IPR2020-00033
`U.S. Patent No. 8,023,580
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`APPLE INC.,
`
`Petitioner,
`
`v.
`
`REMBRANDT WIRELESS TECHNOLOGIES, LP,
`
`Patent Owner.
`
`____________
`
`Case IPR2020-00033
`
`U.S. Patent No. 8,023,580
`
`____________
`
`PETITIONER’S RANKING AND EXPLANATION OF
`PARALLEL PETITIONS
`
`Apple Exhibit 1030
`Apple Inc. v. Rembrandt Wireless
`IPR2020-00033
`Page 00001
`
`
`U.S. Patent No. 8,023,580
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`APPLE INC.,
`
`Petitioner,
`
`v.
`
`REMBRANDT WIRELESS TECHNOLOGIES, LP,
`
`Patent Owner.
`
`____________
`
`Case IPR2020-00033
`
`U.S. Patent No. 8,023,580
`
`____________
`
`PETITIONER’S RANKING AND EXPLANATION OF
`PARALLEL PETITIONS
`
`Apple Exhibit 1030
`Apple Inc. v. Rembrandt Wireless
`IPR2020-00033
`Page 00001
`
`
`
`IPR2020-00033
`U.S. Patent No. 8,023,580
`
`I.
`
`Introduction
`
`Petitioner herewith files two parallel petitions for inter partes review of U.S.
`
`Patent No. 8,023,580 (“’580 patent”), IPR2020-00033 and IPR2020-00034.
`
`Pursuant to the July 2019 Update to the USPTO Trial Practice Guide, Petitioner
`
`hereby submits this notice ranking and explaining the differences between the
`
`petitions for the Board’s consideration.
`
`II. Comparison and Rankings of the Petitions
`
`Rank
`A
`
`Reference Combinations
`Petition
`IPR2020-00033 (Pet. 1 of 2) Briancon1 in view of Leitch2
`Briancon in view of Leitch and Ayerst3
`Siwiak-3064 in view of Siwiak-0385
`
`B
`
`IPR2020-00034 (Pet. 2 of 2) Yamano6 in view of Davis7
`Yamano in view of Davis and Christian8
`
`
`
`As these petitions present alternative arguments in a manner contemplated
`
`by the Board and are not cumulative challenges, Petitioner requests that both
`
`petitions be independently considered.
`
`
`1 U.S. Patent No. 5,905,448 (“Briancon”), 35 U.S.C. §102(e) (filed Jan. 2, 1997).
`2 U.S. Patent No. 5,689,440 (“Leitch”), §102(e) (filed Dec. 11, 1996).
`3 U.S. Patent No. 5,521,926 (“Ayerst”), §102(b) (issued May 28, 1996).
`4 U.S. Patent No. 5,239,306 (“Siwiak-306”), §102(b) (issued Aug. 24, 1993)
`5 U.S. Patent No. 4,875,038 (“Siwiak-038”), §102(b) (issued Oct. 17, 1989).
`6 U.S. Patent No. 6,075,814 (“Yamano”), §102(e) (filed May 9, 1997).
`7 U.S. Patent No. 5,583,922 (“Davis”), §102(a) (issued Dec. 10, 1996).
`8 U.S. Patent No. 4,549,293 (“Christian”), §102(b) (issued Oct. 22, 1985).
