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`Filed on behalf of Apple Inc.
`By:
`Michelle K. Holoubek
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`Michael D. Specht
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`Sterne, Kessler, Goldstein & Fox P.L.L.C.
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`1100 New York Avenue, NW
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`Washington, D.C.
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`Tel: (202) 371-2600
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`Fax: (202) 371-2540
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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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`VALENCELL, INC.
`Patent Owner
`_____________________
`
`Case IPR2017-01703
`U.S. Patent No. 8,652,040
`_____________________
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`PETITIONER’S REPLY
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
`
`Case IPR2017-01703
`U.S. Patent No. 8,652,040
`In its Patent Owner’s Response filed April 16, 2018, Valencell fails to raise
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`any substantive arguments or evidence to rebut Petitioner’s showing of
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`unpatentability for any one of challenged claims 4-10, 22, 26, 28, 33, 41, 42, 47,
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`and 54-57 of U.S. Patent No. 8,652,040 (“the ’040 Patent”). Further, Valencell
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`waives any arguments raised in its preliminary response by not reiterating or
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`otherwise relying upon those arguments in the Patent Owner’s Response. The
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`Scheduling Order issued by the Board clearly states that “[t]he patent owner is
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`cautioned that any arguments for patentability not raised in the response will be
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`deemed waived.” (Scheduling Order, Paper 9, p. 3.)
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`Since Valencell does not put forth an attempt rebut Petitioner’s showing of
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`unpatentability of any one of challenged claims 4-10, 22, 26, 28, 33, 41, 42, 47, and
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`54-57 after the institution of trial, and does not address the Board’s comments in the
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`Decision instituting trial, Valencell has abandoned the contest. The Board should
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`thus consider Valencell’s Response to be a request for adverse judgment under 37
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`C.F.R. 42.73(b)(4).
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`In the event the Board does not consider Valencell’s response to be a request
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`for adverse judgment, Apple takes this opportunity to submit a reply as prescribed
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`by 35 U.S.C § 316(a)(13). Accordingly, Apple should not be denied this
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`opportunity to respond even though there are no substantive arguments raised by
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`Valencell in its Response.
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`- 1 -
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`Case IPR2017-01703
`U.S. Patent No. 8,652,040
`As indicated above, Valencell does not provide any substantive arguments
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`specific to the individual claims or instituted grounds of unpatentability. Rather,
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`Valencell makes a generalized argument that the Board should make its own
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`determination, and not shift the burden of patentability to the Patent Owner.
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`Valencell states that “[t]he Petition should be rejected because it does not establish
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`by a preponderance of the evidence that [the challenged claims] are obvious” and
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`also that “Petitioner must prove by a preponderance of evidence that the instituted
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`claims of the ’040 Patent are unpatentable.” (POR, Paper 10, p. 1.) The Board has
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`already determined that Apple has demonstrated a reasonable likelihood of
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`prevailing in proving unpatentability of the challenged claims. (Institution decision,
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`Paper 8, pp. 22-35.) Apple’s Petition also establishes by a preponderance of the
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`evidence that the challenged claims are unpatentable. The evidence presented by
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`Apple is the only evidence before the Board, as Valencell has chosen to provide no
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`arguments or evidence in support of patentability for any of the challenged claims.
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`As such, the only evidence available in the trial supports unpatentability of the
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`challenged claims, and thus constitutes a preponderance of the evidence.
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`Further, there was no improper burden shifting. Apple’s Petition details
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`where each and every limitation of the challenged claims is taught by the prior art.
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`Apple’s Petition further provides reasoned arguments for why a person having
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`ordinary skill in the art at the time the ’040 Patent was filed would have combined
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`- 2 -
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`Case IPR2017-01703
`U.S. Patent No. 8,652,040
`the teachings of the prior art documents, and all arguments are supported by the
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`expert testimony of Dr. Sarrafzadeh. Apple’s Petition and accompanying
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`Declaration of Dr. Sarrafzadeh, which collectively cite to 31 different references,
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`provide a preponderance of evidence to support the fact that the challenged claims
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`are unpatentable.
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`For the same reasons as discussed in the Petition, claims 4-10, 22, 26, 28, 33,
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`41, 42, 47, and 54-57 are unpatentable over the instituted grounds.
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`Respectfully submitted,
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`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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`/Michelle K. Holoubek, Reg. # 54,179/
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`Michelle K. Holoubek (Reg. No. 54,179)
`Attorney for Petitioner
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`Date: July 6, 2018
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`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
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`- 3 -
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`Case IPR2017-01703
`U.S. Patent No. 8,652,040
`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(e), 42.105(a))
`The undersigned hereby certifies that the foregoing PETITIONER’S
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`
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`REPLY was served electronically via e-mail on July 6, 2018, in its entirety on the
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`following counsel of record for Patent Owner:
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`Justin B. Kimble (Lead Counsel)
`Jeffrey R. Bragalone (Back-up Counsel)
`Nicholas C. Kliewer (Back-up Counsel)
`T. William Kennedy (Back-up Counsel)
`Jonathan H. Rastegar (Back-up Counsel)
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`Jkimble-IPR@bcpc-law.com
`jbragalone@bcpc-law.com
`nkliewer@bcpc-law.com
`bkennedy@bcpc-law.com
`jrastegar@bcpc-law.com
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`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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`/Michelle K. Holoubek, Reg. # 54,179/
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`Michelle K. Holoubek (Reg. No. 54,179)
`Attorney for Petitioner
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`Date: July 6, 2018
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`1100 New York Avenue, N.W.
`Washington, D.C.20005-3934
`(202) 371-2600
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`Case IPR2017-01703
`U.S. Patent No. 8,652,040
`CERTIFICATE OF COMPLIANCE WITH TYPE-VOLUME LIMITATION,
`TYPEFACE REQUIREMENTS, AND TYPE STYLE REQUIREMENTS
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`1.
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`This Petitioner’s Reply complies with the type-volume limitation of
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`5,600 words, comprising 552 words, excluding the parts exempted by 37 C.F.R.
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`§ 42.24(c).
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`2.
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`This Petitioner’s Reply complies with the general format requirements
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`of 37 C.F.R. § 42.6(a) and has been prepared using Microsoft® Word 2010 in 14
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`point Times New Roman.
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`Respectfully submitted,
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`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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`
` /Michelle K. Holoubek, Reg. # 54,179/
`
` Michelle K. Holoubek (Reg. No. 54,179)
`Attorney for Petitioner
`
`
`Date: July 6, 2018
`
`1100 New York Avenue, N.W.
`Washington, D.C.20005-3934
`(202) 371-2600
`
`
`
`
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