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`Paper No. 8
`Filed: May 6, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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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
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`v.
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`UUSI, LLC dba NARTRON
`Patent Owner
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`____________________
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`Case IPR2019-00359
`Patent No. 5,796,183
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`____________________
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`Case IPR2019-00359
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`Page
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`TABLE OF CONTENTS
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`I.
`INTRODUCTION ........................................................................................... 1 
`II. BACKGROUND ............................................................................................. 3 
`A.
`The Invention of the ’183 Patent ........................................................... 3 
`B.
`The Asserted Prior Art References........................................................ 7 
`1.
`Chiu ............................................................................................. 8 
`2.
`Schwarzbach ............................................................................. 12 
`3. Meadows ................................................................................... 13 
`4.
`Ingraham ’548 ........................................................................... 13 
`5.
`Tucker ....................................................................................... 15 
`6.
`Lawson ...................................................................................... 15 
`III. THE BOARD SHOULD EXERCISE ITS DISCRETION TO DENY
`THE PETITION BASED ON SAMSUNG’S RECENT,
`UNSUCCESSFUL IPR CHALLENGING THE SAME CLAIMS .............. 16 
`IV. PETITIONER’S PROPOSED CLAIM CONSTRUCTION SHOULD
`NOT BE ADOPTED ..................................................................................... 24 
`A.
`Claim Construction Standard .............................................................. 24 
`B. Apple’s Proposed Construction of “providing signal output
`frequencies” Is Legally Wrong and Conflicts with the Board’s
`Prior Decision ...................................................................................... 25 
`THE PETITION SHOULD NOT BE INSTITUTED ON ANY
`GROUND ...................................................................................................... 30 
`A.
`[All Grounds]—None of the Asserted References Discloses a
`“Microcontroller” that “Selectively” Provides “Signal Output
`Frequencies” as Required in Each Challenged Claim ........................ 30 
`[All Grounds]—Neither Chiu nor Schwarzbach Discloses an
`Oscillator Providing an Output Signal Having a “Predefined
`Frequency” that Is Used to Activate Touch Terminals in an
`Array .................................................................................................... 34 
`[All Grounds]—A POSITA Would Not Have Been Motivated
`to Combine Chiu with Schwarzbach’s Oscillator or Have
`Reasonably Expected the Combination to Work ................................ 35 
`[Ground 1B]—Claims 86-88 Are Not Obvious Over Chiu and
`Schwarzbach Combined with Meadows ............................................. 36 
`[Ground 1C]—Claim 91 Is Not Obvious Over Chiu and
`Schwarzbach Combined with Ingraham ’548 ..................................... 39 
`[Ground 1D]—Claims 28 and 92 Are Not Obvious Over Chiu
`and Schwarzbach Combined with Tucker ........................................... 40 
`[Ground 1E]—Claims 32, 36, and 93 Are Not Obvious Over
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`V.
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`B.
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`C.
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`D.
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`E.
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`F.
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`G.
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`Chiu and Schwarzbach Combined with Lawson ................................ 40 
`VI. CONCLUSION .............................................................................................. 40 
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`Case IPR2019-00359
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`EXHIBITS
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`Declaration of Lawrence M. Hadley in support of patent
`owner’s motion for pro hac vice admission
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`Declaration of Dr. Darran Cairns in support of patent owner
`preliminary response
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`iii
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`UUSI-2001
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`UUSI-2002
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`I.
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`INTRODUCTION
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`U.S. Patent No. 5,796,183 (“’183 Patent”) addresses the problem of
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`unintended actuation in densely-spaced, capacitive responsive electronic switching
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`circuit arrays on touch-operated devices. Ex 1001, 3:64-4:3. This is Apple’s fifth
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`of six separate petitions for Inter Partes Review (“IPR”) challenging the ’183
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`patent on obviousness grounds. In this IPR, Apple challenges two independent
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`claims (27 and 83) and a number dependent claims on five grounds: (i) Chiu in
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`combination with Schwarzbach (claims 27, 83-85, and 90); (ii) Chiu and
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`Schwarzbach in combination with Meadows (claims 86-88); (iii) Chiu and
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`Schwarzbach in combination with Ingraham ’548 (claim 91); (iv) Chiu and
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`Schwarzbach in combination with Tucker (claims 28 and 92); and, (v) Chiu and
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`Schwarzbach in combination with Lawson (claims 32, 36, and 93).