`
`1
`
`IPR2020-00033 Page 00002
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`
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`IPR2020-00033
`U.S. Patent No. 8,023,580
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`III. Material Differences that Compel Permitting Multiple Petitions
`
`First, while Petitioner challenges the same claims in both petitions, the
`
`grounds are distinct. Petition 1 relies on references disclosing communication
`
`systems and methods in which one or more selective call radio receivers receive
`
`addressed transmissions over a communication medium. The references describe
`
`wireless paging systems as examples. Petition 2 relies on references disclosing
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`communication systems and methods in which one or more computers, smart
`
`appliances, or other stations receive addressed transmissions over a communication
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`medium. The references describe computers, smart appliances, or other stations
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`linked by telephone lines or radio. The difference in the exemplary devices
`
`receiving the transmissions (pagers vs. computers, smart appliances, and other
`
`stations) is material because Patent Owner Rembrandt has previously asserted in
`
`litigation that a different reference (U.S. Patent No. 5,537,398 to Mr. Kazimierz
`
`Siwiak) disclosing paging systems could reasonably be found to be non-analogous
`
`art. (Ex. 1016, 15-16 “[T]he Siwiak Patent is directed to pagers—a very different
`
`technology than the modems disclosed by the [’580 patent]”). Petitioner disagrees
`
`that art describing paging systems as exemplary embodiments of disclosed
`
`communication systems or methods is non-analogous, at least because the
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`challenged claims are not limited to any particular modem technology and the ’580
`
`patent specification states that “the present invention relates generally to the fields
`
`2
`
`IPR2020-00033 Page 00003
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`
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`IPR2020-00033
`U.S. Patent No. 8,023,580
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`of data communications and modulator/demodulators (modems).” Ex. 1001, 1:19-
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`20, 2:24-25 (“The present invention disclosed herein includes communication
`
`systems, devices, and methods.”). Nonetheless, the Yamano and Davis references
`
`in Petition 2 both describe examples with computers, smart appliances, or stations
`
`using modem devices, and none of the references in Petition 2 use paging systems
`
`as examples. Thus, because Patent Owner may argue that the references in Petition
`
`1 are non-analogous art, the obviousness analysis in each petition is materially
`
`different and supports parallel petitions.
`
`Second, Petition 2 relies on Yamano (which qualifies as prior art under
`
`§102(e)) as a primary reference, whereas parallel Petition 1 relies on Siwiak-306
`
`(which qualifies as prior art under §102(b)). Patent Owner may try to antedate
`
`Yamano by attempting to swear behind it. Indeed, although the claimed priority
`
`date for the ’580 patent is December 5, 1997 (Ex. 1018, 3), Patent Owner pointed
`
`to an earlier June 1997 date and suggested that it may have earlier documents
`
`relating to the invention. Ex. 1010, 407 (’580 Reexamination, Control No.
`
`90/013,808, 2/27/2017 Patent Owner’s Request For an Extension of Time under 37
`
`C.F.R. § 1.550(c) to File its Response to the January 24, 2017 Office Action
`
`Pursuant to 35 U.S.C. § 305, at 2). Therefore, the differences in the relevant prior
`
`art dates in the petitions are material, as Patent Owner may argue that the
`
`challenged claims are entitled to an earlier priority date. As stated in the Trial
`
`3
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`IPR2020-00033 Page 00004
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`
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`IPR2020-00033
`U.S. Patent No. 8,023,580
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`Practice Guide, “when there is a dispute about [a] priority date requiring arguments
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`under multiple prior art references,” multiple petitions “may be needed.”9
`
`Finally, these are the first petitions filed by Petitioner with respect to the
`
`’580 patent. Patent Owner did not sue Petitioner until after the conclusion of the
`
`previous post-grant proceedings filed by Samsung to which Petitioner was not a
`
`party, after the conclusion of the litigation filed by Patent Owner against Samsung,
`
`and after the Federal Circuit’s issued its claim construction decision under Phillips
`
`(Ex. 1012).
`
`IV. The Board should exercise its discretion to institute both petitions.
`
`The Board should exercise its discretion to institute both petitions because of
`
`the material differences discussed above and the strong showing of obviousness in
`
`both petitions. Additionally, instituting both would not unduly burden the Board
`
`or the parties; the claims of the ’580 patent would be challenged only twice with a
`
`total of only five grounds. For at least these reasons, the Board should institute
`
`trial in both IPR2020-00033 and IPR2020-00034.
`
`
`
`
`
`Respectfully submitted,
`ROPES & GRAY LLP
`
`/ Gabrielle E. Higgins /
`Gabrielle E. Higgins
`
`Dated: November 5, 2019
`
`
`
`
`9 USPTO Trial Practice Guide (July 2019 Update), p. 26.
`
`
`
`
`4
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`IPR2020-00033 Page 00005
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