UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`REMBRANDT WIRELESS TECHNOLOGIES, LP,
`Patent Owner.
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`
`
`Case IPR2020-00033
`U.S. Patent No. 8,023,580
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`PATENT OWNER’S SUR-REPLY
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
`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
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
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`
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`I. Denial of Institution Is Warranted Under § 325(d)
`Petitioner wrongly accuses PO of ‘mischaracteriz[ing] the record,” by
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`IPR2020-00033
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`“contend[ing] that ‘Siwiak ‘398 expressly describes the very aspects of Siwiak ‘306
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`that Petitioner relies on, e.g., the “different types” of modulation.’ POPR 43.” Reply
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`at 1 (bolding Petitioner’s). In fact, the cited materials fully support PO’s position.
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`See POPR 43-44 & n. 13 (quoting Siwiak ‘398 (EX2016 at 3:5-17).
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`As the quoted language indicates, Siwiak ‘398 expressly describes different
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`types of modulation, i.e., how Siwiak ‘398’s “dual mode receiver” is similar to the
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`“dual mode receiver of [Siwiak ‘306] which utilizes FM … and a linear modulation
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`format,” a format which Petitioner has admitted is QAM. See, e.g., Pet. at 56-57
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`(citing references to “FM modulation” and “linear modulation” in support of
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`contention that Siwiak ‘306 teaches FSK and QAM, respectively). In other words,
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`Petitioner equates “FM modulation” and “linear modulation,” the Siwiak ‘398 terms
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`relied on by PO as expressly describing different modulation types, with FSK and
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`QAM respectively.
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`Next, Petitioner alleges that “to secure allowance during prosecution, PO
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`represented that Siwiak ‘398 does not teach ‘different types’ of modulation
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`methods,” relying on an amendment made during prosecution. Reply at 2. Yet, that
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`amendment, which includes numerous additional clarifying recitations, was made
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`after the claims at issue were already allowed. See EX1002 at 71, 127, 140, 168. In
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`1
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`fact, PO explicitly stated that the amendments were made “to more precisely claim
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`IPR2020-00033
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`the subject-matter.” Id. at 140. To support its position that PO amended its claims to
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`overcome a rejection, Petitioner cites various documents. Reply at 1-2 (citing
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`EX2027 at 9, 12; EX1010 at 756-758; EX1002 at 140). Again, as indicated in Exs.
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`1010 and 1002, the claims had already been allowed at the time “different types”
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`was added.
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`During litigation, while admittedly PO indicated that “of a different type” was
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`added to overcome a rejection, PO further quoted the prosecution history, i.e., that
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`the claim “had been clarified to refer to two types of modulation methods.” EX2027
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`at 9. Notably, Apple responded as follows:
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` … the Examiner did not reject claim 1, he allowed it. … [A]lthough
`Rembrandt now argues that it amended claim 1 “to distinguish the Siwiak
`reference” … , that is not what Rembrandt told the USPTO during
`prosecution. There, Rembrandt stated it further amended claim 1, which
`the Examiner previously allowed, “with additional recitations to more
`precisely claim the subject-matter.” Thus, none of Rembrandt’s new
`arguments about the prior art Siwiak patent appears anywhere in the
`prosecution record that led to issuance of the asserted patents.
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`EX2028 at 15-16 (citations omitted) (emphasis added). Apple was right to clarify
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`to the district court that the subject amendments and statements were made after
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`allowance. But Apple is wrong to take the opposite position before the Board
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`knowing it to be false.
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`2
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`IPR2020-00033
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`Finally, Petitioner relies on the fact that four of the five references were not
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`previously cited and that, through incorporation by reference of Leitch, Briancon
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`“expressly discloses two ‘different types’ of modulation, FSK and QAM, whereas
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`Siwiak ‘398 does not.” Reply at 2. Tellingly, other than Petitioner’s alleged “critical
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`disclosures” of FSK and QAM, Petitioner identifies nothing in its references that
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`distinguishes them from those already considered. In contrast, see POPR at 40-45
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`(describing the substantial overlap in teachings).
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`II. Denial of Institution is Warranted Under §314(a)
`Petitioner argues against denial under §314(a) because (1) “PO … has
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`requested new claim constructions here on terms it previously told the district court
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`‘do not require construction’”; (2) “Ground 2 here relies on US 5,521,926 to Ayerst,
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`while the court contentions rely on a different Ayerst patent with a different
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`disclosure, US 5,644 568”; (3) “Both parties rely on different experts here and in the
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`litigation”; and (4) “the district court case includes multiple grounds of invalidity …
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`not at issue here.” Reply at 3 (emphases omitted).
