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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`QUALCOMM INCORPORATED,
`Patent Owner
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`Case IPR2018-01280
`Patent 7,844,037
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`PETITIONER’S REQUEST FOR REHEARING
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`PURSUANT TO 37 C.F.R. § 42.7
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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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`QUALCOMM INCORPORATED,
`Patent Owner
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`Case IPR2018-01280
`Patent 7,844,037
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`PETITIONER’S REQUEST FOR REHEARING
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`PURSUANT TO 37 C.F.R. § 42.7
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`Proceeding No.: IPR2018-01280
`Attorney Docket: 39521-0050IP2
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`TABLE OF CONTENTS
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`INTRODUCTION ........................................................................................... 1
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`I.
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`II.
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`APPLICABLE RULES ................................................................................... 2
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`III. REQUESTED RELIEF ................................................................................... 2
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`IV. ARGUMENT ................................................................................................... 3
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`A.
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`The Office did not apply Brown to the features of claims 2, 5, 6, 12,
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`13, 14, 15, 16, 18, and 21 of the ’037 patent, which are addressed by
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`Brown in the instant Petition ................................................................. 3
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`B.
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`The Office did not apply Brown to the “prompting” step in the
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`independent claims, which is addressed by Brown in the instant
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`Petition ................................................................................................... 5
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`C.
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`The Petition applies Brown to several independent claim limitations
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`for which it was not relied on during prosecution ................................ 7
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`D.
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`The Petition applies disclosure from Brown that was not cited by the
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`Office during prosecution ...................................................................... 9
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`E.
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`Correction of these misapprehensions or oversights shifts the Becton
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`factors to favor institution ................................................................... 11
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`V.
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`CONCLUSION .............................................................................................. 15
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`i
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`Proceeding No.: IPR2018-01280
`Attorney Docket: 39521-0050IP2
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`I.
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`INTRODUCTION
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`Apple Inc. (“Petitioner”) hereby respectfully requests rehearing of the
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`February 1, 2019 Decision (“Decision”) denying institution of Inter Partes Review
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`of U.S. Patent No. 7,844,037 (the “’037 patent”). The Decision misapprehends or
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`overlooks that Brown was not advanced during prosecution against the features of
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`claims 2, 5, 6, 12, 13, 14, 15, 16, 18, and 21, which are for-the-first-time subject to
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`Brown-based grounds in the instant petition, as well as other material differences
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`between the Office’s application of Brown and Petition arguments. This
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`misapprehension or oversight flows directly from Patent Owner’s
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`mischaracterization of the ‘037 patent prosecution history, which equates the
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`petition’s grounds of unpatentability to rejections advanced during prosecution,
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`and which conveniently fails to mention that the Brown reference applied to
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`features of claims 2, 5, 6, 12, 13, 14, 15, 16, 18, and 21 in Petition Ground 1 was
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`never applied during prosecution to the features of those same claims. Patent
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`Owner further mischaracterizes the scope of the Office’s reliance on Brown, and
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`specifically fails to mention that Brown was never applied against multiple features
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`of the claims as issued that were added by amendment later in prosecution.
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`Regardless of their origin, the Decision reveals that these misapprehensions
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`or oversights informed the Board’s decision to exercise discretion in denying
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`1
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`institution under Section 325(d), and Petitioner therefore hereby respectfully
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`Proceeding No.: IPR2018-01280
`Attorney Docket: 39521-0050IP2
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`requests reconsideration of the Decision.
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`II. APPLICABLE RULES
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`37 C.F.R. § 42.71 (d) states that “[a] party dissatisfied with a decision may
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`file a request for rehearing, without prior authorization from the Board. Any
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`request must be filed: … [w]ithin 30 days of the entry of a final decision or a
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`decision not to institute a trial.” When the last day of the 30 day time period
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`specified by 37 C.F.R. § 42.71 falls on a weekend or a Federal holiday, the 30 day
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`time period expires on the next business day. 35 U.S.C. § 21(b); see, e.g.,
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`Samsung v. Immersion, Case IPR2018-01467, slip op. at 13-19 (PTAB 2019)
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`(Paper 10) (finding that a petition was timely under 315(b) when filed the next
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`business day after the last day of the one year period fell on a weekend). In the
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`present case, the 30 day time period expired on March 3, 2019, which is a Sunday.
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`Therefore, the 30 day time period ends on the next business day, which is Monday,
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`March 4, 2019, the date on which the present request is being filed.
