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`———————
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`———————
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`APPLE INC.,
`Petitioner,
`
`v.
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`QUALCOMM INCORPORATED,
`Patent Owner.
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`———————
`
`Case IPR2018-01316
`Patent 8,063,674
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`———————
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`PETITIONER’S OPENING REMAND BRIEF
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`
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`I.
`
`Introduction
`No dispute remains that the AAPA, Majcherczak, and (where applicable)
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`Matthews render claims 8, 9, 12, 13, and 16-22 of the ’674 Patent (the “challenged
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`claims”) obvious. The sole issue on remand is instead “whether Majcherczak
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`forms the basis of Apple’s challenge, or whether the validity challenge
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`impermissibly violated the statutory limit in Section 311.” Qualcomm Inc. v.
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`Apple Inc., 24 F.4th 1367, 1377 (Fed. Cir. 2022).
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`Apple’s challenge is permissibly based on Majcherczak under a
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`straightforward application of the Director’s June 9, 2022, “Updated Guidance on
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`the Treatment of Statements of the Applicant in the Challenged Patent in Inter
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`Partes Reviews Under § 311” (the “Guidance”), as well as the Federal Circuit
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`precedent applied in the Guidance.
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`II. The Majcherczak Grounds Are Permissible
`A. The Petition Relies on Majcherczak for the Alleged Invention
`The ’674 Patent’s Alleged Invention Is an Improvement to a
`“Standard” “Prior Art” Device
`The ’674 Patent generally relates to “power up/down detectors for multiple
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`1.
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`supply voltage devices.” Ex. 1001, 1:6-8; Paper 2 (Pet.), 2-4; Paper 26 (FWD), 4.
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`Its background section states that “[o]ne hardware solution currently in use
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`provides power-up/down detectors to generate a power-on/off-control (POC)
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`1
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`
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`signal internally.” Ex. 1001, 1:55-57.1 The ’674 Patent further states that Figure 1,
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`labeled “PRIOR ART,” illustrates “a standard POC system 10 for multiple supply
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`voltage devices.” Id., 1:58-60; Ex. 1003, ¶60.
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`The ’674 Patent asserts that this “conventional” approach has “problems
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`with leakage and switching times.” Ex. 1001, 2:25-3:11; Ex. 1003, ¶61. It
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`purports to solve these problems by the addition of “one or more feedback circuits
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`coupled to the up/down detector” that “are configured to provide feedback signals
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`to adjust a current capacity of said up/down detector.” Ex. 1001, 3:31-34; see also,
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`e.g., id., 5:29-38 (explaining how the feedback network may “reduce the amount of
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`leakage current”), 6:4-28 (explaining how the feedback network may allow the
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`device to “power[] down more quickly than the existing POC networks”); Ex.
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`1003, ¶61; Pet., 3-4; FWD, 6. Other than the addition of one or more feedback
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`networks, the ’674 Patent does not identify any other differences between the
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`purported invention and the “standard POC system” shown in Figure 1, and the
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`patent does not identify any other claim feature, alone or in combination, as
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`allegedly helping to solve the leakage and switching time problems identified with
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`this prior art. See Ex. 1001; Ex. 1003, ¶60; Pet., 3-4.
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`1 All emphasis herein is added unless otherwise noted.
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`2
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`
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`Indeed, the Petition shows that the “standard POC system” of Figure 1
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`satisfies every limitation of the challenged claims other than (1) those relating to
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`the functionality of the disclosed “feedback network,” and (2) claims 16 and 22,
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`which do not describe any feature of the power up/down detector but instead recite
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`certain devices in which it may be used. Pet., 45-76. In its Patent Owner
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`Response, Qualcomm did not dispute that all these other elements were present in
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`the “prior art” of Figure 1. See generally Paper 12 (POR).2 Further, in the Final
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`Written Decision, the Board found that Apple had carried its burden to show that
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`these elements are present in the prior art system of Fig. 1. FWD, 51-53.
