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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`
`APPLE, INC.
`Petitioner
`
`v.
`
`UUSI, LLC dba NARTRON
`Patent Owner
`
`____________________
`
`
`Case IPR2019-00358
`Patent No. 5,796,183
`
`____________________
`
`
`PATENT OWNER’S FURTHER BRIEF IN SUPPORT OF
`DISCRETIONARILY DENYING INSTITUTION UNDER
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`
`Case IPR2019-00358
`Patent No. 5,796,183
`
`Patent Owner submits this paper in response to the PTAB’s May 22, 2019
`
`Order allowing three-page briefs addressing the precedential Valve decision.
`
`Valve reaffirmed that the Board, under § 314(a), may consider “any
`
`relationship between [the] petitioners when weighing the General Plastic factors,”
`
`not just strict privity, or whether petitioners are co-defendants in a single suit. See
`
`Valve at 9 (citing NetApp, IPR2017-01195 (Paper 9)). Valve further affirmed that
`
`no single General Plastic factor or relationship type is dispositive. In this Petition,
`
`Valve solidifies Patent Owner’s arguments for denying institution under § 314(a).
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`While Valve’s application in this case still supports non-institution under General
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`Plastic factor one, it further tips factors two through seven firmly to denial.
`
`Factor One: The ’183 Patent is the subject of two patent infringement suits.
`
`The first led Samsung to challenge 30 claims in an IPR, but the Final Written
`
`Decision (FWD) found it failed to show any challenged claim unpatentable. The
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`second suit, filed 6 weeks after the FWD, led Apple to file six new petitions—
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`nearly 12 months later.
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`This factor favors denial here, even though Samsung petitioned first. Valve
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`at 9. Both petitioners share a common desire to see the same claims invalidated.
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`Both petitioners are defendants in co-pending lawsuits having the same procedural
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`posture, i.e., both are stayed pending Samsung’s appeal of its IPR loss. And Apple
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`challenged the same claims as Samsung. (Apple challenged more claims, but that
`
`1
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`
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`Case IPR2019-00358
`Patent No. 5,796,183
`
`is hardly surprising, as it filed six petitions compared to Samsung’s one). Apple
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`and Samsung are similarly situated and, thus, this factor weighs in favor of denial.
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`Factor Two: Despite its assertion to the contrary, one-third of the references
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`used in its Petition were known to Apple years before Samsung was even sued.
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`Another one-third was known from the ’183 patent file history. As in Valve, Apple
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`knew of at least some of the alleged “new” references and should have been aware
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`of at least another one-third “through the exercise of reasonable diligence around
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`the time of [Samsung’s] petition.” Cf. id. at 11. This factor strongly favors denial.
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`Factor Three: Apple learned from the entire Samsung IPR, using it as a
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`roadmap in locating the few references that it was not already aware of, and in
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`cherry-picking claim constructions it agreed with while attempting to distinguish
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`others it did not, as shown in the Preliminary Response. Valve expressly warns
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`against such behavior. Cf. id. at 12-13. This factor plainly favors denial.
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`Factors Four and Five: Apple in 2013 was aware of two of the six
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`references asserted in this Petition (including the main reference)—and quickly
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`became aware of two more prior to the filing of this IPR from the ’183 patent file
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`history. Apple knew or quickly could have known of two-thirds of the relied-upon
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`references but does not provide any credible explanation related to the timing of its
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`Petition. And as the Board has noted, to the extent a reasonable explanation exists
`
`for Petitioner’s delay, it is incumbent upon Petitioner to identify those
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`2
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`
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`Case IPR2019-00358
`Patent No. 5,796,183
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`circumstances. Thus, if five months with an intervening change in the law was
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`excessive in Valve, then surely 12 unexplained months of delay is too much here.
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`See id. at 14; NetApp (denying institution where patent owner sued petitioner more
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`than 1 year after suing third parties who petitioned for IPR and petitioner waited 10
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`months after being sued to petition). This factor favors denial.
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`Factors Six and Seven: Valve is directly on point: “[H]aving multiple
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`petitions challenging the same patent, especially when not filed at or around the
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`same time as in this case, is inefficient and tends to waste resources. Here, Valve
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`waited until after the institution decision in the [related] IPR, and then filed not one
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`but three additional petitions.” Id. at 15. Nearly identical facts apply here—i.e.,
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`serial and repetitive attacks against the same patent, with not one but six additional
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`IPR petitions, all filed after the earlier FWD. As in Valve, “[t]hese serial and
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`repetitive attacks implicate the efficiency concerns underpinning General Plastic,
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`and, thus, favor denying institution.” Id.
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`Following Valve and General Plastic, institution should be denied.
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`Date: June 5, 2019
`
`Respectfully submitted,
`
`Joseph A. Rhoa, Reg. No. 37,515 By: /s/ Lawrence M. Hadley
`Jonathan Roberts, Reg. No. 68,565 Lawrence M. Hadley (Admitted Pro Hac Vice)
`NIXON & VANDERHYE, PC
`GLASER WEIL FINK HOWARD
`901 N. Glebe Rd., Suite 1100
` AVCHEN & SHAPIRO LLP
`Arlington, Virginia 22203
`10250 Constellation Boulevard, 19th Floor
`Telephone: (703) 816-4000
`Los Angeles, California 90067
`Email: jar@nixonvan.com
`Telephone: (310) 553-3000
`Email: jr@nixonvan.com
`Email: LHadley@Glaserweil.com
`
`3
`
`
`
`Case IPR2019-00358
`Patent No. 5,796,183
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on the date
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`indicated below, a complete and entire copy of this submission was provided by
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`email to Petitioner’s counsel via email, as agreed to by Petitioner’s Service
`
`Information in the Petition submission, by serving the email address of record as
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`follows:
`
`W. Karl Renner, Reg. No. 41,265
`Jeremy Monaldo, Reg. No. 58,680
`Daniel D. Smith, Reg. No. 71,278
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 202-783-5070
`Fax: 877-769-7945
`IPR39521-0062IP4@fr.com
`PTABInbound@fr.com
`axf-ptab@fr.com
`monaldo@fr.com
`dsmith@fr.com
`
`
`Date: June 5, 2019
`
`
`
`By: /s/ Jonathan Roberts
`Jonathan Roberts
`Reg. No. 68,565
`NIXON & VANDERHYE, PC
`901 N. Glebe Rd., Suite 1100
`Arlington, Virginia 22203
`Telephone: (703) 816-4000
`Email: jr@nixonvan.com
`
`
`
`
`
`
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