186, 188, 193,
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`195, 196, 198, and 205-207.
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`The Beaumier, Chaudhri, and Wang references werenotof recordin the prior original
`
`examination and thus were not previously discussed by the examinernor applied to any of the
`
`claims in the prior original examination
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`Accordingly, Beaumier, Chaudhri, and Wang raise a substantial new question of claims
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`83, 85, 86, 186, 188, 193, 195, 196, 198, and 205-207. Such question has not been decidedin
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`a previous examination of the ‘754 Patent, nor was there a final holding of invalidity by the
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`Federal courts regarding the ‘754 Patent.
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`Application/Control Number: 90/019,646
`Art Unit: 3992
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`Page 11
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`SNQ 3: Claims 208 and 217-221
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`The Request proposesa rejection of claims 208 and 217-221 over Beaumier in view of
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`Chaudhri, Wang, and Shiplacoff. Claims 208 and 217-221 depend from independent claim 2
`
`either directly or as part of a chain of dependency.
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`Shiplacoff discloses a device having a touch-sensitive screen that accepts gesture-
`
`based input. Taken alone, Shiplacoff is not sufficient to raise an SNQ with respectto the
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`subject matter identified as central to the patentability of the ‘754 Patent. However, when taken
`
`in combination with Beaumier, Chaudhri, and Wang, andin light of the application of Shiplacoff
`
`to claims depending from independent claim 2, such combination is sufficient to raise an SNQ
`
`with respect to claims 208 and 217-221.
`
`The Beaumier, Chaudhri, Wang, and Shiplacoff references were not of record in the
`
`prior original examination and thus were not previously discussed by the examiner nor applied
`
`to any of the claims in the prior original examination
`
`Accordingly, Beaumier, Chaudhri, Wang, and Shiplacoff raise a substantial new question
`
`of claims 208 and 217-221. Such question has not been decided in a previous examination of
`
`the ‘754 Patent, nor was there a final holding of invalidity by the Federal courts regarding the
`
`‘754 Patent.
`
`35 USC 325(d)
`
`35 USC 325(d) states in part that “[i]n determining whetherto institute or order a
`
`proceeding underthis chapter, chapter 30, or chapter 31, the Director may take into account
`
`whether, and reject the petition or request because, the same or substantially the same prior art
`
`or arguments previously were presented to the Office.” Thus, in order for the Director to
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`exercise discretion as to whether to Order a reexamination proceeding under chapter 30, the
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`Application/Control Number: 90/019,646
`Art Unit: 3992
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`Page 12
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`request mustfirst be determined to be based on the same or substantially the same prior art or
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`argumentsthat previously were presented to the Office.
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`A review of the post grant history of the ‘754 patent indicates that the patent was the
`
`subject of a seven prior AIA petitions. On June 28, 2024, petitioner Apple, Inc. concurrently filed
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`sevenpetitions seeking, collectively, inter partes review of claims 1, 2, 8, 10, 16, 24-30, 32-40,
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`42-44, 46, 47, 52, 57-83, 88, 90, 94, 95, 97-101, 104, 117, 122, 186, 187, 189, 191, 192, 197,
`
`199-204, 208-216, 223-225 and 230 of the ‘754 patent (IPR2024-101086, IPR2024-01114, IPR
`
`2024-01115, IPR-2024,01116, IPR2024-01117, IPR2024-01117, IPR2024-01118, IPR2024-
`
`01119). The grounds asserted by as raising a reasonable likelihood in prevailing (RLP) in
`
`showing the unpatentability of the claims for each IPR petition are as follows:
`
