`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`PINN, INC,
`Patent Owner.
`
`
`
`
`
`
`
`
`
`
`
`
`Case PGR2020-00066
`Patent 10,455,066
`
`
`
`
`
`
`
`
`
`PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`Proceeding No.: PGR2020-00066
`Attorney Docket: 39521-0092PS1
`
`
`TABLE OF CONTENTS
`
`
`I. APPLE HAS COMPLIED WITH ITS UNCONDITIONAL STIPULATION .. 1
`
`II. DISCRETIONARY DENIAL UNDER 324(A) IS NOT WARRANTED
`BECAUSE THE IPR WILL ADDRESS A DIFFERENT SET OF INVADITY
`GROUNDS AND CLAIMS THAN THE LITIGATION ......................................... 3
`
`III. PINN DOES NOT APPLY THE SPECIAL MASTER’S CONSTRUCTION
`OF “WIRELESS PAIRING” AND INCORRECTLY CONTENDS THAT RABU
`DOES NOT DISCLOSE WIRELESS PAIRING ...................................................... 4
`
`IV. DISCRETIONARY DENIAL UNDER § 325(D) IS NOT WARRANTED
`BECAUSE THE PETITION APPLIES REFERENCES THAT ARE NOT THE
`SAME AS OR SIMILAR TO THE PROSECUTION RECORD ............................. 9
`
`
`
`
`
`
`
`i
`
`
`
`
`
`APPLE-1001
`
`Proceeding No.: PGR2020-00066
`Attorney Docket: 39521-0092PS1
`
`UPDATED EXHIBIT LIST
`U.S. Patent No. 10,455,066 to Kim (“the ’066 patent”)
`
`APPLE-1002
`
`Excerpts from the Prosecution History of the ’066 patent
`
`APPLE-1003
`
`APPLE-1004
`
`APPLE-1005
`
`APPLE-1006
`
`APPLE-1007
`
`APPLE-1008
`
`
`APPLE-1009
`
`APPLE-1010
`
`APPLE-1011
`
`
`APPLE-1012
`
`APPLE-1013
`
`
`APPLE-1014
`
`
`APPLE-1015
`
`
`APPLE-1016
`
`
`
`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”)
`ii
`
`
`
`Proceeding No.: PGR2020-00066
`Attorney Docket: 39521-0092PS1
`
`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-
`cv1805, 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-
`cv01748, C.D. Cal, Aug. 13, 2018
`
`Order re Claim Construction, Summary Judgment, and Trial
`Schedules, International Technologies and Systems Corp. v.
`iii
`
`
`APPLE-1023-1030
`
`APPLE-1031
`
`
`APPLE-1017
`
`APPLE-1018
`
`APPLE-1019
`
`APPLE-1020
`
`APPLE-1021
`
`APPLE-1022
`
`
`APPLE-1032
`
`
`APPLE-1033
`
`
`APPLE-1034
`
`
`APPLE-1035
`
`
`APPLE-1036
`
`
`APPLE-1037
`
`
`APPLE-1038
`
`
`
`
`
`Proceeding No.: PGR2020-00066
`Attorney Docket: 39521-0092PS1
`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/naturaldisasters/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.
`
`Apple’s Not. of Motion and Motion to Stay, Pinn, Inc. v Apple
`Inc., Case Nos. 8:19-cv-1840 and 8:19-cv-1856, C.D. Cal, Jun.
`12, 2020
`Excerpts of Apple’s Supplemental Invalidity Contentions, Pinn,
`Inc. v Apple Inc., Case No. 8:19-cv-1805, C.D. Cal, Aug. 3,
`2020
`
`iv
`
`
`APPLE-1039
`
`
`APPLE-1040
`
`
`APPLE-1041
`
`
`APPLE-1042
`
`
`APPLE-1043
`
`
`APPLE-1044
`
`APPLE-1045
`
`APPLE-1046
`
`APPLE-1047
`
`APPLE-1048
`
`APPLE-1049
`
`
`
`
`
`APPLE-1050
`
`APPLE-1051
`
`APPLE-1052
`
`APPLE-1053
`
`APPLE-1054
`
`Proceeding No.: PGR2020-00066
`Attorney Docket: 39521-0092PS1
`First Amended Complaint, Pinn, Inc. v Apple Inc., Case No.