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`III. REQUESTED RELIEF
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`Petitioner respectfully requests reconsideration of the Board’s Decision to
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`not institute inter partes review of claims 1–16, and 18 of the ’037 patent on the
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`grounds presented in the Petition, based on its finding that “the same or
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`substantially the same prior art or arguments presented in the Petition previously
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`were considered and rejected by the Office.” Decision, 15. As the art and
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`arguments presented in the Petition are neither the same nor substantially the same
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`as those considered during prosecution, Petitioner respectfully requests that the
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`Board reconsider its original decision and institute an inter partes review with
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`respect to these claims.
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`IV. ARGUMENT
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`A. The Office did not apply Brown to the features of claims 2, 5, 6,
`12, 13, 14, 15, 16, 18, and 21 of the ’037 patent, which are
`addressed by Brown in the instant Petition
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`The Decision states that, “[d]uring prosecution, the Examiner relied on
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`Brown in rejecting the claims.” Decision, 12. While the examiner did indeed
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`fashion a rejection of all claims based on a combination including Brown, the
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`application of Brown was limited to just one feature. Rather than applying Brown
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`more extensively, the Office applied Fostwick to a majority of features of the
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`claims. This stands in stark contrast to the instant petition, which demonstrates
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`that disclosure within Brown applies extensively to features within claims 2, 5, 6,
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`12, 13, 14, 15, 16, 18, and 21.
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`In an Action issued July 24, 2009, the Office rejected all then-pending
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`claims of the ’037 patent “under 35 U.S.C. 103(a) as being unpatentable over
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`Fostwick et al. (US 2002/087794 A 1) in view of Brown et al. (US 2004/0203794
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`A 1).” APPLE-1002, 180. In this combination, the Office relied on Brown for just
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`one very particular limitation. See id., 181. Specifically, the Office stated that
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`“Brown teaches responsive to user input, automatically entering at least a portion
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`of an address, for a message to the computing device of the caller, using the
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`message identifier determined from the incoming call.” Id., 181 (citing Brown, ¶
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`27). Critically, the Office did not otherwise rely on Brown. In fact, the Office did
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`not even mention Brown in its treatment of other features recited by the
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`independent claims, much less features recited by the other 29 claims, as it instead
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`relied solely on disclosure from Fostwick for those features. See APPLE-1002,
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`182-185. For example, with respect to then-pending claim 16 (which issued as
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`claim 15 of the ’037 patent), the Office’s treatment consisted of the following:
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`Id., 185. As shown, the Office did not cite or rely on any teachings from Brown in
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`addressing the features of claim 16. Id. The Office’s treatment of many other
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`then-pending claims is no different. See id., 182-185.
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`In contrast, the Petition newly-advances and relies on disclosure from Brown
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`in addressing features within several ’037 patent claims. In particular, the Petition
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`specifically applies disclosure from Brown to features of claims 2, 5, 6, 12, 13, 14,
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`15, 16, 18, and 21, each earlier addressed by Fostwick during prosecution. See
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`APPLE-1002, 182-185.
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`As described in Section IV.E, correction of these misapprehensions or
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`oversights shifts the Becton factors to favor institution of the Petition.
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`B.
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`The Office did not apply Brown to the “prompting” step in the
`independent claims, which is addressed by Brown in the instant
`Petition
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`During prosecution and in response to the rejection over the combination of
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`Fostwick and Brown, Patent Owner amended the independent claims to recite: “in
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`response to receiving the incoming call, prompting a user of the first computing
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`device to enter user input that instructs the first computing device to handle the
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`incoming call by composing, while not answering the incoming call, a message to
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`a user of the second computing device[.]” APPLE-1002, 157. Notably, claims
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`reciting this “prompting” step were not rejected by the Office over Brown, alone or
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`in combination. Following the amendment, the Office applied a combination of
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`Fostwick and Burg (U.S. Patent No. 6,219,413) to reject claims modified to recite
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`the “prompting” step; in doing so, the Office did not apply Brown to this added
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`feature. See id., 144. The Decision states that, “[d]uring prosecution, the
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`Examiner relied on Brown in rejecting the claims.” Decision, 12 (citing APPLE-
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`1002, 181). However, as described above, the Office never rejected the claims as
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`issued over Brown, and never applied Brown to the “prompting” step that was
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`added by amendment. See APPLE-1002, 144 (rejecting the version of the claim
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`including the “prompting” step only over Fostwick and Burg), 149 (declaring
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`Patent Owner’s arguments regarding Brown “moot”). The record thus fails to
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`suggest any consideration by the Office of Brown as applied in the instant Petition.
