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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`PATENT OWNER PINN, INC.’S SUR-REPLY TO PETITIONER’S REPLY
`TO PATENT OWNER PRELIMINARY RESPONSE
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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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`PATENT OWNER PINN, INC.’S SUR-REPLY TO PETITIONER’S REPLY
`TO PATENT OWNER PRELIMINARY RESPONSE
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`TABLE OF CONTENTS
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`I. APPLE VIOLATED ITS UNCONDITIONAL STIPULATION .................... 6
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`II. DISCRETIONARY DENIAL UNDER 324(a) IS APPROPRIATE UNDER
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`THE FINTIV FACTORS ......................................................................................12
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`III. NONE OF THE REFERENCES PUT FORTH BY PETITIONER DISCLOSE
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`WIRELESS PAIRING ..........................................................................................13
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`IV. DISCRETIONARY DENIAL UNDER 325(D) IS WARRANTED UNDER
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`ADVANCED BIONICS .........................................................................................15
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`Cases
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`PGR2020-00073
`U.S. Pat. No. 10,609,198
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`TABLE OF AUTHORITIES
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`Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH, IPR2019-
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`01469 ................................................................................................................16
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`Apple Inc. v. Fintiv, Inc., IPR2020-00019 ............................................. 9, 10, 12, 13
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`Regulations
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`37 CFR § 11.18(b) ................................................................................................11
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`37 CFR § 11.18(c) ................................................................................................11
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`37 CFR § 42.12(a) ................................................................................................11
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`37 CFR § 42.12(b) ................................................................................................11
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`37 CFR. § 42.11(c) ...............................................................................................11
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`37 CFR. § 42.11(d)(1) ...........................................................................................11
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` Other Authorities
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`MPEP 2143.01(V) ................................................................................................. 7
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`MPEP 2143.01(VI) ................................................................................................ 7
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`MPEP 2144(IV) ..................................................................................................... 7
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`U.S. Pat. No. 10,609,198
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`PATENT OWNER’S EXHIBIT LIST
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`PINN-2001
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`Excerpts of Wells Report (redacted)
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`PINN-2002
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`Order Denying Apple’s Motion to Stay Litigation
`Pending Outcome of IPR Proceedings
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`PINN-2003
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`Transcript of March 16, 2020, Scheduling Conference
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`PINN-2004
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`Transcript of June 11, 2020, Discovery Hearing
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`PINN-2005
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`PINN-2006
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`Docket Sheet of Pinn, Inc. v. Apple Inc., Case No. 8:19-
`cv-1805
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`Special Master’s Report & Recommendation on Claim
`Construction
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`PINN-2007
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`RESERVED
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`PINN-2008
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`U.S. Pat. App. Pub. No. 2010/0320961 (“Castillo”)
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`PINN-2009
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`U.S. Pat. App. Pub. No. 2005/0107120 (“Yueh”)
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`PINN-2010
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`U.S. Pat. App. Pub. No. 2010/0245585 (“Fisher”)
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`PINN-2011
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`U.S. Pat. App. Pub. No. 2008/0070501 to Wyld
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`PINN-2012
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`Pinn’s Objections to Special Master’s Report and
`Recommendation on Claim Construction
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`PINN-2013
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`PINN-2014
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`PINN-2015
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`Defendant Apple Inc.’s Answer, Affirmative Defenses,
`and Counterclaims to Plaintiff Pinn, Inc.’s Second
`Amended Complaint
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`Excerpts of Defendant Apple Inc.’s Preliminary
`Invalidity Contentions
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`Inc.’s Supplemental
`Defendant Apple
`Contentions (redacted)
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`Invalidity
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`PINN-2016
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`RESERVED
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`PINN-2017
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`Excerpts of Nettles Report (redacted)
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`U.S. Pat. No. 10,609,198
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`I.
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`APPLE VIOLATED ITS UNCONDITIONAL STIPULATION.
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`Petitioner demonstrably failed to honor its unconditional stipulation by
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`pursuing in district court its invalidity defense and claims based upon the Hankey
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`Group as primary references. APPLE-1031 at 3 (Apple stipulated “that it will not
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`pursue in the Litigation invalidity of U.S. Patent Nos. 10,455,066; 9,804,491; and
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`10,609,198 based on any ground that utilizes, as primary references, Hankey, Rabu,
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`and/or Sanford”).