`8:19-cv-1805, C.D. Cal, Nov. 21, 2019
`Second Amended Complaint, Pinn, Inc. v Apple Inc., Case No.
`8:19-cv-1805, C.D. Cal, April 17, 2020
`PCT Application Publication No. WO 2016/161454 (“the ’936
`application”)
`PCT Application No. PCT/US2016/025936 International
`Search Report
`Excerpts of Opening Expert Report of Jonathan Wells, Pinn,
`Inc. v Apple Inc., Case No. 8:19-cv-1805, C.D. Cal, August 14,
`2020
`
`
`
`
`
`v
`
`
`
`Proceeding No.: PGR2020-00066
`Attorney Docket: 39521-0092PS1
`Petitioner thanks the Board for authorizing the filing of a reply in response
`
`to Patent Owner’s Preliminary Response (Paper 7 or “POPR”). Paper 8, 3.
`
`I.
`APPLE HAS COMPLIED WITH ITS UNCONDITIONAL
`STIPULATION
`The POPR mischaracterizes and omits important portions of the record in co-
`
`pending litigation (Case No. 8:19-cv-1805-DOC-JDE (C.D. Cal.), hereinafter
`
`referred to as “the Litigation”), in alleging that Apple ignored its unconditional
`
`stipulation (APPLE-1031). POPR, 32-33. The POPR omitted and failed to inform
`
`the Board of Apple’s Motion to Stay (APPLE-1048) in the Litigation. APPLE-1048,
`
`7. In the Motion, Apple informed the Court that “Apple has unconditionally
`
`stipulated that it will not raise the invalidity grounds at trial in this case that are being
`
`resolved by the PTAB” and that Apple “will not use Hankey Group as primary
`
`invalidity references,” effectively “agreeing to be estopped on those grounds.” Id.
`
`Apple made this representation in writing to the Court without qualification and is
`
`bound by it, regardless of any contrary assertions by Pinn or any other disclosures
`
`by Apple in the Litigation. There will not be, nor can there be, any retraction. And
`
`it is the same stipulation Apple made to this Board and Pinn. This should put an end
`
`to the issue—Apple stands by its stipulation.
`
`Pinn tries to create an issue where none exists by raising questions about
`
`Apple’s invalidity contentions and the expert report of Dr. Wells, in which the
`
`Hankey Group was disclosed as prior art and detailed claim charts were provided
`1
`
`
`
`
`
`Proceeding No.: PGR2020-00066
`Attorney Docket: 39521-0092PS1
`showing how Hankey Group teaches (or renders obvious) every claim limitation.1
`
`The invalidity contentions and Dr. Wells’ report are provided to apprise Pinn of the
`
`relevant disclosure in prior art references and related theories. They do not control
`
`the asserted invalidity grounds (e.g., Watson I and II and Apple BT Headset-based
`
`grounds) that Apple is pursuing in the Litigation. APPLE-1049, 1-3. It is Apple’s
`
`representation to the Court concerning the Hankey Group stipulation that controls.
`
`Regardless, in offering analysis of Hankey Group, Dr. Wells limited his analysis to
`
`discrete features and functions, and did not present it as a primary reference. See
`
`generally APPLE-1054.2 Ultimately, it is Apple—not the contentions or even the
`
`experts—that decide the grounds that will be asserted (and resolved) at trial. The
`
`
`1 Pinn takes issue with Apple referring to “supplemental” invalidity contentions as
`
`“amended.” Regardless of how the contentions were styled, they do not undermine
`
`or modify Apple’s stipulation made to the Court, to this Board, and to Pinn.
