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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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`MPH TECHNOLOGIES OY,
`Patent Owner.
`____________
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`Case IPR2019-00819
`Patent 7,620,810
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`PETITIONER’S RESPONSIVE BRIEF POST-REMAND
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`Petitioner’s Responsive Brief Post-Remand
`IPR2019-00819 (Patent No. 7,620,810)
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`TABLE OF CONTENTS
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`I.
`II.
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`Introduction ...................................................................................................... 1
`Discussion ........................................................................................................ 1
`1.
`Patent Owner’s disclaimer of claims 1-3 does not remove the issue
`of obviousness of claim 3 under the ground of Ishiyama and
`Murakawa without Ahonen from this proceeding. ................................ 2
`Claim 3 is obvious under Petitioner’s Ishiyama and Murakawa-
`based grounds (without Ahonen) in view of Petitioner’s undisputed
`argument and evidence and Patent Owner’s concession of its
`interest in claims 1-3 by disclaimer. ..................................................... 3
`III. Conclusion ....................................................................................................... 4
`CERTIFICATE OF SERVICE .............................................................................. 5
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`2.
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`- i -
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`I.
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`Petitioner’s Responsive Brief Post-Remand
`IPR2019-00819 (Patent No. 7,620,810)
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`INTRODUCTION
`Patent Owner disclaimed claims 1-3 in an attempt to subvert the Board’s
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`consideration on remand of whether claims 1 and 3 are obvious over Ishiyama in
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`view of Murakawa without Ahonen. However, Patent Owner’s disclaimer of
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`claims 1-3 does not remove the issue of obviousness of claims 1 and 3 under the
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`ground of Ishiyama and Murakawa without Ahonen from this proceeding, because
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`the remaining claims 4-6 depend from claim 3, which depend from claim 1.
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`Further, Patent Owner argued that it did not concede the unpatentability of
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`claims 1-3 by its disclaimer, stating that “[a] statutory disclaimer in and of itself is
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`not a concession of unpatentability.” PO Opening Brief, 3-4 (emphasis added).
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`However, claims 1 and 3 are unpatentable not just solely based on Patent Owner’s
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`disclaimer “in and of itself,” but because they are obvious under Petitioner’s
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`Ishiyama and Murakawa-based grounds (without Ahonen), considering Petitioner’s
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`undisputed argument and evidence and the strong clue of unpatentability of claims
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`1 and 3 based on the disclaimer.
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`Accordingly, claims 1, 3 and, in turn, claims 4-6, are unpatentable because
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`they are obvious under Petitioner’s Ishiyama and Murakawa-based grounds
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`(without Ahonen), supported by the strong clue of the unpatentability of claims 1-3
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`based on the disclaimer.
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`- 1 -
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`Petitioner’s Responsive Brief Post-Remand
`IPR2019-00819 (Patent No. 7,620,810)
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`II. DISCUSSION
`1.
`Patent Owner’s disclaimer of claims 1-3 does not remove the issue
`of obviousness of claim 3 under the ground of Ishiyama and
`Murakawa without Ahonen from this proceeding.
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`Patent Owner incorrectly asserted that Petitioner’s grounds of claims 4-6 are
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`deficient due to the omission of Ahonen, and as such, its disclaimer of claims 1-3
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`had the effect of “leaving only the issue of Apple’s deficient Petition grounds
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`against claims 4-6” in this proceeding. PO Opening Brief, 2-3.
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`However, Patent Owner’s disclaimer of claims 1-3 does not remove from
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`this proceeding the issue of obviousness of claims 1 and 3 under Petitioner’s
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`ground of Ishiyama and Murakawa without Ahonen. On remand, the grounds
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`before the Board are obviousness of claims 4-6 in view of Ishiyama and Murakawa
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`without Ahonen, which involve the obviousness issue of claim 3 under Petitioner’s
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`ground of Ishiyama and Murakawa without Ahonen because each of claims 4-6
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`depends on claim 3, which depends from claim 1. Petitioner’s grounds against
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`claims 4-6 are not deficient due to the omission of Ahonen, because Ahonen is
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`neither part of Petitioner’s grounds for the claims that remain in trial, claims 4-6,
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`nor is it essential thereto. As explained in detail in Petitioner’s Opening Brief,
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`Petitioner’s grounds describe two theories of obviousness for claim 3—with and
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`without Ahonen, and Patent Owner fails to dispute the theory that is based on the
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`combination of Ishiyama and Murakawa without Ahonen. Petitioner’s Opening
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`- 2 -
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`Brief, 2-3 (citing Reply, 19, Pet., 60, 64-66, EX1011, 6, EX1012, RFC793, 4,
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`Petitioner’s Responsive Brief Post-Remand
`IPR2019-00819 (Patent No. 7,620,810)
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`EX1020, ¶¶63-65, POR, 70-73).