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`Qualcomm did not appeal that determination.
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`Accordingly, the purported invention of the ’674 Patent is the addition of
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`one or more feedback networks to a “conventional” POC system already “known”
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`to a skilled artisan. Ex. 1001, 1:55-60, 3:10-11, Figs. 1, 4; Pet., 3.
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`2.
`
`The Petition Established that Majcherczak Discloses Both
`the Alleged Invention and Other Claim Elements
`The Petition highlights the facts set forth above to establish that the
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`“‘standard’ POC system 10 for multiple supply voltage devices” depicted in Figure
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`1 “was known at the time of the filing of the ’674 Patent.” Pet., 2-4. The Petition
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`2 Qualcomm also did not dispute that Matthews renders the additional limitations
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`of claims 16 and 22 obvious. See POR, 31-32; FWD, 56.
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`3
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`
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`further explains that “the only substantive difference from the perspective of the
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`claims between the prior art POC system 10 described in the AAPA and the
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`purportedly inventive POC network 40 illustrated in Fig. 4 of the ’674 Patent is the
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`inclusion of a feedback network 310.” Pet., 47 (citing Ex. 1001, Figs. 1, 4; Ex.
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`1003, ¶128).
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`To show that this “purported invention” would have been obvious in view of
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`the Majcherczak grounds, the Petition relies on Majcherczak. Pet., 47-76. In
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`particular, the Petition explains that Majcherczak includes a “feedback transistor
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`M6” which “provides similar feedback to the feedback transistor M8 of the ’674
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`Patent’s POC network.” Pet., 50; see also Ex. 1008, ¶0037; Ex. 1003, ¶138. The
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`Petition further explains that “a POSITA would have found it obvious to integrate”
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`this “feedback transistor M6 from Majcherczak’s voltage detector into the POC
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`system 10 of the AAPA.” Pet., 51-53 (citing Ex. 1003, ¶¶139-151).
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`The Petition then demonstrates how Majcherczak’s feedback transistor
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`satisfies the relevant claim language. Pet., 54-73. For example, it explains that
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`“the transistor M8 of the feedback network 310” in Figure 4 of the ’674 Patent is
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`one of the disclosed structures “for performing the function of decreasing a current
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`capacity of a power on/off detector of said POC network in response to said
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`power-on detection,” and Majcherczak’s “feedback transistor M6, when integrated
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`into the prior art POC network 10 of the AAPA” would perform the same function.
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`4
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`Pet., 55-57 (citing Ex. 1003, ¶¶141-143). The Petition likewise relies on
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`Majcherczak’s feedback transistor M6 as satisfying the additional functional
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`limitations of the challenged claims which correspond to the ’674 patent’s
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`disclosed feedback network. E.g., Pet., 54-60, 63-65, 68-72; see also Ex. 1003,
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`¶¶139-151; Ex. 1008, ¶¶0037-0038. The Petition does not rely on Qualcomm’s
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`admissions or a skilled artisan’s general knowledge as providing the claimed
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`invention of incorporating a feedback network into a standard POC system;
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`instead, it relies on Majcherczak. Pet., 47-76. That alone shows that the
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`obviousness challenge presented in the Majcherczak grounds is grounded in
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`Majcherczak.
