UNITED STATES INTERNATIONAL TRADE COMMISSION
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`Washington, D.C.
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`In the Matter of
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`Inv. No. 337-TA-1266
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`CERTAIN WEARABLE ELECTRONIC
`DEVICES WITH ECG FUNCTIONALITY
`AND COMPONENTS THEREOF
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`RESPONDENT APPLE INC.’S EMERGENCY MOTION TO SUSPEND ANY
`REMEDY OR EXTEND THE TARGET DATE AND STAY PROCEEDINGS
`PENDING RESOLUTION OF ANY APPEAL OF THE PATENT OFFICE’S DECISION
`THAT UNITED STATES PATENT NOS. 10,638,941, 10,595,731, AND 9,572,499 ARE
`UNPATENTABLE.
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`

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`TABLE OF CONTENTS
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`INTRODUCTION ........................................................................................................................................... 1
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`FACTS ................................................................................................................................................................. 1
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`ARGUMENT..................................................................................................................................................... 4
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`I.
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`II.
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`III.
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`The Commission Should Adhere To Precedent And Suspend Any Remedial Orders. ............ 4
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`Alternatively, the Commission Should Extend The Target Date And Stay These
`Proceedings To Simplify The Issues And Conserve Agency And Party Resources. ................. 6
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`A Suspension Of Any Remedial Orders Or Stay Of These Proceedings Is Consistent
`With Congressional Intent. ................................................................................................................. 7
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`CONCLUSION ...............................................................................................................................................11
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`i
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`INTRODUCTION
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`On December 6, 2022, the Patent Trial and Appeal Board (“PTAB”) issued Final Written
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`Decisions holding unpatentable all asserted claims of the three patents at issue in this Investigation: United
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`States Patent Nos. 10,638,941 (“the ’941 patent”), 10,595,731 (“the ’731 patent), and 9,572,499 (“the ’499
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`patent”). The PTAB’s Final Written Decisions are appended to this Motion.
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`In light of the PTAB’s recent orders, Respondent Apple Inc. (“Apple”) respectfully petitions the
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`Commission to suspend any remedial orders or, in the alternative, extend the December 12, 2022 Target
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`Date of its Final Determination and stay all proceedings prior to issuance of any Final Determination
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`pending final resolution of any appeal of the PTAB’s decisions. A suspension is consistent with the
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`Commission’s routine past practice. A stay will simplify the issues and conserve agency and party
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`resources—by avoiding issuance of a merits determination that is likely to be mooted by an affirmance of
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`the PTAB’s Final Written Decisions—without causing any harm to Complainant. And either a suspension
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`or a stay accords due deference to the Patent Office’s role as the lead agency in assessing patentability and
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`honors Congress’s intent that invalid patents should not be enforced.
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`Given the short time until the Commission’s December 12, 2022 Target Date, Apple asks that the
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`Commission consider this Motion on an emergency basis.1
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`FACTS
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`This Investigation concerns three heart-health monitoring features of Apple Watch: the ECG app,
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`Irregular Rhythm Notification (“IRN”), and High Heart Rate Notification (“HHRN”). The ECG app
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`enables users to take electrocardiograms to determine whether they are experiencing atrial fibrillation
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`(“AFib”), a potentially life-threatening heart condition that afflicts millions in the United States. IRN
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`monitors the regularity of users’ heart rates to identify signs consistent with AFib. HHRN informs users
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`1 Counsel for Apple contacted counsel for Complainant and for the Office of Unfair Import
`Investigations (“OUII”) regarding this Motion. Complainant has not yet indicated its position on this
`Motion and will provide its position after it sees the Motion. Counsel for OUII support the motion
`to the extent that it asks the Commission to suspend enforcement of any remedial orders pending
`appeal of the PTAB’s Final Written Decisions, but otherwise oppose the Motion. The Commission
`may wish to extend the Target Date for a Final Determination to allow sufficient time for full briefing
`and consideration of this Motion.
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`1
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`

