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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 RESPONSIVE 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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`I. APPLE’S NEW ARGUMENTS CANNOT BE SQUARED WITH ITS
`OWN STATEMENTS THAT MAJCHERCZAK IS NOT THE BASIS .......... 1
`II. APPLE’S ARGUMENTS FAIL TO APPLY THE STATUTORY
`TEXT AND THE FEDERAL CIRCUIT’S QUALCOMM DECISION ............ 5
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`i
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`TABLE OF AUTHORITIES
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`IPR2018-01316
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`Page(s)
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`CASES
`Koninklijke Philips N.V. v. Google LLC,
`948 F.3d 1330 (Fed. Cir. 2020) ............................................................................ 3
`Qualcomm Inc. v. Apple Inc.,
`24 F.4th 1367 (Fed. Cir. 2022) ......................................................................... 1, 5
`Yeda Research & Dev. Co. v. Mylan Pharms. Inc.,
`906 F.3d 1031 (Fed. Cir. 2018) ........................................................................ 3, 4
`STATUTES
`35 U.S.C. § 103 ...................................................................................................... 4, 5
`35 U.S.C. § 311 .............................................................................................. 1, 3, 4, 5
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`ii
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`IPR2018-01316
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`Ground 2 is impermissible. As Qualcomm showed, Apple’s repeated
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`statements during this IPR and on appeal, the statutory text of § 311(b), and the
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`Qualcomm decision uniformly establish that Majcherczak (and Matthews where
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`applicable) is not the basis of Ground 2.
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`Recognizing this, Apple now invites the Board to rewrite Ground 2 as the
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`“Majcherczak grounds.” But well-settled precedent prohibits the rewriting of
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`Apple’s grounds. Ground 2 is based on the AAPA, attempting to use the AAPA as
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`combinable art. For this reason alone—not because, as Apple suggests, Qualcomm
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`agrees with the merits of Ground 2, see Paper 29 (“Apple Br.”) at 1—it is improper
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`to resolve Ground 2. The Board should enter judgment upholding the claims.
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`I.
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`APPLE’S NEW ARGUMENTS CANNOT BE SQUARED WITH ITS
`OWN STATEMENTS THAT MAJCHERCZAK IS NOT THE BASIS
`Apple both consistently styled, and substantively argued, Ground 2 as based
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`on AAPA, not Majcherczak. Paper 30 (“QC Br.”) at 4-8. On remand, Apple asks
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`the Board to rewrite Ground 2. The facts and law squarely contradict that request.
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`First, Apple’s repeated reference to Ground 2 as “Majcherczak grounds” is a
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`transparently improper attempt to rewrite its petition. Apple Br. 1, 4, 5, 6, 8, 9, 10.
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`Ground 2’s “Basis” was not Majcherczak; it was “[AAPA] in view of Majcherczak.”
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`Paper 2 (“Pet.”) at 1. Indeed, in whole swaths of arguments, Ground 2 does not
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`mention Majcherczak. For instance, for claims 8 and 17, Apple exclusively invoked
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`AAPA for elements 1, 3, 5, and 6. Id. at 54-55, 57-58, 60-63. Likewise, when using
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`IPR2018-01316
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`its combined figure of “AAPA + Majcherczak POC System” for those elements,
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`Apple pointed solely to components from AAPA, not anything from Majcherczak.
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`E.g., id. at 61 (“green, purple, and brown” components from ’674 Patent Figure 1).
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`To the extent Majcherczak is even mentioned on those pages—and often it is not—
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`it is simply to label that figure and describe it likewise (e.g., “Following is a diagram
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`illustrating the combination of the prior art POC system 10 with Majcherczak ….”).
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`Id. at 60-62. Apple’s new insistence that “Majcherczak is at the heart of the
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`Petition’s relevant obviousness argument for every challenged claim,” that Ground
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`2 is “rooted in” Majcherczak, and that the petition went “further” than the AAPA for
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`“many” or “most” elements “and argue[d]” they “are also present in Majcherczak,”
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`Apple Br. 6-8, is thus demonstrably wrong (as Qualcomm’s opening brief showed).
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`Apple argued based on Majcherczak for a minority of limitations. See Pet. 54-63.
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`Strikingly, without Apple’s AAPA arguments, Apple would have a complete
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`absence of evidence for most limitations. E.g., id. at 54-55, 57-58, 60-63. Likewise
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`for the Board’s analysis, which depended on AAPA. FWD 51-52.
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`While Apple cites a wide range of its petition in an effort to substantiate its
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`assertion that its petition broadly argued Majcherczak and “explain[ed] that many
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`other claim limitations are also present in Majcherczak,” Apple Br. 5-6 (citing Pet.
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`47-76), the petition is clear. It argued Majcherczak for only limited elements; it did
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`not more broadly argue obviousness based on Majcherczak. See supra; QC Br. 4-8.
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`2
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`IPR2018-01316
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`Second, the facts and law likewise preclude Apple’s invitation to rewrite its
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`use of the AAPA. Apple Br. 6-9. Apple now says it used “Qualcomm’s admissions
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`to show what was known to a skilled artisan.” E.g., id. at 6. Not so. Apple used the
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`AAPA as an alleged prior-art patent, see QC Br. 4-8; FWD 22 (“the primary
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`reference”), and it confirmed this on appeal, see QC Br. 5. Now claiming otherwise,
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`Apple merely recites the patent’s statements. Apple Br. 7-9. But there is no dispute
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`about that prose. Instead, the issue is whether Apple improperly used it as § 311(b)
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`art. Ground 2’s styling and substance decisively show that Apple did just that.
