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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 IPR2017-01883
`U.S. Patent No. 8,942,776
`_____________________
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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 IPR2017-01883
`U.S. Patent No. 8,942,776
`In its Patent Owner’s Response filed May 4, 2018, Valencell fails to raise any
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`substantive arguments or evidence to rebut Petitioner’s showing of unpatentability
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`for any one of challenged claims 1-5 and 8 of U.S. Patent No. 8,942,776 (“the ’776
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`Patent”). Further, Valencell waives any arguments raised in its preliminary response
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`by not reiterating or otherwise relying upon those arguments in the Patent Owner’s
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`Response. The Scheduling Order issued by the Board clearly states that “[t]he
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`patent owner is cautioned that any arguments for patentability not raised in the
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`response will be deemed waived.” (Scheduling Order, Paper 8, p. 3.)
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`Since Valencell does not put forth an attempt to rebut Petitioner’s showing of
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`unpatentability of any one of challenged claims 1-5 and 8 after the institution of
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`trial, and does not address the Board’s comments in the Decision instituting trial,
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`Valencell has abandoned the contest. The Board should thus consider Valencell’s
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`Response to be a request for adverse judgment under 37 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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`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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`- 1 -
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`Case IPR2017-01883
`U.S. Patent No. 8,942,776
`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 claim 1 is anticipated by the fourth
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`instituted ground or that any of claims 1-5 and 8 are obvious over any of the other
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`instituted grounds,” and also that “Petitioner must prove by a preponderance of
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`evidence that the instituted claims of the ’776 Patent are unpatentable.” (POR,
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`Paper 11, p. 1.) The Board has already determined that Apple has demonstrated a
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`reasonable likelihood of prevailing in proving unpatentability of the challenged
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`claims. (Institution decision, Paper 7, p. 28.) Apple’s Petition also establishes by a
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`preponderance of the evidence that the challenged claims are unpatentable. The
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`evidence presented by Apple is the only evidence before the Board, as Valencell has
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`chosen to provide no arguments or evidence in support of patentability for any of
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`the challenged claims. As such, the only evidence available in the trial supports
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`unpatentability of the challenged claims, and thus constitutes a preponderance of
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`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 (i) Numaga,
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`Vetter, or Dekker and (ii) Fraden or Fricke. Apple’s Petition further provides
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`reasoned arguments for why a person having ordinary skill in the art at the time the
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`- 2 -
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`Case IPR2017-01883
`U.S. Patent No. 8,942,776
`’776 Patent was filed would have combined the teachings of Numaga, Vetter, and
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`Dekker, and of Fraden and Fricke, and all arguments are supported by the expert
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`testimony of Dr. Sarrafzadeh. Apple’s Petition and accompanying Declaration of
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`Dr. Sarrafzadeh, which collectively cite to over 30 different references, provide a
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`preponderance of evidence to support the fact that the challenged claims are
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`unpatentable.
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`For the same reasons as discussed in the Petition, claims 1-5 and 8 are
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`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 25, 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 IPR2017-01883
`U.S. Patent No. 8,942,776
`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 25, 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)
`Brian P. Herrmann (Back-up Counsel)
`Marcus Benavides (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
`bherrmann@bcpc-law.com
`mbenavides@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 25, 2018
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`1100 New York Avenue, N.W.
`Washington, D.C.20005-3934
`(202) 371-2600
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`Case IPR2017-01883
`U.S. Patent No. 8,942,776
`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 566 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/
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` Michelle K. Holoubek (Reg. No. 54,179)
`Attorney for Petitioner
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`Date: July 25, 2018
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`1100 New York Avenue, N.W.
`Washington, D.C.20005-3934
`(202) 371-2600
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`
`
`
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