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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`
`
`APPLE INC.
`Petitioner,
`
`v.
`
`OPTIS CELLULAR TECHNOLOGY, LLC
`Patent Owner.
`
`
`___________________
`
`Case IPR2020-00465
`Patent No. 8,102,833
`___________________
`
`
`
`PATENT OWNER'S PRELIMINARY RESPONSE
`
`
`
`
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`10863940
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`TABLE OF CONTENTS
`
`Case IPR2020-00465
`Patent No. 8,102,833
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`I.
`II.
`
`B.
`
`Page
`INTRODUCTION ........................................................................................ 1
`FINTIV FACTORS FAVOR DISCRETIONARY DENIAL OF
`INSTITUTION UNDER 35 U.S.C. § 314(a) ............................................... 6
`A.
`Fintiv Factor #1: no evidence that the district court would
`grant a stay if a proceeding is instituted given that the
`institution date would be one month after the trial start date ............. 7
`Fintiv Factor #2: the court's trial date is one month before
`the Board's projected institution date and 13 months before
`Board's projected statutory deadline for a final written
`decision ............................................................................................... 8
`Fintiv Factor #3: There has been immense "investment in the
`parallel proceeding by the court and parties." .................................. 10
`Fintiv Factor #4: There is complete "overlap between issues
`raised in the petition and in the parallel proceeding." ...................... 11
`Fintiv Factor #5: "The petitioner and the defendant in the
`parallel proceeding are the same party." .......................................... 13
`Fintiv Factor #6: "Other circumstances that impact the
`Board's exercise of discretion, including the merits" favor
`non-institution. ................................................................................. 13
`III. OVERVIEW OF THE '833 INVENTIONS ............................................... 15
`A.
`SUMMARY OF THE '833 PATENT .............................................. 15
`B.
`LG's 3GPPP Technical Proposals Related to the '833 Patent .......... 20
`C.
`Priority Date and Prosecution History ............................................. 25
`IV. THE PRIOR ART REFERENCES DIFFER FROM THE '833
`INVENTIONS ............................................................................................ 26
`A. Qualcomm-037 ................................................................................. 26
`
`C.
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`D.
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`E.
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`F.
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`Page
`B.
`Cho ................................................................................................... 30
`Samsung-094 .................................................................................... 33
`C.
`D. Qualcomm-269 ................................................................................. 34
`CLAIM CONSTRUCTION ....................................................................... 36
`V.
`VI. PETITIONER FAILS TO SHOW THAT THE COMBINATION
`DISCLOSES ALL ELEMENTS OF CHALLENGED CLAIMS .............. 36
`A.
`Petitioner has not shown that the combination discloses
`element 1.1 or 8.1 ............................................................................. 36
`1.
`Petitioner has not shown that the combination
`discloses "first control signals" .............................................. 37
`Petitioner has not shown that the combination
`discloses "serially multiplexing" first control signals
`and data signals ...................................................................... 40
`Petitioner has not shown that the combination
`discloses the required relative placement of control
`signals and data signals in the multiplexed signals ............... 44
`The combination does not disclose element 1.2 or 8.2 .................... 47
`B.
`The combination does not disclose element 1.3 or 8.3 .................... 48
`C.
`The combination does not disclose element 1(d) ............................. 52
`D.
`VII. PETITIONER FAILS TO ANALYZE EACH INVENTION AS A
`WHOLE ...................................................................................................... 53
`A.
`Petitioner has not shown why a POSITA would have started
`with Qualcomm-037's sections 5.2.2.7 and 5.2.2.8.......................... 56
`Petitioner has not shown why a POSITA would have
`modified Qualcomm-037's principle of operation in steps (a)
`and (b) ............................................................................................... 58
`
`2.
`
`3.
`
`B.
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`Page
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`C.
`
`D.
`
`Petitioner has not shown why Qualcomm-037 or Cho teaches
`differential treatment of ACK/NACK signals and non-
`ACK/NACK control signals ............................................................. 67
`Petitioner has not provided any analysis as to why a POSITA
`would have applied Samsung-094 in a system that operates
`on a different operating principle ..................................................... 67
`Petitioner has not shown why a POSITA would have
`modified Qualcomm-269 to match the requirements on
`timing and puncturing positions ....................................................... 70
`VIII. CONCLUSION ........................................................................................... 73
`
`
`E.
