UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`QUALCOMM INCORPORATED,
`Patent Owner.
`
`———————
`
`Case IPR2018-01316
`Patent 8,063,674
`
`———————
`
`
`PETITIONER’S RESPONSIVE BRIEF ON REMAND
`
`
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`QUALCOMM INCORPORATED,
`Patent Owner.
`
`———————
`
`Case IPR2018-01316
`Patent 8,063,674
`
`———————
`
`
`PETITIONER’S RESPONSIVE BRIEF ON REMAND
`
`
`
`I.
`
`Introduction
`Apple’s petitions showed that Majcherczak discloses the alleged invention
`
`while relying on AAPA to establish a skilled artisan’s knowledge. Majcherczak is
`
`therefore the basis of the Majcherczak grounds under Federal Circuit precedent,
`
`the Guidance, and even under Qualcomm’s own statutory interpretation.
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`Qualcomm’s arguments against this straightforward conclusion elevate form over
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`substance, contradicting the Federal Circuit’s remand and the Guidance.
`
`II. Qualcomm’s Arguments Are Without Merit
`A. The Federal Circuit’s Decision and the Guidance Refute
`Qualcomm’s Arguments
`Qualcomm devotes much of its brief to suggesting that the Majcherczak
`
`grounds are not based on Majcherczak because of how Apple “styled” them. E.g.,
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`Paper 30, 1, 4, 6. However, Qualcomm cites no precedent holding that how Apple
`
`styled its grounds is relevant, and its argument cannot be reconciled with the
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`Guidance, which explicitly states that “Board panels should not exclude the use of
`
`admissions based on . . . the order in which the petition presents the obviousness
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`combination (e.g., prior art modified by admission or admission modified by prior
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`art).” Guidance, 5. Moreover, if the §311(b) inquiry turned on how Apple’s
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`petitions are “styled,” the Federal Circuit would have had no reason to remand.
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`Similarly, Qualcomm suggests that Apple somehow disavowed its reliance
`
`on Majcherczak by referring to its grounds as “AAPA grounds.” Paper 30, 1, 3-5.
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`1
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`
`
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`Again, the Federal Circuit implicitly disagreed, or a remand would have been
`
`unnecessary. See Qualcomm Inc. v. Apple Inc., 24 F.4th 1367, 1377 (Fed. Cir.
`
`2022). Further, while the Federal Circuit did not adopt Apple’s argument that
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`AAPA constitutes “prior art consisting of patents and printed publications,” id. at
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`1375, Apple has also consistently argued that its use of the AAPA was permissible
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`evidence of “a POSITA’s general knowledge” regardless, Appeal Nos. 20-1558, -
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`1559, Dkt. No. 54 at 49-52, an approach both the Federal Circuit and Guidance
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`explicitly permit. Qualcomm, 24 F.4th at 1376; Guidance, 3-5.
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`Qualcomm also implies that Majcherczak is not the basis for the
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`Majcherczak grounds because “Apple relied on the alleged AAPA system for
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`almost every claim element.” Paper 30, 6. This argument is both factually and
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`legally flawed. Factually, Qualcomm’s argument is significantly overstated.
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`Apple’s petition argues that both Majcherczak and the “standard” AAPA system
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`disclose most elements of the challenged claims. Paper 2 (Pet.), 47-76. Further,
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`Apple relies on Majcherczak alone for several limitations. See id., 54-60, 63-65,
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`68-72. Legally, Qualcomm’s argument directly contradicts the Guidance, which
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`requires that “Board panels should not exclude the use of admissions based on the
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`number of claim limitations or claim elements the admission supplies.” Guidance,
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`5.
`
`Qualcomm appears to recognize that the Guidance forecloses its argument,
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`2
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`
`
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`suggesting that a literal interpretation of the Guidance would “contradict the
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`statute.” Paper 30, 9. However, Qualcomm’s only argument for such an alleged
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`contradiction has been repeatedly rejected by the Federal Circuit. Specifically,
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`Qualcomm argues that “a challenge that rests on AAPA in addition to other
`
`references cannot be said to rest ‘only on the basis of prior art consisting of patents
`
`or printed publications.’” Id. (quoting 35 U.S.C. §311(b)) (original emphasis).