`
`2 Dr. Wells attached claim charts (see PINN-2001) of the Hankey Group to his report
`
`(see APPLE-1054) that disclose every limitation. This is an accurate portrayal of
`
`the scope of as stated, that allows him to use Hankey Group, and, consistent with the
`
`stipulation, it provides a basis for referencing Hankey Group as a secondary
`
`reference in combination with primary references to address discrete features, as
`
`described by Dr. Wells.
`
`
`
`2
`
`
`
`Proceeding No.: PGR2020-00066
`Attorney Docket: 39521-0092PS1
`unconditional stipulation made by Apple to the Court is the final word on how
`
`Hankey Group will be used in the Litigation. Apple has honored its stipulation.
`
`Pinn’s assertions in the POPR regarding Apple’s stipulation are incorrect in view of
`
`the controlling Litigation record.
`
`II. DISCRETIONARY DENIAL UNDER 324(A) IS NOT
`WARRANTED BECAUSE THE IPR WILL ADDRESS A
`DIFFERENT SET OF INVADITY GROUNDS AND CLAIMS THAN
`THE LITIGATION
`As noted above in Section I, Apple is pursuing an entirely different set of
`
`grounds in the Litigation. Therefore, with this PGR, the Board will address issues
`
`that will not be resolved in the Litigation. Indeed, even if the District Court goes to
`
`trial before the Final Written Decision, the trial would address invalidity grounds
`
`that do not overlap the grounds and issues raised in the Petition, in each of which
`
`the Hankey Group is the primary reference. This fact distinguishes this case from
`
`NHK, Fintiv, and other cases in which discretion has been exercised to deny
`
`institution where the Petitioner was asserting the same grounds and arguments. NHK
`
`Spring Co. Ltd. v. Intri-Plex Techs. Inc., IPR2018-00752, Paper 8 at 20 (PTAB Sept.
`
`12, 2018); Apple Inc. v. Fintiv Inc., IPR2020-00019, Paper 15 at 14–15 (PTAB May
`
`13, 2020). Accordingly, Fintiv Factor 4 weighs heavily against discretionary denial.
`
`Moreover, Pinn acknowledges that the Petition challenges claim 7 in addition
`
`to the claims challenged in the Litigation. POPR, 41. To minimize this substantial
`
`distinction, the POPR accuses Apple, without any evidence, of challenging claim 7
`3
`
`
`
`
`
`Proceeding No.: PGR2020-00066
`Attorney Docket: 39521-0092PS1
`in the Petition “for the sole purpose of ensuring that the challenged claims of the
`
`Petition are not ‘identical’ to that of the parallel district court proceeding.” POPR,
`
`41. However, the POPR’s baseless accusations fail to recognize that, in Pinn, Apple
`
`faces a party that has shown itself willing to change its assertion, twice already
`
`within the pending litigation, including assertion of an altogether new patent against
`
`Apple. See e.g., APPLE-1022, APPLE-1050, APPLE-1051. Apple rather
`
`appropriately addresses all claims of interest, whether or not within the collection
`
`advanced by Pinn at any particular instant in time, in this litigation or elsewhere,
`
`particularly with Apple’s Section 315 Apple’s 1-year bar. As noted in the Petition
`
`(“Pet.”), claim 7 is directed, in part, to a volume control button, which is a
`
`component included in several Apple products. Pet., 6, 85. Apple therefore has a
`
`business interest in challenging claim 7. Furthermore, challenging claim 7, which
`
`attempts to monopolize the rights to using a common feature such as a volume
`
`control button, is consistent with the PTAB’s objectives of improving patent quality
`
`to ensure that intellectual property rights are only granted to novel and unobvious
`
`claims.