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`TABLE OF AUTHORITIES
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`Case IPR2020-00465
`Patent No. 8,102,833
`
` Page(s)
`
`Cases
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) .......................................................................... 63
`Apple Inc. v. Fintiv Inc.,
`IPR2020-00019, Paper 11 (PTAB, March 20, 2020) ..................................passim
`Arendi S.A.R.L. v. Apple Inc.,
`832 F.3d 1355(Fed. Cir. 2016) ....................................................................passim
`Daiichi Sankyo Co., Ltd. v. Matrix Laboratories, Ltd.,
`619 F.3d 1346 (Fed. Cir. 2010) .......................................................................... 61
`DSS Technology Management, Inc. v. Apple Inc.,
`885 F.3d 1365 (Fed. Cir. 2018) .......................................................................... 39
`E-One, Inc. v. Oshkosh Corp.,
`IPR2019-00161, Paper 16, 6-9 (PTAB May15, 2019) ......................................... 9
`Ecolochem, Inc. v. S. California Edison Co.,
`227 F.3d 1361 (Fed. Cir. 2000) .......................................................................... 56
`Google LLC v. Uniloc 2017 LLC,
`IPR2020-00115, Paper 8 ..................................................................................... 12
`Intel Corporation v. VLSI Technology LLC,
`IPR2020-00106, Paper 17, 10-11 (PTAB May 17, 2020) ............................ 10, 12
`Janssen Pharmaceutica N.V. v. Mylan Pharm., Inc.,
`456 F. Supp. 2d 644 (D.N.J. 2006), aff’d by 223 Fed. Appx. 999
`(Fed. Cir. 2007) ................................................................................................... 57
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ...................................................................... 53, 58
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................... 44, 66
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`Page(s)
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`Next Caller Inc. v. TRUSTID Inc.,
`IPR2019-00961, Paper 10, 9-15 (PTAB Oct. 16, 2019)....................................... 9
`Plas-Pak Industries, Inc. v. Sulzer Mixpac AG,
`600 Fed. Appx 755 (Fed. Cir. 2015) ................................................................... 61
`In re Ratti,
`270 F.2d 810 (CCPA 1959) .......................................................................... 60, 61
`Saint Lawrence Comm’ns LLC v. ZTE Corp.,
`No. 2:15-CV-349-JRG, 2017 U.S. Dist. LEXIS 84290 (E.D. Tex.
`Jan. 17, 2017) .................................................................................................... 8, 9
`
`Sand Revolution II, LLC, v. Continental Intermodal Group – Trucking
`LLC,
`IPR2019-01393, Paper 12, 16-17 (PTAB Feb. 5, 2020) .................................... 12
`Tessera Advanced Techs., Inc. v. Samsung Elecs. Co.,
`No. 2:17-CV-00671-JRG, 2018 U.S. Dist. LEXIS 120999 (E.D.
`Tex. July 19, 2018) ............................................................................................... 8
`Tokai Corp. v. Easton Enters., Inc.,
`632 F.3d 1358 (Fed. Cir. 2011) .................................................................... 65, 69
`TQ Delta, LLC v. Cisco Sys., Inc.,
`942 F.3d 1352 (Fed. Cir. 2019) .......................................................................... 39
`In re Van Os,
`844 F.3d 1359 (Fed. Cir. 2017) ........................................................ 43, 44, 46, 52
`W.L. Gore & Assoc., Inc. v. Garlock, Inc.,
`721 F.2d 1540 (Fed. Cir. 1983) .......................................................................... 69
`Statutes
`35 U.S.C. § 103 ........................................................................................................ 66
`35 U.S.C. § 314(a) ................................................................................................. 6, 7
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`Case IPR2020-00465
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`Page(s)
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`Regulations
`37 C.F.R. § 42.65(a) ................................................................................................. 53
`Other Authorities
`MPEP § 2143.01 ...................................................................................................... 60
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`
`Ex. 2001
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`Ex. 2002
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`Ex. 2003
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`Ex. 2004
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`Ex. 2005
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`Ex. 2006
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`Ex. 2007
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`Ex. 2008
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`Ex. 2009
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`Ex. 2010
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`Ex. 2011
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`Ex. 2012
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`Ex. 2013
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`Patent No. 8,102,833
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`EXHIBIT LIST
`
`Declaration of Professor Vijay Madisetti in Support of Patent
`Owner's Preliminary Response
`
`2020-06-09 Docket Control Order in parallel district court
`action
`
`Judge Gilstrap's Standing Order Regarding Pretrial
`Procedures in Civil Cases During the Present COVID-19
`Pandemic
`
`Law360 Article on Judge Gilstrap's readiness for resuming
`trial in June
`
`2020-04-07 Claim Construction Order in parallel district
`court action
`
`Claim Construction Order in Optis Cellular Technology LLC
`et al. v. Kyocera Corporation, 2:16-cv-0059-JRG-RSP (E.D.