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`The ’183 Patent has been reexamined twice. More recently, all of the
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`challenged claims were the subject of a recently-concluded IPR in which the
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`Board, after institution, found insufficient evidence to support Petitioner
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`Samsung’s obviousness grounds.1
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`This new IPR challenge, filed on the heels of the last, should not be
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`instituted. Apple never tries to explain why it needed to file six follow-on IPR
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`1 The Board denied institution as to claims 37-39.
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`petitions with grounds of rejection that overlap both one another and those
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`presented in the Samsung IPR. Nor does Apple satisfactorily account for its delay
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`in launching these six new IPRs. These failures become yet more egregious in the
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`context of this IPR where, of the six references relied upon, two were known to
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`Apple for years and two more were cited during original prosecution of the ’183
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`Patent. For these reasons alone, the Board should exercise its discretion to not
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`institute this successive Petition. But even aside from Apple’s duplicative
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`challenges, the IPR should not be instituted because Apple fails to show that the
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`asserted references contain all limitations of the challenged claims, and fails to
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`show that a skilled artisan would have combined the references to make the
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`challenged claims of the ’183 patent.
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`First, Apple proposes a construction of one phrase used in each challenged
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`claim—“providing signal output frequencies”—that is legally wrong and conflicts
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`with how the Board used the phrase in the prior Samsung IPR. Under the legally
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`correct construction—the same construction already used by the Board in the
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`Samsung IPR—none of the asserted references in the proposed combinations
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`contains the limitation in which the phrase appears.
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`Second, Apple’s contention that both Chiu and Schwarzbach disclose an
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`“oscillator” providing an output signal with a “predefined frequency” that activates
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`touch terminals in an array, as required in all challenged claims, lacks support in
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`the references. Chiu does not disclose an oscillator, much less an oscillator that
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`provides a predefined frequency. While Schwarzbach discloses an oscillator as
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`part of a microprocessor, the signals generated are used to communicate
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`instructions, not to activate touch circuits in an array.
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`Third, Apple offers no evidence-based rationale for combining Chiu with
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`either Schwarzbach or Meadows (or both). A person skilled in the art would not
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`have been motivated to use Schwarzbach’s high-frequency oscillator in Chiu’s
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`touch circuit or reasonably expected it to work in distinguishing touches on the
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`touch pad from inadvertent activation, and neither Apple nor its expert offers any
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`explanation as to how it would work.
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`Fourth, Apple offers no motivation for using Meadows’ technique for
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`operating in the presence of noise and minimizing the effect of ambient noise
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`within Chiu’s circuit. Even if a motivation existed, Apple never addresses how the
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`Meadows random frequency adjustment solution would work with Chiu’s scan
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`pulse circuit in detecting touches and avoiding inadvertent activation.
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`Institution should be denied.
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`II. BACKGROUND
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`A. The Invention of the ’183 Patent
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`The ’183 patent addresses the problem of unintended actuation of small
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`touch switches used in capacitive responsive electronic switching circuit arrays on
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`touch-operated devices—providing the foundation upon which today’s touch
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`screen technology is built. Ex. 2002, ¶ 15. Capacitive response electronic
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`switching circuits, in contrast to manual electronic switches, can be used in “zero
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`force” touch switches. These switches have no moving parts and do not require
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`direct contact to switch loads. Ex. 1001 (2:39-41). “Rather, these switches operate
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`by detecting the operator’s touch and then use solid state electronics to switch the
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`loads or activate mechanical relays or triacs to switch even larger loads.” Id.
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`(2:41-44). Zero force touch switches used in touchpad arrays make use of a human
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`operator’s capacitance by detecting the change in capacitive coupling between a
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`touch terminal and ground caused by the operator’s touch. Id. (3:44-46, 53-56).
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`With capacitive response circuits, a human operator need not come into conductive
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`contact with the touch terminal, but instead can activate the switch when in close
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`proximity. Id. (3:57-59).
