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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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`APPLE INC.,
`Petitioner,
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`v.
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`REMBRANDT WIRELESS TECHNOLOGIES, LP,
`Patent Owner.
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`Case IPR2020-00034
`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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`I. Denial of Institution Is Warranted Under § 325(d)
`Petitioner wrongly accuses PO of “mischaracteriz[ing] the record,” by
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`IPR2020-00034
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`“contend[ing] Davis’ teaching of QAM is substantially the same as or cumulative of
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`Siwiak ‘398.” Reply 1. In fact, the cited materials fully support PO’s position.
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`Siwiak ‘398 expressly describes different types of modulation, i.e., how
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`Siwiak ‘398’s “dual mode receiver” is similar to the “dual mode receiver of [Siwiak
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`‘306] which utilizes FM … and a linear modulation format,” a format which
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`Petitioner has admitted is QAM. See, e.g., IPR2020-00033 Petition, Paper 2, 56-57
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`(citing references to “FM modulation” and “linear modulation” in support of
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`Petitioner’s contention that Siwiak ‘306 teaches FSK and QAM, respectively). In
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`other words, Petitioner equates “FM modulation” and “linear modulation,” the very
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`terms used in Siwiak ‘398 and relied upon by PO in related proceedings as expressly
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`describing different modulation types, with FSK and QAM respectively.
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`Petitioner further alleges that “to overcome a rejection based on Siwiak ‘398,
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`Applicant amended the claims to require different ‘types’ of modulation and
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`‘identified the FSK family’ and ‘the QAM family’ as examples.” Reply 1. Yet, the
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`referenced amendment, which includes numerous additional clarifying recitations,
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`was made after the claims at issue in the present proceeding were already allowed.
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`See, e.g., EX1102 at 71, 127, 140, 168. In fact, PO explicitly stated on the record
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`that the amendments were made “to more precisely claim the subject matter.” Id. at
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`1
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`140. To support its position that PO amended its claims to overcome a rejection,
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`IPR2020-00034
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`Petitioner cites various documents. Reply 1-2 (citing EX2027 at 9, 12; EX1110,
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`756-758; EX1102, 140). Again, as indicated in Exs. 1110 and 1102, the claims had
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`already been allowed at the time “different types” 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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`Petitioner alleges that “PO wrongly contends Petitioner’s reliance on Yamano
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`‘is simply rehashing’ a previous argument presented in the reexams” because
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`2
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`Yamano was not cited for ‘different types’” but rather only for the address limitation.
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`IPR2020-00034
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`Reply 2. In fact, the reexam examiner was well aware of Yamano’s full teachings
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`(see, e.g., EX1110 at 837 (“Yamano … relat[es] to transmitting data packets over a
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`network at varying rates”)), citing many of the same portions of Yamano (i.e., FIG.
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`8, 1:1-29 and 19:54-20: 33) that Petitioner relies on in this proceeding (see, e.g., Pet.
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`7, 19, 22, and 32).
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`Petitioner alleges that “PO has put forth no credible basis for suggesting that
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`the art advanced … is cumulative of the art of record.” Reply 3. To the extent
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`Petitioner is arguing that Siwiak ‘398 does not disclose FSK and QAM, Siwiak ‘398
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`discloses both for the reasons given supra at 1. See also EX2016 at 6:27-28 re
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`FSK. In addition, the Office previously relied on Kamerman as disclosing “QAM
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`schemes.” EX1110 at 838. Thus, with respect to disclosing QAM, Davis is
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`cumulative of Siwiak ‘398 and Kamerman. POPR 38. PO has further explained
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`the redundancies of Davis and Christian in its POPR. See, e.g., POPR 30-41.
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`II. Denial of Institution is Warranted Under §314(a)
`Petitioner argues against denial under §314(a) because of “significant
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`differences between the IPR and litigation,” Reply, at 3, including: (1) “PO … has
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`requested a new claim construction here on a term it previously told the district court
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`‘do[es] not require construction’”; (2) Christian is relied on here “in a combination
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`that is not relied on in the district court”; (3) “Both parties rely on different experts
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`3
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`here and in the litigation”; and (4) “the district court case includes multiple grounds
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`IPR2020-00034
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`of invalidity … not at issue here.” Id. (emphases omitted).
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`With respect to (1), apparently Petitioner is referring to PO’s discussion of
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`“master/slave.” In fact, PO’s position as to the meaning of “master/slave” is the same
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`as its position in district court. See Morrow Expert Report (EX2025) at, e.g., ¶¶ 67-
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`73 & passim. This is not surprising, given that the Phillips’ claim construction
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`standard applies to both. Petitioner cannot manufacture a difference between the
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`litigation and IPR based on claim construction when the positions of the PO are
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`consistent. With respect to (2), PO has fully addressed why Christian is merely
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`cumulative to the art already considered by the Office. See, e.g., POPR 30-31, 39-
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`41. With respect to (3), the opinions of Petitioner’s experts also are substantially
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`identical, relying on identical passages from and identical annotations to the
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`references. POPR 30-34; also compare EX1103, passim, with EX2007, passim.
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`With respect to (4), Petitioner appears to suggest that the issues ultimately tried by
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`the district court may not be the same ones tried here. In fact, the complete overlap
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`with the issues raised in the IPR and the additional invalidity grounds in the litigation
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`demonstrate that validity will be fully and thoroughly addressed in the litigation.
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`Absent speculation, there is nothing to show that Petitioner will be denied a full and
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`fair opportunity in district court to present the invalidity defenses it has raised here.
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`4
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`IPR2020-00034
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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. However, such consideration weighs in favor of denial, just as was the case in
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`Sand Revolution at 18 (denying review under § 314(a) even though only General
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`Plastic factor 6 supported denial). See also POPR 26-41. While it is true that this
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`IPR is one of the first filed against the ‘580 Patent by Petitioner, contrary to
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`Petitioner’s argument that it did not have a “roadmap,” 6 previous IPRs, a
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`reexamination, and a completed district court litigation provided such a roadmap.
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`Petitioner attempts to distinguish the cases cited by PO. Reply 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 in this case. See NHK (IPR2018-00752, Paper 8)
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`at 19-20, E-One (IPR2019-00161, Paper 16) at 6-9, Magellan (IPR2019-01445,
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`Paper 12) 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 petition may “delay[] the time to trial.”
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`Reply 4. However, Petitioner does not allege that any such delay would result in a
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`trial after a FWD.1 In fact, even if transferred, trial is scheduled for October 2010,
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`likely well before any FWD.
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`1 The Federal Circuit has requested briefing on the issue. EX2026.
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`5
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`Dated: March 9, 2020
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`IPR2020-00034
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` Respectfully submitted,
`By:
`/Jason Shapiro/
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`Jason Shapiro (Reg. No. 35,354)
`Attorney for Patent Owner
`Rembrandt Wireless Technologies, LP
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`6
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`IPR2020-00034
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`CERTIFICATE OF SERVICE
`The undersigned certifies that pursuant to 37 C.F.R. § 42.6(e), a copy of the
`foregoing Patent Owner’s Sur-Reply and the accompanying exhibits were served via
`email (as previously consented to by counsel) on March 9, 2020 to lead and backup
`counsel of record for Petitioners as follows:
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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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`Dated: March 9, 2020
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`/Janet Dorgan/
`Name: Janet Dorgan
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`7
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