`
`The Federal Circuit, however, has specifically rejected the argument that the
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`phrase “only on the basis” precludes consideration of other evidence of a skilled
`
`artisan’s knowledge. Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330,
`
`1337 (Fed. Cir. 2020) (“Although the prior art that can be considered in inter partes
`
`reviews is limited to patents and printed publications, it does not follow that we
`
`ignore the skilled artisan’s knowledge when determining whether it would have
`
`been obvious to modify the prior art.”). Further, the Federal Circuit’s decision in
`
`this case reaffirmed that, although “party admissions are not themselves prior art
`
`references, they are permissible evidence in an inter partes review for establishing”
`
`a skilled artisan’s “background knowledge.” Qualcomm, 24 F. 4th at 1376. The
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`Board should therefore decline Qualcomm’s invitation to depart from the
`
`Guidance.
`
`B.
`
`The Majcherczak Grounds Are Based on Majcherczak Under
`Even Qualcomm’s Statutory Interpretation
`Even if precedent and the Guidance did not foreclose Qualcomm’s
`
`3
`
`
`
`
`argument, Majcherczak is the “basis” of the Majcherczak grounds under even
`
`Qualcomm’s own interpretation.
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`Qualcomm argues that “the ‘basis’ of a thing is something fundamental to it,
`
`or on which the thing rests.” Paper 32, 5-7. Apple’s petition relies on (i.e., rests
`
`on) Majcherczak for every single challenged claim. Pet., 47-76. Although the
`
`petition, for ease of illustration, focuses on Qualcomm’s admissions for many well-
`
`known claim elements, it further argues that Majcherczak also discloses many of
`
`those elements, Pet. 47-53, and specifically relies on Majcherczak alone as
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`disclosing every allegedly inventive element. Pet., 2-4, 54-60, 63-65, 68-72.
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`Apple’s obviousness theory for the Majcherczak grounds is that the alleged
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`improvement over “standard” systems “currently in use” and therefore “known” to
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`those of skill in the art was the addition of one or more feedback networks, and that
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`this addition would have been obvious given Majcherczak’s teachings. Pet., 2-4,
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`47-76; Ex. 1001, 1:55-3:11. It defies credibility to suggest that this theory does not
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`rest on Majcherczak, or that Majcherczak is not “fundamental” to it.
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`Aside from its erroneous reliance on the number of claim limitations Apple
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`identified in the AAPA, Qualcomm’s only argument for why the Majcherczak
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`grounds do not meet its own definition of “basis” is that Apple described its
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`combination in terms of a skilled artisan modifying “standard” and “conventional”
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`systems in view of Majcherczak. Paper 30, 7.
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`4
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`
`
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`In this regard, however, Apple’s obviousness theory simply tracks the
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`alleged invention. The ’674 patent itself starts with “standard,” “conventional”
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`POC systems “currently in use,” Ex. 1001, 1:55-3:11, and then describes the
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`alleged invention as a modification of those systems to solve alleged “problems
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`with leakage and switching times,” id. 2:25-3:11, 3:31-34, 5:29-38, 6:4-28; Pet. 6-
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`7; Ex. 1003, ¶61. It is unsurprising that a skilled artisan would have started with
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`these same “standard” systems in considering how Majcherczak could be used to
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`improve them. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“[I]f a
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`technique has been used to improve one device, and a person of ordinary skill in
`
`the art would recognize that it would improve similar devices in the same way,
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`using the technique is obvious unless its actual application is beyond his or her
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`skill.”). This approach does not make the reference teaching the alleged
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`improvement any less “fundamental” to the obviousness ground being presented.
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`The Board should thus find Majcherczak to be the basis of the Majcherczak
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`grounds under even Qualcomm’s interpretation of §311(b).
`
`III. Conclusion
`The Board should find that the Majcherczak grounds are based on
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`Majcherczak and reaffirm that the challenged claims are unpatentable.
`
`
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`
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`5
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`
`
`
`Date:
`
`September 28, 2022
`
`
`
`Respectfully submitted,
`
`/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
`
`Attorneys for Petitioner
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`
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e), the undersigned certifies that on September
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`28, 2022, a complete and entire copy of this Petitioner’s Responsive Brief on
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`Remand was provided via email to the Patent Owner by serving the email
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`correspondence address of record as follows:
`
`Joseph M. Sauer
`David B. Cochran
`Joshua R. Nightingale
`Matthew W. Johnson
`David M. Maiorana
`Jennifer L. Swize
`JONES DAY
`901 Lakeside Avenue
`Cleveland, OH 44114
`
`Email: jmsauer@jonesday.com
`dcochran@jonesday.com
`jrnightingale@jonesday.com
`mwjohnson@jonesday.com
`dmaiorana@jonesday.com
`jswize@jonesday.com
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`/Crena Pacheco/
`Crena Pacheco
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`(617) 956-5938
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