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`when their heart rates are elevated above a user-set threshold during periods of relative inactivity.
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`Complainant AliveCor, Inc. (“AliveCor”) filed a § 337 Complaint against Apple, alleging that
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`Apple Watches with these heart-health features infringe certain claims of three of its patents: the ’941
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`patent, the ’731 patent, and the ’499 patent. The Commission thereafter instituted this Investigation. In
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`June 2022, an Administrative Law Judge issued an Initial Determination finding § 337 violations with
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`respect to the ’941 and ’731 patents and no violation with respect to the ’499 patent. The Initial
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`Determination recommended issuing a limited exclusion order and cease and desist order barring Apple
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`from importing and selling the accused Apple Watches. The Commission determined to review the Initial
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`Determination in part and requested submissions from the parties regarding certain merits questions as
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`well as the issues of remedy, the public interest, and bonding.
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`In its submissions to the Commission, Apple explained that it had filed inter partes review (“IPR”)
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`petitions on the three patents with the PTAB, EDIS No. 745156, and that the PTAB had instituted IPRs
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`for all asserted claims, EDIS No. 759993, Ex. A, at 48, Ex. B at 47, and Ex. C at 53. Apple also stated that
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`Final Written Decisions on those claims were expected before the Commission’s Target Date in this
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`Investigation. Accordingly, Apple suggested that the Commission suspend any remedial orders pending
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`resolution of the PTAB’s Final Written Decisions. See Respondent’s Initial Submission, EDIS No. 782052,
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`at 69-70; see also Respondent’s Reply Submission, EDIS No. 782552, at 44-45. Both Staff and AliveCor
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`argued in their submissions that a suspension was unwarranted because the PTAB had not yet found any
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`asserted claim unpatentable. See Staff’s Reply Submission, EDIS No. 782587, at 20-21; Complainant’s
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`Reply Submission, EDIS No. 781827, at 38-39. Staff, however, agreed that “it may be appropriate to delay
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`the effect of any remedial orders” “[s]hould … the PTAB issue a Final Written Decision that affects the
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`asserted claims prior to the Commission’s final determination on violation.” Staff’s Reply Submission,
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`EDIS No. 782587, at 21.
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`As Apple anticipated, the PTAB has now issued its Final Written Decisions and has determined
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`that the claims of the three patents asserted in this Investigation are unpatentable because they are obvious
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`2
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`