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`Notably, Patent Owner promotes this misunderstanding or oversight by
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`offering a misleading characterization of the ’037 patent’s prosecution history. For
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`example, Patent Owner states that “the Examiner understood that Brown did not
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`disclose” the prompting step. See POPR, 38; APPLE-1002, 149. But there is no
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`indication in the prosecution history that the Examiner had such an understanding
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`and Patent Owner provides no evidence in support of its bald assertion. See POPR,
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`38; APPLE-1002, 149. In addition, Patent Owner states that the Office “withdrew
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`the rejection over the combination of Fostick and Brown in the subsequent office
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`action.” POPR, 38. In fact, the subsequent office action did not “withdraw” the
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`rejection over Fostwick and Brown. Instead, it presented a new rejection over a
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`different combination (Fostwick and Burg) and made no statement about the
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`propriety of the prior rejection or whether Patent Owner’s arguments regarding
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`Brown were persuasive. See APPLE-1002, 144, 149. Patent Owner incorrectly
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`infers that the Office endorsed its argument by putting forward the new
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`combination. Although this is one possible interpretation of the Office’s action, it
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`is equally plausible that the Office could not articulate a reason to combine Brown
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`and Fostwick to reach the amended claims, and decided to present the new
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`combination of Fostwick and Burg instead, thereby rendering the rejection in view
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`of Brown and Fostwick moot. See id., 149.
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`The Decision misapprehends or overlooks the Office’s complete non-
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`reliance on Brown for independent claims including the “prompting” step present
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`in the issued claims of the ’037 patent. The Petition’s application of Brown to the
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`issued claims of the ’037 patent is thus the first time Brown has been applied to
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`these claims. As described in Section IV.E, correction of this misapprehension or
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`oversight shifts the Becton factors to favor institution of the Petition.
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`C. The Petition applies Brown to several independent claim
`limitations for which it was not relied on during prosecution
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`As discussed above, the Office relied on Brown to address only a single
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`limitation of the independent claims. See APPLE-1002, 181. In contrast, the
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`Petition relies on Brown as a primary reference (in combination with Moran) to
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`address nearly all features recited by the ’037 patent’s independent claims. See
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`Petition, 3. Thus, whereas Brown was advanced merely as a supporting reference
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`for Fostwick during prosecution, the instant Petition applies Brown to every
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`limitation of the independent claims. See Petition, 12-19. Below, portions of
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`claim 1 are emphasized to reveal features addressed using Brown in the instant
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`Petition (at the indicated pages), which were not addressed using Brown by the
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`Office during earlier prosecution:
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`1. A method for operating a first computing device, the method
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`being implemented by one or more processors of the computing
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`device and comprising: [Petition, pages 12-14]
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`receiving, from a second computing device, an incoming call to
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`initiate a voice-exchange session; [pages 14-15]
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`in response to receiving the incoming call, determining a
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`message identifier associated with the second computing device,
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`wherein the message identifier is determined based at least in part on
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`data provided with the incoming call; [pages 16-17]
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`in response to receiving the incoming call, prompting a user of
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`the first computing device to enter user input that instructs the first
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`computing device to handle the incoming call by composing, while
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`not answering the incoming call, a message to a user of the second
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`computing device; [pages 17-18] and
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`responsive to receiving the incoming call and the user entering
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`the user input, automatically addressing the message to the second
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`computing device using the message identifier determined from the
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`incoming call.
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`As shown, the only limitation addressed using Brown by both the Office and
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`the Petition is the final “automatically addressing” limitation. See APPLE-1002,
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`181; Petition, 18-19. For this limitation, rather than relying on Brown, the Petition
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`relied on aspects of Moran, a reference not applied in prosecution, stating:
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`Petition, 19. Thus, even the single limitation addressed using Brown during
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`prosecution is not addressed in the same way by the instant Petition. See Petition,
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`19; APPLE-1002, 181.
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`The Decision misapprehends or overlooks differences between the Petition’s
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`comprehensive application of Brown to the independent claims and, by contrast,
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`the Office’s limited reliance on Brown as to the independent claims during
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`prosecution. As described in Section IV.E, correction of this misapprehension or
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`oversight shifts the Becton factors to favor institution of the Petition.
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`D. The Petition applies disclosure from Brown that was not cited by
`the Office during prosecution
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`During prosecution, the Office cited only a single paragraph (27) from
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`Brown. APPLE-1002, 181 (citing Brown, ¶ 27). In its responsive argument,
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`Patent Owner similarly limited its treatment of Brown’s disclosure, as it cited
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`paragraph 30 of Brown, along with particular corresponding steps from within the
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`figures of Brown. APPLE-1002, 166-168 (citing Brown ¶¶ 27, 30, “step 210 of
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`FIG. 2, step 210 of FIG. 3, step 510 of FIG. 5, step 510 of FIG. 6,” and “steps 406
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`and 408 of FIG. 4”).