`Tex.)
`
`Email from Apple litigation counsel electing prior art
`combinations in the parallel district court case
`
`Table of Contents for Dr. Jonathan Wells' Invalidity Report
`Of the '833 Patent
`
`Excerpt of 2019-08-19 Apple's Invalidity Contentions
`
`3GPP TS 36.212 v8.1.0 (2007-11)
`
`3GPP TS 36.212 v8.3.0 (2008-05)
`
`3GPP TS 36.212 v8.8.0 (2009-12)
`
`3GPP Tdoc R1-08267, "PUSCH multiplexing of data,
`control and ACK/NACK information" by LG Electronics,
`submitted to 3GPP TSG RAN WG1 #51bis
`
`Ex. 2014
`
`R1-080631 (Report of 3GPP TSG RAN WG1 #51bis)
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`Ex. 2015
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`Ex. 2016
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`Ex. 2017
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`Ex. 2018
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`Ex. 2019
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`Ex. 2020
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`Ex. 2021
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`Ex. 2022
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`Ex. 2023
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`Ex. 2024
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`Ex. 2025
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`Ex. 2026
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`Ex. 2027
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`Ex. 2028
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`2008-01-30 Email from Daewon Lee
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`2008-01-30 Email from Daewon Lee
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`2008-01-30 Email from Stefan Parkvall of Ericsson in
`response to Daewon Lee exchange
`
`3GPP R1-080871, "Summary of email discussion on UL
`control signaling" submitted for discussion to TSG-RAN
`WG1 #52
`
`3GPP R1-081004, "Multiplexing of ACK/NACK in
`PUSCH," submitted by LG Electronics to TSG-RAN WG1
`#52
`
`3GPP R1-081005, "Multiplexing of Control and Data in
`PUSCH," submitted by LG Electronics to TSG-RAN WG1
`#52
`
`R1-081166, "Report of 3GPP TSG RAN WG1 #52"
`
`R1-081157, Change Request to TS 36.212 v8.1.0
`
`Stefan Parkvall biography on IEEE Xplore
`
`R1-081732, "Multiplexing of Rank and CQI/PMI in PUSCH
`Channel," submitted to 3GPP TSG-RAN Working Group
`1#53 (May 2008)
`
`R1-080002, "Draft Report of 3GPP TSG RAN WG1 #51"
`
`Tdoclist for RAN#51 (November 2007)
`
`R1-075111, Change Request to TS 36.212, v. 8.0.0
`
`Directory Listing for TSG RAN WG1 #51 meeting, showing
`R1-075111 (Ex. 2027) had a date of "2007/11/22" associated
`with it
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`INTRODUCTION
`The Petitioner filed a Petition on February 28, 2020 to challenge the '833
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`Patent No. 8,102,833
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`I.
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`patent, fully aware that under the district court schedule, a jury would likely return
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`a verdict on the validity of the patent even before the Board decides whether to
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`institute. Since then, the trial has been moved up to August 3, 2020, making it
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`almost certain that the jury will reach a decision on the same ground of challenge
`
`before the preliminary decision by the Board. Given that all six Fintiv factors
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`favor a discretionary denial, the Board should exercise this discretion to avoid
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`duplicative efforts that waste the judicial, administrative and the parties' resources
`
`and to avoid potentially inconsistent outcome.
`
`Petitioner also fails to carry its burden (under any standard of proof)
`
`concerning the substance of the patentability challenge. First, it fails to point out
`
`specifically where in prior art numerous elements occurred. In fact, it concedes
`
`that they did not, resorting to argue that certain limitations would have been
`
`"obvious." These include:
`
`• "the first control signals are placed at a front part of the multiplexed signals
`
`and the data signals are placed at a rear part of the multiplexed signals," Pet.
