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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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`Qualcomm Incorporated
`Patent Owner
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`Case IPR2018-01316
`Patent No. 8,063,674
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`PATENT OWNER’S OPENING BRIEF ON REMAND
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`TABLE OF CONTENTS
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`IPR2018-01316
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`Page
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`INTRODUCTION .......................................................................................... 1
`I.
`PROCEDURAL HISTORY ........................................................................... 3
`II.
`III. ARGUMENT .................................................................................................. 4
`A. Apple Has Repeatedly Conceded Majcherczak Is Not The Basis ....... 4
`B.
`The Correct Statutory Interpretation Tracks Apple’s
`Admissions ........................................................................................... 5
`The Qualcomm Decision Cements This Conclusion ........................... 8
`C.
`The Updated Guidance Does Not Compel Otherwise ......................... 9
`D.
`IV. CONCLUSION ............................................................................................. 10
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`i
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`TABLE OF AUTHORITIES
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`IPR2018-01316
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`Page
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`CASES
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`Intuitive Surgical, Inc. v. Ethicon LLC,
`25 F.4th 1035 (Fed. Cir. 2022) ............................................................................. 2
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`MED-EL Elektromedizinische Geräte Ges.m.b.H. v. Advanced Bionics,
`IPR2020-01016, Paper No. 44 (Aug. 22, 2022) ................................................. 10
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`Qualcomm Inc. v. Apple Inc.,
`24 F.4th 1367 (Fed. Cir. 2022) ....................................................................passim
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`SAS Inst. v. Iancu,
`138 S. Ct. 1348 (2018) .......................................................................................... 8
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`STATUTES
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`35 U.S.C. § 311(b) ............................................................................................passim
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`OTHER AUTHORITIES
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`Black’s Law Dictionary (9th ed. 2009) ..................................................................... 6
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`Merriam-Webster’s Collegiate Dictionary (11th ed. 2006) ....................................... 6
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`Oxford English Dictionary (1978) ............................................................................. 6
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`ii
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`I.
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`INTRODUCTION
`This remand presents a narrow and specific question: “The Federal Circuit
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`IPR2018-01316
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`remanded for [the Board] to determine whether Majcherczak forms the basis of
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`Apple’s challenge, or whether the validity challenge impermissibly violated the
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`statutory limit in section 311.” Paper 28 at 2; see Qualcomm Inc. v. Apple Inc., 24
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`F.4th 1367, 1377 (Fed. Cir. 2022). By any measure, the answer is clear:
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`Majcherczak (itself or with the only other prior-art patent or printed publication
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`asserted in Ground 2) does not form the basis of the ground. Rather, AAPA does.
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`Ground 2 thus unquestionably violates the statutory limit in 35 U.S.C. § 311(b).
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`First, Apple’s own statements answer the question on remand. Apple has
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`consistently styled and substantively argued Ground 2 by starting with AAPA and
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`using it as the fundamental and predominant source for the challenge, which makes
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`clear that Majcherczak is not “the basis”:
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`• Apple’s petition styles its “Basis” of Ground 2 as “Applicants Admitted
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`Prior Art (AAPA) in view of Majcherczak.” Paper 2 at 1.1
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`• Apple told the Federal Circuit that Ground 2 “is based on AAPA in view
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`of the Majcherczak reference.” Appeal No. 20-1558, Dkt. No. 54 at 8.
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`• Apple itself called Ground 2 its “AAPA grounds.” Id. at 48, 49.
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`• Apple’s petition relied on the alleged AAPA, not Majcherczak, for almost
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`1 All emphasis in this brief is added unless otherwise noted.
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`every claim element. E.g., Paper 2 at 54-63 (claims 8 & 17).
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`• Apple’s arguments on § 311(b) consistently advocated AAPA as the basis
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`of Ground 2. See Paper 16 at 1-2; Appeal No. 20-1558, Dkt. No. 54.
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`As “the master of its own petition,” Intuitive Surgical, Inc. v. Ethicon LLC, 25
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`F.4th 1035, 1041 (Fed. Cir. 2022), Apple cannot now distance itself from the way it
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`framed and argued Ground 2. The Board can rest on Apple’s acknowledgments
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`alone to answer the Federal Circuit’s directive and to hold that Majcherczak does
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`not form the basis, thus rendering Ground 2 impermissible under § 311(b).
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`Second, § 311(b) compels precisely what Apple has long acknowledged.
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`Applying the plain meaning of “basis,” it is clear that Apple used AAPA, not
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`Majcherczak, as the basis of Ground 2. That obviousness theory started with AAPA,
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`it used AAPA as the foundation and premise, and it relied on AAPA for the vast
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`majority of claim elements. By contrast, it used Majcherczak merely as a secondary
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`reference to supplement the AAPA, and for only a limited aspect of the claims.