`
`III. PINN DOES NOT APPLY THE SPECIAL MASTER’S
`CONSTRUCTION OF “WIRELESS PAIRING” AND
`INCORRECTLY CONTENDS THAT RABU DOES NOT DISCLOSE
`WIRELESS PAIRING
`The POPR argues that Hankey Group and Lydon fail to render obvious feature
`
`1[d] at least because (1) Rabu is directed to wired pairing not “wireless pairing,”
`4
`
`
`
`
`
`Proceeding No.: PGR2020-00066
`Attorney Docket: 39521-0092PS1
`and (2) Rabu is directed to automating the pairing process and therefore “teaches
`
`away from requiring user input to initiate any pairing.” POPR, 59-64. However,
`
`these arguments are based on (1) an incorrect construction of “wireless pairing”, and
`
`(2) a fundamental misunderstanding of Rabu’s disclosure. PINN-2006, 6-17. In
`
`particular, POPR mischaracterizes Rabu and the Petition, and contends that Rabu’s
`
`“charging device only acts as a ‘pairing manager’ for a wired pairing process.”
`
`POPR, 60-61. This misconstrues the meaning “wireless pairing” and directly
`
`contradicts explicit disclosure in Rabu. Pet., 36-41.
`
`First, the POPR contends that its use of “wireless pairing” is based on the
`
`Technical Special Master’s construction, but that is incorrect. POPR, 34, 60-62.
`
`During claim construction (and after the Petition was filed), the Technical Special
`
`Master rejected Pinn’s construction that “wireless pairing” should be construed as
`
`“establish[ing] a wireless connection between two devices to relay information” and
`
`determined that “wireless pairing” should be construed as “establishing a trusted
`
`relationship between two devices that allows them to communicate wirelessly.”
`
`PINN-2006, 6-17. The Technical Special Master’s construction recognized that
`
`wireless pairing is directed to a type of relationship that permits wireless
`
`communication, not to the method by which that relationship is established. That is,
`
`“wireless pairing” is a relationship that allows for wireless communication, not the
`
`means by which the pairing is accomplished.
`
`
`
`5
`
`
`
`Proceeding No.: PGR2020-00066
`Attorney Docket: 39521-0092PS1
`In arguing against Rabu’s disclosure of wireless pairing, the POPR contends
`
`that Rabu is directed to wired pairing because pairing between wireless devices is
`
`established via a wired connection. POPR, 61. Even if such a characterization of
`
`Rabu is considered (which Apple does not agree to), the POPR’s argument relies on
`
`an incorrect construction of wireless pairing. However, under the Technical Special
`
`Master’s construction, only a trusted relationship needs to be established between
`
`two devices that allows them to communicate wirelessly, which can be achieved
`
`through an
`
`initial wired connection and subsequent wireless connection.
`
`Accordingly, disclosure of using a wired connection to setup wireless pairing
`
`between devices is consistent with the Technical Special Master’s construction of
`
`“wireless pairing” and Rabu’s explicit disclosure that it teaches wireless pairing.
`
`Second, Rabu expressly discloses a wireless pairing process: “[T]he master
`
`device and slave device [ ] pair together wirelessly.” APPLE-1005, 15:5-20. Rabu
`
`also describes the pairing process as being a Bluetooth process with several wireless
`
`steps. See e.g., Id., 14:5-17 (“pair two devices together in accordance with a
`
`Bluetooth”); 14:41-49 (“the master device can detect the slave device without the
`
`assistance of the apparatus (e.g., wirelessly)”); 14:50-55 (“the master device may
`
`query the slave device without using the circuitry of the apparatus (e.g.,
`
`wirelessly)”).
