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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner,
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`v.
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`PINN, INC,
`Patent Owner.
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`Case PGR2020-00073
`Patent No. 10,609,198
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`PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`Proceeding No.: PGR2020-00073
`Attorney Docket: 39521-0093PS1
`
`
`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
`
`
`
`
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`
`
`i
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`
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`APPLE-1001
`
`Proceeding No.: PGR2020-00073
`Attorney Docket: 39521-0093PS1
`
`UPDATED EXHIBIT LIST
`U.S. Patent No. 10,609,198 to Kim (“the ’198 Patent”)
`
`APPLE-1002
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`Excerpts from the Prosecution History of the ’198 Patent
`
`APPLE-1003
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`APPLE-1004
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`APPLE-1005
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`APPLE-1006
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`APPLE-1007
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`APPLE-1008
`
`
`APPLE-1009
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`APPLE-1010
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`APPLE-1011
`
`
`APPLE-1012
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`APPLE-1013
`
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`APPLE-1014
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`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”)
`
`Excerpts of 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.: PGR2020-00073
`Attorney Docket: 39521-0093PS1
`
`U.S. Provisional Patent Application No. 62/142,978
`
`U.S. Patent No. 10,455,066 (“’066 Patent”)
`
`RESERVED
`
`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
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`APPLE-1031
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`APPLE-1017
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`APPLE-1018
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`APPLE-1019
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`APPLE-1020
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`APPLE-1021
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`APPLE-1022
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`APPLE-1032
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`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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`APPLE-1038
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`
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`Proceeding No.: PGR2020-00073
`Attorney Docket: 39521-0093PS1
`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
`
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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
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`APPLE-1048
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`APPLE-1049
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`APPLE-1050
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`APPLE-1051
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`APPLE-1052
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`APPLE-1053
`APPLE-1054
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`Proceeding No.: PGR2020-00073
`Attorney Docket: 39521-0093PS1
`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”)
`RESERVED
`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
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`
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`v
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`Proceeding No.: PGR2020-00073
`Attorney Docket: 39521-0093PS1
`Petitioner thanks the Board for authorizing the filing of a reply in response
`
`to Patent Owner’s Preliminary Response (Paper 6 or “POPR”). Paper 7, 3.
`
`I.
`APPLE HAS COMPLIED WITH ITS UNCONDITIONAL
`STIPULATION
`The POPR mischaracterizes and omits important portions of the record in the
`
`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
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`stipulation (APPLE-1031). POPR, 28-29. The POPR omitted and failed to inform
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`the Board of Apple’s Motion to Stay (APPLE-1048) in the Litigation. APPLE-1048,
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`7. In the Motion, Apple informed the Court that “Apple has unconditionally
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`stipulated that it will not raise the invalidity grounds at trial in this case that are being
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`resolved by the PTAB” and that Apple “will not use Hankey Group as primary
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`invalidity references,” effectively “agreeing to be estopped on those grounds.” Id.
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`Apple made this representation in writing to the Court without qualification and is
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`bound by it, regardless of any contrary assertions by Pinn or any other disclosures
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`by Apple in the Litigation. There will not be, nor can there be, any retraction. And
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`it is the same stipulation Apple made to this Board and Pinn. This should put an end
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`to the issue—Apple stands by its stipulation.
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`Pinn tries to create an issue where none exists by raising questions about
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`Apple’s invalidity contentions and the expert report of Dr. Wells, in which the
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`Hankey Group was disclosed as prior art and detailed claim charts were provided
`1
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`Proceeding No.: PGR2020-00073
`Attorney Docket: 39521-0093PS1
`showing how Hankey Group teaches (or renders obvious) every claim limitation.1
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`The invalidity contentions and Dr. Wells’ report are provided to apprise Pinn of the
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`relevant disclosure in prior art references and related theories. They do not control
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`the asserted invalidity grounds (e.g., Watson I and II and Apple BT Headset-based
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`grounds) that Apple is pursuing in the Litigation. APPLE-1049, 1-3. It is Apple’s
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`representation to the Court concerning the Hankey Group stipulation that controls.
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`Regardless, in offering analysis of Hankey Group, Dr. Wells limited his analysis to
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`discrete features and functions, and did not present it as a primary reference. See
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`generally APPLE-1054.2 Ultimately, it is Apple—not the contentions or even the
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`experts—that decide the grounds that will be asserted (and resolved) at trial. The
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`1 Pinn takes issue with Apple referring to “supplemental” invalidity contentions as
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`“amended.” Regardless of how the contentions were styled, they do not undermine
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`or modify Apple’s stipulation made to the Court, to this Board, and to Pinn.
