`
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Seung Jin Kim
`In re Patent of:
`10,455,066 Attorney Docket No.: 39521-0092PS1
`U.S. Patent No.:
`Oct. 22, 2019
`
`Issue Date:
`Appl. Serial No.: 15/563,937
`
`Filing Date:
`Oct. 2, 2017
`
`Title:
`MOBILE SYSTEM WITH WIRELESS EARBUD
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`PETITION FOR POST-GRANT REVIEW OF UNITED STATES PATENT
`NO. 10,455,066 PURSUANT TO 37 C.F.R. §42.200 et seq.
`
`
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`
`
`
`

`

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` 
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` Attorney Docket No. 39521-0092PS1
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`PGR of U.S. Patent No. 10,455,066
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` 
`
`TABLE OF CONTENTS
`
`REQUIREMENTS FOR PGR ......................................................................... 1 
`  Grounds for Standing ................................................................................. 1 
`  Challenge and Relief Requested ................................................................. 1 
`DISCRETIONARY DENIAL OF THE INSTANT PETITION IS NEITHER
`APPROPRIATE NOR EQUITABLE ............................................................. 3 
`  THE ’066 PATENT ....................................................................................... 12 
`  CLAIM CONSTRUCTION .......................................................................... 13 
`  “the circuitry … configured to obtain characteristics of the wireless
`earbud and send the characteristics to the at least one processor” (claims
`9, 10, 30, and 36) ...................................................................................... 13 
`  “communication module configured to interface data communication
`with at least one of the smartphone and the wireless earbud” (claims 26
`and 28) ...................................................................................................... 14 
`  UNPATENTABILITY GROUNDS .............................................................. 15 
`  GROUND 1: Claims 9, 10, 30, and 36 are indefinite under 35 U.S.C. §§
`112(b) and 112(f) ...................................................................................... 15 
`1.  “the circuitry … configured to obtain characteristics of the wireless
`earbud and send the characteristics to the at least one processor”
`(appears in claims 9, 10, 30, and 36) ................................................... 15 
`  Hankey Group – An Incorporated Disclosure and Obvious Combination
` .................................................................................................................. 17 
`1.  Hankey ................................................................................................. 19 
`2.  Rabu ..................................................................................................... 20 
`3.  Sanford ................................................................................................ 23 
`  GROUND 2A: Claims 1, 4, 6, and 8 are obvious over Hankey Group ... 26 
`
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` Attorney Docket No. 39521-0092PS1
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`PGR of U.S. Patent No. 10,455,066
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`  GROUND 2B: Claims 9, 10, 14, 26, 28, 30, 34, and 36 are obvious over
`Hankey Group and Kalayjian ................................................................... 49 
`  GROUND 3A: Claims 1, 4, 6, and 8 are obvious over Hankey Group and
`Lydon ........................................................................................................ 69 
`  GROUND 3B: Claims 9, 10, 14, 21, 26, 28, 30, 34, and 36 are obvious
`over Hankey Group, Lydon, and Kalayjian ............................................. 76 
`  GROUND 4A: Claims 1, 4, and 6-8 are obvious over Hankey Group
`(alone or with Lydon) and Dua ................................................................ 80 
`  GROUND 4B: Claims 9, 10, 14, 21, 26, 28, 30, 34, and 36 are obvious
`over Hankey Group (alone or with Lydon), Dua, and Kalayjian ............. 85 
`  GROUND 5: Claim 21 is obvious over Hankey Group (alone or with
`Lydon and/or Dua), Kalayjian, and Burnett ............................................. 86 
`  GROUND 6: Claim 38 is obvious over Hankey Group (alone or with
`Lydon and/or Dua), Kalayjian, and Kim .................................................. 90 
`  FEES .............................................................................................................. 93 
`  CONCLUSION .............................................................................................. 93 
`  MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ......................... 93 
`  Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) ............................... 93 
`  Related Matters Under 37 C.F.R. § 42.8(b)(2) ......................................... 93 
`  Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) .................... 94 
`  Service Information .................................................................................. 95 
`
`
`
`ii
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`