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`Accordingly, because each of claims 4-6 depends on claim 3, Patent
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`Owner’s disclaimer of claims 1-3 does not remove the issue of obviousness of
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`claims 1 and 3 under the ground of Ishiyama and Murakawa without Ahonen from
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`this proceeding.
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`2.
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`Claim 3 is obvious under Petitioner’s Ishiyama and Murakawa-
`based grounds (without Ahonen) in view of Petitioner’s
`undisputed argument and evidence and Patent Owner’s
`concession of its interest in claims 1-3 by disclaimer.
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`Patent Owner argued that it did not concede the unpatentability of claims 1-3
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`by its disclaimer, stating that “[a] statutory disclaimer in and of itself is not a
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`concession of unpatentability.” PO Opening Brief, 3-4 (emphasis added).
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`However, claims 1 and 3 are unpatentable not just solely based on Patent
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`Owner’s disclaimer “in and of itself.” In fact, claims 1 and 3 are unpatentable
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`because they are obvious under Petitioner’s Ishiyama and Murakawa-based
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`grounds (without Ahonen), considering Petitioner’s undisputed argument and
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`evidence and the strong clue of unpatentability of claims 1 and 3 based on the
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`disclaimer. While Patent Owner argued that it did not concede the unpatentability
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`of claims 1-3 by its disclaimer, it did concede its interest in claims 1-3 by
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`“dedicate[ing] to the public the entirety of claims 1-3 of the ’810 Patent.”
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`EX3003, Disclaimer, 1. Such a disclaimer is a strong clue of the unpatentability of
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`- 3 -
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`claims 1-3. See SimpleAir, Inc. v. Google LLC, 884 F. 3d 1160, 1168 (Fed. Cir.
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`Petitioner’s Responsive Brief Post-Remand
`IPR2019-00819 (Patent No. 7,620,810)
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`2018).
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`Accordingly, claims 1, 3 and, in turn, claims 4-6, are unpatentable because
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`they are obvious under Petitioner’s Ishiyama and Murakawa-based grounds
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`(without Ahonen), supported by the strong clue of the unpatentability of claims 1-3
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`based on the disclaimer.
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`III. CONCLUSION
`Petitioner respectfully requests that the Board find claims 1 and 3 obvious
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`under Petitioner’s Ishiyama and Murakawa-based grounds without Ahonen,
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`supported by Petitioner’s undisputed argument and evidence and the strong clue of
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`unpatentability of claims 1-3 based on Patent Owner’s concession of its interest in
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`claims 1-3 by disclaimer. In turn, the Board should enter judgment of
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`unpatentability of claims 4-6 based on those unrebutted and unopposed trial
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`grounds.
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`Dated: February 21, 2023
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`Respectfully submitted,
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`/David W. OBrien/
`David W. O’Brien, Reg. No. 40,107
`Lead Counsel for Petitioner
`HAYNES AND BOONE, LLP
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`- 4 -
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`Petitioner’s Responsive Brief Post-Remand
`IPR2019-00819 (Patent No. 7,620,810)
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`CERTIFICATE OF SERVICE
`The undersigned certifies, in accordance with 37 C.F.R. § 42.6(e), that
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`service was made on the Patent Owner as detailed below.
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`Date of service: February 21, 2023
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`Manner of service: Electronic Service by E-Mail
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`Documents served: Petitioner’s Responsive Brief Post-Remand
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`Persons served: James T. Carmichael
`CARMICHAEL IP, PLLC
`8000 Towers Crescent Drive, 13th Floor
`Tysons, VA 22182
`Email: jim@carmichaelip.com
`Email: MPH-IPRs@carmichaelip.com
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`/David W. OBrien/
`David W. O’Brien, Reg. No. 40,107
`Lead Counsel for Petitioner
`HAYNES AND BOONE, LLP
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`- 5 -
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