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`2 Dr. Wells attached claim charts (see PINN-2001) of the Hankey Group to his report
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`(see APPLE-1054) that disclose every limitation. This is an accurate portrayal of
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`the scope of as stated, that allows him to use Hankey Group, and, consistent with the
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`stipulation, it provides a basis for referencing Hankey Group as a secondary
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`reference in combination with primary references to address discrete features, as
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`described by Dr. Wells.
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`
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`2
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`
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`Proceeding No.: PGR2020-00073
`Attorney Docket: 39521-0093PS1
`unconditional stipulation made by Apple to the Court is the final word on how
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`Hankey Group will be used in the Litigation. Apple has honored its stipulation.
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`Pinn’s assertions in the POPR regarding Apple’s stipulation are incorrect in view of
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`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
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`that will not be resolved in the Litigation. Indeed, even if the District Court goes to
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`trial before the Final Written Decision, the trial would address invalidity grounds
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`that do not overlap the grounds and issues raised in the Petition, in each of which
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`the Hankey Group is the primary reference. This fact distinguishes this case from
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`NHK, Fintiv, and other cases in which discretion has been exercised to deny
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`institution where the Petitioner was asserting the same grounds and arguments. NHK
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`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 6 in addition
`
`to the claims challenged in the Litigation. POPR, 36-37. To minimize this
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`substantial distinction, the POPR accuses Apple, without any evidence, of
`3
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`
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`Proceeding No.: PGR2020-00073
`Attorney Docket: 39521-0093PS1
`challenging claim 6 in the Petition “for the sole purpose of ensuring that the
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`challenged claims of the Petition are not ‘identical’ to that of the parallel district
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`court proceeding.” POPR, 37. However, the POPR’s baseless accusations fail to
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`recognize that, in Pinn, Apple faces a party that has shown itself willing to change
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`its assertion, twice already within the pending litigation, including assertion of an
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`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.
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`As noted in the Petition (“Pet.”), claim 6 is directed, in part, to a volume control
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`button, which is a component included in several Apple products. Pet., 6, 82. Apple
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`therefore has a business interest in challenging claim 6. Furthermore, challenging
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`claim 6, 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
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`patent quality to ensure that intellectual property rights are only granted to novel and
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`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
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`1[d] at least because (1) Rabu is directed to wired pairing not “wireless pairing,”
`4
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`
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`Proceeding No.: PGR2020-00073
`Attorney Docket: 39521-0093PS1
`and (2) Rabu is directed to automating the pairing process and therefore “teaches
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`away from requiring user input to initiate any pairing.” POPR, 54-59. However,
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`these arguments are based on (1) an incorrect construction of “wireless pairing”, and
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`(2) a fundamental misunderstanding of Rabu’s disclosure. PINN-2006, 6-17. In
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`particular, POPR mischaracterizes Rabu and the Petition, and contends that Rabu’s
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`“charging device only acts as a ‘pairing manager’ for a wired pairing process.”
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`POPR, 55-56. This misconstrues the meaning “wireless pairing” and directly
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`contradicts explicit disclosure in Rabu. Pet., 52-55.
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`First, the POPR contends that its use of “wireless pairing” is based on the
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`Technical Special Master’s construction, but that is incorrect. POPR, 29, 55-57.
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`During claim construction (and after the Petition was filed), the Technical Special
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`Master rejected Pinn’s construction that “wireless pairing” should be construed as
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`“establish[ing] a wireless connection between two devices to relay information” and
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`determined that “wireless pairing” should be construed as “establishing a trusted
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`relationship between two devices that allows them to communicate wirelessly.”
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`PINN-2006, 6-17. The Technical Special Master’s construction recognized that
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`wireless pairing is directed to a type of relationship that permits wireless
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`communication, not to the method by which that relationship is established. That is,
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`“wireless pairing” is a relationship that allows for wireless communication, not the
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`means by which the pairing is accomplished.
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`
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`5
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`
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`Proceeding No.: PGR2020-00073
`Attorney Docket: 39521-0093PS1
`In arguing against Rabu’s disclosure of wireless pairing, the POPR contends
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`that Rabu is directed to wired pairing because pairing between wireless devices is
`
`established via a wired connection. POPR, 56. Even if such a characterization of
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`Rabu is considered (which Apple does not agree to), the POPR’s argument relies on
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`an incorrect construction of wireless pairing. However, under the Technical Special
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`Master’s construction, only a trusted relationship needs to be established between
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`two devices that allows them to communicate wirelessly, which can be achieved
`
`through an
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`initial wired connection and subsequent wireless connection.