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`
`APPLE-1001
`
`APPLE-1002
`
`APPLE-1003
`
`APPLE-1004
`
`APPLE-1005
`
`APPLE-1006
`
`APPLE-1007
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`APPLE-1008
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`
`APPLE-1009
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`APPLE-1010
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`APPLE-1011
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`APPLE-1012
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`APPLE-1013
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`APPLE-1014
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`APPLE-1015
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`APPLE-1016
`
`
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` Attorney Docket No. 39521-0092PS1
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`PGR of U.S. Patent No. 10,455,066
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`EXHIBITS
`
`U.S. Patent No. 10,455,066 to Kim (“the ’066 patent”)
`
`Excerpts from the Prosecution History of the ’066 patent
`
`Declaration of Dr. Jeremy R. Cooperstock
`
`U.S. Patent No. 8.401,219 to Hankey et al. (“Hankey”)
`
`U.S. Patent No. 8,086,281 to Rabu et al. (“Rabu”)
`
`U.S. Patent No. 8,270,915 to Sanford et al. (“Sanford”)
`
`U.S. Patent No. 8,078,787 to Lydon et al. (“Lydon”)
`
`U.S. Patent Application Publication No. 2008/0125040 to
`Kalayjian (“Kalayjian”)
`
`Reserved
`
`U.S. Patent No. 9,218,530 to Davis et al. (“Davis”)
`
`U.S. Patent Application Publication No. 2010/0281475 to Jain
`et al. (“Jain”)
`
`U.S. Patent No. 8,838,184 to Burnett et al. (“Burnett”)
`
`McGraw-Hill Dictionary of Electrical and Computer
`Engineering, ISBN 0-07-144210-3, 2004
`
`Joint Identification of Claim Terms and Proposed Constructions
`in Pinn, Inc. v. Apple Inc./Google LLC/Samsung Electronics
`America, Inc. (Case No. 8:19-cv-01805-DOC-JDE)
`
`U.S. Patent Application Publication No. 2017/0272561 to Kim
`et al. (“Kim”)
`
`U.S. Patent No. 8,548,381 to Dua (“Dua”)
`
`iii
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`