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`Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330 (Fed. Cir. 2020), is
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`directly on point. Philips distinguished a ground based on “SMIL 1.0 in light of the
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`general knowledge” (including the Hua reference) from a ground based on “SMIL
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`1.0 in combination with Hua.” Id. at 1334-37. Because the petition raised only the
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`former, “the Board erred by instituting inter partes review based on” the latter. Id.
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`at 1335. The Court emphasized that, even if a non-raised ground might rely on “the
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`[same] arguments and evidence” as the petitioned grounds, it is improper because
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`“the Board does not ‘enjoy[] a license to depart from the petition.’” Id. at 1336
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`(brackets by Philips). Apple attempts precisely what Philips rejected. A ground of
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`Majcherczak alone or in light of general knowledge was never raised in the petition.
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`Yeda Research & Development Co. v. Mylan Pharmaceuticals Inc., 906 F.3d
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`1031 (Fed. Cir. 2018), is also instructive. Yeda made clear that the role of non-
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`3
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`IPR2018-01316
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`§ 311(b) evidence, like the AAPA here, is limited and distinct from § 311(b) art.
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`The Court endorsed the Board’s “recogni[tion] that non-prior art evidence of what
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`was known ‘cannot be applied, independently, as teachings separately combinable’
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`with other prior art, but ‘can be relied on for their proper supporting roles, e.g.,
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`indicating the level of ordinary skill in the art, what certain terms would mean to one
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`with ordinary skill in the art, and how one with ordinary skill in the art would have
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`understood a prior art disclosure.’” Id. at 1041. Here, Apple plainly used the AAPA
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`“independently, as teachings separately combinable” with Majcherczak, not in a
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`supporting role. See, e.g., Pet. 51, 59 (arguing the “[c]ombination of AAPA and
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`Majcherczak” and “the combined teachings of the AAPA and Majcherczak”); Paper
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`16 at 4, 7, 9, 24 (e.g., the “combination of the AAPA and Majcherczak” and the
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`“AAPA/Majcherczak combination”); FWD 51-52 (same).
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`Third, Apple cannot defend Ground 2 by saying Majcherczak teaches the ’674
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`Patent’s purported “novel feature.” Apple Br. 9; see id. at 1-6. In fact, Apple
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`previously argued the opposite. Paper 25 at 6-7 (rejecting the feedback network as
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`“novel”; instead citing the Examiner’s reliance on the transistors’ configuration);
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`Appeal No. 20-1558, Dkt. No. 54 at 9 (calling Majcherczak “exemplary”). In any
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`event, the focus is on the claims as a whole, e.g., Ex. 1001 at 9:48-10:3, not a single
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`claim element. The obviousness inquiry likewise examines the “claimed invention
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`as a whole,” 35 U.S.C. § 103, not only certain features. Section 311(b) is also not
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`4
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`IPR2018-01316
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`directed to “novel features”; it applies to grounds, not novel features.
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`The bottom line is this: Perhaps Apple could have attempted to “root” a
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`ground in Majcherczak and use AAPA in a permissible role. But that is not what
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`Apple did. Apple used AAPA as a purportedly prior-art patent. That was the theory
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`Apple presented in the petition and on appeal, and it is impermissible under § 311(b).
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`II. APPLE’S ARGUMENTS FAIL TO APPLY THE STATUTORY TEXT
`AND THE FEDERAL CIRCUIT’S QUALCOMM DECISION
`As shown, on any reasonable definition, Majcherczak was not “the basis” of
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`Ground 2. QC Br. 5-8. Barely acknowledging § 311(b), Apple never purports to
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`apply the statutory text or even attempts to define “the basis”—the key provision on
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`remand. See Paper 28 at 2; Qualcomm Inc. v. Apple Inc., 24 F.4th 1367, 1377 (Fed.
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`Cir. 2022). As for the Qualcomm decision, Apple quotes it to say “[n]o claim is
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`challenged ‘relying on solely AAPA,’” suggesting that resolves the question on
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`remand. Apple Br. 6. But in noting that IPR grounds cannot “rely[] on solely
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`AAPA,” Qualcomm, 24 F.4th at 1377, the Court was not defining § 311(b) in full.
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`Besides not relying only on AAPA, a petition must “raise[] its § 103 challenge ‘on
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`the basis of prior art consisting of patents or printed publications.’” Id. at 1369.
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`Finally, as already shown, Apple’s arguments based on the Updated Guidance
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`fail to address the narrow question directed for remand here, and also fail to apply
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`the statute, the Qualcomm decision, and their application here—all of which compel
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`the same answer: Majcherczak is not the basis. See QC Br. 9-10.
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`5
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`IPR2018-01316
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`Date: September 28, 2022
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`Respectfully submitted,
`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
`JONES DAY
`51 Louisiana Avenue NW
`Washington, DC 20001
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`6
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that the foregoing Patent Owner’s
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`Responsive Brief on Remand was served via email on the date below, upon the
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`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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`September 28, 2022
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`/David B. Cochran/
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`Counsel for Patent Owner
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