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`This pales in comparison to the Petition’s treatment of Brown, as the Petition
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`relies on significant disclosure from within Brown that was not cited or relied on
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`during prosecution by either the Office or the Patent Owner during prosecution: 9
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`Paragraphs (¶¶ 19, 21, 26, 29, 31-32, 36, 37, and 40); 2 Figures: (FIG. 2 (steps 202
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`and 204) and FIG. 7); 8 Claims (1, 14, 18, 24, 25, 26, 28, and 29); and the
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`Abstract. For example, in its application of Brown to the “prompting” step of
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`claim 1, the Petition argues:
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`Petition, 17 (emphasis added). The above-emphasized disclosure is from a
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`paragraph of Brown (¶ 26) that was not cited or relied on by either the Office or
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`Patent Owner during prosecution of the ’037 patent. In addition, the Petition
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`10
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`addresses a portion of Brown’s FIG. 2 (steps 202 and 204) that was not cited or
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`relied on by Patent Owner or the Office. See Petition, 13 (describing steps 202 and
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`204 as showing receiving an incoming phone call and responding with a ‘short
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`message’ if the user actuates a key or key sequence”).
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`The Decision misapprehends or overlooks these differences between the
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`portions of Brown relied on by the Petition and those relied on by the Office and
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`Patent Owner during prosecution of the ’037 patent. As described in Section IV.E,
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`correction of this misapprehension or oversight shifts the Becton factors to favor
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`institution of the Petition.
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`E. Correction of these misapprehensions or oversights shifts the
`Becton factors to favor institution
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`The misapprehensions or oversights described above affected the Decisions
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`application of at least the first, second, third, and fourth Becton factors, all of
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`which were weighed in the Decision against institution. See Decision, 10-13.
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`Petitioner submits that, absent these misapprehensions or oversights, at least these
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`four Becton factors would weigh for institution rather than against, which would
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`have led to institution of the Petition.
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`The first Becton factor is “the similarities and material differences between
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`the asserted art and the prior art involved during examination.” Decision, 10. The
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`Decision states that “[b]ecause Petitioner relies on the same embodiments
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`11
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`considered by the Examiner during the prosecution of the ’037 patent, this factor
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`weighs strongly against instituting.” Decision, 10. However, as discussed above,
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`the focus on “embodiments” (originally introduced by Patent Owner) is
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`misleading, as the Petition relies on copious additional disclosure from Brown (9
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`paragraphs, 2 figures, 8 claims, and the abstract) upon which the Office did not
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`rely during prosecution. See Section IV.D. Further, as discussed in Section IV.B,
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`the Office never applied Brown to the “prompting” step present in the issued
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`claims, as this step was added by amendment in prosecution after Brown was
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`applied. There is no indication in the file history that any of this additional
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`disclosure from Brown was considered by the Office, or that any disclosure from
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`Brown was considered with respect to the “prompting” step added by amendment.
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`Absent these misapprehensions or oversights, Petitioner submits that the first
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`Becton factor would favor institution rather than weighing strongly against it.
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`The second Becton factor is “the cumulative nature of the asserted art and
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`the prior art evaluated during examination.” Decision, 11. The Decision states
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`that “[b]ecause Brown, the primary reference relied on in the Petition, was
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`evaluated during the prosecution of the ’037 patent, this factor weighs against
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`instituting” but “because neither Moran nor Tsampalis was considered, the factor
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`does not weigh strongly.” Decision, 11. Again, as discussed above, the Petition
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`relies on copious additional disclosure from Brown (9 paragraphs, 2 figures, 8
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`12
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`claims, and the abstract) upon which the Office did not rely during prosecution,
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`and which the prosecution history does not indicate that the Examiner evaluated.
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`See Section IV.D. Further, as described in Sections IV.A-C, the Petition applies
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`Brown to a multiplicity of claim features to which it was not applied by the Office
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`during prosecution of the ’037 patent. Petitioner submits that these
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`misapprehensions or oversights affected the Decision’s understanding of the scope
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`of the Office’s evaluation of Brown during prosecution. Given that the Decision
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`weighed this factor only weakly against institution (see Decision, 11), Petitioner
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`submits that, absent these misapprehensions or oversights, the second Becton
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`factor would strongly favor institution.
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`The third Becton factor is “the extent to which the asserted art was evaluated
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`during examination, including whether the prior art was the basis for rejection.”