`
`35-39 (not contending either Qualcomm-037 or Cho specifically discloses
`
`the limitation);
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`• "mapping ACK/NACK control signals to specific columns of the 2-
`
`dimensional resource matrix, wherein the specific columns correspond to
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`SC-FDMA symbols right adjacent to the specific SC-FDMA symbols," Pet.
`
`54-55;
`
`• "wherein the ACK/NACK control signals overwrite some of the multiplexed
`
`signals mapped to the 2-dimensional resource matrix at step (b) . . . ." in the
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`channel interleaving rather than data/control multiplexing stage, Pet. 55-56;
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`and
`
`• Data puncturing occurs "from the last row of the specific columns." Pet. 57-
`
`59.
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`On the reasons to combine, as a preliminary matter, it fails to consider the
`
`fact that the relevant portions of its base reference, Qualcomm-037 (sections
`
`5.2.2.7 and 5.2.2.8), were rejected by the working group. No explanation is given
`
`why a POSITA would have started with a rejected design proposal.
`
`But even if Qualcomm-037 could have been considered a proper starting
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`point, Petitioner had to resort to contorted and self-inconsistent gymnastic
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`maneuverers to argue obviousness, using the claims as a roadmap in the process.
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`First, to come up with the steps recited in claim 1(a) and 1(b), Petitioner suggests
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`that a POSITA would have abandoned Qualcomm-037's principle of operation
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`which requires placing (blue) control signals adjacent to (green) reference signals
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`(for improved reliability) to instead spread the control signals (blue) across all SC-
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`FDMA symbols (one symbol per column). Pet. 36-39. No explanation is given
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`why a POSITA would have expected Qualcomm-037 as modified would continue
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`to operate as intended.
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`Next, to argue that a POSITA would have placed ACK/NACK signals next
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`to reference signals as required by step 1(c),1 Petitioner resorts to Samsung-094.
`
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`1 "mapping ACK/NACK control signals to specific columns of the 2-
`dimensional resource matrix, wherein the specific columns correspond to SC-
`FDMA symbols right adjacent to the specific SC-FDMA symbols" [reserved for
`RS].
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`Pet. 54-55.
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`Samsung-094 teaches placing both ACK/NACK and non-ACK/NACK
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`control signals next to reference signals, that is, a configuration similar to
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`Qualcomm-037 before transformation. Ex. 1008 at 4 (concluding "the placement
`
`of ACK/NAK and CQI signaling . . . should be at the symbols immediately next to
`
`the RS); id. at 3 ("[I]t becomes apparent that the data-associated PUCCH [i.e.,
`
`control information] should be placed immediately next to the DM RS.").
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`(Qualcomm-037 before transformation & Samsung-094)
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`Petitioner picks Samsung-094's disclosures regarding the location of the
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`ACK/NAK signals while conveniently ignoring the associated teaching regarding
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`the location of the non-ACK/NACK signals ("first control signals" such as CQI).
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`Again, no explanation is given as to why a POSITA would take one half of
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`Samsung-094's proposal (location of ACK/NAK signals) and ignore the second
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`half (location of other data-associated control signals). That would contravene the
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`understanding that a POSITA would review references in their entirety. But such
`
`review would have prompted a POSITA to conclude that the mapping obtained
`
`after steps (a) and (b) are at odds with that in Samsung-094, and that they should
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`undo the all the previous changes—of course, Petitioner then would not be able to
`
`assemble the invention in the piecemeal fashion it proposes.
`
`Finally, to find two other missing limitations in step (c), in particular (i) the
`
`step of "mapping ACK/NACK control signals to specific columns" takes places
`
`"after mapping the multiplexed signals [in step(b)] (Pet. 24, claim construction)
`
`and (ii) "wherein the ACK/NACK control signals overwrite some of the
`
`multiplexed signals mapped to the 2-dimensional resource matrix at step (b) from
`
`the last row of the specific columns," Petitioner resorts to Qualcomm-269. Pet.
`
`55-59. Oddly, Petitioner concedes that Qualcomm-269 does not disclose either
`
`limitation; but it nevertheless contends that it would have been "obvious." Id.