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`While allowing for actuation without actual touch, capacitive response
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`circuits are susceptible to unintended actuation from environmental conditions and
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`surface contamination. Id. (4:18-24). In solving the problem of unintended
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`actuation in capacitive touch circuit arrays, the ’183 Patent teaches using an
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`oscillator providing a periodic output signal, a microcontroller that selectively
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`provides signal output frequencies to small sized input touch terminals, and a
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`detector circuit that responds to signals from the oscillator via the microcontroller
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`and the presence of an operator’s capacitance to ground. Id. (Abstract, 6:60-7:5).
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`The inventors also determined that operating the output signals at “a higher
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`frequency than prior art touch sensing circuits” would mitigate unintended
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`actuation. Id. (8:9-14); Ex. 2002, 19-23.
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`The unintended actuation problem is particularly acute in dense arrays of
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`touch circuits as illustrated in Figure 11:
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`Ex. 1001 (Fig. 11). Prior to the ’183 patent, solutions for preventing unintended
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`touch pad actuation in dense arrays included placing guard rings about each touch
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`pad and adjusting detection sensitivity of the threshold voltage such that the
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`operator’s finger had “to entirely overlap a touch terminal and come into contact
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`with its dielectric facing plate before actuation occurs.” Id. (4:1-14).
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`The inventors took a different approach. By analyzing the impedance of
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`contaminants, the inventors concluded that most unintended actuation could be
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`avoided by setting the oscillator frequency at 50 kHz and preferably at 800 kHz or
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`higher. Id. (8:9-14, 11:4-11). More specifically, as described in the specification,
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`the inventors conducted extensive testing to determine the required frequency
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`ranges. For example, with reference to Figure 3A, the ’183 Patent describes tests
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`designed to find the ideal frequency ranges that, for a particular surface and array,
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`would provide a substantial enough “impedance difference between the paths to
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`ground of the touched pad 57 and adjacent pads 59.” Id. (11:1-9) (“This . . .
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`result[s] in a much lower incidence of inadvertent actuation of adjacent touch pads
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`to that of the touched pad.”); id. (11:19-25, 17:11-67) (describing tests to reduce
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`crosstalk and resistance due to contaminants); id. (Fig. 9) (showing signal to noise
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`ratio versus body capacitance); Ex. 2002, ¶¶ 25-29.
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`In addition to the use of high oscillator frequencies, the ’183 patent discloses
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`“a floating common and supply that follow the oscillator signal to power the
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`detection circuit.” Id. (6:1-22, 18:66-19:6). The floating common provides a
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`reference that is 5V away from the high-frequency oscillator output signal,
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`enabling the system to compare the signals that are only 5V apart. This 5V
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`differential minimizes noise that otherwise would be generated due to the presence
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`of contaminants on the touch pad. Id. (4:18-20, 5:48-53, 16:12-24); Ex. 2002, ¶
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`25.
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`In Figure 11’s array, the frequencies selected through the front-end testing
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`are supplied to each row. The microcontroller activates each row of the touch
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`circuits by selectively providing a signal from the oscillator to individual rows of
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`the touch circuit. “In this manner, microcontroller 500 can sequentially activate
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`the touch circuit rows and associate the received inputs from the columns of the
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`array with the activated touch circuit(s).” Id. (18:43-49). Supplying high
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`frequencies in this manner substantially reduces unintended actuation (crosstalk)
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`without requiring “any physical structure to isolate the touch terminals” and
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`allowing the terminals to be more closely spaced together. Id. (18:66-19:6).
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`B.
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`The Asserted Prior Art References
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`In each alleged obviousness combination, Apple argues that a person skilled
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`in the art would have used in Chiu the particular supply voltage and battery from
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`Schwarzbach. In further grounds of alleged unpatentability, Apple argues that a
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`person skilled in the art would have substituted other functionality, components,
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`and/or operational approaches from Meadows, Ingraham ’548, Tucker, or Lawson
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`into the alleged Chiu-Schwarzbach combination to arrive at the challenged ’183
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`Patent claims.
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`1.