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`Accordingly, disclosure of using a wired connection to setup wireless pairing
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`between devices is consistent with the Technical Special Master’s construction of
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`“wireless pairing” and Rabu’s explicit disclosure that it teaches wireless pairing.
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`Second, Rabu expressly discloses a wireless pairing process: “[T]he master
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`device and slave device [ ] pair together wirelessly.” APPLE-1005, 15:5-20. Rabu
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`also describes the pairing process as being a Bluetooth process with several wireless
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`steps. See e.g., Id., 14:5-17 (“pair two devices together in accordance with a
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`Bluetooth”); 14:41-49 (“the master device can detect the slave device without the
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`assistance of the apparatus (e.g., wirelessly)”); 14:50-55 (“the master device may
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`query the slave device without using the circuitry of the apparatus (e.g.,
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`wirelessly)”).
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`6
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`
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`Proceeding No.: PGR2020-00073
`Attorney Docket: 39521-0093PS1
`The POPR incorrectly interprets Rabu’s disclosure of a master device being
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`“electrically coupled” to the charging device as necessarily invoking a wired
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`communication. POPR, 56. This inference is not supported, however. An electrical
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`coupling can be non-physical or unwired, as indicated by Rabu, which distinguishes
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`between electrical coupling and physical coupling. APPLE-1005, 14:30-40 (“In
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`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
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`electrical coupling as evidence suggesting that “[e]ven Petitioner acknowledges that
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`the pairing in Rabu is via a wired connection.” POPR, 56. Yet, as explained above,
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`the proper construction does not preclude using a wired connection for wireless
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`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,
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`15:18-20 (describing using a combination of wired and wireless connection for
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`pairing). Thus, the POPR makes an incorrect logical leap in equating electrical
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`coupling to wired connection. The POPR also mischaracterizes the Petition by
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`quoting an initial part of the Petition’s discussion of electrical coupling (as evidence
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`that Petitioner allegedly acknowledged a purported teaching of wired pairing in
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`Rabu), while omitting the end portion (“to pair together wirelessly”) of the quote
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`that associates the electrical coupling with wireless pairing. POPR, 56; Pet., 52-53
`
`
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`7
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`
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`Proceeding No.: PGR2020-00073
`Attorney Docket: 39521-0093PS1
`(“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
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`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
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`based on an incorrect understanding of Rabu. POPR, 54-59. 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-
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`1005, 15:65-67. Accordingly, while Apple agrees with the POPR that Rabu teaches
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`automating wireless pairing, disclosure within Rabu itself defies Pinn’s assertion
`
`that Rabu’s pairing process eliminates user interaction. Indeed, Pinn’s assertion is
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`contrary to Rabu’s explicit contemplation of user interaction at any step of its
`
`Bluetooth pairing process, including when initiating the pairing process. Moreover,
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`Pinn’s assertion looks past the practicality of implementing a user interaction by
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`virtue of a button provided on the main body, which would have been obvious to a
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`POSITA. Pet., 53-55; APPLE-1003, ¶¶[60]-[64], [72]-[77], [102]-[103], [134]. For
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`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
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`
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`8
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`
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`Proceeding No.: PGR2020-00073
`Attorney Docket: 39521-0093PS1
`pair without any user interaction, the device might inefficiently and undesirably pair
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`with some or all of the devices when the user may only intend to pair with a particular
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`one of the devices. Id. To limit pairing to the desired devices, it would have been
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`obvious to seek user input. Id. This is just one of numerous instances in which parts
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`of the pairing can be automated and a user input is implemented to initiate the
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`wireless pairing. Thus, for this additional reason, Rabu’s focus on automation would
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`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
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`relevance of prior art references. The factors include 1) art similarities/differences,
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`2) art cumulativeness, 3) art evaluation, 4) argument(s) overlap, 5) error identified,
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`and 6) new evidence.
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`
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`9
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`
`
`Proceeding No.: PGR2020-00073
`Attorney Docket: 39521-0093PS1
`the Becton factors and the Advanced Bionics framework to this case reveals that
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`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
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`Kim (applied only in Grounds 6 and 6A against claim 29) were previously presented
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`to the Office. Thus, all but one of the references are non-cumulative. This fact
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`weighs against discretionary denial.