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`After tendering this stipulation to Patent Owner and unsuccessfully moving to
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`stay the district court action, Petitioner “pursued” invalidity of all three Pinn patents
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`(U.S. Pat. Nos. 9,807,491, 10,455,066, and 10,609,198) on these same grounds.
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`There can be no reasonable dispute that Apple served its Fed. R. Civ. P. 26(a)(2)(b)
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`discovery disclosure on August 14, 2020. That disclosure includes a sworn report
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`by Dr. Wells. See generally PINN-2001; APPLE-1054.
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`Apple’s Rule 26 disclosure sets forth “a complete statement of all opinions
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`the expert will express” at trial. Apple’s attempt to recharacterize this as the lone
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`voice of Dr. Wells ignores the Rule and the simple fact that Apple disclosed Dr.
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`Wells’ opinions, not Dr. Wells, who, in any event, works for Apple. Petitioner
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`acknowledges that Dr. Wells’ report includes “detailed claim charts . . . showing
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`how Hankey Group [purportedly] teaches (or renders obvious) every claim
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`limitation.” Petitioner’s Reply at 2. Petitioner had submitted nearly identical charts
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`(they appear to have been repurposed for Dr. Wells’ expert disclosure) as its
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`invalidity contentions earlier in the district court proceeding. And contrary to
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`Apple’s representations during the last hearing, Apple never amended its
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`contentions. It supplemented them (since its motion to stay that included the
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`purported stipulation) and has never notified the Court or Pinn that it would not
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`proceed on any of the grounds asserted. See generally PINN-2014, PINN-2015.
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`Petitioner denied several requests to meet and confer with Patent Owner to
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`discuss how these statements can be harmonized. Finally, Petitioner’s counsel
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`confirmed in email correspondence that it was using “primary reference” as “a term
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`of art used in the context of prior art and specifically obviousness analysis.” It does
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`not mean Petitioner’s favorite reference or the one that its expert mentions the most.
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`MPEP 2144(IV) (discussing a primary reference which taught all of the claim
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`limitations except a select few); MPEP 2143.01(V) & (VI); see also In re Mouttet,
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`686 F.3d 1322, 1333 (Fed. Cir. 2012).
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`In all of Apple’s claim charts, the Hankey Group is used as a primary
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`reference asserted and mapped against every limitation of every claim of every patent
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`asserted in the Litigation. Other references are used to fill in deficiencies in exactly
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`the same way as in Petitioner’s IPR/PGRs, and they are the same references used in
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`the parallel proceeding.
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`In its reply, Petitioner presents several confusing explanations that are facially
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`inconsistent with its prior stipulation and the facts. First, Apple claims that “in
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`offering analysis of Hankey Group, Dr. Wells limited his analysis to discrete features
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`and functions and did not present it as a primary reference.” This is simply untrue;
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`Dr. Wells included five hundred pages of Hankey-Group-specific claim charts where
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`he maps the references against every feature of every claim. See generally PINN-
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`2001. The Hankey Group charts assert that every limitation of every claim of every
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`patent is disclosed or obvious (PINN-2001 at 5, 154, 333). The charts map the
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`Hankey Group against each limitation (PINN-2001 at 5-519) and assert a handful of
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`other references to fill in acknowledged gaps (see e.g. PINN-2001 at 25, 149, 224,
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`302, 494). Petitioner cannot credibly argue that it did not assert the Hankey Group
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`in its Rule 26 disclosures via the Wells report or that it did so as a primary reference.
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`Second, Apple asks the Board to equate “pursue in the Litigation” (stated in
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`its stipulation) with “asserted (and resolved) at trial.” Apple decided to pursue
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`grounds using Hankey Group as a primary reference when it 1) did not amend its
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`invalidity contentions to remove the charts asserting Hankey Group as a primary
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`reference, 2) submitted extensive evidence to the district court directly supporting
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`these contentions, and 3) reasserted in the district court, via its expert report, the
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`exact same grounds as are found in the Petition. Patent Owner and its expert, Dr.