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`Chiu
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`Chiu relates to a capacitive switch arrangement useful as a control panel for
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`devices requiring control inputs from human users, such as major home appliances,
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`where the switch cells can be relatively closely spaced. Ex. 1005 (1:65-2:2). Chiu
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`explains that when a large number of touch pads are desired in a relatively small
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`panel area, the minimum electrode and touch pad areas required to provide the
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`minimum capacitance needed to detect human touch operations presents a design
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`limitation for then-conventional capacitive attenuator type switch cells. Id. (6:3-8).
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`In the then-conventional techniques upon which Chiu seeks to improve, the
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`receiver and transmitter electrodes must share the touch pad, so the touch pad area
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`required to provide the minimum capacitance for each of the series capacitances CT
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`and CR (i.e., the capacitance between the touch pad 16/16’ and the transmitter
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`electrode 20/20’, and the capacitance between the touch pad 16/16’ and the
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`receiver electrode 22/22’, respectively) must be more than twice that required for
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`the transmitting or receiving electrode alone. Id. (6:9-14).
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`Chiu purportedly is able to reduce the touch pad size by more than 50%
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`without sacrificing coupling capacitance and while also eliminating problems
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`presented by the cross-coupling capacitance between transmitter and receiver
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`electrodes, by removing the transmitter electrode from a substrate and replacing it
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`with a discrete capacitor separate from the touch pad and the receiver electrode.
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`This arrangement allows the touch pad area to be reduced to the area of the
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`receiver electrode alone without reducing the capacitance of the resulting receiver
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`capacitance. Id. (6:15-30). Figures 5A-5B schematically illustrate the outer face
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`of a dielectric substrate 44 according to this arrangement.
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`Each touch pad 42 has an associated conductive path 56, extending
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`substantially parallel to the horizontal rows of touch pads to an associated terminal
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`point 60. Separate discrete capacitors 52 are provided such that one is associated
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`with each touch pad. On the opposite side of the substrate 44, receiver electrodes/
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`pads 48 are provided, with one for each touch pad. Each of the receiver electrodes
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`is placed in an area overlying and bounded by the area of its associated touch pad
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`42. The receiver electrodes 48 in each column are serially connected by a
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`conductive path 49, with each column of receiver electrodes being coupled to the
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`signal detection circuitry 58. Id. (7:1-35).
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`To help prevent erroneous operation that might result from touching
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`multiple conductive paths, a second plurality of conductive paths 70 are formed on
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`the outer surface of the substrate 44 so that respective first and second paths are
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`closely adjacent to one another, e.g., such that a human touch to one path
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`ordinarily would involve touch to the other in the pair. Each of the paths 70 is
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`connected to a terminal point 72, which is electrically connected through the
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`substrate to terminal points 71. The terminal points 71, in turn, are connected to a
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`capacitor network 74 via conductive runs 73, and paths 70 thus can function as a
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`“pseudo-touch pad.” Id. (7:36-67). Detection circuitry 58 ensures that detection of
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`an attenuated signal at output terminal 84 of capacitor network 74 takes priority
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`over any other input. And because the relative positioning of conductive paths 56
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`and 70 is such that touching of one of runs 56 ordinarily would be accompanied by
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`the touching of one of the runs 70 as well, the control system does not respond to
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`inadvertent touching of any other panel except the touch pads. Id. (8:16-22); Ex.
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`2002, ¶ 33.
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`Figure 6A shows Chiu’s control circuit:
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`Microprocessor 90 sequentially generates a scan pulse for the rows shown in
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`Figures 5A-5B and a separate test signal is generated simultaneously with each
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`scan pulse for the capacitive network to address the erroneous signal detection
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`issue discussed above. Id. (8:45-55). Signal detection circuitry 58 senses the scan
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`signal coupled by each of the touch cells in the row being scanned to their
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`respective output lines 49 to detect an attenuation of the column output line signal,
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`signifying a touch. Id. (8:63– 9:6).
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`2.