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`under 35 U.S.C. § 103:2
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`- As to the ’941 patent, the PTAB determined that claims 12, 19, 20, 22, and 23 are unpatentable as
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`obvious over PCT Patent Pub. No. WO 2012/140559 (“Shmueli”) in light of U.S. Patent Pub.
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`No. 2014/0275840 (“Osorio”). Attached Ex. A: Apple, Inc. v. AliveCor, Inc., IPR2021-00972, Paper
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`43 at 3-4, 29-47, 53 (P.T.A.B. Dec. 6, 2022) (Final Written Decision invalidating claims 1-23) (“’941
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`FWD”). It also determined that claim 13 is obvious over Shmueli in light of Osorio and Jinseok
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`Lee et al., Atrial Fibrillation Detection using a Smart Phone, 15:1 Int’l. J. of Bioelectromagnetism 26–29
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`(2013), and that claim 21 is unpatentable as obvious over Shmueli in light of Osorio and U.S.
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`Patent No. 7,894,888 (“Chan”). Attached Ex. A: ’941 FWD at 3-4, 47-53.
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`- As to the ’731 patent, the PTAB determined that claims 1, 12, and 16 are unpatentable as obvious
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`over both Shmueli alone and Shmueli in light of Osorio. Attached Ex. B: Apple, Inc. v. AliveCor,
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`Inc., IPR2021-00971, Paper 42 at 2-4, 30-49, 58 (P.T.A.B. Dec. 6, 2022) (Final Written Decision
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`invalidating claims 1-30) (“’731 FWD”). It also determined that claims 3 and 5 are unpatentable as
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`obvious over Shmueli in light of Osorio and Li Q, Clifford GD, Signal quality and data fusion for false
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`alarm reduction in the intensive care unit, 45(6) J. Electrocardiol. 596-603 (2012). Attached Ex. B: ’731
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`FWD at 2-4, 49-56, 58. It further determined that claims 8-10 are unpatentable as obvious over
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`Shmueli in light of Osorio and Kleiger RE, Stein PK, Bigger JT Jr., Heart rate variability: measurement
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`and clinical utility, 10(1) Ann Noninvasive Electrocardiol. 88-101 (2005). Attached Ex. B: ’731 FWD
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`at 2-4, 56-58. Moreover, the PTAB determined that claim 15 is unpatentable as obvious over
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`Shmueli in light of Osorio and Chan. Id..
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`- As to the ’499 patent, the PTAB determined that claim 16 is unpatentable as obvious over Shmueli
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`in light of Osorio. Attached Ex. C: Apple, Inc. v. AliveCor, Inc., IPR2021-00970, Paper 43 at 2-4, 28-
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`42, 53 (P.T.A.B. Dec. 6, 2022) (Final Written Decision invalidating 1-20) (“’499 FWD”). It also
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`determined that claim 17 is unpatentable as obvious over Shmueli in light of Osorio and Hu et al.,
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`44(9) A Patient-Adaptable ECG Beat Classifier Using a Mixture of Experts Approach, IEEE Transactions
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`2 The PTAB has actually held that all claims challenged in the IPRs—which are a superset of the claims
`asserted in this Investigation—are unpatentable for all three challenged patents.
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`3
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`on Biomed. Eng’g 891-900 (1997). Attached Ex. C: ’499 FWD at 2-4, 42-53.
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`In addition, the PTAB’s Final Written Decisions found unpatentable as obvious each and every
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`claim the Initial Determination relied on to find that the technical prong of the domestic industry
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`requirement is met, including claim 16 of the ’941 patent, which AliveCor used to support domestic
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`industry but did not assert as infringed. Supra 2-3; Attached Ex. A: ’941 FWD at 3-4, 29-47, 53 (finding
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`claim 16 of the ’941 patent obvious over Shmueli in light of Osorio). Indeed, the Final Written Decisions
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`invalidated every single challenged claim of the ’941, ’731, and ’499 patents. Attached Ex. A: ’941 FWD at
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`53; Attached Ex. B: ’731 FWD at 58; Attached Ex. C: ’499 FWD at 53.
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`Absent a motion for rehearing, any appeal from the PTAB’s rulings will be due on February 7,
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`2023—63 days after the Final Written Decisions. 37 C.F.R. §§ 90.3(a)(1), (b)(1).
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`The Commission has already extended the Target Date for its Final Determination once, on its
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`own initiative. EDIS No. 780874 at 5. The Target Date is currently December 12, 2022.
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`ARGUMENT
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`I.
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`The Commission Should Adhere To Precedent And Suspend Any Remedial Orders.
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`The Commission should, consistent with past practice on this issue, suspend any remedial orders
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`pending resolution of any appeal of the PTAB’s Final Written Decisions.
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`The Commission has consistently suspended enforcement of its remedial orders where, as here,
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`the PTAB has issued a Final Written Decision finding unpatentable the asserted claims of a patent before
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`the Commission issues its Final Determination. See, e.g., Laparoscopic Surgical Staplers, Inv. No. 337-TA-1167,
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`Comm’n Op., 2021 WL 6071753, at *38-39 (Dec. 20, 2021) (suspending remedial orders pending Federal
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`Circuit review of PTAB’s Final Written Decision, where, prior to Commission’s Final Determination,
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`PTAB found unpatentable all asserted claims of the sole patent the Commission ultimately found to be
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`infringed); Unmanned Aerial Vehicles, Inv. No. 337-TA-1133, Comm’n Op., 2020 WL 5407477, at *21-22
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`(Sept. 8, 2020) (same); Magnetic Tape Cartridges, Inv. No. 337-TA-1058, Comm’n Op., 2019 WL 2635509,
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`at *37-38 (Apr. 9, 2019) (suspending remedial order as to individual claim pending appeal of PTAB’s
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`unpatentability finding as to that claim, which issued prior to Commission’s Final Determination); Three-
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`4
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`