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`With respect to (1), apparently Petitioner is referring to PO’s discussion of the
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`meaning of claim terms “master/slave,” “indicates an impending change,” and
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`indicates that a reversion … to the first modulation” has occurred. In fact, PO’s
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`positions as to the meaning of these claim terms are the same as in district court. See
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`Morrow Expert Report (EX2025) at, e.g., ¶¶ 67-73, 142-145, 150-152, 218-219 &
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`3
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`
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`passim. This is not surprising, given that the Phillips’ claim construction standard
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`IPR2020-00033
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`applies to both. Petitioner cannot manufacture a difference between the litigation
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`and IPR when the positions of PO are consistent. With respect to (2), while the two
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`Ayerst patents are different, the relied on portions are identical. Both Petitioner’s
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`IPR expert (EX1003) and litigation expert (EX2007) rely on substantially identical
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`teachings, including figures and annotations:
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`EX1003 at 54
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`EX2007 at 42
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`
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`Compare also U.S. Patent No. 5,644,568 at 5:26-37 (cited in EX2007 at ⁋⁋59, 77)
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`with EX1007 at 5:13-25 (cited in Pet. at 51, 54, 67). With respect to (3), the opinions
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`of Petitioner’s experts also are substantially identical, relying on identical passages
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`in and annotations to the references. POPR at 35-39; also compare EX1003, passim,
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`with EX2007, passim. With respect to (4), the complete overlap with the issues
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`raised here and the additional invalidity grounds in the litigation demonstrate that
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`validity will be fully addressed in the litigation. Other than Petitioner’s speculation,
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`there is nothing to show that Petitioner will be denied a full opportunity to present
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`the invalidity defenses raised here in district court.
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`PO agrees that “[c]onsideration of discretion under § 314(a) requires a
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`‘balanced assessment of all relevant circumstances …, including the merits.’” Reply
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`4
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`at 4. However, such consideration weighs in favor of denial here, just as was the
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`IPR2020-00033
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`case in Sand Revolution at 18 (denying review under § 314(a) even though only
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`General Plastic factor 6 supported denial). See also POPR at 31-40.
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`While it is true that this IPR is one of the first filed against the ‘580 Patent by
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`Petitioner, 6 previous IPRs, a reexamination, and a completed district court litigation
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`through appeal indeed provided petitioner a “roadmap.” Petition at 3-4.
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`Petitioner attempts to distinguish the cases cited by PO. Reply at 5. While,
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`obviously, facts differ from case to case, those relevant to the Board’s § 314(a)
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`decision weigh in favor of denial here. See NHK (IPR2018-00752, Paper 8) at 19-
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`20, E-One (IPR2019-00161, Paper 16) at 6-9, Magellan (IPR2019-01445, Paper 12)
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`at 8-10, Sand Revolution (IPR2019-01393, Paper 12) at 15-17, and Uniloc
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`(IPR2019-01219, Paper 7) at 15-17.
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`Petitioner alleges that its mandamus petition1 seeking transfer may “delay[]
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`the time to trial.” Reply at 3. Petitioner does not dispute that even if transferred, the
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`trial is scheduled for October 2020, well before a FWD. See, e.g., EX2010 at 14.
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`Dated: March 9, 2020
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`By:
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`
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`Respectfully submitted,
`/Jason Shapiro/
`Jason Shapiro (Reg. No. 35,354)
`Attorney for Patent Owner
`Rembrandt Wireless Technologies, LP
`
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`1 The Federal Circuit has requested briefing on the issue. EX2026.
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`5
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`CERTIFICATE OF SERVICE
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`IPR2020-00033
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`The undersigned certifies that pursuant to 37 C.F.R. § 42.6(e), a copy of the
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`foregoing Patent Owner’s Sur-Reply and the accompanying exhibits were served via
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`email (as previously consented to by counsel) on March 9, 2020 to lead and backup
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`counsel of record for Petitioners as follows:
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`Dated: March 9, 2020
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`
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`Mark D. Rowland (Reg. No. 32,077) (Lead Counsel)
`Gabrielle E. Higgins (Reg. No. 38,916) (Back-up Counsel)
`ROPES & GRAY LLP
`1900 University Avenue, 6th Floor
`East Palo Alto, CA 94303-2284
`
`Mark.Rowland@ropesgray.com
`Gabrielle.Higgins@ropesgray.com
`Josef.Schenker@ropesgray.com
`Carolyn.Redding@ropesgray.com
`Ropes-Rembrandt-IPR-Service@ropesgray.com
`
`
`
`
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`
`
`/Mark J. DeBoy/
`Mark J. DeBoy (Reg. No. 66,983)
`Attorney for Patent Owner
`Rembrandt Wireless Technologies, LP
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`6
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