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`For example, Qualcomm-269's ACK/NAK signals puncture data in the
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`control/data multiplexing stage. Ex. 1007, Fig. 1. Petitioner argues that it would
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`Patent No. 8,102,833
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`be "obvious" to a POSITA to have the data puncturing occurs in the channel
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`interleaving stage and therefore satisfying the timing requirement. Pet. 56. It does
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`not explain why that would be so when in Qualcomm-269, the channel interleaving
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`stage appears before data/control multiplexing (Ex. 1007, Fig. 1); and the claims—
`
`according to Petitioner—require data/control multiplexing occur before mapping
`
`multiplexing signals in step (b) and mapping multiplexed signals occur before
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`"mapping ACK/NACK signals." Pet. 24 (claim construction). Thus, even if data
`
`puncturing appears in the channel interleaving stage (and it is unclear how this
`
`would occur), data puncturing would still be before the data/control multiplexing
`
`step and the mapping of multiplexed signals step.
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`Similarly, Petitioner's reasoning regarding why it would have been obvious
`
`to overwrite some of the data symbols "from the last row of the specific columns"
`
`reeks ex post rationalization. Pet. 53. Petitioner therefore has failed to make a
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`prima facie case of obviousness under any standard of proof.
`
`For these and the reasons stated below, the Board should deny the Petition.
`
`II. FINTIV FACTORS FAVOR DISCRETIONARY DENIAL OF
`INSTITUTION UNDER 35 U.S.C. § 314(a)
`In Apple Inc. v. Fintiv Inc., IPR2020-00019, Paper 11 (PTAB, March 20,
`
`2020) (precedential), the Board set forth a number of factors related to a parallel,
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`co-pending proceeding in determining whether to exercise discretionary institution
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`or denial under 35 U.S.C. § 314(a). For the same reasons that the Board denied
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`Apple's petition in Fintiv, the Board should deny its petition here as well.
`
`A. Fintiv Factor #1: no evidence that the district court would grant a
`stay if a proceeding is instituted given that the institution date
`would be one month after the trial start date
`The first Fintiv factor is "whether the court granted a stay or evidence exists
`
`that one may be granted if a proceeding is instituted." Fintiv, Paper 11 at 6.
`
`Currently, a trial is scheduled to start in the parallel district court case on August 3,
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`2020. Ex. 2002 (amended docket control order) at 1. Patent infringement trials
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`before Judge Gilstrap have generally been five to six court days. Thus, a jury will
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`likely render a verdict on the subject patent's validity even before the due date of
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`the Board's institution decision.
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`Given the advanced stage of the litigation—the parties will file Daubert and
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`dispositive motions by the end of day today (6/18/2020) and the trial is to begin in
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`1.5 months, well before the due date for the Board's institution decision (Ex.
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`2002)—it is highly unlikely that Court will grant a stay should Apple seek one at
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`this late stage.2 For example, Judge Gilstrap's standing order concerning
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`COVID19 states that while he will "consider, where warranted, multiple requests
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`2 Apple has not sought a stay of the district court proceeding since the start
`of the litigation.
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`for extensions over time," he cautioned that "[a]ll such extensions must be
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`reasonable in length, and none can effect a complete halt of case activities for a
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`long period of time." Ex. 2003.
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`The Court in the Eastern District of Texas has also noted that "[i]t is now
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`well established that this Court will not, barring exceptional circumstances, grant a
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`stay of proceedings for the mere filing of an IPR." Tessera Advanced Techs., Inc.
`
`v. Samsung Elecs. Co., No. 2:17-CV-00671-JRG, 2018 U.S. Dist. LEXIS 120999,
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`at *10-11 (E.D. Tex. July 19, 2018). This means it is highly unlikely that, even if
`
`Apple moves for a stay now, the Court would have granted a stay before trial.
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`Moreover, Petitioner has only filed petitions against three of the six asserted
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`patents. When IPRs cannot fully resolve all claims-in-suit, the court in the Eastern
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`District of Texas would deny a stay even if the IPRs were instituted. See, e.g.,
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`Saint Lawrence Comm'ns LLC v. ZTE Corp., No. 2:15-CV-349-JRG, 2017 U.S.
`
`Dist. LEXIS 84290, at *8-9 (E.D. Tex. Jan. 17, 2017) (IPR institution on less than
`
`all the patents favors denying discretionary stay). This diminishes the chance that
`
`Apple can get a stay before the jury trial even further.
`
`Thus, the first Fintiv factor favors discretionary denial.
`
`B.