`

`
`APPLE-1023-1030
`
`APPLE-1031
`
`
`
`
`
`APPLE-1017
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`APPLE-1018
`
`APPLE-1019
`
`APPLE-1020
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`APPLE-1021
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`APPLE-1022
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`
`APPLE-1032
`
`
`APPLE-1033
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`
`APPLE-1034
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`APPLE-1035
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`APPLE-1036
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`APPLE-1037
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`
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`
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` Attorney Docket No. 39521-0092PS1
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`PGR of U.S. Patent No. 10,455,066
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`U.S. Provisional Patent Application No. 62/142,978
`
`U.S. Patent No. 10,609,198 (“’198 Patent”)
`
`Prosecution History of U.S. Patent No. 10,609,198
`
`U.S. Provisional Application No. 60/879,177
`
`U.S. Provisional Application No. 60/879,195
`
`Complaint, Pinn, Inc. v Apple Inc., Case No. 8:19-cv-1805,
`C.D. Cal, Sept. 20, 2019.
`
`RESERVED
`
`June 9, 2020 Letter from Apple Litigation Counsel to Pinn
`Counsel
`
`Scheduling Order, Pinn, Inc. v Apple Inc., Case No. 8:19-cv-
`1805, C.D. Cal, Mar. 26, 2020
`
`Scheduling Order, Syneron Med. Ltd. v. Invasix, Inc., Case No.
`8-16-cv-00143, C.D. Cal, July 12, 2016
`
`Order Vacating Dates, Syneron Med. Ltd. v. Invasix, Inc., Case
`No. 8-16-cv-00143, C.D. Cal, Jan. 11, 2018
`
`Scheduling Order, Nichia Corp. v. Feit Electric Co., Inc., Case
`No. 2-18-cv-01390, C.D. Cal, Jul. 31, 2018
`
`Amended Scheduling Order, Nichia Corp. v. Feit Electric Co.,
`Inc., Case No. 2-18-cv-01390, C.D. Cal, Jan. 17, 2019
`
`Scheduling Order, International Technologies and Systems
`Corp. v. Samsung Electronics Co., Ltd., Case No. 8-17-cv-
`01748, C.D. Cal, Aug. 13, 2018
`
`iv
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`APPLE-1038
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`
`APPLE-1039
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`APPLE-1040
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`APPLE-1041
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`APPLE-1042
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`APPLE-1043
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`APPLE-1044
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`APPLE-1045
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`APPLE-1046
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`APPLE-1047
`
`
` Attorney Docket No. 39521-0092PS1
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`PGR of U.S. Patent No. 10,455,066
`
`Order re Claim Construction, Summary Judgment, and Trial
`Schedules, International Technologies and Systems Corp. v.
`Samsung Electronics Co., Ltd., Case No. 8-17-cv-01748, C.D.
`Cal, Aug. 27, 2019
`
`Order Granting Stay, Medtronic, Inc. v. Axonics Modulation
`Technologies, Inc., Case No. 8:19-cv-02115, C.D. Cal, May 8,
`2020
`
`Order Granting Stay, Limestone Memory Systems LLC v.
`Micron Tech., Inc., Case No. 8:15-cv-00278, C.D. Cal, Jan. 12,
`2016
`
`Order, EVS Codec Technologies, LLC v. Oneplus Technology
`(Shenzen) Co., Ltd., Case No. 2:19-CV-00057-JRG, E.D. Tex.,
`Apr. 13, 2020
`
`Order, Infernal Tech., LLC v. Sony Interactive Entertainment
`America, LLC, Case No. 2:19-CV-00248-JRG, E.D. Tex., Mar.
`27, 2020
`
`Joseph Guzman, “Fauci says second wave of coronavirus is
`‘inevitable’”, TheHill.com (Apr. 29, 2020), available at:
`https://thehill.com/changing-america/resilience/natural-
`disasters/495211-fauci-says-second-wave-of-coronavirus-is
`
`U.S. Patent No. 8.489,151 to Van Engelen et al.
`
`U.S. Patent No. 8.737,650 to Pederson
`
`Jabra Eclipse User Manuel (2015)
`
`U.S. Patent Publication No. 2011/0306393 to Goldman et al.
`
`
`
`v
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` Attorney Docket No. 39521-0092PS1
`
`PGR of U.S. Patent No. 10,455,066
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`Apple Inc. (“Petitioner” or “Apple”) petitions for Post-Grant Review
`
`(“PGR”) of claims 1, 4, 6-10, 14, 21, 26, 28, 30, 34, 36, and 38 (“the challenged
`
`claims”) of U.S. Patent 10,455,066 (“the ’066 patent”). For the reasons explained
`
`below, the ’066 patent is eligible for PGR, and the challenged claims are
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`unpatentable.
`
`
`
`REQUIREMENTS FOR PGR
` Grounds for Standing
`Petitioner certifies that the ’066 patent is available for PGR. Petitioner is not
`
`barred or estopped from requesting review.
`
`The ’066 patent claims priority to a provisional application filed April 3,
`
`2015 (“Critical Date”). Because the purported effective filing date of the ’066
`
`patent is after March 16, 2013, the PGR provisions of the Leahy-Smith America
`
`Invents Act govern this proceeding and conditions for patentability.
`
`The ’066 patent was issued on October 22, 2019, which is less than nine
`
`months prior to the filing date of this Petition. Therefore, the ’066 patent is
`
`eligible for PGR. See 35 U.S.C. § 321(c); 37 C.F.R. § 42.202(a).
`
` Challenge and Relief Requested
`Petitioner requests PGR of the challenged claims on the grounds noted
`
`below. The Declaration of Dr. Jeremy R. Cooperstock (APPLE-1003) provides
`
`supporting explanations.
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`
`
`1
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`

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` Attorney Docket No. 39521-0092PS1
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`PGR of U.S. Patent No. 10,455,066
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`Ground
`
`Claims
`
`Basis
`
`1
`
`2A
`
`2B
`
`3A
`
`3B
`
`4A
`
`4B
`
`5
`
`9, 10, 30, 36
`
`Indefinite (§112(b) and §112(f))
`
`1, 4, 6, 8
`
`Obvious (§103) based on Hankey
`Group1
`
`9, 10, 14, 26, 28, 30,
`34, 36
`
`Obvious (§103) based on Hankey Group
`and Kalayjian
`
`1, 4, 6, 8
`
`Obvious (§103) based on Hankey Group
`and Lydon
`
`9, 10, 14, 21, 26, 28,
`30, 34, 36
`
`Obvious (§103) based on Hankey
`Group, Lydon, and Kalayjian
`
`1, 4, 6-8
`
`9, 10, 14, 21, 26, 28,
`30, 34, 36
`
`21
`
`Obvious (§103) based on Hankey Group
`(alone or with Lydon) and Dua
`
`Obvious (§103) based on Hankey Group
`(alone or with Lydon), Dua, and
`Kalayjian
`
`Obvious (§103) based on Hankey Group
`(alone or with Lydon and/or Dua),
`Kalayjian, and Burnett
`
`6
`
`1 The Petition uses “Hankey Group” as a naming convention to reference
`
`Obvious (§103) based on Hankey Group
`
`38
`
`disclosure within Hankey, as well as disclosure incorporated by reference within
`
`Hankey (i.e., Rabu and Sanford), as detailed in Section V.B.
`
`
`
`2
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`