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`Nettles, had to respond to all of these grounds in district court. They are already
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`before the district court to be considered and resolved. See, e.g., PINN-2017 at 102,
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`108, 110-117, 128-144; PINN-2001; PINN-2014 at 132-636. Apple’s insistence that
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`the “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” does not square with its actual conduct,
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`disclosures, and its expert disclosures—all after the stipulation that was part of the
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`stay motion the Court denied. At no time has Apple ever informed the Court, Patent
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`Owner, counsel for Patent Owner or Pinn that it would honor the stipulation in spite
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`of its motion being denied.
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`The Board need look no further than Fintiv itself to conclude that Apple’s
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`assertion of identical grounds in its contentions and expert report constitutes
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`“pursuit” in the parallel proceeding in violation of the stipulation. The Board in
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`Fintiv concluded that “[t]he same art [was] presented in Petitioner’s final invalidity
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`contentions, which [were] extremely detailed and developed . . . Thus, because the
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`identical claims [were] challenged based on the same prior art in both the Petition
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`and in the District Court, this factor weigh[ed] in favor of discretionary denial in
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`[that] case.” Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 14-15
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`(precedential). Here, while Apple’s invalidity contentions are entitled “Preliminary”
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`and “Supplemental,” they are final—the opportunity for Apple to amend its
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`contentions has passed, and no other contentions are on the record. See APPLE-
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`1032. Apple’s Supplemental Invalidity Contentions demonstrate its intent to assert
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`the grounds from the Preliminary Contentions, referring to them specifically and
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`calling out Hankey Group by name as purportedly disclosing key limitations. PINN-
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`2015 at 1-3.
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`Notably, in Fintiv, Apple attempted a similar strategy—the Board relayed in
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`its opinion that Apple contended that it had not decided whether to pursue the
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`grounds in expert discover or at trial. Id. at 15. First, this wording is an implicit
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`recognition that asserting the invalidity grounds in an expert report constitutes
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`“pursuit” in the parallel proceeding, meaning that Apple violated the stipulation in
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`that respect. Second, the fact that Apple’s invalidity contentions contained the same
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`grounds led the Board to conclude that the claims were “challenged based on the
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`same prior art in both the Petition and in the District Court,” regardless whether the
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`grounds were raised at the trial. Id. While supporting discretionary denial under
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`324(a), as further discussed below, this shows that Apple violated its unconditional
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`stipulation by challenging the claims with the same grounds in court as it now
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`attempts before the Board. Apple has at all time pursued these challenges and never
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`indicated otherwise to Patent Owner or Judge Carter in the district court
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`Apple’s only patent-by-patent, claim-by-claim, and limitation-by-limitation
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`analysis in the Litigation is the invalidity charts in both its invalidity contentions and
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`expert’s report. See generally PINN-2001; PINN-2014; PINN-2015. Patent Owner
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`was forced to address each and every one of these invalidity grounds, including the
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`grounds put forth in the Hankey Group charts that utilize Hankey Group as a primary
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`reference. See, e.g., PINN-2017 at 102, 108 (discussing Hankey Group claim charts),
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`110-117, 128-144.
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`Apple, with its stipulation, has tried to game the system by attempting to
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`distinguish this case from the precedential decision levied against it in Fintiv, where
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`the Board denied institution under similar circumstances. Apple was apparently
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`unwilling to actually yield these invalidity grounds in the parallel proceeding in
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`compliance with the letter and spirit of its stipulation—as explained above, identical
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`grounds have been placed (and evidenced) before the district court via Apple’s
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`contentions and its expert report. See APPLE-1054; PINN-2014; PINN 2015. Apple
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`is urging the Board and the court to turn a blind eye to its conduct and ignore its
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`actual conduct, even telling Patent Owner that if it wanted to pursue relief for
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`incurring thousands in expert fees addressing the Hankey Group references, it must
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`do so in district court and not here in the Patent Office.
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`Apple’s conduct is grounds for the Board to deny institution. See 37 CFR. §§
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`42.11(c) & (d)(1); 37 CFR §§ 11.18(b) & (c); 37 CFR §§ 42.12(a) & (b). Patent
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`Owner has been forced to expend significant time and resources in addressing this
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`duplicative proceeding when it has already had to address the exact same issues in
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`the district court, as Apple is well aware. Apple’s actions are a direct cause of judicial
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`inefficiency and warrant denial.