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`Third, this conclusion comports with the Federal Circuit’s decision in this case.
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`While the Court did not resolve the specific question pending before the Board, its
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`holding and guidance on the proper and improper uses of AAPA in an IPR make
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`clear that, on this record, Majcherczak is not the basis of Ground 2.
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`Finally, the Director’s Updated Guidance on the treatment of AAPA in IPRs
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`does not address the question the Federal Circuit directed for remand—whether a
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`2
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`IPR2018-01316
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`prior-art patent or printed publication (Majcherczak here) forms the basis of a ground.
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`As noted above, Ground 2 does not rest “only on the basis of prior art consisting of
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`patents or printed publications.” 35 U.S.C. § 311(b). The straightforward answer to
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`the question on remand is therefore that Ground 2 is impermissible.
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`In short, Majcherczak is not the basis. Ground 2 violates § 311(b).
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`II.
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`PROCEDURAL HISTORY
`The ’674 Patent generally relates to power-up/down detectors and teaches the
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`use of feedback to increase the speed of power-up/down detection while
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`simultaneously reducing power consumption. Across two petitions, Apple
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`challenged various claims, asserting two grounds. This IPR challenged claims 8, 9,
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`12, 13, and 16-22. Ground 1 rested on two prior-art patents and a printed publication,
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`all of which fit within § 311(b)’s limits. But for Grounds 2a and 2b (collectively,
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`“Ground 2”), Apple’s “Basis” was “Applicants Admitted Prior Art (AAPA) in view
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`of Majcherczak,” or “AAPA in view of Majcherczak and Matthews.” Paper 2 at 1.
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`The Board concluded that Ground 1 failed to demonstrate obviousness, and the
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`Federal Circuit affirmed that conclusion. Paper 26 (“FWD”) at 57-81; Qualcomm,
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`24 F.4th at 1377. The Board also concluded, however, that the AAPA could be
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`considered a prior-art patent under § 311(b), and it found the claims challenged in
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`Ground 2 unpatentable. FWD at 13-56.
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`On appeal, the Federal Circuit held, contrary to Apple’s position and the
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`Board’s decision, that AAPA cannot form the basis of an IPR challenge: “[T]he
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`‘patents or printed publications’ that form the ‘basis’ of a ground for an inter partes
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`review must themselves be prior art to the challenged patent. That conclusion
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`excludes any descriptions of the prior art contained in the challenged patent.”
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`Qualcomm, 24 F.4th at 1374. The Court thus “remand[ed] to the Board to determine
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`whether Majcherczak forms the basis of Apple’s challenge, or whether the validity
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`challenge impermissibly violated the statutory limit in Section 311.” Id. at 1377.
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`III. ARGUMENT
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`A. Apple Has Repeatedly Conceded Majcherczak Is Not The Basis
`The answer to the Federal Circuit’s remand question is straightforward.
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`Apple has repeatedly and consistently styled and argued Ground 2 as based on
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`AAPA. Accordingly, the only answer to the question at issue is the one Apple itself
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`has embraced: Majcherczak does not form the basis of Apple’s Ground 2.
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`Apple’s petition is compelling evidence for this conclusion. When identifying
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`the asserted grounds, Apple framed the “Basis” for Ground 2 as “Applicants
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`Admitted Prior Art (AAPA) in view of Majcherczak.” Paper 2 at 1. Apple’s
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`substantive arguments likewise started with the alleged AAPA, relied on the alleged
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`AAPA for almost every claim element, and used Majcherczak for only a limited
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`aspect of the claims. E.g., Paper 2 at 45-63 (claims 8 & 17). Ground 2 is
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`meaningless without Apple’s reliance on AAPA as asserted prior art—an assertion
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`that impermissibly violates the statutory limit in § 311(b). Indeed, the Board’s Final
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`Written Decision reflected Apple’s clear position, identifying the “References/Basis”
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`for Ground 2 as “AAPA, Majcherczak.” FWD at 8-9.
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`Apple continued characterizing its own arguments in this way on appeal,
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`calling Ground 2 its “AAPA grounds” and telling the Federal Circuit that Ground 2
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`“is based on AAPA in view of the Majcherczak reference.” Appeal No. 20-1558,
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`Dkt. No. 54 at 8, 48, 49; id. at 50 (stating that it “asserted a section 103 ground
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`consisting of the AAPA in combination with Majcherczak”). Indeed, just like Apple
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`argued to the Board, Apple’s central argument on appeal was that it could use AAPA
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`as the basis of Ground 2. See, e.g., id. at 18 (arguing in favor of grounds “based on
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`AAPA”); see also id. at 3-4, 21-42; Paper 16 at 1-2.