`

` Attorney Docket No. 39521-0092PS1
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`PGR of U.S. Patent No. 10,455,066
`
`Ground
`
`Claims
`
`Basis
`
`(alone or with Lydon and/or Dua),
`Kalayjian, and Kim
`
`
`
`
`
`
`
`Each reference pre-dates the earliest-filed provisional application (filed
`
`4/3/2015) and qualifies as prior art:
`
`Reference
`
`Date
`
`Section
`
`Hankey
`
`US 8,401,219
`
`3/19/2013 (issued)
`
`102(a)(1)
`
`Rabu
`
`US 8,086,281
`
`12/27/2011 (issued)
`
`102(a)(1)
`
`Sanford
`
`US 8,270,915
`
`9/18/2012 (issued)
`
`102(a)(1)
`
`Lydon
`
`US 8,078,787
`
`12/13/2011 (issued)
`
`102(a)(1)
`
`Kalayjian US 2008/0125040 5/29/2008 (published) 102(a)(1)
`
`Burnett
`
`US 8,838,184
`
`9/16/2014 (issued)
`
`102(a)(1)
`
`US 2017/0272561
`
`8/25/2014 (filed)
`
`102(a)(2)
`
`US 8,548,381
`
`10/1/2013 (issued)
`
`102(a)(1)
`
`Kim
`
`Dua
`
`
`
` DISCRETIONARY DENIAL OF THE INSTANT PETITION IS
`NEITHER APPROPRIATE NOR EQUITABLE
`The Director has discretion to institute a post grant review under 35 U.S.C. §
`
`324(a) and 37 C.F.R. § 42.208(a), and has consistently considered a number of
`
`non-exclusive factors in determining whether to exercise that discretion. See
`
`
`
`3
`
`

`

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`
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`General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357,
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` Attorney Docket No. 39521-0092PS1
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`PGR of U.S. Patent No. 10,455,066
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`Pap. 19, 15-22 (PTAB Sep. 6, 2017)(precedential). In considering these factors,
`
`the Director has been “mindful of the goals of the AIA—namely, to improve patent
`
`quality and make the patent system more efficient by the use of post-grant review
`
`procedures” (emphasis added). Id., 16 (citing H.R. Rep. No. 112-98, pt. 1, at 40
`
`(2011)).
`
`Beyond the specific factors outlined in General Plastic itself,2 an “additional
`
`factor” has emerged: whether the same prior art and arguments raised within a
`
`petition are expected to be resolved in district court, prior to that petition’s
`
`projected final written decision (“FWD”) date. See NHK Spring Co. Ltd. v. Intri-
`
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`2 The General Plastic factors strongly favor institution. See General Plastic, 16.
`
`Apple has not previously filed a petition directed to claims of the ’066 patent.
`
`Further, Apple is unaware of any reason to believe that the instant Petition would
`
`unduly tax the Board’s resources, or that the Board would be unable to issue a
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`FWD within one year of institution.
`
`
`
`4
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`

`

`
`
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`Plex Techs. Inc., IPR2018-00752, Pap. 8, 19-20 (PTAB Sep. 12, 2018)
`
` Attorney Docket No. 39521-0092PS1
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`PGR of U.S. Patent No. 10,455,066
`
`(precedential).3
`
`“[T]he Board’s cases addressing earlier trial dates as a basis for denial under
`
`NHK have sought to balance considerations such as system efficiency, fairness,
`
`and patent quality.” Apple Inc. v. Fintiv, Inc., IPR2020-00019, Pap. 11, 3 (PTAB
`
`Mar. 20, 2020)(precedential)(quoting Abbot Vascular, Inc. v. FlexStent, LLC,
`
`IPR2019-00882, Pap. 11, 31 (PTAB Oct. 7, 2019)(declining to adopt a bright-line
`
`rule that an early trial date alone requires denial)).
`
`Mindful of the goals expressed in General Plastic, NHK, and Fintiv, Apple
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`has eliminated any risk of duplicated efforts in Apple’s district court defense, by
`
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`3 Unlike NHK, there is no basis for discretionary denial of the instant petition under
`
`§ 325(d), which would only be appropriate if the same or substantially the same art
`
`or arguments were previously presented to the Office. Advanced Bionics LLC v.
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`MED-EL Elektromedizinische Gerate GmbH, IPR2019-01469, Pap. 6, 8-10 (PTAB
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`Feb. 13, 2020)(precedential). With the sole exception of the Ground 6 application
`
`of Kim against dependent claim 38, the arguments advanced in the instant Petition
`
`are premised on art that was never before presented to the Office in connection
`
`with the ’066 patent. See, generally, APPLE-1002.
`
`
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`5
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`