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`Schwarzbach
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`Schwarzbach discloses an improved appliance control system for providing
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`communication between a central control unit and remote slave units over common
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`power lines such as a building’s power supply. Ex. 1014 (1:7-13, 2:3-6). The
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`appliance control system includes a central control unit and a number of slave units
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`each including a user-programmable microprocessor. Appliances and light fixtures
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`are plugged into a respective slave unit, which is plugged into outlet sockets of a
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`power main in a building. This permits manual or automatic transmission of
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`command signals and status request signals from the central control unit to
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`individually addressed slave units, and transmission of status signals from the slave
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`units to the central control unit. Id. (Abstract).
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`The central control unit includes a display panel, which is coupled to a
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`microprocessor, and a keyboard. Id. (4:28-29, 4:50-51). The keyboard is
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`connected as a 3×8 matrix, with its row pins 1 through 8 connected to
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`corresponding microprocessor output terminals. Key depresses are detected by
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`driving output terminals and scanning for closed keys. Specifically, the
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`microprocessor sequentially drives its output terminals to a high level for a set
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`interval. All keyboard pins are scanned once during each cycle of AC line voltage
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`for simultaneously driving the keyboard rows and the displaying the panel
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`character terminals. During the time that a keyboard row pin is held high, the
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`microprocessor looks at its input wires to determine whether a key is closed.
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`When the key closure is detected, the microprocessor takes the appropriate action
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`after the end of that keyboard scan. Id. (4:55 to 5:1).
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`3. Meadows
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`Meadows discloses a capacitive touch panel system of the type used with a
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`pen or stylus. Ex. 1013 (1:12-15). The Meadows patent addresses electromagnetic
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`interference caused by the conductive coating on the faceplate and the touch panel
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`system, which generates electromagnetic noise that can make it difficult to
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`determine a touch location. Id. (1:51-63). As disclosed, Meadows reduces
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`susceptibility to electromagnetic noise by using a “lock-in type” signal
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`demodulator and low-pass filter. Id. (2:61-68). The signal demodulator, in
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`response to a pseudo-random number signal, employs a random frequency
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`measurement signal with a frequency between 150 kHz and 250 kHz as reference
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`for demodulating the positive and negative differential output signal. Id. (2:61-64,
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`4:28-32). This signal is fed into the low pass filter, which provides from the
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`demodulated signal a substantially steady-state address signal that corresponds to
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`an average of the magnitude of the current drawn through a bar electrode. Id.
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`(2:64-68).
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`4.
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`Ingraham ’548
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`Apple’s six petitions for IPR cite three patents granted in the name of
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`Ingraham: U.S. Patent Nos. 4,731,548 (Ex. 1016); 4,758,735 (Ex. 1017); and
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`5,087,825 (Ex. 1025). Each of these three Ingraham patents was invented by a
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`Nartron engineer and considered during prosecution of the ’183 Patent. The latter
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`two Ingraham patents—namely, Ingraham ’735 and Ingraham ’825 (Ex. 1017 and
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`1025, respectively)—are extensively discussed in the ’183 Patent. Ex. 1001 (3:44-
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`50; 4:3-8; 5:43-50; 6:6-16; 8:11-18; 18:1-10). And both Ingraham ’548 and
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`Ingraham ’825 were cited in and relied upon in the Samsung IPR.
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`Like the later Ingraham patents, Ingraham ’548—the earliest of these three
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`Ingraham patents, and the particular Ingraham relied upon in Apple’s Petition—
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`discloses a touch control switch circuit. Ex. 1016 (Abstract). Ingraham ’548 in
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`particular improves reliability of touch-controlled switching circuits since it does
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`not rely upon induced voltage for its operation. Rather, the body capacitance of
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`the person actuating the switch is coupled in a voltage dividing circuit used to
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`provide a logic output signal for controlling a DC trigger level applied to a triac or
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`other bilateral solid-state switch coupled between the line voltage source and a
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`load to be controlled. By utilizing a direct current control signal for the solid-state
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`switch, the switch is rendered conductive near the beginning of each half-cycle of
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`operation and remains conductive during each half-cycle of each cycle of
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`operation. Thus, through a DC gate signal, inductive loads such as fluorescent
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`lights and motors, may be controlled. Id. (1:38-66); Ex. 2002, ¶¶ 39-40.
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`5.