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`Dimensional Cinema Sys., Inv. No. 337-TA-939, Comm’n Op., 2016 WL 7635412, at *31, *37 (Aug. 23, 2016)
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`(similar). Indeed, “[t]he Commission has never” declined to suspend its remedial orders when the PTAB
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`issued its Final Written Decision of unpatentability “prior to the Commission’s own issuance of its
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`remedial orders.” Br. of Appellee, Autel Robotics USA, LLC v. Int’l Trade Comm’n, No. 21-1082, 2021 WL
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`2791360, at *36 (Fed. Cir. June 28, 2021) (Dkt. No. 47) (emphasis added); see Unmanned Aerial Vehicles, 2020
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`WL 5407477, at *21-22 (emphasizing that parties had not identified any “instance in which the
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`Commission determined not to suspend remedial orders due to a PTAB final written decision that issued
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`prior to the Commission’s determination”).
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`The Commission’s authority to suspend remedial orders stems from its “broad discretion” to tailor
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`the “scope and extent of the enforceable duration of” any remedial orders. See Laparoscopic Surgical Staplers,
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`2021 WL 6071753, at *38 (discussing Federal Circuit’s approval of this authority in Viscofan, S.A. v. U.S.
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`Int’l Trade Comm’n, 787 F.2d 544 (Fed. Cir. 1986)). Suspension “comports with the [Commission’s] statutory
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`directive that the Commission complete its investigations ‘at the earliest practicable time,’” Unmanned Aerial
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`Vehicles, 2020 WL 5407477, at *21, because it permits the Commission to “first determin[e] the issue of
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`violation,” thereby completing its investigation without any delay, Magnetic Tape Cartridges, 2019 WL
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`2635509, at *38 n.23 (opinion of Commissioner Schmidtlein).
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`Just as in the cases discussed above, the PTAB “issue[d] a final written decision of unpatentability
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`concerning … claims before the Commission” issued any “remedial orders based on those same claims.”
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`Laparoscopic Surgical Staplers, 2021 WL 6071753, at *38. Suspending any remedial orders “pending resolution
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`of the PTAB’s Final Written Decision[s]” would be fully “consistent with the Commission’s past practice
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`on this issue.” Unmanned Aerial Vehicles, 2020 WL 5407477, at *21 (collecting cases); see also Staff’s Reply
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`Submission, EDIS No. 782587, at 21 (conceding that it “may be appropriate to delay the effect of any
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`remedial orders” “[s]hould … the PTAB issue a Final Written Decision that affects the asserted claims
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`prior to the Commission’s final determination on violation”). Additionally, as discussed in Section III,
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`suspension here would be fully consistent with Congressional intent.
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`5
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`