`

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`
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`unconditionally stipulating to counsel for Pinn that Apple will not pursue district
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` Attorney Docket No. 39521-0092PS1
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`PGR of U.S. Patent No. 10,455,066
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`court invalidity challenges based on grounds featuring the same primary references
`
`as those featured in the grounds of the instant Petition. APPLE-1031, 1-3. Thus,
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`the Central District of California (“District Court”) is unable to resolve
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`patentability relating to prior art grounds advanced by this Petition, nor can it
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`resolve patentability generally regarding all claims challenged by this Petition,4
`
`even assuming that the District Court will address validity at all, which is
`
`unknowable with only invalidity contentions served at this young stage of that
`
`proceeding.
`
`In short, the prior art-based grounds in the instant Petition are unique in
`
`terms of claims and prior art, neither of which will be addressed in Apple’s co-
`
`pending district court litigation. For at least that reason, there is no basis for
`
`
`4 Claim 7 is challenged in the instant petition, despite not being instantly asserted
`
`against Apple nor being included in Apple’s invalidity contentions. Apple is well
`
`known for its creation of innovative new products, and its introduction of new
`
`features such as volume control mechanisms of the type described in the ’066
`
`Patent, and those subject to its claim 7. Apple therefore seeks review of the
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`patentability of claim 7 in view of the advanced grounds, so as to avoid altogether
`
`the need for future assertion over the same issue.
`
`
`
`6
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`

`

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`
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`discretionary denial under NHK, and Fintiv factor 4 strongly favors institution. See
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` Attorney Docket No. 39521-0092PS1
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`PGR of U.S. Patent No. 10,455,066
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`NHK, 19-20; Fintiv, 12-13; Oticon Medical AB et. al. v. Cochlear Ltd., IPR2019-
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`00975, Pap. 15, 24 (PTAB Oct. 16, 2019)(precedential)(“we decline to exercise
`
`discretion under § 314(a) … [w]e are mindful that a trial in this proceeding would
`
`not be directly duplicative of the District Court action”); Ericsson v. Intellectual
`
`Ventures II, IPR2018-01689, Pap. 15, 53-57 (PTAB Apr. 16 2019)(no
`
`discretionary denial because “the merits of Petitioner’s alleged grounds of
`
`unpatentability against the challenged claims in this proceeding are unique to this
`
`proceeding”); Uniden Am. Corp. v. Escort Inc., IPR2019-00724, Pap. 6, 4-10
`
`(PTAB Sept. 17, 2019).
`
`Yet, even setting aside the lack of substantive overlap between the instant
`
`Petition and the issues that might eventually be addressed in District Court, which
`
`is alone dispositive of the analysis under NHK, the remaining Fintiv factors also
`
`favor institution. For example, as explained in more detail below, the trial could be
`
`stayed in view of the instant proceeding’s institution, or otherwise delayed. Fintiv
`
`factors 1 and 2 therefore favor institution.
`
`In more detail, Patent Owner (“Pinn”) filed suit against Apple on September
`
`20, 2019, asserting application 15/563,937, which eventually issued as the ’066
`
`patent. APPLE-1022, 1, 28. Pinn has also sued Google and Samsung and the
`
`District Court has set a single consolidated trial for January 26, 2021. APPLE-
`
`
`
`7
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`