`
`Fintiv Factor #2: the court's trial date is one month before the
`Board's projected institution date and 13 months before Board's
`projected statutory deadline for a final written decision
`The second Fintiv Factor is "proximity of the court's trial date to the Board's
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`projected statutory deadline for a final written decision." Fintiv, Paper 11 at 6. As
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`Fintiv explains, "[i]f the court's trial date is earlier than the projected statutory
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`deadline, the Board generally has weighed this fact in favor of exercising authority
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`to deny institution under NHK." Id., Paper 11 at 9. In this case, this factor weighs
`
`particularly in favor of discretionary denial.
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`In the parallel district court, Judge Gilstrap has scheduled a jury trial starting
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`on August 3, 2020 and a jury verdict is expected by mid-August. Ex. 2002.3 That
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`is, the jury will render a decision on the validity of the '833 patent before the
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`September 18, 2020 deadline for the Board's institution decision. If the Board
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`institutes a trial, the final written decision will be due in mid-September 2021,
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`approximately 13 months after the jury verdict. Given the 13-month gap between
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`the scheduled trial date and the final written decision deadline, this factor weighs
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`heavily in favor of the discretionary denial of institution.
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`Indeed, the Board has denied institution when the gap was as few as one
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`month. See Next Caller Inc. v. TRUSTID Inc., IPR2019-00961, Paper 10, 9-15
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`(PTAB Oct. 16, 2019) (trial scheduled three months before FWD); E-One, Inc. v.
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`Oshkosh Corp., IPR2019-00161, Paper 16, 6-9 (PTAB May15, 2019) (one month
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`3 Recently, Judge Gilstrap "told Law360 that he anticipates the court
`allowing jury trials to resume at the start of June" (Ex. 2004) and there is no
`indication that he would delay the current trial.
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`gap); NHK (a six-month gap); Intel Corporation v. VLSI Technology LLC,
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`Patent No. 8,102,833
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`IPR2020-00106, Paper 17, 5-13 (PTAB May 17, 2020) (a 7-month gap).
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`C. Fintiv Factor #3: There has been immense "investment in the
`parallel proceeding by the court and parties."
`As explained in Fintiv:
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`[I]f, at the time of the institution decision, the district court has issued
`substantive orders related to the patent at issue in the petition, this fact
`favors denial. Likewise, district court claim construction orders may
`indicate that the court and parties have invested sufficient time in the
`parallel proceeding to favor denial.
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`Fintiv, Paper 10 at 9-10. Here, this factor weights strongly in favor of denying
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`institution.
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`In the parallel district court case, the Court held a Markman hearing in late
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`January and issued a claim construction order on April 7, 2020. Ex. 2005. Fact
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`discovery has closed. The parties have exchanged expert reports (including reports
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`on the '833 patent's validity), and will file by the end of the day dispositive and
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`Daubert motions. Ex. 2002. More resources will be devoted to the district court
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`case in the coming months in preparation of the August trial. Thus, the parties and
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`the court have already made and will continue to make in the next couple of
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`months tremendous "investment in the parallel proceeding." The third Fintiv factor
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`therefore also weighs heavily in favor of discretionary denial.
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`D. Fintiv Factor #4: There is complete "overlap between issues
`raised in the petition and in the parallel proceeding."
`The exact same combination of references at issue in the Petition is also at
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`issue in the district court. See Ex. 2007 at 1 (elected grounds for '833). In
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`particular, as shown in Exhibit 2007, the first elected combination for the '833
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`patent is the same as the one raised in the Petition. Id. Petitioner also relies on the
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`same expert, Dr. Jonathan Wells, for the Petition and the district court case and in
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`fact employs some of the same attorney for the district court case and the IPR.
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`Compare Ex. 1002 with Ex. 2008 (cover and TOC of Wells '833 report); Pet. 83
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`(signature block) with Ex. 2007 (sender of the email).
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`Apple attempts to justify its late petition by alleging that there are too many
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`claims relating to the '833 patent at issue in the parallel infringement action. Pet. 9.
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`Basically, Apple is making a remarkable allegation that it will not be given
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`sufficient time to present its case and its due process is impaired in a federal
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`district court. If that argument ever had any merit, that merit has disappeared. The
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`Patent Owner has reduced the number of claims for the '833 patent to the two
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`independent claims. Ex. 2007 at 2.
