`U.S. Patent No. 8,023,580
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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.,
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`Petitioner,
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`v.
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`REMBRANDT WIRELESS TECHNOLOGIES, LP,
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`Patent Owner.
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`____________
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`Case IPR2020-00034
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`U.S. Patent No. 8,023,580
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`____________
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`PETITIONER’S RANKING AND EXPLANATION OF
`PARALLEL PETITIONS
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`Apple Exhibit 1130
`Apple Inc. v. Rembrandt Wireless
`IPR2020-00034
`Page 00001
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`IPR2020-00034
`U.S. Patent No. 8,023,580
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`I.
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`Introduction
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`Petitioner herewith files two parallel petitions for inter partes review of U.S.
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`Patent No. 8,023,580 (“’580 patent”), IPR2020-00033 and IPR2020-00034.
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`Pursuant to the July 2019 Update to the USPTO Trial Practice Guide, Petitioner
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`hereby submits this notice ranking and explaining the differences between the
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`petitions for the Board’s consideration.
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`II. Comparison and Rankings of the Petitions
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`Rank
`A
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`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
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`B
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`IPR2020-00034 (Pet. 2 of 2) Yamano6 in view of Davis7
`Yamano in view of Davis and Christian8
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`As these petitions present alternative arguments in a manner contemplated
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`by the Board and are not cumulative challenges, Petitioner requests that both
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`petitions be independently considered.
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`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).
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`1
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`IPR2020-00034 Page 00002
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`IPR2020-00034
`U.S. Patent No. 8,023,580
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`III. Material Differences that Compel Permitting Multiple Petitions
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`First, while Petitioner challenges the same claims in both petitions, the
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`grounds are distinct. Petition 1 relies on references disclosing communication
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`systems and methods in which one or more selective call radio receivers receive
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`addressed transmissions over a communication medium. The references describe
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`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
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`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
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`receiving the transmissions (pagers vs. computers, smart appliances, and other
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`stations) is material because Patent Owner Rembrandt has previously asserted in
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`litigation that a different reference (U.S. Patent No. 5,537,398 to Mr. Kazimierz
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`Siwiak) disclosing paging systems could reasonably be found to be non-analogous
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`art. (Ex. 1116, 15-16 “[T]he Siwiak Patent is directed to pagers—a very different
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`technology than the modems disclosed by the [’580 patent]”). Petitioner disagrees
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`that art describing paging systems as exemplary embodiments of disclosed
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`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
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`patent specification states that “the present invention relates generally to the fields
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`2
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`IPR2020-00034 Page 00003
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`IPR2020-00034
`U.S. Patent No. 8,023,580
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`of data communications and modulator/demodulators (modems).” Ex. 1101, 1:19-
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`20, 2:24-25 (“The present invention disclosed herein includes communication
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`systems, devices, and methods.”). Nonetheless, the Yamano and Davis references
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`in Petition 2 both describe examples with computers, smart appliances, or stations
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`using modem devices, and none of the references in Petition 2 use paging systems
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`as examples. Thus, because Patent Owner may argue that the references in
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`Petition 1 are non-analogous art, the obviousness analysis in each petition is
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`materially different and supports parallel petitions.
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`Second, Petition 2 relies on Yamano (which qualifies as prior art under
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`§102(e)) as a primary reference, whereas parallel Petition 1 relies on Siwiak-306
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`(which qualifies as prior art under §102(b)). Patent Owner may try to antedate
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`Yamano by attempting to swear behind it. Indeed, although the claimed priority
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`date for the ’580 patent is December 5, 1997 (Ex. 1118, 3), Patent Owner pointed
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`to an earlier June 1997 date and suggested that it may have earlier documents
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`relating to the invention. Ex. 1110, 407 (’580 Reexamination, Control No.
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`90/013,808, 2/27/2017 Patent Owner’s Request For an Extension of Time under 37
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`C.F.R. § 1.550(c) to File its Response to the January 24, 2017 Office Action
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`Pursuant to 35 U.S.C. § 305, at 2). Therefore, the differences in the relevant prior
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`art dates in the petitions are material, as Patent Owner may argue that the
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`challenged claims are entitled to an earlier priority date. As stated in the Trial
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`3
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`IPR2020-00034 Page 00004
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`IPR2020-00034
`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
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`Finally, these are the first petitions filed by Petitioner with respect to the
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`’580 patent. Patent Owner did not sue Petitioner until after the conclusion of the
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`previous post-grant proceedings filed by Samsung to which Petitioner was not a
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`party, after the conclusion of the litigation filed by Patent Owner against Samsung,
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`and after the Federal Circuit’s issued its claim construction decision under Phillips
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`(Ex. 1112).
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`IV. The Board should exercise its discretion to institute both petitions.
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`The Board should exercise its discretion to institute both petitions because of
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`the material differences discussed above and the strong showing of obviousness in
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`both petitions. Additionally, instituting both would not unduly burden the Board
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`or the parties; the claims of the ’580 patent would be challenged only twice with a
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`total of only five grounds. For at least these reasons, the Board should institute
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`trial in both IPR2020-00033 and IPR2020-00034.
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`Respectfully submitted,
`ROPES & GRAY LLP
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`/ Gabrielle E. Higgins /
`Gabrielle E. Higgins
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`Dated: November 5, 2019
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`9 USPTO Trial Practice Guide (July 2019 Update), p. 26.
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`IPR2020-00034 Page 00005
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