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`Tucker
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`Tucker discloses a cooktop induction heating system with touch control pads
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`for electrically energizing induction heating coils. A “microprocessor circuit
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`receives as input signals the control signals generated by touch input circuit.” Ex.
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`1019 (7:33-35; Figs. 3 and 5). These signals are applied to the microprocessor
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`circuit, with the output from the microprocessor circuit indicating that a particular
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`touch control pad has been touched. Id. (7:35-43). Additionally, Tucker discloses
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`various software flow diagrams that the processor can execute to operate the
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`cooktop controls. See id. (16:52-54; Fig 10) (describing the software flow diagram
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`for the basic program architecture of microprocessor circuit 82). Tucker, like
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`Ingraham ’548, was considered during prosecution of the ’183 Patent.
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`6.
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`Lawson
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`Lawson relates to oven controllers for controlling temperature, duty cycle,
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`and time intervals and, more specifically, “to a microprocessor whose function is
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`dedicated as an oven controller by a read-only memory.” Ex. 1032 (1:7-11).
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`Lawson states that controlling the operation of the (then) newly released
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`microwave oven has become complex. Id. (1:19-21). Thus, its “main object . . . is
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`to provide an oven controller with extreme versatility, capable of operating in a
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`time mode or in a temperature mode.” Id. (2:3-5). Lawson also seeks to provide a
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`controller that is simple to operate, yet controls a complex sequence. Id. (2:9-11).
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`With respect to the latter, Lawson discloses an oven 20 having a controller with a
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`capacitive touch panel 21. As shown in Figure 2, the touch panel 21 includes a
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`display 22, along with a number of LEDs D16-D29 that output information
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`relevant for operation of the microwave oven. Id. (2:28-44). Lawson describes the
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`function of its various pads and keyboard, noting that different pad functions may
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`have different effects on display modes, for instance, in connection with a timed
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`cooking example. See id. (26:61-27:25, Table 1).
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`III. THE BOARD SHOULD EXERCISE ITS DISCRETION TO DENY
`THE PETITION BASED ON SAMSUNG’S RECENT,
`UNSUCCESSFUL IPR CHALLENGING THE SAME CLAIMS
`The Board has discretion “to deny a petition that challenges a patent that was
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`previously challenged before the Board.” Shenzhen Silver Star Intelligent Tech.
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`Co., Ltd. v. iRobot, IPR2018-00898, Paper 9 (Oct. 1, 2018); General Plastic
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`Industrial Co. v. Canon Kabushiki Kaisha, Case IPR2016-01357, Paper 19 (Sept.
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`6, 2017); 35 U.S.C. §§ 314(a) and 314(d) (providing the Board with discretion to
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`reject petitions where the same, or substantially the same, prior art or arguments
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`have already been presented). General Plastic addresses the factors considered in
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`determining whether to institute review for serial, or “follow-on” petitions.
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`Apple argues that the factors “weigh heavily against denial because any
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`delay in Apple’s IPR relative [to] Samsung’s IPR was caused by Patent Owner’s
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`delay in bringing suit against Apple.” Pet. at 5-6. But Apple strategically waited
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`until the one-year deadline after Patent Owner filed the underlying lawsuit against
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`it to maximize both the time between IPRs and the time it could ask that the
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`underlying case be stayed.
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`While Patent Owner did bring the underlying action against Apple
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`approximately two years after suing Samsung, it did so for good reason. Rather
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`than litigate multiple cases simultaneously, Patent Owner decided to complete
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`claim construction proceedings in the Samsung case before evaluating potential
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`claims against others. But shortly before the District Court’s claim construction
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`hearing, Samsung filed its IPR on all asserted claims and moved to stay the
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`underlying case. Prior to issuing a claim construction ruling, the District Court
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`granted the stay, which remains in place to this day while Samsung appeals the
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`Board’s decision to the Federal Circuit.2 Filing new cases against other accused
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`infringers almost certainly would have been futile because any such cases would
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`have been stayed pending the conclusion of the Samsung IPR.
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`In the meantime, the Samsung IPR proceeded. During the IPR proceeding,
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`the ’183 Patent expired on January 31, 2016. The Board in the Samsung IPR
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`issued its Final Written Decision on October 18, 2017. With the ’183 Patent
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`2 The Federal Circuit has scheduled oral argument on Samsung’s appeal for May
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`13, 2019.