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`The POPR alleges that the Hankey Group references are substantially similar
`
`to Pedersen. POPR, 43-45. During prosecution, over a hundred references were
`
`cited in IDSs, one of which was Pedersen. APPLE-1002, 53-58, 325-330, 672-680,
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`737-740, 870-883. No arguments were made related to the Pedersen. Thus, during
`
`the prosecution of the application corresponding to the ’198 Patent, Pedersen was
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`merely cited in an IDS and was never substantively considered or used in a rejection
`
`by the Examiner. APPLE-1002, 55. In such cases, the Board has previously found
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`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
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`was only cited in an IDS and not applied by the Examiner in any rejection of the
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`claims).
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`Unremarkably, the Examiner in related grandparent PCT application,
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`PCT/US2016/025936 (“’936 application”) applied to the claims of the ’936
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`application that had a different scope. APPLE-1002, 165-170; APPLE-1052, 56-57.
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`For example, the ’936 PCT application independent claim 1 recited features directed
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`to detecting a docked-to-undocked change or an undocked-to-docked change of the
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`earbud and how sound is output based on the docked or undocked stage or transition.
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`APPLE-1052, 56-57. The ’198 Patent claim 1 recites features such as “wherein, in
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`response to pressing of the user input button of the mobile base station, the at least
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`one processor is configured to execute computer program instructions stored in the
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`at least one memory to initiate processing for the wireless pairing” and several other
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`features that were not recited in the ’936 application and were never addressed by
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`the ’936 application Examiner. APPLE-1001, 15:10-48. Thus, even the arguments
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`on record in the related ’936 application were directed to different features such that
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`there is no overlap in substantive issues or arguments on the record and arguments
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`related to Hankey Group and Lydon. In contrast, the Examiner for the application
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`corresponding to the ’198 Patent did not find Pedersen worthy of supporting a single
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`ground of rejection by itself or in combination with another reference.
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`A closer look at the ’936 application Examiner’s comments in the
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`international search report issued for the ’936 application reveals how different
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`Pedersen is from Hankey Group and Lydon. For example, the ’936 application
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`Examiner explains that “Pedersen fails to disclose wherein the wireless headset is a
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`wireless earbud; wherein the headset connector is an earbud connector ... wherein
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`the wireless earbud and the base station form a single integrated body; wherein the
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`personal wireless media station is programmed.” APPLE-1002, 151. As explained
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`in the Petition, Hankey Group and Lydon disclose these features. Pet., 28-36.
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`In an attempt to portray Pedersen as being similar to Hankey Group and
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`Lydon, Pinn cites to Pedersen at ¶[0046] and Figs. 1, 6, 7 (which are not cited in the
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`prosecution record) and contends that Pederson discloses a headset with contact
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`terminals for docking into a docking station. POPR, 43. However, during
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`prosecution of the ’936 application, Pinn argued the opposite, namely, that Pedersen,
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`Fisher, and Price, alone or in combination, do not disclose an earbud that can dock
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`or undock from a base station. APPLE-1002, 174-177. Pinn’s POPR interpretation
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`of Pedersen thus starkly contrasts with the prosecution record, which, as indicated
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`above, reinforces the differences with Hankey Group and Lydon.
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`To support its 325(d) arguments, the POPR further provides a comparison of
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`Pedersen, Lydon, and Rabu’s figures as evidence of their alleged similarities. POPR,
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`44-45. While Pedersen, Lydon, and Rabu’s figures on the POPR’s pages 44-45 show
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`connected devices such as a phone and a headset, the POPR overlooks substantive
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`details that are present in Hankey Group and Lydon but not in Pedersen. For
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`example, Hankey Group and Lydon disclose a wireless earbud, which Pedersen does
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`not, as noted by the ’936 application Examiner. Pet., 34-38; APPLE-1002, 151.
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`Amongst various other features, Hankey Group and Lydon also disclose feature 1[e]
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`(“wherein, while the wireless earbud is plugged in the connection hole of the mobile
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`base station, the at least one processor is configured to execute computer program
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`instructions stored in the at least one memory to initiate charging of a battery of the
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`wireless earbud”), and 1[h] (“wherein, in response to pressing of the user input
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`button of the mobile base station, the at least one processor is configured to execute
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`computer program instructions stored in the at least one memory to initiate
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`processing for the wireless pairing”). Pet., 40-41, 52-55. Pedersen does not. And
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`even if the POPR contends that Pedersen or any of the other POPR references do
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`disclose these features, the prosecution histories of the ’198 Patent and the ’936
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`application are silent on any such analysis or arguments.