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`II.
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`Alternatively, the Commission Should Extend The Target Date And Stay These
`Proceedings To Simplify The Issues And Conserve Agency And Party Resources.
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`Alternatively, the Commission should extend the target date for conclusion of this Investigation
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`until after the resolution of any appeal of the PTAB’s Final Written Decisions, and stay these proceedings
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`in their entirety prior to issuance of any Final Determination on the merits. A stay has certain advantages
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`over issuance of a likely moot Final Determination and a suspension of any accompanying remedy: It will
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`simplify the issues and conserve the Commission’s resources, as well as those of other agencies and the
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`parties. And a stay will cause no harm to AliveCor.
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`The Commission commonly stays proceedings or extends the target date of its investigations due
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`to the pendency of external proceedings bearing on the investigation. E.g., Integrated Cirs. with Voltage Reguls.,
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`Inv. No. 337-TA-1024, ALJ Order No. 55 at 7 (Aug. 31, 2018) (granting stay of proceedings pending
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`appeal of PTAB decisions finding all asserted claims unpatentable and observing that “it is clear from the
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`Commission’s opinions that stays in section 337 investigations are permissible”); Encapsulated Integrated
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`Circuit Devices, Inv. 337-TA-501, Comm’n Notice and Order, 2009 WL 10693042 (July 1, 2009) (target date
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`extended by multiple years due to subpoena enforcement proceedings in the D.C. Circuit); Pers.
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`Computer/Consumer Elec. Convergent Devices, Inv. No. 337-TA-558, ALJ Order No. 6, 2006 WL 322622, at
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`*8-9 (Feb. 7, 2006) (granting temporary stay pending patent reexamination proceedings); High-Voltage Cir.
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`Interrupters, Inv. No. 337-TA-64, Comm’n Op., 1979 WL 25348 (Nov. 16, 1979) (reversing ALJ’s denial of
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`suspension pending completion of reexamination where Examiner had rejected all claims as obvious).
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`The Commission considers five factors in determining whether to grant a stay of proceedings and
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`extend the Target Date to complete its Investigation: “(1) the state of discovery and the hearing date; (2)
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`whether a stay will simplify the issues and hearing of the case; (3) the undue prejudice or clear tactical
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`disadvantage to any party; (4) the stage of the [Patent Office] proceedings; and (5) the efficient use of
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`Commission resources.” Semiconductor Chips with Minimized Chip Package Size, Inv. No. 337-TA-605,
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`Comm’n Op., 2008 WL 2223426, at *2 (May 27, 2008).
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`These factors support an extension and stay here. A stay will simplify the issues before the
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`Commission. If the Federal Circuit affirms the PTAB or no appeal is taken, then the asserted claims will
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`6
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`be cancelled, and there will be no violation of § 337 predicated on those claims. See 35 U.S.C. § 318(b).
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`And “regardless of the final outcome” of the PTAB’s Final Written Decisions on appeal, the Commission
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`would “benefit in being able to consider” the Federal Circuit’s reasoning. Semiconductor Chips, 2008 WL
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`2223426, at *2-3. The Commission has determined to review the ID’s invalidity determinations, EDIS No.
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`780874 at 2, and therefore would benefit from any guidance on the invalidity issues that the Federal Circuit
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`provides. A stay will not unduly prejudice or disadvantage AliveCor because it discontinued the only
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`product that purportedly practiced the asserted claims, and its purported new products have never
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`materialized. ID at 167. Nor are AliveCor’s patents at risk of expiring before the stay would be lifted. Contra
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`Semiconductor Chips, 2008 WL 2223426, at *4. The ’941 patent expires in 2036, and the ’731 and ’499 patents
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`expire in 2034. See EDIS No. 740951 at 14-16. The stage of the PTAB’s proceedings also weighs heavily
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`in favor of a stay; the PTAB has issued Final Written Decisions as to all asserted claims. And a stay will
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`conserve Commission resources because it will not need to render a Final Determination if the PTAB
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`rulings are affirmed or not challenged. Nor will the Commission need to expend resources defending an
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`appeal that ultimately could be mooted by the cancellation of the claims. A stay will also preserve
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`governmental resources, including avoiding any burden on the U.S. Trade Representative and U.S.
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`Customs and Border Protection. Only one factor—the stage of the Commission proceedings—arguably
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`weighs against a stay. But this is just one factor among five, and the PTAB has completed its review whereas
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`the Commission has not.
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`An extension of the Target Date until the conclusion of any review of the PTAB’s decision and
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`accompanying stay of the Investigation prior to issuance of any Final Determination on the merits is
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`warranted. Additionally, as discussed below, an extension and stay is fully consistent with Congressional
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`intent.
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`III. A Suspension Of Any Remedial Orders Or Stay Of These Proceedings Is Consistent
`With Congressional Intent.
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`Where, as here, the PTAB issues a Final Written Decision of unpatentability a suspension of any
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`remedy or a stay of these proceedings and extension of the Target Date faithfully implements several
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`Congressional directives.
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`7
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`First, a suspension or stay “recognizes the [Patent Office’s] role as the lead agency in assessing
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`patentability, or validity, of proposed or issued claims” by ensuring that the Commission does not
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`contradict the PTAB’s unpatentability determinations. Unmanned Aerial Vehicles, 2020 WL 5407477, at *21
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`(citing Fresenius USA, Inc. v. Baxter Int’l Inc., 721 F.3d 1330, 1339, 1334 (Fed. Cir. 2013)); see also Magnetic
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`Tape Cartridges, 2019 WL 2635509, at *38 n.23; Three-Dimensional Cinema, 2016 WL 7635412, at *37.
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`Congress and the courts have long recognized that the Patent Office is the lead federal agency for
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`determining patentability. See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988). Congress has
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`further emphasized the Patent Office’s leadership and expertise on matters of patentability when it
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`established the PTAB as part of the America Invests Act. See S. Rep. No. 110-259, at 5, 23 (2008); 35
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`U.S.C. §§ 6(a), (b)(4). In contrast, Congress has made clear that § 337 is a “trade statute,” not a patent
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`statute. Suprema, Inc. v. Int’l Trade Comm’n, 796 F.3d 1338, 1344-45 (Fed. Cir. 2015) (en banc). Unlike the
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`PTAB, which can formally cancel a patent claim after its unpatentability decision has been finally resolved,
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`see 35 U.S.C. § 318(b), the Commission’s determinations on patent validity “are for purposes of adjudicating
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`whether or not a Section 337 violation has occurred, and are not binding on the [Patent Office], federal
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`courts, or other tribunals, even if affirmed by the Federal Circuit,” Unmanned Aerial Vehicles, 2020 WL
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`5407477, at *21 (citing Hyosung TNS Inc. v. Int’l Trade Comm’n, 926 F.3d 1353, 1358 (Fed. Cir. 2019)); see
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`Tex. Instr. Inc. v. Cypress Semiconductor Corp., 90 F.3d 1558, 1568-69 (Fed. Cir. 1996) (“The Commission’s
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`findings neither purport to be, nor can they be, regarded as binding interpretations of the U.S. patent laws
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`in particular factual contexts.” (quoting S. Rep. No. 93-1298, at 196 (1974)). The Patent Office recently
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`emphasized these differences between the two agencies in explaining why it “no longer discretionarily
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`denies petitions based on … parallel ITC proceeding[s].” Interim Procedures for Discretionary Denials, U.S.
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`Patent & Trade Office (June 21, 2022), https://tinyurl.com/mwvyajej.
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`Second, a suspension or stay would “give[] effect to the Congressional goal” regarding the IPR
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`procedure under the America Invents Act. Unmanned Aerial Vehicles, 2020 WL 5407477, at *21. Congress
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`intended IPRs to “provide ‘a quick, inexpensive, and reliable alternative to district court litigation to resolve
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`questions of patent validity.’” Id. (quoting S. Rep. No. 110-259, at 20); see also SAS Inst., Inc. v. Iancu, 138 S.
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`Ct. 1348, 1352 (2018) (explaining that IPRs “allow[] private parties to challenge previously issued patent
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`8
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`