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`Additionally, while the number of claim limitations identified in
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`Majcherczak is not relevant to whether Majcherczak is the basis of the
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`Majcherczak grounds, see Guidance, 5, the Petition further explains that many
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`other claim limitations are also present in Majcherczak. It shows that Majcherczak
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`“relates to the same multiple supply voltage devices described in the ’674 Patent,”
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`Pet., 47 (citing Ex. 1003, ¶129), and discloses a “voltage detector” that “perform[s]
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`a commensurate function as the ’674 Patent’s POC system/network.” Pet., 48
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`(citing Ex. 1003, ¶130). More specifically, the Petition explains that
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`Majcherczak’s “input stage E1” functions “as a power up/down detector,” Pet., 48-
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`49 (citing Ex. 1003, ¶¶131-132; Ex. 1008, ¶¶0026, 0035-0037), and that inverter
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`5
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`IV of Majcherczak’s output stage functions as “the signal process of the ’674
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`Patent’s POC network,” Pet., 49-50 (citing Ex. 1003, ¶137; Ex. 1008, ¶0037-
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`0038). These disclosures further show that the “prior art” features identified as
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`“standard” and “conventional” by the ’674 Patent, see Ex. 1001, 1:55-60, 3:10-11,
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`Fig. 1, were “known at the time of the filing of the ’674 Patent,” and further
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`support the Petition’s argument that combining Majcherczak with a known POC
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`systems would have been obvious. E.g., Pet., 2-4, 47-53; Ex. 1003, ¶60.
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`In sum, the obviousness argument presented in the Majcherczak grounds
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`relies on Majcherczak both to show that the purported invention would have been
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`obvious and as evidence that many other claim limitations were known to those of
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`skill in the art prior to the ’674 Patent. Pet., 2-4, 47-76. The Majcherczak grounds
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`are thus plainly based on Majcherczak. See id.
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`B.
`
`The Petition’s Reliance on Qualcomm’s Admissions Is Proper
`Under Section 311
`The Petition’s use of Qualcomm’s admissions to show what was known to a
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`skilled artisan before the alleged invention falls squarely within permissible use of
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`AAPA under the Guidance and relevant Federal Circuit precedent. As detailed
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`above, Majcherczak is at the heart of the Petition’s relevant obviousness argument
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`for every challenged claim. Pet., 2-4, 47-76. No claim is challenged “relying on
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`solely AAPA without also relying on a prior art patent or printed publication.”
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`Qualcomm, 24 F.4th at 1377. Rather, Qualcomm’s admissions are used to
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`6
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`establish “what a skilled artisan would have known at the time of the invention.”
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`Id. at 1376; see also; Pet., 3, 45-47 (“[T]he ’674 Patent acknowledges that a
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`“standard” POC system 10 for multiple supply voltage devices was known at the
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`time of the filing of the ’674 Patent . . . . This known POC system 10 is labeled as
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`“PRIOR ART” in Fig. 1 . . . .”). Both the Federal Circuit’s decision and the
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`Guidance explicitly permit such use. Guidance, 3 (“Admissions are ‘permissible
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`evidence in an inter partes review for establishing the background knowledge
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`possessed by a person of ordinary skill in the art.’” (quoting Qualcomm, 24 F.4th at
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`1376)).
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`Indeed, as the Guidance recognizes, “a properly conducted § 103 inquiry
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`‘necessarily depends’ on the knowledge possessed by the ordinarily-skilled
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`artisan”; thus, “such knowledge must be considered in an IPR, notwithstanding the
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`provisions of § 311(b).” Guidance, 3 (quoting Koninklijke Philips v. Google, LLC,
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`948 F.3d 1330, 1337-39 (Fed. Cir. 2020)). Admissions may be used to “supply
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`missing claim limitations that were generally known in the art prior to the
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`invention.” Guidance, 4; Qualcomm, 24 F.4th at 1376. Thus, the Petition’s focus
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`on Qualcomm’s admissions for claim elements described in the ’674 Patent as
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`“conventional,” Ex. 1001, 1:55-3:11, would be proper even if those elements were
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`missing from Majcherczak. Guidance, 4; Pet., 47-76. That the Petition goes even
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`further here and argues that many of those elements are also present in
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`7
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`Majcherczak makes it even more clear that the obviousness challenge of the
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`Majcherczak grounds is fundamentally rooted in Majcherczak. See Pet., 47-51.