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`Decision, 12. In its analysis of this factor, the Decision states that “the Examiner
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`relied on Brown in rejecting the claims” of the ’037 patent. Id. (citing APPLE-
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`1002, 181). However, as discussed above, the Examiner i) did not rely on Brown
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`when rejecting the version of the claims including the “prompting” step (see
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`Section IV.B); ii) did not rely on Brown at all when rejecting claims 2, 5, 6, 12, 13,
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`14, 15, 16, 18, and 21 (see Section IV.A); and iii) did not rely on Brown for
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`rejecting several features of the independent claims of the ’037 patent (see Section
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`13
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`Proceeding No.: IPR2018-01280
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`IV.C). Absent these misapprehensions or oversights, Petitioner submits that the
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`third Becton factor would favor institution rather than weighing strongly against it.
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`The fourth Becton factor is “the extent of the overlap between the arguments
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`made during examination and the manner in which petitioner relies on the prior
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`art.” Decision, 12. In analyzing this factor, the Decision examines the extent of
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`commonality between Patent Owner’s arguments distinguishing Brown, and
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`Petitioner’s application of Brown to the claims. Id. However, Becton calls for
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`analysis of the overlap between arguments presented by the Office and arguments
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`presented by Petitioner. See Becton, 23 (“Petitioner relies on the combination of
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`Woehr and Tauschinski in the same manner as the Examiner relied on Bialecki and
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`Tauschinski, and Woehr and Rogers.”). As discussed above, the Petition applies
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`Brown to many claim features for which the Office did not rely on Brown. See
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`Section IV.A-C. In addition, the Petition relies on copious additional disclosure
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`from Brown (9 paragraphs, 2 figures, 8 claims, and the abstract) upon which the
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`Office did not rely during prosecution, and which the prosecution history does not
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`indicate that the Examiner evaluated. See Section IV.D. These misapprehensions
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`or oversights led the Decision to overestimate the overlap between the Petition’s
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`extensive treatment of Brown and the Office’s scant reliance on it. Absent these
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`misapprehensions or oversights, Petitioner submits that the fourth Becton factor
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`would favor institution rather than weighing strongly against it.
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`14
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`Proceeding No.: IPR2018-01280
`Attorney Docket: 39521-0050IP2
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`In weighing all the Becton factors, the Decision states that “[a]lthough the
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`other references relied on in the Petition for other claims limitations are different,
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`the focus of Petitioner’s arguments relating to the prompting step are the same as
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`the Examiner considered and rejected during original examination of the
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`application that issued as the ’037 patent.” Decision, 15 (emphasis added). The
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`Decision appears to identify this as a major factor it weighs against institution. See
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`id. However, as discussed above, the Brown reference was never applied to claims
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`including the prompting step, as that feature was added after Brown was applied.
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`See Section IV.B. In addition, the Office never applied the disclosure from
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`paragraph 26 of Brown, or steps 202 and 204 of FIG. 2 (applied to the “prompting”
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`step in the Petition) to any portion of the claims. See Section IV.D.
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`Accordingly, Petitioner submits that, absent the misconceptions or
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`oversights described in this Request, the totality of the Becton factors would weigh
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`in favor of institution of the Petition. Thus, Petitioner requests reconsideration of
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`the Decision and institution of the Petition.
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`V. CONCLUSION
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`For the foregoing reasons and those previously present in its Petition,
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`Petitioner requests that the Board institute an inter partes review of claims 1–16
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`and 18 of the ’037 patent.
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`15
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`Dated: March 4, 2019
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`Proceeding No.: IPR2018-01280
`Attorney Docket: 39521-0050IP2
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`Respectfully submitted,
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`
` /Timothy W. Riffe/
`W. Karl Renner, Reg. No. 41,265
`Thomas A. Rozylowicz, Reg. No. 50,620
`Timothy W. Riffe, Reg. No. 43,881
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
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`Attorneys for Petitioner
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`16
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`Proceeding No.: IPR2018-01280
`Attorney Docket: 39521-0050IP2
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4) et seq. and 42.205(b), the undersigned
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`certifies that on March 4, 2019, a complete and entire copy of this Petitioner’s
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`Request for Rehearing was provided via electronic service, to the Patent Owner by
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`serving the correspondence address of record as follows:
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`Brian W. Oaks
`Eliot Williams
`Chad Walters
`Joseph Akalski
`Charles Yeh
`Jessica Lin
`Baker Botts L.L.P.
`98 San Jacinto Blvd., Suite 1500
`Austin, Texas 78701
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`Email: Qualcomm_037IPR@bakerbotts.com
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`/Diana Bradley/
`Diana Bradley
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`(858) 678-5667
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