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`expired and the limitations period on past damages running, Patent Owner filed
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`suit against Apple on November 29, 2017, approximately six weeks later. At the
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`time, Apple certainly knew about the Samsung IPR and could have evaluated the
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`docket to quickly determine the status of the Samsung IPR, whether Samsung had
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`made the best arguments, and whether Samsung had asserted the closest prior art.
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`But rather than bring its own IPRs within a reasonable time, Apple waited an entire
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`year, until November 29, 2018 (the one-year anniversary of the lawsuit against it),
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`to file six new IPRs. By waiting a year, Apple cannot claim to be a victim of
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`Patent Owner’s purported delay.
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`Denying this petition is not only fair but warranted under the General
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`Plastic factors. The first two factors weigh in favor of non-institution. Although
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`Apple did not previously file a petition directed to the same claims of the same
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`patent, Samsung did. Apple certainly knew of Samsung’s IPR—Apple even
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`suggested that the case against it be stayed pending the completion of Samsung’s
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`appeal of the Final Written Decision to the Federal Circuit. Apple also must have
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`studied Samsung’s IPR because Apple argues that its six IPRs make “new”
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`arguments that the Board allegedly has not considered, but relies on a claim
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`construction that the Board at least implicitly rejected, and some of the same prior
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`art that the Board previously considered in finding that Samsung failed to prove
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`obviousness of any challenged claims. Pet. at 4-5.
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`With respect to the second factor in particular, Apple’s assertion that it “did
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`not know of any of the prior art references relied on in [its] Petition when Samsung
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`filed its prior IPR petition” is at best misleading. Id. at 6. A quick search of the
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`USPTO’s records reveals that Chiu apparently has been cited in connection with at
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`least 35 issued Apple patents, and Meadows apparently has been cited in
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`connection with at least 20 issued Apple patents—numerous ones of which were
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`filed and granted years before Samsung was even sued. (For instance, Chiu was
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`cited in Apple Patent No. 7,764,274 issued July 27, 2010, and Meadows was cited
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`in Apple Patent No. 8,232,970 issued July 31, 2012.) And as Apple notes, two
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`more of the references upon which it relies (namely, Ingraham ’548 and Tucker)
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`were cited during original prosecution of the ’183 Patent. The second factor alone
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`thus weighs strongly against institution, insofar as one-third of the references
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`(including the main reference it relies upon) were known to Apple years before
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`Apple filed its Petition, and insofar as another one-third of the references were
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`known from original prosecution of the ’183 Patent.
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`The third factor—whether at the time of filing of the second petition the
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`petitioner already received the patent owner’s preliminary response to the first
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`petition or received the Board’s decision on whether to institute review in the first
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`petition—plainly weighs in favor of denial, and Apple does not argue otherwise.
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`Indeed, the timing of Apple’s filing in this case raises the potential for abuse,
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`because Apple had ample opportunity (nearly 11 months) to study all of the
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`arguments raised by Patent Owner and Samsung regarding the commonly
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`challenged claims of the ’183 patent. See Shenzhen Silver Star Intelligent Tech,
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`IPR2018-00761, Paper 15, 11-12 (Sep. 5, 2018). In fact, it appears that Apple used
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`Samsung’s earlier petition as a guide to find the additional relied-upon art that it
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`was not already aware of, and then used the Final Written Decision as a roadmap
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`for this IPR. Compare Pet. at 4-5 & 11-12 (confirming the attempt to use
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`Ingraham ’548 reference as had Samsung, and adopting claim constructions from
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`the Final Written Decision Apple apparently perceives as favorable to it), with Pet.
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`at 9-10 (attempting (albeit unsuccessfully) to distinguish an implicit claim
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`construction Apple apparently perceives as unfavorable to it). General Plastic and
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`Shenzhen confirm that this gamesmanship is impermissible—and this factor thus
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`weighs in favor of denial for these further reasons.
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`Apple argues that the fourth factor—the length of time that elapsed between
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`the time the petitioner learned of the prior art assert