IPR2020-00034
`U.S. Patent No. 8,023,580
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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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`____________
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`APPLE INC.,
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`Petitioner,
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`v.
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`REMBRANDT WIRELESS TECHNOLOGIES, LP,
`
`Patent Owner.
`
`____________
`
`Case IPR2020-00034
`
`U.S. Patent No. 8,023,580
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`____________
`
`PETITIONER’S REPLY TO PATENT OWNER’S
`PRELIMINARY RESPONSE
`
`
`
`
`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 IPR2020-00034
`
`U.S. Patent No. 8,023,580
`
`____________
`
`PETITIONER’S REPLY TO PATENT OWNER’S
`PRELIMINARY RESPONSE
`
`
`
`
`
`IPR2020-00034
`U.S. Patent No. 8,023,580
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`Petitioner demonstrated a reasonable likelihood that at least one challenged
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`claim is unpatentable. PO’s plea for the Board to exercise discretion under §325(d)
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`and §314(a) should be rejected because PO mischaracterizes the record and places
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`undue reliance on a single factor in multi-factor balancing tests. Trial Practice Guide
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`(Nov. 2019) (“TPGU”), 58 (When considering and exercising discretion in
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`instituting IPR, the Board conducts a “balanced assessment of all relevant
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`circumstances in the case, including the merits.”).
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`I. PO’S CONFLICTING POSITIONS DEMAND REVIEW
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`PO’s §325(d) arguments mischaracterize the record. POPR 36-41. Because,
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`no reference at issue in this IPR was cited or considered by the Examiner during
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`prosecution, PO wrongly contends Davis’ teaching of QAM is “substantially the
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`same as” or “cumulative” of Siwiak ’398. Siwiak ’398 does not describe the FSK
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`and QAM modulations taught by Davis, and, in fact, PO represented as much to the
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`Examiner to secure allowance of its claims. As PO explained in litigation and
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`reexam, to overcome a rejection based on Siwiak ’398 during prosecution, Applicant
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`amended the claims to require different “types” of modulation, and identified “the
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`FSK family” and “the QAM family” as examples. Rembrandt v. Apple, 19-cv-00025,
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`D.I. 73 at 9 (E.D. Tex. Oct. 21, 2019); Ex. 1110, 756-758; Ex. 1102, 140. PO
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`represented to the court that this amendment distinguished Siwiak ’398’s disclosure
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`of FM and OFDM because those are “‘different’ modulation methods of the same
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`1
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`IPR2020-00034
`U.S. Patent No. 8,023,580
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`frequency ‘type.’” Rembrandt, 19-cv-00025, D.I. 73 at 6. Thus, to secure allowance
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`during prosecution, PO represented that Siwiak ’398 does not teach “different
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`types”—such as FSK and QAM. Id. But now, to avoid IPR, PO takes the
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`contradictory position that Siwiak ’398’s teachings of FM and OFDM is
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`“substantially the same as” Davis’ teachings of FSK and QAM (which are
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`indisputably of “different types”). Far from justifying §325(d) discretionary denial,
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`PO’s contradictory positions underscore the importance of institution.
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`Further, PO wrongly contends Petitioner’s reliance on Yamano “is simply
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`rehashing” a previous argument presented in the reexams. POPR 36-37. But Yamano
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`was not cited in the reexam for “different types.” Yamano was cited only for the
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`“address” limitation. Indeed, as illustrated by PO’s POPR citations (POPR 36-37), a
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`different reference (Snell) was used for all limitations (including “different types”)
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`except the “destination address.” Ex. 1110, 441-446 (“Snell teaches…two types of
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`modulation methods….Snell does not expressly teach… addressed for an intended
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`destination of the payload portion. Yamano discloses…a destination address.”), 832-
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`838 (same). The Examiner’s reference in the reexam to Yamano’s “varying rates”
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`was simply for motivation to combine in the context of the “address” limitation, not
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`for the “different types” limitation.
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`Moreover, balancing all the Becton factors weighs in favor of institution.
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`IPR2017-01586, Paper 8. Here, unlike in NHK, there are no §325(d) issues based on
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`2
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`IPR2020-00034
`U.S. Patent No. 8,023,580
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`art previously considered by the Office. Pet. 7. Further, PO has put forth no credible
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`basis for suggesting that the art advanced by Petitioner is cumulative of the art of
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`record. Indeed, Davis expressly discloses two “different types” of modulation, FSK
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`and QAM, whereas Siwiak ’398 does not. Pet. 25-27. And Davis is directed to a
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`modem system, just like Yamano, whereas Kamerman is not. Pet. 27-28. Christian
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`teaches benefits of a flexible TDMA master/slave system that appear nowhere in the
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`different references cited during the reexam. Pet. 39.
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`II. §314(a) DISCRETION IS NOT WARRANTED
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`PO ignores critical differences between the IPR grounds and claim
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`construction issues asserted here and in the district court, and fails to demonstrate
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`that instituting IPR would result in a waste of judicial resources.
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`PO fails to tell the Board that it has requested a new claim construction here
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`on a term it previously told the district court “do[es] not require construction.”