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`Moreover, Apple’s en banc petition stated that the ground “Apple presented
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`was AAPA combined with Majcherczak.” Appeal No. 20-1558, Dkt. No. 84 at 3.
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`Apple further urged that it could “base its ground on AAPA,” and that its AAPA
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`ground satisfies the limitations that § 311(b) “places on IPR bases.” Id. at 2, 5.
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`Given Apple’s repeated representations that AAPA—not Majcherczak, much
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`less Majcherczak alone—is the basis, the Board should find Ground 2 impermissible.
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`B.
`The Correct Statutory Interpretation Tracks Apple’s Admissions
`The correct application of § 311(b) compels exactly the conclusion Apple
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`admits. The plain meaning of the “basis” of a thing is something fundamental to it,
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`or on which the thing rests, as numerous standard dictionary definitions demonstrate.
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`See Black’s Law Dictionary (9th ed. 2009) (“A fundamental principle; an underlying
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`fact or condition.”); Merriam-Webster’s Collegiate Dictionary (11th ed. 2006) (“the
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`bottom of something considered as its foundation”; “the principal component of
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`something”: “something on which something else is established or based”); Oxford
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`English Dictionary (1978) (“[t]he bottom of anything, considered as the part on
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`which it rests or is supported”; “[t]he main constituent, fundamental ingredient”; “a
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`foundation, support”); see also Aug. 18, 2020 Guidance (superseded) at 6 n.4
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`(similar definitions).
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`As Apple’s consistent acknowledgements establish, application of the plain
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`meaning of “basis” in § 311(b) is straightforward here. The substance of Apple’s
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`petition makes clear that AAPA, not Majcherczak, was the “foundation,” “main
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`constituent,” “principal component,” and “fundamental” and “underlying fact” of
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`Ground 2; Majcherczak played an ancillary role.
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`Not only is Ground 2 styled as first listing AAPA—“Applicants Admitted
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`Prior Art (AAPA) in view of Majcherczak,” Paper 2 at 1, 45—but Apple relied on
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`the alleged AAPA system for almost every claim element. E.g., id. at 54-63 (claims
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`8 & 17). Apple defined the purported “AAPA” as the system depicted in Figure 1
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`of the ’674 Patent and its accompanying description. See id. at 45. As the petition
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`described it, “the only substantive difference from the perspective of the claims
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`between the prior art POC system 10 described in the AAPA and the purportedly
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`inventive POC network 40 illustrated in FIG. 4 of the ’674 Patent is the inclusion of
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`a feedback network.” Id. at 47. In other words, Ground 2 relied extensively on the
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`alleged AAPA but for inclusion of “the feedback transistor M6 from Majcherczak’s
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`voltage detector.” Id. at 51; see also Ex. 1003 at § VIII.
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`Apple then explicitly structured its motivation-to-combine arguments in terms
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`of why an artisan starting with the alleged AAPA would have been motivated to
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`modify that system by adding a single element from Majcherczak into the AAPA
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`system, not the other way around. See Paper 2 at 51, 53 (describing motivation “to
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`integrate [a] feedback transistor … from Majcherczak[] … into the … system … of
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`the AAPA,” which would result in “the AAPA’s … system” performing a function
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`described by Majcherczak; further describing this as a “modification to
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`the … system … of the AAPA”); id. at 52 (asserting Apple’s theory that
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`Majcherczak’s feedback transistor would be “integrated into the AAPA POC
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`system”). Nowhere did Apple start with Majcherczak, use Majcherczak as the
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`foundation or the main component, or argue that an artisan would modify
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`Majcherczak to obtain the challenged claims. Instead, Apple fundamentally relied
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`on AAPA.
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`Given its consistent framing and substantive arguments for Ground 2, Apple
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`IPR2018-01316
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`cannot now change course and assert that Majcherczak is “the basis” of its challenge.
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`Nor can the Board do so on Apple’s behalf. See SAS Inst. v. Iancu, 138 S. Ct. 1348,
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`1356 (2018).
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`C. The Qualcomm Decision Cements This Conclusion
`While the Federal Circuit remanded the specific issue pending before the
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`Board, the Court’s decision—its specific holding and its discussion of the proper and
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`improper uses of AAPA—applied to the circumstances here compels a finding that
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`Ground 2 is impermissible. Determining that § 311(b) “excludes any descriptions
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`of the prior art contained in the challenged patent” from being “the basis” of an IPR
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`ground, the Court noted that AAPA, like other non-§ 311(b) evidence, can play a
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`limited role. See Qualcomm, 24 F.4th at 1374-76. But as the Court held, references
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`forming “the basis” of an IPR ground “must themselves be prior art to the challenged
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`patent” and thus cannot include AAPA. Id. at 1374. “The language of § 311(b)
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`limits ‘the basis’ of any ‘ground’ in an inter partes review to ‘prior art consisting of
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`patents or printed publications.’” Id. Thus, it would be “improper[]” if AAPA
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`“formed the ‘basis’” of a challenge. Id. at 1377.