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`Although the Petition in this IPR shows that most claim elements are present
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`in both the admitted prior art and Majcherczak, see Pet., 47-76, “the number of
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`claim limitations or claim elements the admission supplies” is not a basis to
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`“exclude the use of admissions” in any event. Guidance, 5 (citing Qualcomm, 24
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`F.4th at 1376). After all, there is no basis for treating admissions any differently
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`than other sources of proof of a skilled artisan’s knowledge, such as expert
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`testimony, background references, and so on. See, e.g., Koninklijke Philips, 948
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`F.3d at 1337; Dow Jones & Co. v. Ablaise Ltd., 606 F.3d 1338, 1349-50 (Fed. Cir.
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`2010). Further, as the Guidance explains, “the order in which the petition presents
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`the obviousness combination (e.g., prior art modified by admission or admission
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`modified by prior art)” is not relevant. Guidance, 5; see also In re Mouttet, 686
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`F.3d 1322, 1333 (Fed. Cir. 2012) (“[W]here the relevant factual inquiries
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`underlying an obviousness determination are otherwise clear, characterization by
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`the examiner of prior art as ‘primary’ and ‘secondary’ is merely a matter of
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`presentation with no legal significance.”).
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`At bottom, the Petition identifies Qualcomm’s admissions and asserts that
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`the ’674 Patent’s description of certain “prior art” as “standard,” “conventional,”
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`and “already in use,” means that those elements, alone and in combination, were
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`8
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`within a skilled artisan’s knowledge. Pet., 2-4, 45-47; Ex. 1001, 1:55-3:11, Fig. 1.
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`The Petition further combines Qualcomm’s admissions regarding a skilled artisan’s
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`knowledge with Majcherczak for every challenged claim, showing that
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`Majcherczak discloses every allegedly-novel feature recited in the challenged
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`claims, as well as many other claim elements. Pet., 47-76. Qualcomm could have
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`“dispute[d] the significance or meaning of” the alleged admissions, “including
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`disputing whether [they] constitute admissions or evidence of the background
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`knowledge possessed by a person of ordinary skill in the art,” Guidance, 4-5, but it
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`chose not to do so. See POR, 18-32. This case is thus one where “the petition
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`relies on admissions in the specification in combination with reliance on at least
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`one prior art patent or printed publication” and “those admissions do not form ‘the
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`basis’ of the ground and must be considered by the Board in its patentability
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`analysis.” Guidance, 4 (citing Qualcomm, 24 F.4th at 1377); MED-EL
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`Elektromedizinische Geräte Ges.m.b.H. v. Advanced Bionics AG, IPR2020-01016,
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`Paper 44 at 3-4 (PTAB Aug. 22, 2022) (decision on Director review). The Board
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`should therefore find that the Majcherczak grounds are permissible and reaffirm
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`that they render all challenged claims obvious under § 103. Id.; see also FWD, 22-
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`56.
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`9
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`III. Conclusion
`The Board should find that the Majcherczak grounds are based on
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`Majcherczak and therefore permissible under § 311 and cancel the challenged
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`claims as unpatentable.
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`Date:
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`August 31, 2022
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`Respectfully submitted,
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`
`
`/W. Karl Renner/
`
`W. Karl Renner, Reg. No. 41,265
`Thomas A. Rozylowicz, Reg. No. 50,620
`Timothy W. Riffe, Reg. No. 43,881
`David L. Holt, Reg. No. 65,161
`Whitney A. Reichel, Reg. No. 59,173
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`Attorneys for Petitioner
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`10
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e), the undersigned certifies that on August 31,
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`2022, a complete and entire copy of this Petitioner’s Opening Remand Brief was
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`provided via email to the Patent Owner by serving the email correspondence
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`address of record as follows:
`
`Joseph M. Sauer
`David B. Cochran
`Joshua R. Nightingale
`Matthew W. Johnson
`David M. Maiorana
`Jones Day
`901 Lakeside Avenue
`Cleveland, OH 44114
`
`Email: jmsauer@jonesday.com
`dcochran@jonesday.com
`jrnightingale@jonesday.com
`mwjohnson@jonesday.com
`dmaiorana@jonesday.com
`
`/Crena Pacheco/
`Crena Pacheco
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`(617) 956-5938
`
`