`

`
`
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`1032, 2. For many reasons, this date is not reliable enough to foreclose the
`
` Attorney Docket No. 39521-0092PS1
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`PGR of U.S. Patent No. 10,455,066
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`patentability challenges raised uniquely in this petition by denying institution.
`
`Judge Carter, who presides over the District Court proceedings, has
`
`historically postponed trials. See, e.g., Syneron Med. Ltd. v. Invasix, Inc., Case No.
`
`8-16-cv-00143 (originally-scheduled September 26, 2017 trial date vacated; trial
`
`has not yet been rescheduled), APPLE-1033, 1, APPLE-1034, 1; Nichia Corp. v.
`
`Feit Electric Co., Inc., Case No. 2-18-cv-01390 (originally-scheduled September
`
`24, 2019 trial date postponed to December 17, 2019), APPLE-1035, 1, APPLE-
`
`1036, 3; International Technologies and Systems Corp. v. Samsung Electronics
`
`Co., Ltd., Case No. 8-17-cv-01748 (originally-scheduled October 22, 2019 trial
`
`date postponed to January 7, 2020), APPLE-1037, 1, APPLE-1038, 1.
`
`In view of overriding public health concerns related to the COVID-19
`
`pandemic, it also is possible (even likely) that these and/or other intervening
`
`District Court trials would be rescheduled to later dates, even absent a stay. See,
`
`e.g., EVS Codec Technologies, LLC v. Oneplus Technology (Shenzen) Co., Ltd.,
`
`Case No. 2:19-CV-00057-JRG, E.D. Tex., APPLE-1041 (granting 45-day
`
`continuance “due to complications in completing the discovery due to COVID-
`
`19”); Infernal Tech., LLC v. Sony Interactive Entertainment America, LLC, Case
`
`No. 2:19-CV-00248-JRG, E.D. Tex., APPLE-1042 (denying motion without
`
`prejudice as “the current situation with the COVID-19 outbreak is both serious and
`
`
`
`8
`
`

`

`
`
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`constantly evolving”); APPLE-1043, 1 (“Fauci says second wave of coronavirus is
`
` Attorney Docket No. 39521-0092PS1
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`PGR of U.S. Patent No. 10,455,066
`
`‘inevitable’”).
`
`And, district court trial dates are frequently changed, even in normal times.
`
`Look no further than NHK itself. Relying on an expected schedule for the parallel
`
`district court proceeding, the NHK panel concluded that the litigation’s “advanced
`
`state” was an “additional factor” that weighed in favor of discretionary denial.
`
`Yet, the schedule that the NHK panel relied upon proved misleading; in reality, the
`
`district court trial date was delayed by six months relative to the date assumed in
`
`the NHK decision, and thus, followed the deadline for FWD that would have
`
`existed had NHK instead instituted. Intri-Plex Techs. v. NHK Int’l Corp., 3:17-cv-
`
`01097-EMC (N.D. Cal.)(docket entries 173, 175); Mylan Pharmaceuticals Inc. v.
`
`Sanofi-Aventis Deutschland GMBH, IPR2018-01680, Pap. 22, 17 (PTAB Apr. 2,
`
`2019). As revealed by NHK, tentative trial schedules are generally speculative and
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`unreliable.
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`Moreover, and consistent with the Board’s goals and with Congressional
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`intent,5 the instant Petition’s institution would enable the Board to efficiently
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`5 The Congressional record is clear that IPR proceedings were intended to provide
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`an efficient alternative to district court litigation, and that the AIA was passed with
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`9
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`

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`
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`resolve the issue of the ’066 patent’s invalidity, which would otherwise remain at
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` Attorney Docket No. 39521-0092PS1
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`PGR of U.S. Patent No. 10,455,066
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`issue given the three District Court cases. See Fintiv, 13-14; Intel Corp. v. VLSI
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`Tech. LLC, IPR2019-01192, Pap. 15, 11 (PTAB Jan. 9, 2020)(“the Board seeks,
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`among other things, to minimize the duplication of work by two tribunals to
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`resolve the same issue”). Indeed, the Board’s resolution of issues advanced by this
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`Petition could relieve the District Court of the need to address liability altogether,
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`including Pinn’s infringement allegations, and any potential invalidity challenges
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`based on other prior art.
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`That opportunity to avoid the need for District Court trials addressing
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`common issues increases the likelihood of a District Court stay in view of Petition
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`institution. See NFC Techs. LLC v. HTC Am., Inc., 2015 WL 1069111, *2 (E.D.
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`Tex. Mar. 11, 2015). And Judge Carter’s history demonstrates his willingness to
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`stay proceedings in view of pending IPR proceedings, when appropriate. See, e.g.,
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`Medtronic, Inc. v. Axonics Modulation Technologies, Inc., 8:19-cv-02115 (granting
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`motion to stay based on post-grant petitions to serve potential for simplification),
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`APPLE-1039, 3-4; Limestone Memory Systems LLC v. Micron Tech., Inc., 8:15-cv-
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`the expectation that district courts would, generally, stay proceedings related to
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`instituted IPR challenges. See, e.g., Sen. Rep. No. 110-259, at 32 (2008)(Specter);
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`153 Cong. Rec. E773 (2007).
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`
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`10
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`00278 (granting motion to stay prior to IPR institution, in part due to potential for
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` Attorney Docket No. 39521-0092PS1
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`PGR of U.S. Patent No. 10,455,066
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`IPR to narrow scope and complexity of litigation), APPLE-1040, 8-9. As such, it
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`is a reasonable conclusion that Judge Carter would stay Apple’s District Court
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`proceeding in view of the instant Petition, even assuming that the litigation is not
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`otherwise postponed.
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`As the Fintiv panel noted, “the factors considered in the exercise of
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`discretion are part of a balanced assessment of all the relevant circumstances in the
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`case, including the merits,” and, “if the merits of a ground raised in the petition
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`seem particularly strong on the preliminary record … the institution of a trial may
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`serve the interest of overall system efficiency and integrity ….” Fintiv, 14-15
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`(addressing factor 6). As explained in detail below (with reference to Dr.
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`Cooperstock’s testimony), it is more likely than not that institution of the instant
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`Petition will result in invalidation of the challenged claims.
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`Finally, and unlike NHK, which turned on that panel’s application of §
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`325(d) rather than the “additional factor” of the scheduled trial date, there is no
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`independent basis for discretionary denial of the instant Petition; for this additional
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`reason, NHK is inapplicable. See NHK, 19-20 (concluding that the “advanced state
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`of the district court proceeding” in which petitioner “assert[ed] the same prior art
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`and arguments” was merely an “additional factor” that weighed in favor of a
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`discretionary denial already warranted by concerns under 35 U.S.C. § 325(d));
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`
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`11
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`