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`With respect to references such as Kalayjian, Dua, Burnett, and Kim, the
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`POPR introduces new evidence and broadly characterizes references from the
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`prosecution history in an attempt to find commonality with the Petition references
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`while overlooking the substantive differences. POPR, 45-47. For example, the
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`POPR points to Castillo’s ¶¶[0073] and [0077] as allegedly revealing Kalayjian and
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`Dua’s disclosure. Id. But Castillo was merely cited in an IDS and was never
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`substantively considered or used in a rejection by the Examiner. APPLE-1002, 880.
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`As explained above with respect to Pedersen, the Board has previously found that
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`325(d) discretionary denial is not warranted in view of references that are only cited
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`in an IDS during prosecution. Yet, even if this new Castillo citation is considered,
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`Castillo’s disclosure of a color flashing at a predetermined rate is not the same as
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`an auditory sound being emitted by a slave device, as disclosed by Kalayjian.
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`APPLE-1008, [0038]-[0039]; POPR, 45-46. And the likely reason this portion of
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`Castillo was never cited during prosecution is because claim 1, against which
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`Kalayjian is asserted, requires a sound to be generated, not a flashing light. APPLE-
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`1001, 15:38-41. Furthermore, Castillo’s pushbutton switch does not facilitate
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`pairing, as the POPR contends. POPR, 46. Rather, Castillo’s pushbutton switch are
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`used for turning on an earphone. PINN-2008, ¶¶[0051], [0055], [0074]. For at least
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`these reasons, the information provided by Kalayjian and Dua was never presented
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`to the Office during prosecution.
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`The POPR similarly mischaracterizes the record in contending that Burnett
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`discloses the same information as Fisher because Fisher is directed to “a docking
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`station with multiple wireless headsets attached thereto.” POPR, 46. Again, such a
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`high level description is not sufficient to show that Fisher reveals the same
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`information as Burnett. Neither the prosecution record nor the POPR point to any
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`disclosure in Fisher that reveals the erasing of a pairing record at the next power
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`on/off or charging cycle—disclosure for which Burnett is relied upon in the Petition.
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`Pet., 82-87; POPR, 46. Indeed, such disclosure is not present in Fisher, was never
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`Proceeding No.: PGR2020-00073
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`presented to the Office during prosecution, and the Office did not encounter the same
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`information.
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`With respect to Kim, Apple acknowledges that Kim was used as a primary
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`reference during prosecution history. See e.g., APPLE-1002, 210. However,
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`contrary to the POPR’s assertion, that fact alone does not complete the Advanced
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`Bionics analysis. POPR, 46-47. The Becton factors include other factors that
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`consider how a cumulative reference has been applied during prosecution. Here,
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`there is no evidence in the prosecution history that the Examiner considered Kim
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`with respect to the features of claim 29, which is the claim challenged in the Petition
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`using Kim. Pet., 87-91. For at least the foregoing reasons, Apple respectfully
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`submits that the Petition did not present the same or substantially the same art or
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`argument previously presented to the Office during prosecution.
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`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
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`argument was not previously presented to the Office (step 1). Alternatively, if the
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`POPR references like Pedersen were material, the Examiner erred in a material
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`manner by failing to apply the POPR references to the claims during prosecution.
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`Date: October 14, 2020
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`Proceeding No.: PGR2020-00073
`Attorney Docket: 39521-0093PS1
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` Respectfully submitted,
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`
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`/W. Karl Renner/
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`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
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`Proceeding No.: PGR2020-00073
`Attorney Docket: 39521-0093PS1
`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.8(b), the undersigned certifies that on October 14,
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`2020, a complete and entire copy of this Petitioner’s Reply to Patent Owner’s
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`Preliminary Response and Accompanying Exhibits were provided via email to the
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`Patent Owner by serving the correspondence email addresses of record as follows:
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`Cabrach Connor
`CONNOR KUDLAC LEE PLLC
`609 Castle Ridge Road, Suite 450
`Austin, Texas 78746
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`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
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`Email: cab@connorkudlaclee.com
`cbrooks@whitakerchalk.com
`dskeels@whitakerchalk.com
`john.kasha@kashalaw.com
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`/Diana Bradley/
`
`Diana Bradley
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`(858) 678-5667
`17
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