`
`
`
`
`
`6
`
`
`
`Proceeding No.: PGR2020-00066
`Attorney Docket: 39521-0092PS1
`The POPR incorrectly interprets Rabu’s disclosure of a master device being
`
`“electrically coupled” to the charging device as necessarily invoking a wired
`
`communication. POPR, 61. This inference is not supported, however. An electrical
`
`coupling can be non-physical or unwired, as indicated by Rabu, which distinguishes
`
`between electrical coupling and physical coupling. APPLE-1005, 14:30-40 (“In
`
`response to the master and slave devices being electrically and/or physically
`
`coupled to the apparatus, the microcontroller of the apparatus (e.g., microcontroller
`
`214) may perform any function”). The POPR quotes the Petition’s discussion of
`
`electrical coupling as evidence suggesting that “[e]ven Petitioner acknowledges that
`
`the pairing in Rabu is via a wired connection.” POPR, 61. Yet, as explained above,
`
`the proper construction does not preclude using a wired connection for wireless
`
`pairing (i.e., the claim construction is silent as to how the trusted relationship is
`
`established, allowing for wired or wireless connection). See also APPLE-1005,
`
`15:18-20 (describing using a combination of wired and wireless connection for
`
`pairing). Thus, the POPR makes an incorrect logical leap in equating electrical
`
`coupling to wired connection. The POPR also mischaracterizes the Petition by
`
`quoting an initial part of the Petition’s discussion of electrical coupling (as evidence
`
`that Petitioner allegedly acknowledged a purported teaching of wired pairing in
`
`Rabu), while omitting the end portion (“to pair together wirelessly”) of the quote
`
`that associates the electrical coupling with wireless pairing. POPR, 61; Pet., 38
`
`
`
`7
`
`
`
`Proceeding No.: PGR2020-00066
`Attorney Docket: 39521-0092PS1
`(“For instance, when a master device, e.g., a cellular telephone, and a slave device,
`
`e.g., a wireless headset, are electrically coupled to the charging device, the charging
`
`device’s microcontroller performs functions to ... allow the master device and slave
`
`device to pair together wirelessly”).
`
`The POPR’s argument that Rabu’s focus on automating the pairing process
`
`teaches away from implementing a user input to initiate wireless pairing is similarly
`
`based on an incorrect understanding of Rabu. POPR, 59-64. Automation may
`
`reduce user input, but it does not necessarily eliminate user input. As noted in the
`
`Petition, Rabu explicitly states that “any of the steps of [the automatic Bluetooth
`
`pairing] process 400 can require a user interaction before proceeding.” APPLE-
`
`1005, 15:65-67. Accordingly, while Apple agrees with the POPR that Rabu teaches
`
`automating wireless pairing, disclosure within Rabu itself defies Pinn’s assertion
`
`that Rabu’s pairing process eliminates user interaction. Indeed, Pinn’s assertion is
`
`contrary to Rabu’s explicit contemplation of user interaction at any step of its
`
`Bluetooth pairing process, including when initiating the pairing process. Moreover,
`
`Pinn’s assertion looks past the practicality of implementing a user interaction by
`
`virtue of a button provided on the main body, which would have been obvious to a
`
`POSITA. Pet., 39-40; APPLE-1003, ¶¶[60]-[64], [102]-[103]. For example, if a
`
`device such as the earbud or smartphone, were surrounded by multiple wireless
`
`devices, e.g., six devices, and the device was configured to automatically pair
`
`
`
`8
`
`
`
`Proceeding No.: PGR2020-00066
`Attorney Docket: 39521-0092PS1
`without any user interaction, the device might inefficiently and undesirably pair with
`
`some or all of the devices when the user may only intend to pair with a particular
`
`one of the devices. Id. To limit pairing to the desired devices, it would have been
`
`obvious to seek user input. Id. This is just one of numerous instances in which parts
`
`of the pairing can be automated and a user input is implemented to initiate the
`
`wireless pairing. Thus, for this additional reason, Rabu’s focus on automation would
`
`not teach a POSITA away from requiring user input to initiate any pairing.
`
`IV. DISCRETIONARY DENIAL UNDER § 325(D) IS NOT
`WARRANTED BECAUSE THE PETITION APPLIES REFERENCES
`THAT ARE NOT THE SAME AS OR SIMILAR TO THE
`PROSECUTION RECORD
`The Advanced Bionics framework sets forth a two-step inquiry to determine
`
`whether a § 325(d) discretionary denial is warranted. Advanced Bionics, LLC v.
`
`Med-El Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 (Feb. 13,
`
`2020). In conducting this inquiry, the Board may turn to the Becton factors3 for
`
`analyzing the prosecution history. Becton, Dickinson & Co. v. B. Braun Melsungen
`
`AG, IPR2017-01586, Paper 8, (Dec. 15, 2017). As explained below, application of
`
`
`3 The Becton factors set forth a list of six non-exclusive factors in determining the
`
`relevance of prior art references. The factors include 1) art similarities/differences,
`
`2) art cumulativeness, 3) art evaluation, 4) argument(s) overlap, 5) error identified,
`
`and 6) new evidence.