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`Further, in this case, the fact that there are more claims at issue in the
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`Petition than those elected for trial does not weigh in favor of discretionary
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`institution. Ex. 2007 at 2. As evidenced by the Petition, the analysis for the
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`dependent claims relies on essentially the same evidence and argument as those for
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`Patent No. 8,102,833
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`the independent claims; and Petitioner devotes the bulk of the analysis to claim 1.
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`Compare Pet. 65-77 (claims 2-7) with Pet. 31-65 (claim 1). For example, the
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`Petition spends 34 pages on claim 1 but only 12 pages on claims 2-7 collectively,
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`with many referencing back to the analysis of claim 1. See Pet. 65-77. Thus, like
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`the district court, the focus of the inter partes review will be on the independent
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`claims as well. Simply put, there is substantial, if not, complete overlap between
`
`this inter partes review proceeding and the district court case.
`
`Hence, Fintivi factor 4 also favors discretionary denial. See Intel
`
`Corporation v. VLSI Technology LLC, IPR2020-00106, Paper 17, 10-11 (PTAB
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`May 17, 2020) (finding "the issues raised in the Petition largely overlap with those
`
`currently raised in the Western District of Texas litigation," and thus factor #4
`
`weighed in favor of denying institution); Google LLC v. Uniloc 2017 LLC,
`
`IPR2020-00115, Paper 8 at 8 (denying institution where petitioner raised many
`
`more obviousness combinations in parallel district court action); Sand Revolution
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`II, LLC, v. Continental Intermodal Group – Trucking LLC, IPR2019-01393, Paper
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`12, 16-17 (PTAB Feb. 5, 2020) (same).
`
`The fourth Fintiv factor therefore weighs also in favor of discretionary stay.
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`E.
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`Fintiv Factor #5: "The petitioner and the defendant in the parallel
`proceeding are the same party."
`As in Fintiv, this factor weighs in favor of denial, as Petitioner is both the
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`defendant in the parallel district court proceeding and the petitioner here. Fintiv,
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`Paper 10 at 11.
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`F.
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`Fintiv Factor #6: "Other circumstances that impact the Board's
`exercise of discretion, including the merits" favor non-institution.
`The other facts bearing upon the discretionary denial decision only confirm
`
`that institution should be denied.
`
`First, on the merits, the Board has already entertained a petition on the '833
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`patent from Huawei two years ago and declined to institute on the merit. Ex. 1011.
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`Apple now attempts to make its case with four references and multiple steps of
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`convoluted modifications. Moreover, as explained in Section VI below, even with
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`those multiple references and numerous modifications, Petitioner still cannot show
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`where in prior art each material limitation was present, let alone being able to show
`
`a reason to combine the set of references with disclosures inconsistent with one
`
`another (see Section VII).
`
`Second, Petitioner's only excuse for its delay in filing the petition was
`
`allegedly the large number of claims asserted by Patent Owner. That excuse is not
`
`backed up by the facts: While Petitioner spent 34 pages on claim 1, it devoted no
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`more than 12 pages on claims 2 to 7 collectively. Compare Pet. 65-77 (claims 2-7)
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`with Pet. 31-65 (claim 1). The analysis on claims 8-14 largely referred back to that
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`Patent No. 8,102,833
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`for claims 1-7, spanning a total of 6 pages. Pet. 77-83. The remainder of the
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`petition relates to substance that Petitioner would include regardless whether the
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`Petition has one claim or 14 claims: introduction, mandatory notices, certificate of
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`grounds for standing, printed publication status, 314(a)/325(d) issues, technology
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`background, subject patent overview, prior art overview and skill level. Pet. 1-31.
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`In other words, the number of claims did not significantly affect the drafting of the
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`petition. Moreover, Petitioner had known about the references since at least
`
`August 19, 2019 when it served its invalidity contentions. Ex. 2009.
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`Third, given the schedule at the district court and the grounds of invalidity
`
`chosen by Petitioner, (Ex. 2002 & Ex. 2007), Petitioner will have the opportunity
`
`to present its validity cases in court on more desired theories than it can before the
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`Board. There, in addition to the asserted ground, it also elected two other similar
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`grounds to challenge the validity of the '833 patent. (That fact also undermines
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`Petitioner's purported reason for why IPR is more efficient: if it wanted to
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`streamline the case, it should have down-selected the grounds of challenge rather
`
`than expanded them). Instituting this duplicative petition would prejudice Patent
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`Owner and waste the Board's resources, may introduce the risk of inconsistent
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`resu