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`Compare POPR 22-25 with Ex. 2009, 7. Moreover, Ground 2 here relies on Christian
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`in a combination that is not relied on in the district court. Pet. 37-40. Both parties
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`rely on different experts here and in the litigation. And the district court case includes
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`multiple grounds of invalidity including §§101 and 112, and unique grounds under
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`§§102 and 103 not at issue here, potentially enabling limited trial time to focus on
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`different invalidity defenses. Ex. 2007, e.g., 91-177. Given these significant
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`differences between the IPR and litigation, §314(a) does not warrant denial.
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`3
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`IPR2020-00034
`U.S. Patent No. 8,023,580
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`Further, there is no guarantee the court will actually get to final judgment
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`before the FWD. IPR2019-01044, Paper 17, *14 (“District court litigation is not
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`subject to fixed, immutable deadlines for final disposition”). Additionally, the
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`pending mandamus petition to stay or transfer the litigation may ultimately be
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`granted, delaying the time to trial. In re: Apple Inc., 2020-112 (Fed. Cir.). Thus, the
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`time to trial (in the context of all of the other factors outlined in General Plastic and
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`Becton) does not weigh in favor of discretionary denial.
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`Consideration of discretion under §314(a) requires a “balanced assessment of
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`all relevant circumstances in the case, including the merits.” TPGU, 58. Contrary to
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`PO’s arguments, while the NHK case permits the Board to consider the stage of a
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`parallel district court litigation, it “should do so in the context of all the other factors,
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`such as those outlined in General Plastic…and Becton, Dickinson.” IPR2018-
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`01354, Paper 8, 36. Here, GP factors 1-5 and 7 favor institution, as this is Petitioner’s
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`first petition challenging this patent. In addition, there has been no ruling in the co-
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`pending litigation giving Petitioner a road map on how to improve its case, and PO
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`identifies none. Finally, where the Petition presents a strong case of patentability, as
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`here, the stage of the litigation should not outweigh the merits. See, e.g., IPR2019-
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`01000, Paper 10, *40-49 (“we determine that the merits of the challenges presented
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`in the Petition strongly outweigh any concerns about inefficient use of resources”).
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`Contrary to PO (POPR 35-36), Petitioner did not delay and secured no unfair
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`4
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`IPR2020-00034
`U.S. Patent No. 8,023,580
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`benefit from the timing of its filing. See id., *47-48. The Petition was filed well
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`within the statutory framework. IPR2018-01689, Paper 15, *59 (filing within
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`§315(b) period “presumptively proper”). Petitioner had no pre-suit notice and
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`worked diligently from the time of filing to review the long history of the ’580 patent
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`(see Pet. 12-14), understand PO’s infringement contentions, identify prior art, and
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`prepare the Petition for filing. Additionally, given the Philips standard at issue here,
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`it was appropriate for Petitioner to file the Petitions shortly after the PO committed
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`to its claim constructions in the district court (a commitment it did not keep in these
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`proceedings). Pet. 16. Petitioner should not be penalized here because the court set
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`an initial trial date within 18 months of the Complaint.
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`PO’s cases are inapposite. Unlike here, the district court in E-One already
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`assessed the merits of the challenges presented and found them lacking. IPR2019-
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`00161, Paper 16, *8-9. Likewise, Magellan involved multiple petitions by the same
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`Petitioner spaced out in time; here Apple filed its Petitions together and without
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`delay. IPR2019-01445, Paper 12, *11-12. Unlike Sand Revolution, PO here presents
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`a new claim construction position that it failed to raise before the district court and
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`may not ever be considered by the court. IPR2019-01393, Paper 12, 17, 20 (dissent).
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`And unlike Uniloc, here there is no printed publication issue and there are significant
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`differences between the pending IPR and litigation. IPR2019-01219, Paper 7, *16.
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`Accordingly, PO presents no basis for denial and the Board should institute.
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`5
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`IPR2020-00034
`U.S. Patent No. 8,023,580
`
`
`
`Dated: March 4, 2020
`
`
`
`
`
`/Mark D. Rowland/
`Mark D. Rowland
`
`
`
`
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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 a copy of the foregoing PETITIONER’S
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`REPLY TO PATENT OWNER’S PRELIMINARY RESPONSE was served in its
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`entirety by causing the aforementioned document to be electronically mailed,
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`pursuant to the parties’ agreement to the following attorneys of record for the Patent
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`Owner listed below:
`
`Jason Shapiro
`Mark J. DeBoy
`Edell, Shapiro and Finnan, LLC
`9801 Washingtonian Boulevard
`Suite 750
`Gaithersburg, Maryland 20878
`js@usiplaw.com
`mjd@usiplaw.com
`Tel: (301) 424-3640
`Fax: (301) 762-4056
`
`Nancy Linck
`646 Westbourne Street
`La Jolla, CA 92037
`nancylinck@outlook.com
`Tel: (858) 255-8043
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`Counsel for Patent Owner Rembrandt Wireless Technologies, LP
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`Dated: March 4, 2020
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`ROPES & GRAY LLP
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`By: /Crena Pacheco/
`Name: Crena Pacheco
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`
`
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