`
`
`
`9
`
`
`
`Proceeding No.: PGR2020-00066
`Attorney Docket: 39521-0092PS1
`the Becton factors and the Advanced Bionics framework to this case reveals that
`
`discretionary denial under § 325(d) is not warranted.
`
`a.
`Advanced Bionics Step 1: Whether the same or substantially the
`same art or argument was previously presented to the Office
`As an initial matter, none of the references applied in the Petition other than
`
`Kim (applied only in Ground 6 against claim 38) were previously presented to the
`
`Office. Thus, all but one of the references are non-cumulative. This fact weighs
`
`against discretionary denial.
`
`The POPR alleges that the Hankey Group references are substantially similar
`
`to Pedersen. POPR, 47-48. During prosecution, over a hundred references were
`
`cited in IDSs, one of which was Pedersen. APPLE-1002, 4-11, 413-420, 506, 541-
`
`545. No arguments were made related to the Pedersen. Thus, during the prosecution
`
`of the application corresponding to the ’066 Patent, Pedersen was merely cited in an
`
`IDS and was never substantively considered or used in a rejection by the Examiner.
`
`APPLE-1002, 6. In such cases, the Board has previously found that 325(d)
`
`discretionary denial is not warranted. See e.g., Synaptic Medical Inc. v. Karl Storz-
`
`Endoscopy-America, Inc., IPR2018-00462, Paper 6 at 10 (PTAB July 16, 2018);
`
`Comcast Cable Communs., LLC v. Promptu Sys. Corp., IPR2018-00342, Paper 13
`
`at 17 (PTAB July 19, 2018) (where institution was granted when prior art was only
`
`cited in an IDS and not applied by the Examiner in any rejection of the claims).
`
`
`
`10
`
`
`
`Unremarkably,
`
`the Examiner
`
`in
`
`Proceeding No.: PGR2020-00066
`Attorney Docket: 39521-0092PS1
`related parent PCT application,
`
`PCT/US2016/025936 (“’936 application”), applied Pedersen to the claims of the
`
`’936 application that had a different scope. APPLE-1002, 160-161, 194-199. For
`
`example, the ’936 PCT application independent claim 1 recited features directed to
`
`detecting a docked-to-undocked change or an undocked-to-docked change of the
`
`earbud and how sound is output based on the docked or undocked stage or transition.
`
`Id.; APPLE-1052, 56-57. The ’066 Patent claim 1 recites features such as “wherein,
`
`in response to pressing of the user input button, the at least one processor is
`
`configured to execute computer program instructions stored in the at least one
`
`memory to initiate processing for the wireless pairing with the smartphone such that
`
`the wireless earbud receives audio data originated from the smartphone and plays
`
`audio using the audio data from the smartphone” and several other features that were
`
`not recited in the ’936 application and were never addressed by the ’936 application
`
`Examiner. APPLE-1001, 33:15-44. Thus, even the arguments on record in the
`
`related ’936 application were directed to different features such that there is no
`
`overlap in substantive issues or arguments on the record and arguments related to
`
`Hankey Group and Lydon. In contrast, the Examiner for the application
`
`corresponding to the ’066 Patent did not find Pedersen worthy of supporting a single
`
`ground of rejection by itself or in combination with another reference.
`
`
`
`11
`
`
`
`Proceeding No.: PGR2020-00066
`Attorney Docket: 39521-0092PS1
`Indeed, a closer look at comments offered by the Examiner in the ‘936
`
`application international search report reveals how different Pedersen is from
`
`Hankey Group and Lydon. For example, the ’936 application Examiner explains
`
`that “Pedersen fails to disclose wherein the wireless headset is a wireless earbud;
`
`wherein the headset connector is an earbud connector ... wherein the wireless earbud
`
`and the base station form a single integrated body; wherein the personal wireless
`
`media station is programmed.” APPLE-1053, 6. As explained in the Petition,
`
`Hankey Group and Lydon disclose these features. Pet., 28-36.