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`II. DISCRETIONARY DENIAL UNDER 324(a) IS APPROPRIATE
`UNDER THE FINTIV FACTORS.
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`On their own, Apple’s assertion of identical grounds in its district-court
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`invalidity contentions and expert report disclosure, coupled with its confusingly
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`misleading representations about its stipulation on the issue, support denial of
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`institution under 324(a). Denial is further supported by the facts considered under
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`each of the six Fintiv factors: no stay was granted; trial is still set for January 2021;
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`the parties have invested heavily in the parallel proceeding; the parties are the same;
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`and the merits of the grounds put forth by Apple are lacking as discussed infra and
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`in Paper 6. These factors, along with the substantial overlap of issues in both
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`proceedings, strongly favors denial of institution under 324(a).
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`Petitioner addresses only factor (4) in its reply brief, arguing that the same
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`grounds are not asserted in district court (but they are) and that adding Claim 6 to its
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`Petition magically distinguishes Fintiv entirely. See Petition at 3-4.
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`The “same or substantially the same claims, grounds, arguments, and evidence
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`presented as presented in the parallel [district court] proceeding” are presented in the
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`Petition. Overlap is more than substantial; it is complete. Fintiv, Paper 11 at 12-13.
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`Concerns of inefficiency and potentially conflicting decisions are particularly acute
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`here, favoring denial. Even if Apple’s explanation is fully credited and its post-
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`stipulation position and disclosures in the district court are ignored, the issues are
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`substantially the same. The Apple BT Headset reference that Apple is admittedly
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`asserting in district court is substantially identical to the Hankey Group and Lydon
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`references (all Apple patents) and the arguments are the same. See APPLE-1054
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`(Expert Disclosure of Dr. Wells); PINN-2017 at 41, 77, 114-115, 128. The identity
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`among these references is apparent on their face. They all disclose the same two
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`embodiments (Travel Cable and the Dual Dock). See APPLE-1054 at 147-149, 171
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`(displaying pictures of the Dual Dock and Travel Cable) and 78, 80, 100, 102
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`(displaying figures from Lydon and Hankey Group); APPLE-1004 at FIG. 66;
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`APPLE 1005 at FIGS. 1, 5a, 5b, 6a. Apple’s suggestion that these are substantially
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`different references is not credible.
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`“[I]f a petition involves the same prior art challenges but challenges claims in
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`addition to those that are challenged in the district court, it may still be inefficient to
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`proceed because the district court may resolve validity of enough overlapping claims
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`to resolve key issues in the petition.” Id. at 13. The only exception to identical claims
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`is dependent claim 6, which Apple vaguely suggests is relevant to some other
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`unnamed and unaccused products. Whatever Petitioner’s real purpose in including
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`claim 6, under basic theories of claim preclusion, Patent Owner cannot assert
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`unasserted claim 6 against Apple for any present or past acts.
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`III. PETITIONER’S REFERENCES DO NOT DISCLOSE WIRELESS
`PAIRING.
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`Petitioner’s argument that Patent Owner’s argument departs from the district
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`court’s claim construction does not square with the facts. Moreover, the grounds set
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`forth in the Petition do not teach or disclose wireless pairing as recited in the claims.
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`Petitioner’s argument that “wireless pairing is directed to a type of
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`relationship that permits wireless communication, not to the method by which that
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`relationship is established” ignores the Special Master’s construction. The Special
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`Master found that the term “wireless pairing” is directed to “establishing a trusted
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`relationship,” i.e. the method by which the relationship is established. See
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`Petitioner’s Reply at 5; PINN-2006 at 17. The claim term explicitly recites that
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`pairing is wireless. The asserted references, however, disclose wired pairing.
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`Hankey Group and Lydon disclose a device that can enable wireless devices to pair
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`“using an available wired link.” See, e.g., Paper 6 at fn. 9.
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`Rabu, which Petitioner also relies on for wireless pairing, does not disclose or
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`teach a main body/base station participating in pairing. This is a fundamental
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`deficiency because Patent Owner’s claims require the main body/base station
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`processor to initiate wireless pairing between an earbud and smartphone.