`IPR2024-01086
`
`2, 8, 10,16, 24,26,|103 Ahn, Chaudhri ‘842
`
` 1
`
`
`
`
`224
`
`IPR-2024-01114
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`52, 57, 59
`
`BE
`2, 27-30, 32-36,38,
`40, 42-44, 46, 47,
`
`Ahn, Chaudhri ‘842
`
`IPR2024-01115
`
` 2, 27, 37, 58, 60-64,|103
`
`Ahn, Chaudhri
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`‘842
`
`67-79, 223
`
`IPR2024-01116
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`Page 14 of 19
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`Page 14 of 19
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`Application/Control Number: 90/019,646
`Art Unit: 3992
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`Page 13
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`204, 225, 230
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`2, 27, 186, 187, 189,
`191, 192, 197, 199-
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`Ahn, Chaudhri ‘842
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`IPR2024-01117
`
`‘842
`Ahn, Chaudhri
`103
`
`2 25,65, 66, 101, 104,|103 Ahn, Chaudhri ‘842, Hinkley
`117, 122
`
`
`
`
`
`IPR2024-01118
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`Ahnm Chaudhri‘842, Hinkley, Shipalcoff
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`83, 88, 90, 94, 95
`
`97-100
`
`IPR2024-01119
`
`Ahn, Chaudhri ‘842, Shipalcoff
`
`Ahn, Chaudhri ‘842
`
`1
`2
`
`1, 208-216
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`The Patent Trial and Appeal Board (PTAB) has not yet issued a decision on the
`
`institution of inter partes review in any of the seven petitions. Accordingly, the merits of the
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`newly presented references of Ahn, Chaudhri ‘842, Hinkley and Shipalcoff have not been
`
`addressed by the PTAB.
`
`A comparison between the prior art and arguments presented in the current ex parte
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`reexamination Request (90/019,646) and the prior inter partes review petitions (IPR2024-
`
`Page 15 of 19
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`Page 15 of 19
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`Application/Control Number: 90/019,646
`Art Unit: 3992
`
`Page 14
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`101086, IPR2024-01114, IPR 2024-01115, IPR-2024,01116, IPR2024-01117, IPR2024-01117,
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`IPR2024-01118, IPR2024-01119) indicates that the instant request is not based on the same or
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`substantially the same prior art or arguments as were previously presented to the Office.
`
`Asstated above, the instant request asserts the following grounds as raising an SNQ to
`
`claims 2, 83, 85, 86, 101, 108-115, 118-120, 123-127, 130-132, 134, 136, 137, 142-148, 150-
`
`186, 188, 193, 195, 196, 198, 205-208, 217-221, 225, 230, and 232 of the ‘754 patent:
`
`1
`
`Beaumier, Chaudhri
`
`‘359
`
`2, 101, 108-115, 118-120, 123-
`127, 130-132, 134, 136, 137, 142-
`148, 150-185, 225, 230, 232
`
`
`
`
`
`P|lisesosdor|[PanuChatShWang
`
`196, 198, 205-207
`208, 217-221
`
`3
`
`103
`
`Beaumier, Chaudhri ‘359, Wang,
`Shiplacoff
`
`Asaninitial matter, none of the grounds asserted asraising an SNQ in the current ex
`
`parte reexamination Request (90/019,646) are based on identical grounds assertedin the prior
`
`IPR petition and the arguments in the Requestrelate to these prior art combinations. Thus, the
`
`Request is not based on the same prior art or arguments previously presentedto the Office.
`
`In addition, the Request is also not based on substantially the same prior art or
`
`arguments as werepreviously presented to the Office. The prior art references of Beaumier,
`
`Chaudhri ‘359 and Wang are materially different references than presented in the seven IPR
`
`petitions, as noted above, and thus presentdifferent disclosures than the Ahn, Chaudhri ‘842
`
`and Hinkley references presentedin the seven prior IPR petitions (IPR2024-101086, IPR2024-
`
`01114, IPR 2024-01115, IPR-2024,01116, IPR2024-01117, IPR2024-01117, IPR2024-01118,
`
`IPR2024-01119). The Shiplacoff reference is presented in both the instant ex parte
`
`reexamination request (90/019,646) and two of the seven IPR petitions (IPR2024-01118 and
`
`IPR2024-01119). However, Shiplacoff is presented in combination with different references in
`
`Page 16 of 19
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`Page 16 of 19
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`