`
`In an attempt to portray Pedersen as being similar to Hankey Group and
`
`Lydon, Pinn cites to Pedersen at ¶[0046] and Figs. 1, 6, 7 (which are not cited in the
`
`prosecution record) and contends that Pederson discloses a headset with contact
`
`terminals for docking into a docking station. POPR, 48. However, during
`
`prosecution of the ’936 application, Pinn argued the opposite, namely, that Pedersen,
`
`Fisher, and Price, alone or in combination, do not disclose an earbud that can dock
`
`or undock from a base station. APPLE-1002, 203-206. Pinn’s interpretation of
`
`Pedersen in the POPR thus starkly contrasts with the prosecution record, which, as
`
`indicated above, reinforces the differences with Hankey Group and Lydon.
`
`In an effort to support its 325(d) arguments, the POPR further provides a
`
`comparison of Pedersen, Lydon, and Rabu’s figures as evidence of their alleged
`
`similarities. POPR, 48-50. While Pedersen, Lydon, and Rabu’s figures on the
`
`
`
`12
`
`
`
`Proceeding No.: PGR2020-00066
`Attorney Docket: 39521-0092PS1
`POPR’s pages 49-50 show connected devices such as a phone and a headset, the
`
`POPR overlooks substantive details that are present in Hankey Group and Lydon but
`
`not in Pedersen. For example, Hankey Group and Lydon disclose a wireless earbud,
`
`which Pedersen does not, as noted by the ’936 application Examiner. Pet., 29-34;
`
`APPLE-1053, 6. Amongst various other features, Hankey Group and Lydon also
`
`disclose feature 1[e] (“wherein, in response to plugging the wireless earbud into the
`
`connection hole, the at least one processor is configured to execute computer
`
`program instructions stored in the at least one memory to initiate charging of a
`
`battery of the wireless earbud”), and 1[d] (“wherein, in response to pressing of the
`
`user input button, the at least one processor is configured to execute computer
`
`program instructions stored in the at least one memory to initiate processing for the
`
`wireless pairing with the smartphone such that the wireless earbud receives audio
`
`data originated from the smartphone and plays audio using the audio data from the
`
`smartphone”). Pet., 36-43. Pedersen does not. In any case, the prosecution histories
`
`of the ’066 Patent and the ’936 application are silent on any such analysis or
`
`arguments.
`
`With respect to references such as Kalayjian, Dua, Burnett, and Kim, the
`
`POPR introduces new evidence and broadly characterizes references from the
`
`prosecution history in an attempt to find commonality with the Petition references
`
`while overlooking the substantive differences. POPR, 50-52. For example, Castillo
`
`
`
`13
`
`
`
`Proceeding No.: PGR2020-00066
`Attorney Docket: 39521-0092PS1
`was relied upon during prosecution for disclosing “a storage device for docking and
`
`charging wireless (Bluetooth) earphone.” PINN-2007, 634. The POPR introduces
`
`a new citation of Castillo’s ¶[0073], which was never on record in the prosecution
`
`history or relied upon by the Examiner for any argument, as purportedly disclosing
`
`a claim feature that Petitioner demonstrated is disclosed by Kalayjian. Pet., 49-58;
`
`POPR, 50-51. Yet, even if this new Castillo citation is considered, Castillo’s
`
`disclosure of a color flashing at a predetermined rate is not the same as an auditory
`
`sound being emitted by a slave device, as disclosed by Kalayjian. APPLE-1008,
`
`[0038]-[0039]; POPR, 50-51. It stands to reason that this portion of Castillo was
`
`never cited during prosecution because claim 9, against which Kalayjian is asserted,
`
`requires a sound to be generated, not a flashing light. APPLE-1001, 34:6-14. For
`
`at least this reason, the information provided by Kalayjian was never presented to
`
`the Office during prosecution. The POPR similarly mischaracterizes the record in
`
`contending that Yueh and Fisher reveal information previously presented to the
`
`Office similar to the information relied upon for in Dua and Burnett. For example,
`
`while Yueh was asserted in an Office Action, Yueh’s disclosure of a volume key,
`
`was never at issue during prosecution and is being introduced for the first time by
`
`the POPR, thereby raising a new issue of whether Yueh can be relied upon for
`
`disclosing claim 7 (which the Examiner never asserted). POPR, 51; PINN-2007,
`
`633-638. Moreover, while Dua was relied upon, in part, for disclosing feature 1[d]
`
`
`
`14
`
`
`
`Proceeding No.: PGR2020-00066
`Attorney Docket: 39521-0092PS1
`(“in response to pressing of the user input button ...”), the Examiner explicitly
`
`acknowledged that Yueh does not provide disclose this feature during prosecution.