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`claims in an adversarial process before the Patent Office that mimics civil litigation”). “Because Congress
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`intended [IPRs] be an alternative to district court litigation, and because the Commission does not issue
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`enforceable remedial relief for claims held invalid by a district court, … suspending enforcement of
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`remedial orders is appropriate for patent claims determined to be unpatentable by a final written decision
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`of the PTAB issued prior to the Commission’s final determination.” Magnetic Tape Cartridges, 2019 WL
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`2635509, at *38 n.23 (quoting 19 U.S.C. § 1337(b)(1)); see also Unmanned Aerial Vehicles, 2020 WL 5407477,
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`at *21.
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`District courts likewise adhere to this Congressional preference by staying their proceedings when
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`the PTAB issues an unpatentability decision before entry of a final court judgment. See, e.g., Ultratec, Inc. v.
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`Sorenson Commc’ns, Inc., No. 13-cv-346-bbc, 2015 WL 2248437, at *1, *6 (W.D. Wis. May 13, 2015) (finding
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`PTAB’s unpatentability decision warranted stay despite the “very late stage of litigation” because
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`affirmance of the PTAB’s decision would moot plaintiffs’ infringement claims), mandamus denied and appeal
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`dismissed, 611 F. App’x 720, 721-23 (Fed. Cir. 2015); Prisua Eng’g Corp. v. Samsung Elecs. Co., 472 F. Supp. 3d
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`1183, 1186 (S.D. Fla. 2020) (similar). Indeed, the Commission has stated that it “is unaware of any case in
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`which a district court has entered an injunction (or awarded damages) over a PTAB final written decision
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`of unpatentability, even when the PTAB issues its final decision after trial but prior to the entry of final
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`judgment.” Br. of Appellee, Autel Robotics, 2021 WL 2791360, at *33-34.
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`Third, “[t]he Commission may issue an exclusion order in a patent-based investigation only if it
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`finds that the accused articles ‘infringe a valid and enforceable United States patent.’” Unmanned Aerial
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`Vehicles, 2020 WL 5407477, at *20 (emphasis in original) (quoting 19 U.S.C. § 1337(a)(1)(B)(i), (d)(1)); see
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`also Vision-Based Driver Assistance System Cameras, Inv. No. 337-TA-907, Comm’n Op., 2015 WL 13817121,
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`at *22 (Dec. 1, 2015) (holding that an “invalid” claim cannot establish a domestic industry). If the PTAB’s
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`Final Written Decisions are affirmed on appeal (or not appealed), the PTAB will “cancel[]” each of the
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`asserted claims it found to be unpatentable. See 35 U.S.C. § 318(b). An affirmance is likely: In appeals from
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`IPRs, the Federal Circuit has affirmed the PTAB in full or in part over 83% of the time through April
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`2022. See Daniel F. Klodowski & Audrey J. Parker, Federal Circuit PTAB Appeal Statistics Through April 30,
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`2022, Finnegan (May 31, 2022), https://tinyurl.com/cn3cywtp. Thus, a suspension or stay is necessary to
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`9
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`avoid enforcement of invalid patents.
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`Indeed, issuing or enforcing remedial orders based on claims the PTAB has already found
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`unpatentable is a misuse of the patent system. A patent “is an exception to the general rule against
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`monopolies and to the right to access to a free and open market. The far-reaching social and economic
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`consequences of a patent, therefore, give the public a paramount interest in seeing that patent monopolies
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`… are kept within their legitimate scope.” Blonder-Tongue Labs., Inc. v. Univ. of Ill. Found., 402 U.S. 313, 343
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`(1971). Accordingly, courts have long recognized that “[i]t is … important to the public that competition
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`should not be repressed by worthless patents,” Lear, Inc. v. Adkins, 395 U.S. 653, 663-64 (1969) (quoting
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`Pope Mfg. Co. v. Gormully, 144 U.S. 224, 234 (1892)), and “there is a significant public policy interest in
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`removing invalid patents from the public arena,” SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331,
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`1354 (Fed. Cir. 2005) (Gajarsa, J., concurring) (citation omitted). In fact, “there is a stronger public interest
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`in the elimination of invalid patents than in the affirmation of a patent as valid.” Nestier Corp. v. Menasha
`
`Corp., 739 F.2d 1576, 1581 (Fed. Cir. 1984); see Schlegel Mfg. Co. v. U.S.M. Corp., 525 F.2d 775, 781 (6th Cir.
`
`1975) (“The public interest requires that an invalid patent be stripped of its monopoly, and at as early a
`
`date as possible.”).
`
`Fourth, a suspension or stay would implement Congress’s directive that the Commission must
`
`consider the effect of an exclusion order on the public interest. 19 U.S.C. § 1337(d)(1). As Apple detailed
`
`in its initial and reply submissions, excluding the accused Apple Watches will risk lives, worsen health
`
`outcomes, increase healthcare costs, jeopardize important ongoing medical research, and harm consumers.
`
`See Respondent’s Initial Submission, EDIS No. 782052, at 37-64; Respondent’s Reply Submission, EDIS
`
`No. 782552, at 24-44. Both AliveCor and Staff argued that the public interest in protecting intellectual
`
`property nevertheless justified an exclusion order. See, e.g., Staff’s Initial Submission, EDIS No. 782050, at
`
`16-19 (arguing that the public interest harms identified by Apple and others do not “outweigh the strong
`
`public interest favoring the protection of U.S. intellectual property rights”); Complainant’s Initial
`
`Submission, EDIS No. 782049, at 70-71. There is no public interest in enforcing invalid patents, however.
`
`See Lear, 395 U.S. at 663-64; SmithKline Beecham, 403 F.3d at 1354. And the health and well-being benefits
`
`of Apple Watch with the ECG app remain. The public interest therefore favors a suspension or stay.
`
`10
`
`