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`Accordingly, the relevant inquiry under § 311(b) for an obviousness ground
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`is whether the ground “raises its § 103 challenge ‘on the basis of prior art consisting
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`of patents or printed publications,’” id. at 1369 (emphasis omitted)—here, “whether
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`Majcherczak forms the basis of Apple’s challenge” in Ground 2. Id. at 1377.
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`IPR2018-01316
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`Because Apple did not raise Majcherczak as “the basis,” the Federal Circuit’s
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`decision confirms that Ground 2 is impermissible.
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`D. The Updated Guidance Does Not Compel Otherwise
`The Updated Guidance on the treatment of AAPA in IPRs does not (and could
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`not) compel a contrary conclusion. It does not address the Federal Circuit’s narrow
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`directive for remand for this case to determine what is the basis of Ground 2. The
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`Federal Circuit, having concluded that AAPA is not “prior art consisting of patents
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`or printed publications” that can form the “basis” of a ground for purposes of
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`§ 311(b), directed the Board to consider “whether Apple’s petition nonetheless raises
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`its § 103 challenge ‘on the basis of prior art consisting of patents or printed
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`publications”—i.e., “whether Majcherczak forms the basis of Apple’s challenge.”
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`Qualcomm, 24 F.4th at 1369, 1377 (emphasis by the Federal Circuit). For all of the
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`reasons shown above, the answer is plain: Majcherczak does not form the basis.
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`Nor could the Updated Guidance contradict the statute and that conclusion.
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`To the extent Apple argues that Ground 2 is permissible because it includes
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`Majcherczak, Qualcomm recognizes that statements in the Updated Guidance, and
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`its recent application by the Director, would suggest such an argument. See June 9,
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`2022 Updated Guidance at 4 (“If an IPR petition relies on admissions in combination
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`with reliance on one or more prior art patents or printed publications, those
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`admissions do not form ‘the basis’ of the ground ….”); id. at 5 (directing panels to
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`IPR2018-01316
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`“not exclude the use of admissions based on the number of claim limitations” they
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`supply or “the order in which the petition presents the obviousness combination,”
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`and to “review whether the asserted ground as a whole … relies on admissions in
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`the specification in combination with reliance on at least one prior art patent or
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`printed publication”); MED-EL Elektromedizinische Geräte Ges.m.b.H. v. Advanced
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`Bionics, IPR2020-01016, Paper No. 44 (Aug. 22, 2022). Respectfully, Congress did
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`not use such language; rather, it expressly limited IPRs to grounds “only on the basis
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`of prior art consisting of patents or printed publications.” See Part III.B, supra. As
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`the Updated Guidance elsewhere acknowledges (at 6 n.2), “[t]he basis of every
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`petition must be one or more prior art patents or printed publications.” Apple’s
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`significant reliance on AAPA as an asserted reference here plainly violates § 311(b).
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`After all, a challenge that rests on AAPA in addition to other references cannot be
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`said to rest “only on the basis of prior art consisting of patents or printed
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`publications.” That conclusion is all the easier here given Apple’s inclusion of
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`AAPA not just as a reference, but as the unquestionably foundational basis.
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`IV. CONCLUSION
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`The Board should determine that Ground 2 is impermissible and thus Apple
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`has not caried its burden for Ground 2, as the Board has already found for Ground 1.
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`The Board should therefore enter judgment upholding the challenged claims.
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`Date: August 31, 2022
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`IPR2018-01316
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`Respectfully submitted,
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`By: /David B. Cochran/
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`David B. Cochran, Reg. No. 39,142
`David M. Maiorana, Reg. No. 41,449
`Joseph M. Sauer, Reg. No. 47,919
`JONES DAY
`North Point, 901 Lakeside Avenue
`Cleveland, OH 44114
`(216) 586-3939
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`Matthew W. Johnson, Reg. No. 59,108
`Joshua R. Nightingale, Reg. No. 67,865
`JONES DAY
`500 Grant Street, Suite 4500
`Pittsburgh, PA 15219
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`Jennifer L. Swize, pro hac application forthcoming
`JONES DAY
`51 Louisiana Avenue NW
`Washington, DC 20001
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`IPR2018-01316
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that the foregoing Patent Owner Response
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`Brief on Remand were served via email on the date below, upon the following:
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`W. Karl Renner (IPR39521-0053IP2@fr.com)
`Thomas A. Rozylowicz (PTABInbound@fr.com)
`Whitney A. Reichel (wreichel@fr.com)
`riffe@fr.com
`holt2@fr.com
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`August 31, 2022
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`/David B. Cochran/
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`Counsel for Patent Owner
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