`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`REMBRANDT WIRELESS TECHNOLOGIES, LP,
`Patent Owner.
`
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`
`
`Case IPR2020-00034
`U.S. Patent No. 8,023,580
`
`PATENT OWNER’S RESPONSE TO PETITIONER’S RANKING AND
`EXPLANATION OF PARALLEL PETITIONS
`
`
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`
`
`INTRODUCTION
`
`I.
`
`IPR2020-00034
`U.S. Patent No. 8,023,580
`
`Petitioner filed two separate petitions in IPR2020-00033 and IPR2020-00034
`
`(collectively, “the Petitions”) on the same day challenging the same two claims of
`
`the same patent - U.S. Patent No. 8,023,580 (“the ‘580 Patent”). Petitioner’s
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`Ranking and Explanation of Parallel Petitions (“Petitioner’s Ranking/Explanation”)
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`fails to justify the need for multiple burdensome proceedings. These two petitions
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`“filed against the same patent at or about the same time … raise fairness, timing, and
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`efficiency concerns.” Patent Trial and Appeal Board Consolidated Trial Practice
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`Guide (November 2019) (“the Consolidated Guide”) at 59 (citing 35 U.S.C. §
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`316(b)). “[M]ultiple petitions by a petitioner are not necessary in the vast majority
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`of cases,” as is true in the present proceedings. Id. Accordingly, the Board should
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`not institute on more than one petition (if it institutes at all).
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`
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`II. THE BOARD SHOULD NOT INSTITUTE ON BOTH PETITIONS
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`The present proceeding does not represent one of those rare situations where
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`“more than one petition may be necessary, including, for example, when the patent
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`owner has asserted a large number of claims in litigation or when there is a dispute
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`about priority date requiring arguments under multiple prior art references.” Id. In
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`the related district court litigation, Patent Owner has asserted only two claims (claims
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`2 and 59) of the ‘580 Patent. Pet., at 3. Petitioner’s Ranking/Explanation fails to
`1
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`mention this fact, and asks the Board to unduly burden itself and the parties by
`
`IPR2020-00034
`U.S. Patent No. 8,023,580
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`instituting the same number of petitions as there are claims being asserted in the
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`district court litigation. This is far from an efficient use of Board resources.
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`Petitioner’s concern about a dispute over non-analogous art in one petition is
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`not sufficient justification for parallel petitions. While, indeed, Petitioner
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`acknowledges that the “difference in the exemplary devices receiving the
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`transmissions (pagers vs. computers, smart appliances, and other stations) is
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`material” and thus is justified being concerned about its characterization as non-
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`analogous art, that does not require separate petitions. Valid disputes over non-
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`analogous art are but one of many types of disputes that may arise during inter partes
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`review. There is nothing special about a dispute over non-analogous art that would
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`justify parallel petitions, even if the Petitioner fears it may lose the dispute.
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`Furthermore, Petitioner’s argument that parallel petitions are justified because
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`Patent Owner may try to swear behind U.S. Patent No. 6,075,814 to Yamano et al.
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`(“Yamano”) is moot, because Patent Owner stipulates that Yamano is prior art as to
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`the ‘580 Patent.
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`
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`Petitioner also relies on the petitions being the first petitions filed by Petitioner
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`with respect to the ‘580 patent as an alleged justification for institution of parallel
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`petitions. See Petitioner’s Ranking/Explanation, at 4. However, petitions for IPR
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`are routinely brought by Petitioners who have not previously challenged the patent
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`at issue. If being a first-time challenger was a determining factor, parallel petitions
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`IPR2020-00034
`U.S. Patent No. 8,023,580
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`would be the norm instead of the exception.
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`III. CONCLUSION
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`Patent Owner respectfully requests that the Board decline to institute inter
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`partes review on at least one of the petitions for the reasons stated above.
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`
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`Respectfully submitted,
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`Dated: February 13, 2020
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`
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`
`
`/Jason Shapiro/
`By:
`Jason Shapiro (Reg. No. 35,354)
`
` Attorney for Patent Owner
` Rembrandt Wireless Technologies, LP
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`3
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`IPR2020-00034
`U.S. Patent No. 8,023,580
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`CERTIFICATE OF SERVICE
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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 RESPONSE TO PETITIONER’S RANKING
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`AND EXPLANATION OF PARALLEL PETITIONS was served via email on
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`February 13, 2020, to lead and backup counsel of record for Petitioner as follows:
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`Mark D. Rowland
`Reg. No. 32,077
`mark.rowland@ropesgray.com
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`Gabrielle E. Higgins
`Reg. No. 38,916
`gabrielle.higgins@ropesgray.com
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`Josef Schenker
`Josef.Schenker@ropesgray.com
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`Carolyn Redding
`Carolyn.Redding@ropesgray.com
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`ROPES & GRAY LLP, IPRM – Floor 43
`Prudential Tower, 800 Boylston Street
`Boston, MA 02199
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`Ropes-Rembrandt-IPR-Service@ropesgray.com
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`
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`Dated: February 13, 2020
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`
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`By:
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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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`4
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