`

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`
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`Intuitive Surgical, Inc. v. Ethicon LLC, IPR2018-01703, Pap. 7, 11-13 (PTAB Feb.
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` Attorney Docket No. 39521-0092PS1
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`PGR of U.S. Patent No. 10,455,066
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`19, 2019)(“[T]here is no per se rule against instituting [IPR] … when any Final
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`Decision may issue after a district court has addressed the patentability of the same
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`claims. Nor should there be. Instituting under such circumstances … conserve[s]
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`judicial resources”).
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`For at least these reasons, even if one were to assume that Apple’s District
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`Court trial date were relevant (and it is not, since the instant Petition’s grounds are
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`unique), Apple respectfully submits that NHK and the Fintiv factors favor
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`institution, and that discretionary denial of the instant Petition would be neither
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`appropriate nor equitable.
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`
`
` THE ’066 PATENT
`The ’066 patent describes “a personal wireless media station” that can
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`wirelessly connect to a device such as a smart phone. APPLE-1001, 4:60-65,
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`12:24-28, FIG. 7. The media station includes a base station and a wireless earbud.
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`APPLE-1001, 5:5-7, FIG. 4A. The earbud can be docked to and undocked from
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`the base station. APPLE-1001, 5:10-12, 5:25-26, 6:2-3, FIGS. 4A, 4B. The base
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`station detects whether the earbud is docked to the base station. APPLE-1001,
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`14:65-15:19, 26:9-45. When the earbud is undocked from the base station, the
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`earbud can play back sound received from the base station or device. APPLE-
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`
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`12
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`