`
`Pet., 80-84; PINN-2007, 634. Thus, as expressly reflected in the prosecution history,
`
`Yueh does not provide the same information as Dua, and the information provided
`
`by Dua was not presented to the Office during prosecution.
`
` The POPR contends that Burnett discloses the same information as Fisher
`
`because Fisher is directed to “a docking station with multiple wireless headsets
`
`attached thereto.” POPR, 51-52. Again, such a high level description is not
`
`sufficient to show that Fisher reveals the same information as Burnett. Neither the
`
`prosecution record nor the POPR point to any disclosure in Fisher that reveals the
`
`erasing of a pairing record at the next power on/off or charging cycle—disclosure
`
`for which Burnett is relied upon in the Petition. Pet., 86-90; POPR, 51. Indeed, such
`
`disclosure is not present in Fisher, was never presented to the Office during
`
`prosecution, and the Office did not encounter the same information.
`
`b.
`Advanced Bionics Step 2: If yes to step 1, whether petitioner
`demonstrates that the Office erred in a manner material to the
`patentability of the challenged claim
`Step 2 is not applicable because the same or substantially the same art or
`
`argument was not previously presented to the Office (step 1). Alternatively, if the
`
`POPR references like Pedersen were material, the Examiner erred in a material
`
`manner by failing to apply the POPR references to the claims during prosecution.
`
`
`
`15
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Date: October 14, 2020
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Proceeding No.: PGR2020-00066
`Attorney Docket: 39521-0092PS1
`
` Respectfully submitted,
`
`
`
`/W. Karl Renner/
`
`W. Karl Renner, Reg. No. 41,265
`Christopher S. Marchese, Reg. No. 37,177
`Kim Leung, Reg. No. 64,399
`Usman Khan, Reg. No. 70,439
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
` Attorneys for Petitioner
`
`
`
`
`
`
`
`
`
`
`
`
`
`16
`
`
`
`Proceeding No.: PGR2020-00066
`Attorney Docket: 39521-0092PS1
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR § 42.8(b), the undersigned certifies that on October 14,
`
`2020, a complete and entire copy of this Petitioner’s Reply to Patent Owner’s
`
`Preliminary Response and Accompanying Exhibits were provided via email to the
`
`Patent Owner by serving the correspondence email addresses of record as follows:
`
`Cabrach Connor
`CONNOR KUDLAC LEE PLLC
`609 Castle Ridge Road, Suite 450
`Austin, Texas 78746
`
`Carder W. Brooks, David A. Skeels
`WHITAKER CHALK SWINDLE & SCHWARTZ PLLC
`301 Commerce Street, Suite 3500
`Fort Worth, Texas 76102-4135
`
`John R. Kasha
`Kasha Law LLC
`14532 Dufief Mill Road
`North Potomac, MD 20878
`
`Email: cab@connorkudlaclee.com
`cbrooks@whitakerchalk.com
`dskeels@whitakerchalk.com
`john.kasha@kashalaw.com
`
`/Diana Bradley/
`
`Diana Bradley
`Fish & Richardson P.C.
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