`

`CONCLUSION
`
`The Commission should suspend enforcement of any remedial orders pending resolution of any
`
`appeal of the PTAB’s Final Written Decisions. Alternatively, the Commission should extend the Target
`
`Date for its Final Determination until after the conclusion of any appeal of the PTAB’s Final Written
`
`Decisions, and should stay this Investigation in its entirety prior to issuance of any Final Determination on
`
`the merits.
`
`Dated: December 7, 2022
`
`
`
`
`
` Respectfully submitted,
`
`
`
`
`
`
`
`/s/ Benjamin C. Elacqua
`Benjamin C. Elacqua
`FISH & RICHARDSON P.C.
`1221 McKinney Street, Suite 2800
`Houston, TX 77010
`Telephone: (713) 654-5300
`Facsimile: (713) 652-0109
`
`Betty Chen
`FISH & RICHARDSON P.C.
`500 Arguello Street, Suite 500
`Redwood, CA 94063
`Telephone: (650) 839-5070
`Facsimile: (650) 839-5071
`
`Ruffin B. Cordell
`Joseph V. Colaianni Jr.
`Thomas S. Fusco
`Taylor Burgener
`FISH & RICHARDSON P.C.
`1000 Maine Avenue, SW, Suite 1000
`Washington, D.C. 20024
`Telephone: (202) 783-5070
`Facsimile: (202) 783-2331
`
`Michael Amon
`FISH & RICHARDSON P.C.
`12860 El Camino Real, Suite 400
`San Diego, CA 92130
`Telephone: (858) 678-5070
`Facsimile: (858) 678-5099
`
`Katherine H. Reardon
`FISH & RICHARDSON P.C.
`7 Times Square, 20th Floor
`New York, NY 10036
`
`11
`
`