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`
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`1001, 9:6-12, 15:49-63, 18:35-42, 28:8-16. When the earbud is docked to the base
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` Attorney Docket No. 39521-0092PS1
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`PGR of U.S. Patent No. 10,455,066
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`station, the earbud battery is charged, and some components of the earbud are
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`turned off or disabled. APPLE-1001, 22:28-32, 28:29-38, 30:6-10.
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`
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` CLAIM CONSTRUCTION
`Petitioner identifies its proposed constructions below.6
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` “the circuitry … configured to obtain characteristics of the
`wireless earbud and send the characteristics to the at least one
`processor” (claims 9, 10, 30, and 36)
`“Circuitry” is a means-plus-function term under 35 U.S.C. §112(f) because it
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`recites “function without reciting sufficient structure for performing that function.”
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`See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348-49 (Fed. Cir. 2015) (en
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`banc). Circuitry’s functions include to “obtain characteristics of the wireless
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`earbud” and to “send the characteristics to the at least one processor.” Ground 1
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`below explains that this term is indefinite because the ’066 patent’s specification
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`does not disclose corresponding structure to perform the claimed functions.
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`APPLE-1003, ¶21.
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`6 A Joint Claim Construction Chart (APPLE-1014) has been submitted in co-
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`pending district court litigation. The court has not issued a claim construction
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`order.
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`13
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` Attorney Docket No. 39521-0092PS1
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`PGR of U.S. Patent No. 10,455,066
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`In related litigation, Pinn contends (which Petitioner does not concede) that
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`this feature should be given its ordinary meaning or that the corresponding
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`structure includes base station connector(s) (e.g., item 504 in Fig. 7) or switch, and
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`wiring (or other circuitry) to place such connector(s) or switch in electrical
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`communication with the processor. APPLE-1014, 21-23. Petitioner does not
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`concede to Pinn’s constructions. But, for purposes of this proceeding, the
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`corresponding structure is the structure identified by Pinn, namely, base station
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`connector(s) (e.g., item 504 in Fig. 7) or switch, and wiring (or other circuitry) to
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`place such connector(s) or switch in electrical communication with the processor.
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` “communication module configured to interface data
`communication with at least one of the smartphone and the
`wireless earbud” (claims 26 and 28)
`“Communication module” is a means-plus-function term under 35 U.S.C.
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`§112(f) because it recites “function without reciting sufficient structure for
`
`performing that function.” See Williamson, 792 F.3d at 1348-49. The function is
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`“interface data communication with at least one of the smartphone and the wireless
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`earbud.” The corresponding structure is a communication module 502, which is a
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`Bluetooth module. APPLE-1003, ¶¶25-27. In related litigation, Pinn contends
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`(which Petitioner does not concede) that this feature should be given its ordinary
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`meaning or that the corresponding structure is software and/or hardware
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`comprising a wireless communications component (e.g., item 502 in Fig. 7)
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`14
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`including, but not limited to, a communication component based on Bluetooth (or
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` Attorney Docket No. 39521-0092PS1
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`PGR of U.S. Patent No. 10,455,066
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`other wireless communication standards) technology. APPLE-1014, 23-25.
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`Petitioner’s grounds address this feature under Petitioner’s and Pinn’s
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`constructions.
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`
`
` UNPATENTABILITY GROUNDS
` GROUND 1: Claims 9, 10, 30, and 36 are indefinite under 35
`U.S.C. §§ 112(b) and 112(f)
`1. “the circuitry … configured to obtain characteristics of the
`wireless earbud and send the characteristics to the at least
`one processor” (appears in claims 9, 10, 30, and 36)
` “Where there are multiple claimed functions … the patentee must disclose
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`adequate corresponding structure to perform all of the claimed functions. If the
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`patentee fails to disclose adequate corresponding structure, the claim is indefinite.”
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`Williamson, 792 F.3d at 1351-52 (emphasis added and citation omitted). The ’066
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`patent’s specification does not disclose corresponding structure to perform the
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`claimed function of “obtain characteristics of the wireless earbud and send the
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`characteristics to the at least one processor.” APPLE-1003, ¶¶21-22.
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`In the specification, “circuitry” is only functionally described as providing
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`sound playback through a speaker and measuring characteristics of the earbud
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`connector. APPLE-1001, 17:6-10, 18:50-53, 19:63-66, 26:39-45, 26:15-18. The
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`’066 patent specification does not disclose that the circuitry performs the functions
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`
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`15
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`of “obtain . . . and send the characteristics” to the processor, and thus does not
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` Attorney Docket No. 39521-0092PS1
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`PGR of U.S. Patent No. 10,455,066
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`disclose the structure for performing all the claimed functions. APPLE-1003,
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`¶¶21-22.
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`In the related litigation, Pinn alleges that the corresponding structure
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`includes base station connector(s) (e.g., item 504 in Fig. 7) or a switch, and wiring
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`(or other circuitry) to place such connector(s) or switch in electrical
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`communication with the processor. APPLE-1014, 21-23 (citing APPLE-1001,
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`1:28-3:19, 5:5-16, 6:16-24, 7:16-38, 8:15-40, 8:50-9:12, 11:25-35, 11:58-64,
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`12:29-42, 12:60-13:9, 13:19-29, 14:65-20:3, 22:27-26:55, 28:29-38, 30:6-10,
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`31:26-32:57, FIGS. 7-12). As an initial matter, Pinn indiscriminately references
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`hundreds of lines of text, spread across nearly every column of the specification, to
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`support its proposed structure. However, this manifestly “overinclusive
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`designation,” which fails to identify circuitry that performs the recited function,
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`demonstrates that Pinn is unable to find adequate corresponding structure in the
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`specification. Bell Northern Research, LLC v. CoolPad Tech., Inc., 2019 WL
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`3766688 at *19 (S.D. Cal. Aug. 9, 2019).
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`Turning to Pinn’s proposed structure of the base station connector, the ’066
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`patent’s specification discloses that “the base station connector may include
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`circuitry,” which establishes that the circuitry is part of the base station connector,
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`not t