IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`_______________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________________________
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`APPLE INC,
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`Petitioner,
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`v.
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`PROXENSE, LLC
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`Patent Owner
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`_______________________________
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`U.S. Patent No. 8,886,954
`IPR Case No. 2024-01485
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`PATENT OWNER PRELIMINARY RESPONSE
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`- 1 -
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`TABLE OF CONTENTS
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`I.
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`Introduction ......................................................................................................................... - 1 -
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`II. Descretionary is warranted Denial under 35 U.S.C. § 314(a) ............................................ - 1 -
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`III.
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`Conclusion ...................................................................................................................... - 2 -
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`- 1 -
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`I.
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`INTRODUCTION
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`Pursuant to 35 U.S.C. § 313 and 37 C.F.R. § 42.107, Patent Owner Proxense, LLC (“Patent
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`Owner” or “Proxense”) submits the following Preliminary Response to the Petition for Inter Partes
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`Review of claims 1-29 of U.S. Patent No. 8,886,954 B2 (“the 954 Patent”) filed by Apple Inc.
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`(“Petitioner” or “Apple”).
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`II.
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`DISCRETIONARY DENIAL IS WARRANTED UNDER 35 U.S.C. § 314(a)
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`Apple filed a Petition for inter partes review of claims 1-29 of the 954 Patent (Paper 1) and
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`a Motion for Joinder (“Motion”) (Paper 3) to join Microsoft’s instituted proceeding in IPR2024-
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`00846 (“Microsoft IPR”) and a Notice Ranking Petitions (“Notice”) (Paper 4). Apple
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`acknowledges that it previously filed a petition, which was granted, for inter partes review of
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`claims 1-7, 10, 12-19, and 22-27 of the 954 Patent in IPR2024-01334 (“1334 IPR”), which was
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`granted and joined with IPR2024-00233 (“233 IPR”). Furthermore, “Petitioner ranks the 1334 IPR
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`first.” Paper 4, at 1. Per its ranking, Petitioner states that “[s]hould the Board decide to institute
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`only a single petition and grant only a single motion for joinder against the ’730 patent, Petitioner
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`requests that the Board institute Petitioner’s petition in the 1333 IPR and grant its motion to join
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`the Google IPR.” Id., at 4. The Board should exercise its discretion under 35 U.S.C. § 314(a) to
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`deny Petitioner’s request for institution with respect to Apple’s second petition.
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`“[O]ne petition should be sufficient to challenge the claims of a patent in most situations.”
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`Patent Trial and Appeal Board Consolidated Trial Practice Guide, November 2019, at 59. While
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`Apple’s previous petition in the 1334 IPR relied on different prior art combinations, Apple has not
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`made any showing that the prior art combinations could not have been presented in a single
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`Petition. Furthermore, Apple has not claimed it was unaware of the different prior art combinations
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`at the time of the filing of the 1334 IPR. Nor could Apple make such a showing as IPR2024-00846
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`to which apple attempts to joined was filed four months prior to 1334 IPR.
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`- 1 -
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`Furthermore, though this Petition challenges dependent claims 8, 9, 11, 20, 21, 28 and 29
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`of the 954 Patent, which were not challenged in the 1334 IPR, Patent Owner has not asserted those
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`claims against Apple in the current co-pending litigation. See Apple Exhibit 1032, at 43. Thus, the
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`only difference between the petitions is a challenge to dependent claims not at issue.
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`Additionally, there is no dispute about the priority date regarding either combination of
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`references. Patent Owner has not denied that either combination of references constitutes prior art.
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`Finally, Patent Owner notes that Microsoft’s petition and accompanying motion to join the
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`1334 IPR in IPR2024-01327 were denied. See Microsoft Corp. v. Proxense LLC, IPR2024-01327,
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`Paper 10. Apple has presented no reason why it should receive different treatment than Microsoft.
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`While Apple may have initially been an “understudy” in the 1334 IPR, Apple is now the sole
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`Petitioner in the proceeding.
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`Apple ranked the 1334 IPR first, which was instituted, and offers no credible reasons why
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`multiple proceedings are necessary. Accordingly, the Board should exercise its discretion under 35
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`U.S.C. § 314(a) and deny Apple’s second petition.
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`III. CONCLUSION
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`In view of the foregoing, Apple’s second petition for inter partes review of the 954 Patent
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`should be denied.
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`Dated: January 27, 2025
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`Respectfully submitted by,
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`/s/ David L. Hecht
`David L. Hecht (Reg. No. 61,618)
`dhecht@hechtpartners.com
`HECHT PARTNERS LLP
`125 Park Avenue, 25th Floor
`New York, NY 10017
` P: (212) 851-6821
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`CERTIFICATION UNDER 37 C.F.R. § 42.24
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`Under the provisions of 37 C.F.R. § 42.24, the undersigned hereby certifies that the word
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`count for the forgoing Patent Owner Response (excluding the table of contents, table of
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`authorities, certificate of service, certificate of word count, or listing of exhibits) total 547 words,
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`which is less than the 14,000 words allowed under 37 C.F.R. § 42.24(b)(1).
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`Dated: January 27, 2025
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`/s/ David L. Hecht
`David L. Hecht (Reg. No. 61,618
`0
`dhecht@hechtpartners.com
`HECHT PARTNERS LLP
`125 Park Avenue, 25th Floor
`New York, NY 10017
` P: (212) 851-6821
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`CERTIFICATION OF SERVICE UNDER 37 C.F.R. § 42.6(e)
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`The undersigned certifies service pursuant to 37 C.F.R. § 42.6(e) on the petitioner by
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`emailing a copy of this Patent Owner Preliminary Response and supporting materials at the
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`correspondence address of record for the Petitioner listed below:
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`PHILIP W. WOO (USPTO Reg. No. 39,880)
`DUANE MORRIS LLP,
`260 Homer Avenue #202
`Palo Alto, CA 94301
`P: (650) 847-4145
`F: (650) 644-0150
`PWWoo@duanemorris.com
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`MONTÉ T. SQUIRE (USPTO Reg. No.
`80,123)
`DUANE MORRIS LLP
`1201 North Market Street, Suite 501,
`Wilmington, DE 19801
`P: (302) 657-4918
`F: (302) 397-2543
`MTSquire@duanemorris.com
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`D. STUART BARTOW (USPTO Reg. No.
`56,505)
`DUANE MORRIS LLP
`1201 North Market Street, Suite 501,
`Wilmington, DE 19801
`P: (650) 847-4158
`F: (650) 618-8505
`DSBartow@duanemorris.com
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`PAUL BELNAP (USPTO Reg. No. 73,106)
`DUANE MORRIS LLP
`901 New York Ave. NW, Suite 700 East,
`Washington, D.C. 20001
`P: (202) 776-7879
`F: (202) 776-7801
`PHBelnap@duanemorris.com
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`Dated: January 27, 2025
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`/s/ David L. Hecht
`David L. Hecht (Reg. No. 61,618)
`dhecht@hechtpartners.com
`HECHT PARTNERS LLP
`125 Park Avenue, 25th Floor
`New York, NY 10017
` P: (212) 851-6821
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