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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`UUSI, LLC d/b/a NARTRON,
`Patent Owner
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`Case IPR2019-00360
`Patent 5,796,183
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`PETITIONER’S SUPPLEMENTAL BRIEF RE DISCRETIONARY
`DENIAL UNDER 35 U.S.C. § 314(a)
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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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`UUSI, LLC d/b/a NARTRON,
`Patent Owner
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`Case IPR2019-00360
`Patent 5,796,183
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`PETITIONER’S SUPPLEMENTAL BRIEF RE DISCRETIONARY
`DENIAL UNDER 35 U.S.C. § 314(a)
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`Attorney Docket No. 39521-0062IP6
`Case No. IPR2019-00360
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`Unlike the parties in Valve, Apple and Samsung are unrelated. In Valve,
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`“Valve and HTC were co-defendants in [a] District Court litigation and were
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`accused of [infringement] based on the same product.” Valve v. Elec. Scripting,
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`IPR2019-00062 Paper 13, 9-10 (PTAB 2019). Here, Apple and Samsung have
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`never been co-defendants in an action involving the ’183 patent, and Apple and
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`Samsung have completely separate products. Indeed, UUSI sued Apple more than
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`two years after suing Samsung, “approximately six weeks” after Samsung’s IPR
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`concluded. Pet., 5; Paper 10, 14. UUSI makes no overlapping allegations between
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`Apple and Samsung, and did not notice Apple of infringement at the time of its
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`complaint against Samsung. Thus, unlike the lawsuit against HTC and Valve,
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`UUSI’s lawsuit against Samsung did nothing at the time of Samsung’s petition to
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`make Apple aware of a UUSI allegation of ’183 patent infringement by Apple.
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`Also, Apple’s Petition challenges several claims unchallenged by the
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`Samsung IPR. See Pet., 1. This further distinguishes the instant case from Valve,
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`establishing that Apple is not similarly situated to Samsung and that General
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`Plastic (“GP”) factor one weighs against discretionary denial. See Pet., 5.
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`The remaining GP factors also weigh against discretionary denial, and
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`several further distinguish Valve. Because it had not been sued, Apple had no
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`reason to assess validity of the ’183 patent at the time of Samsung’s petition (GP
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`factor 2). The length of time between the Samsung IPR and the present IPR and
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`1
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`Attorney Docket No. 39521-0062IP6
`Case No. IPR2019-00360
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`any inefficiencies related to multiple petitions (GP factors 4-7) are due to UUSI’s
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`decision to sue Apple after Samsung’s IPR. See Pet., 4-6; POPR, 15.
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`As to the third GP factor, UUSI alleges “gamesmanship,” but Apple did not
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`delay its petition to gain a strategic advantage by learning from Samsung’s IPR –
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`Samsung’s IPR was already complete when UUSI sued Apple. And, this is not a
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`case like Valve where “Valve submitted a declaration from the same expert that
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`HTC used” and admittedly addressed “issues” the Board found in denying HTC’s
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`earlier petition. Valve, 13. Apple used a different expert and, as Patent Owner
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`admits, did not rely on the same prior art as the Samsung IPR. POPR, 17-18.
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`If anything, UUSI, not Apple, seeks to gain advantages from Samsung’s
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`IPR. In its POPR, UUSI alleges an “implicit claim construction” of “selectively
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`providing signal output frequencies” in the Samsung IPR. POPR, 17, 22-27. The
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`Board in the Samsung IPR, however, explicitly chose not to construe this term.
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`Paper 35, 10. Indeed, UUSI’s POPR cites to pages “14-16, 18” for the Board’s
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`construction, yet the only mention of multiple frequencies in those pages relates to
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`the Board’s summary of Samsung’s contentions, not the Board’s construction. Id.,
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`14-16, 18 (“Petitioner contends”). UUSI also argues that, if the Board used a
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`broad interpretation, it “never would have needed to consider Gerpheide in
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`combination with Ingraham-Caldwell.” POPR, 25. But all of Samsung’s grounds
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`involved Gerpheide, making its consideration necessary to evaluate Samsung’s
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`2
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`Case No. IPR2019-00360
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`challenge. By alleging an implicit construction, UUSI uses Samsung’s challenge
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`to support a narrow interpretation that does not exist in the ’183 patent.
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`In fact,’183 never describes “a microprocessor capable of generating
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`multiple frequencies from an oscillator.” POPR, 24. In’183, the only selection
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`made by the microprocessor is selection of rows to “sequentially activate the touch
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`circuit rows,” and the only description of varying frequency involves varying
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`“values of the resistors and capacitors utilized in oscillator 200.” Ex. 1001, 14:22-
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`25, 18:43-49 (“Microcontroller … selects each row”). Dependent claims 41 and
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`45 confirm that “selectively providing signal output frequencies” does not require
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`selection from multiple frequencies, as claim 45 specifies the “same hertz value”
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`and claim 41 explicitly specifies UUSI’s implicit construction where a frequency
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`“is selected from a plurality of hertz values.” By attempting to draw an implicit
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`claim construction through how Samsung chose to style its IPR, UUSI, not Apple,
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`seeks to gain advantage from the prior IPR (GP factor 3).
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`Allowing UUSI to benefit from the timing of its litigation filings would
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`encourage patent owners to “game the system” by timing infringement actions to
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`avoid IPR challenges from later-sued parties. Exercising discretion under 314(a)
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`would encourage use of a staggered litigation filing strategy that unjustly
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`disadvantages future defendants by removing the option of IPR simply because an
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`earlier, unrelated defendant filed one. Thus, IPR should not be denied under Valve.
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`3
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`Dated: June 5, 2019___________
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`Attorney Docket No. 39521-0062IP6
`Case No. IPR2019-00360
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`Respectfully submitted,
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` /W. Karl Renner/
`W. Karl Renner, Reg. No. 41,265
`Jeremy Monaldo, Reg. No. 58,680
`Daniel Smith, Reg. No. 71,278
`Fish & Richardson P.C.
`3200 RBC Plaza,
`60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
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`Attorneys for Petitioner
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`Attorney Docket No. 39521-0062IP6
`Case No. IPR2019-00360
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4), the undersigned certifies that on June 5,
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`2019, a complete and entire copy of this PETITIONER’S SUPPLEMENTAL
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`BRIEF RE DISCRETIONARY DENIAL was provided via email to the Patent
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`Owner by serving the correspondence email address of record as follows:
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`Joseph A. Rhoa
`Jonathan A. Roberts
`NIXON & VANDERHYE P.C.
`901 N. Glebe Road, 11th Floor
`Arlington, VA 22203-1808
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`Lawrence Hadley
`GLASER WEIL
`10250 Constellation Blvd., 19th Floor
`Los Angeles, CA 90067
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`jar@nixonvan.com
`jr@nixonvan.com
`lmm@nixonvan.com
`lhadley@glaserweil.com
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`Email:
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`/Diana Bradley/
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`Diana Bradley
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(858) 678-5667
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