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`Hankey discloses pairing between an earbud and smartphone if a button is
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`pressed on the earbud, which reflected the state of the art at the time and is
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`substantially different than a user input button on the main body/base station (or
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`charging case). See APPLE-1004 at FIG. 68. The only pairing that the docking
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`station of the Hankey Group and/or Lydon participates in is wired pairing. Indeed,
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`Lydon even explains that the information exchange configuring a wireless
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`connection occurs via the wired connection, and Rabu describes how its docking
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`station acts “pairing manager” by referring to and incorporating by reference a
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`published application titled, “Pairing of Wireless Devices Using a Wired Medium.”
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`APPLE-1005 at 14:13-17 (“a pair of wireless devices can be paired . . . using an
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`available wired link”); PINN-2011 at Abstract; APPLE-1007 at 4:41-44. Petitioner’s
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`asserted references do not disclose a main body/base station that participates in
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`“wireless pairing,” which is the process recited in Patent Owner’s claims (e.g., “. . .
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`initiate wireless pairing”).
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`A final point worth noting is that this functionality in the Hankey
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`Group/Lydon references is also disclosed in the Apple BT Headset asserted by
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`Petitioner in the district court litigation. See APPLE-1054 at 145-151, 154-157;
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`PINN-2017 at 102-103. Patent Owner has advanced the same rebuttal there because,
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`again, the issues are the same as those before the Board. See id. Substantial overlap
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`on all these issues weighs heavily in favor of denial under 324(a).
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`IV. DISCRETIONARY DENIAL UNDER 325(d) IS WARRANTED
`UNDER ADVANCED BIONICS.
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`Discretionary denial is appropriate under 325(d) because the art advanced by
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`Petitioner is substantially similar to the art that was before the Office during
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`prosecution. Petitioner fails to explain how the Office erred and thus fails to address
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`the second prong of Advanced Bionics.
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`While the Becton Dickinson factors can be informative, in Advanced Bionics
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`the Board demonstrated that a proper analysis is not a rigid in haec verba evaluation.
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`Rather, the proper analysis is a holistic approach to determine how the reference
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`before the Board was similar to the reference that was before the Office. See
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`Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH, IPR2019-
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`01469, Paper 6 at 15. Contrary to Petitioner’s assertions in reply, several references
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`were discussed at length in both the ISR and in other correspondence with the office,
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`and the examination focused on limitations and disclosure in those references that is
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`insubstantially different from the references asserted in the Petition.
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`For example, Petitioner acknowledges that the Examiner in the parent ’936
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`Application specifically states that “‘Pedersen fails to disclose . . . wherein the
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`wireless earbud and the base station form a single integrated body . . ..’” Petitioner’s
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`Reply at 11-12 (quoting APPLE-1002 at 141). The Hankey Group references relied
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`on by Petitioner as purportedly disclosing the “integrated body” limitation are
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`substantially similar to Pedersen in that regard. Petitioner alleges that the Hankey
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`Group references disclose “integration” in the same way and using the same
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`reasoning that was applied to Pedersen during examination. See, e.g., Paper 6 at 43-
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`46.
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`Regarding Hankey, Petitioner contends, “[a]fter the headset is inserted into
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`the socket and the charging device is ‘electrically coupled’ with the headset through
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`contact of their complementary connectors, the headset forms a single integrated
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`body with the charging device’s main body…” Paper 2 at 36. Pedersen likewise
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`discloses [w]hen the wireless headset 22 is cradled in the headset base 3A, there
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`contact terminals 23 on the base 3A establishes electrical contact with not shown
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`contact terminals on the headset 22 for charging purposes.” APPLE-1045 at ¶
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`[0039]. Thus, according to Apple’s articulation of the “integrated” limitation
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`disclosed in Hankey, Pedersen’s disclosure is nearly identical. Despite the similarity,
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`Apple does not address how the Office erred in its analysis of Pedersen or conclusion
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`that Pedersen did not disclose an integrated body. Nor does Petitioner explain why
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`the Board should reach a different result here regarding Hankey.