`

`Application/Control Number: 90/019,646
`Art Unit: 3992
`
`Page 15
`
`the instant ex parte reexamination request (Beaumier, Chaudhri ‘359 and Wang) than in the two
`
`IPR petitions (Ahn, Chaudhri ‘842 and Hinckly).
`
`However, to the extent that the references of Beaumier, Chaudhri ‘359 and Wang
`
`presented in the current ex parte reexamination Request (90/019,646) are considered to be
`
`substantially similar to the references of Ahn, Chaudhri ‘842 and Hinckly presented in the seven
`
`prior IPR petitions (IPR2024-101086, IPR2024-01114, IPR 2024-01115, IPR-2024,01116,
`
`IPR2024-01117, IPR2024-01117, IPR2024-01118, IPR2024-01119), the Examiner as delegated
`
`by the Director declines to exercise discretion to reject this request in view of the following facts:
`
`1.)
`
`There has been no finding of serial abusive Office challenges to the ‘754 patent by
`
`Third Party Requester’;
`
`2.)
`
`The fact that the PTAB hasnot yet issued a decision on the institution of inter partes
`
`review in the seven IPR petitions and therefore has not yet considered the merits of
`
`references presented in the IPR petitions;
`
`3.)
`
`The fact that there is minimal additional burden on the Office in examining the claims
`
`of the ‘754 patent in view of the grounds determined to raise an SNQ; and
`
`4.)
`
`The fact that there is a strong public interest that the prior art references of
`
`Beaumier, Chaudhri ‘359, Wang and Shiplacoff, which are determined to raise an
`
`SNQ over claims 2, 83, 85, 86, 101, 108-115, 118-120, 123-127, 130-132, 134, 136,
`
`137, 142-148, 150-186, 188, 193, 195, 196, 198, 205-208, 217-221, 225, 230, and
`
`232 of the ‘754 patent, be fully considered by the Office to fully address the
`
`patentability of the challenged claims.
`
`? It is noted that all seven of the prior IPR petitions were filed on the same day, June 28, 2024 andthat
`there are over 200 claimsin the ‘754 patent. In addition, while there are a total of seven prior IPR
`petitions, the seven petitions challenge different claims of the ‘754 patent but yet present the sameprior
`art references.
`In light of these facts, the seven IPR petitions can be consideredto collectively
`challenging the claims of the ‘754 patent in the same fashion as a single IPR petition.
`
`Page 17 of 19
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`Page 17 of 19
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`

`

`Application/Control Number: 90/019,646
`Art Unit: 3992
`
`Page 16
`
`Accordingly, Ex Parte Reexamination is Ordered based on the determination that cited
`
`Beaumier, Chaudhri ‘359, Wang and Shiplacoff references raise an SNQ to the ‘754 patentfor
`
`the reasons setforth above.
`
`Conclusion
`
`Extensions of time under 37 CFR 1.136(a) will not be permitted in these proceedings
`
`because the provisions of 37 CFR 1.136 apply only to “an applicant” and notto parties in a
`
`reexamination proceeding. Additionally, 35 USC 305 requires that reexamination proceedings
`
`“will be conducted with special dispatch” (37 CFR 1.550(a)). Extensionsof time in ex parte
`
`reexamination proceedings are provided for in 37 CFR 1.550(c).
`
`The patent owneris reminded of the continuing responsibility under 37 CFR 1.565(a) to
`
`apprise the Office of anylitigation activity, or other prior or concurrent proceeding, involving US
`
`Patent 10,656,754 throughout the courseof this reexamination proceeding. The third party
`
`requesteris also reminded of the ability to similarly apprise the Office of any such activity or
`
`proceeding throughout the courseof this reexamination proceeding. See MPEP §§ 2207, 2282,
`
`and 2286.
`
`All correspondencerelating to this ex parte reexamination proceeding should be directed:
`
`Electronically:
`
`Registered users may submit via Patent Center at https://patentcenter.uspto.gov/
`
`By Mail to:
`
`Mail Stop Ex Parte Reexam
`Central Reexamination Unit
`Commissioner for Patents
`United States Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Page 18 of 19
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`Page 18 of 19
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`

`

`Application/Control Number: 90/019,646
`Art Unit: 3992
`
`Page 17
`
`By FAXto:
`
`(571) 273-9900
`Central Reexamination Unit
`
`By hand:
`
`Customer Service Window
`Knox Building
`501 Dulany Street
`Alexandria, VA 22314
`
`For electronic transmissions, 37 CFR 1.8(a)(1)(i)(C) and (ii) states that correspondence (except
`for a request for reexamination and a corrected or replacement request for reexamination) will
`be consideredtimelyfiledif (a) it is transmitted via the USPTO patent electronicfiling system in
`accordance with 37 CFR 1.6(a)(4), and (b) includes a certificate of transmission for each piece
`of correspondencestating the date of transmission, whichis prior to the expiration of the set
`period of time in the Office action.
`Anyinquiry concerning this communication should be directed to the Central Reexamination
`
`Unit at telephone number(571) 272-7705.
`
`/MICHAEL ROSWELL/
`Primary Examiner, Art Unit 3992
`
`Conferees:
`
`/ADAM L BASEHOAR/
`Primary Examiner, Art Unit 3992
`
`/ALEXANDER J KOSOWSKI/
`Supervisory Patent Examiner, Art Unit 3992
`
`Page 19 of 19
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`Page 19 of 19
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`