`

`Telephone: (212)765-5070
`Facsimile: (212) 258-2291
`
`Qiuyi Wu
`FISH & RICHARDSON P.C.
`One Marina Park Drive
`Boston, MA 02210
`Telephone: (617) 542-5070
`
`Counsel for Respondent Apple Inc.
`
`
`
`12
`
`

`

`CERTIFICATE OF SERVICE
`
`I hereby certify that true and correct copies of the foregoing document:
`
`RESPONDENT APPLE INC.’S EMERGENCY MOTION TO SUSPEND ANY
`REMEDY OR EXTEND THE TARGET DATE AND STAY PROCEEDINGS
`PENDING RESOLUTION OF ANY APPEAL OF THE PATENT OFFICE’S DECISION
`THAT UNITED STATES PATENT NOS. 10,638,941, 10,595,731, AND 9,572,499 ARE
`UNPATENTABLE.
`
`on this 7th day of December, 2022, on the following:
`
`
`
`
`
`
`
`
`Katherine M. Hiner
`Secretary to the Commission
`U.S. International Trade Commission
`500 E Street, S.W.
`Washington, D.C. 20436
`
`The Honorable Cameron R. Elliot
`Administrative Law Judge
`U.S. International Trade Commission
`500 E Street, S.W., Room 317
`Washington, D.C. 20436
`
`michael.turner@usitc.gov
`
`Whitney Winston
`Office of Unfair Import Investigations
`U.S. International Trade Commission
`500 E Street, SW, Suite 401
`Washington, DC 20436-0003
`
`whitney.winston@usitc.gov
`
`
`S. Alex Lasher, Esq.
`QUINN EMANUEL URQUHART & SULLIVAN LLP
`1300 I Street NW, Suite 900
`Washington, DC 20005
`qe-alivecor@quinnemanuel.com
`
`Counsel for Complainant AliveCor, Inc.
`
`
` Via First Class Mail
` Via Hand Delivery
` Via Federal Express
` Via Electronic Filing
`
`Received 10/12/2022
`
` Via First Class Mail
` Via Hand Delivery
`(two double sided paper copies)
` Via Federal Express
` Via Electronic Mail
`
` Via First Class Mail
` Via Hand Delivery
` Via Federal Express
` Via Electronic Mail
` Via Box.com
`
` Via First Class Mail
` Via Hand Delivery
` Via Federal Express
` Via Electronic Mail
`
` /s/ Ashley Cox
`
`
`

`

`Exhibit A
`Exhibit A
`
`

`

`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 43
`Date: December 6, 2022
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`ALIVECOR, INC.,
`Patent Owner.
`____________
`
`IPR2021-00972
`Patent 10,638,941 B2
`___________
`
`
`
`
`Before ROBERT A. POLLOCK, ERIC C. JESCHKE, and
`DAVID COTTA, Administrative Patent Judges.
`
`COTTA, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`Denying In-Part and Dismissing In-Part as Dismissing Patent Owner’s
`Motion to Exclude Evidence as Moot
`37 C.F.R. § 42.64
`
`
`
`

`

`IPR2021-00972
`Patent 10,638,941 B2
`
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`A. Background
`Apple, Inc. (“Petitioner”) filed a Petition for an inter partes review of
`claims 1–23 of U.S. Patent No. 10,638,941 B2 (Ex. 1001, “the ’941 patent”).
`Paper 2 (“Pet.”). AliveCor, Inc. (“Patent Owner”) timely filed a Preliminary
`Response. Paper 6 (“Prelim. Resp.”). Petitioner further filed an authorized
`Reply to the Preliminary Response (Paper 7); Patent Owner filed a
`responsive Sur-reply (Paper 8). Taking into account the arguments and
`evidence presented, we determined that the information presented in the
`Petition established that there was a reasonable likelihood that Petitioner
`would prevail in demonstrating unpatentability of at least one challenged
`claim of the ’941 patent, and we instituted this inter partes review as to all
`challenged claims. Paper 10 (“DI”).
`After institution, Patent Ow