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`Pedersen further discloses interactions with Bluetooth transceivers and a
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`docking station that receives a phone and headset. Comparing Pedersen to the
`
`Hankey Group/Lydon devices in this regard reveals that they even have similar
`
`appearance and form factors. They look the same. See Paper 6 at 43-46 (comparing
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`images); APPLE-1045. Pedersen discloses features similar to the Hankey Group and
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`Lydon including processors and memory, and a docking station that charges the
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`headset. See, e.g., APPLE-1045 at ¶¶ [0039], [0050]. Pedersen’s disclosure of
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`Bluetooth transceivers reinforces that to a person of skill in the art, Pedersen
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`17
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`represents a device that could comply with the Bluetooth protocol disclosed in the
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`PGR2020-00073
`U.S. Pat. No. 10,609,198
`
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`
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`Bluetooth Specification. Explicit reference to the Bluetooth Specification does not
`
`present new material over Pedersen, and Apple fails to articulate any specific,
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`material disclosure that is new.
`
`Disclosures in other the references before the Examiner, such as Fisher and
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`Castillo, are substantially similar to the art relied on by the Petitioner. See Paper 6 at
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`45-46. See id. In substance, the art asserted in Apple’s Petition is similar to the art
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`the Office considered during prosecution, satisfying prong (1) of the Advanced
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`Bionics analysis.
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`Given another opportunity to cure shortcomings in its Petition in light of the
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`similarities presented in the Preliminary Response, Petitioner again fails to articulate
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`how the Office materially erred with respect to the patentability of the challenged
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`claims. Petitioner makes a single conclusory statement: “the Examiner erred in a
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`material manner by failing to apply the POPR references to the claims during
`
`prosecution.” Petitioner’s Reply at 15. This restatement of the desired conclusion
`
`falls short of the requirement in Advanced Bionics requiring that “Petitioner must
`
`demonstrate that the Examiner erred in the evaluation of the prior art, for example,
`
`by showing that the Examiner misapprehended or overlooked specific teachings in
`
`the relevant prior art such that the error by the Office was material to the patentability
`
`of the challenged claims.” Advanced Bionics, Paper 6 at 21. Petitioner identifies no
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`18
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`no specific teaching overlooked or aspect of the relevant prior art the Examiner
`
`PGR2020-00073
`U.S. Pat. No. 10,609,198
`
`
`
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`purportedly misunderstood. In view of Petitioner’s failure to rebut the substantial
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`similarity between the asserted art and arguments in its Petition and those the Office
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`already considered and because Petitioner fails to articulate a material error by the
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`Office, denial of institution is appropriate under 325(d).
`
`
`Date: October 26, 2020
`
`/Cabrach Connor/
`Cabrach Connor
`Registration No. 53,837
`Lead Counsel for Patent Owner
`CONNOR KUDLAC LEE PLLC
`
`Carder W. Brooks
`Registration No. 75,456
`Backup Counsel for Patent Owner
`WHITAKER CHALK SWINDLE &
`SCHWARTZ PLLC
`
`
`David A. Skeels
`Pro Hac Vice
`Backup Counsel for Patent Owner
`WHITAKER CHALK SWINDLE &
`SCHWARTZ PLLC
`
`
`John R. Kasha
`Registration No. 53,100
`Backup Counsel for Patent Owner
`KASHA LAW LLC
`
`
`
`
`
`
`
`
`19
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`PGR2020-00073
`U.S. Pat. No. 10,609,198
`
`CERTIFICATE OF SERVICE
`
`I certify that a copy of the foregoing Patent Owner’s Sur-Reply in
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`Further Support of Patent Owner’s Preliminary Response was served
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`electronically via e- mail on October 26, 2020, to the following counsel of
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`record for Petitioner:
`
`
`
`W. Karl Renner (Lead Counsel)
`IPR39521-0091IP1@fr.com
`Kim Leung (Back-up Counsel)
`leung@fr.com
`Usman Khan (Back-up Counsel)
`khan@fr.com
`PTABInbound@fr.com
`axfptab@fr.com
`
`
`
`
`
`Date: October 26, 2020
`
`
`
`
`
`/Cabrach Connor/
`Cabrach Connor
`Registration No. 53,837
`Lead Counsel for Patent Owner
`
`CONNOR KUDLAC LEE PLLC
`
`
`
`
`
`
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`20
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`
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