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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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`OPTIS CELLULAR TECHNOLOGY, LLC
`Patent Owner.
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`
`___________________
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`Case IPR2020-00465
`Patent No. 8,102,833
`___________________
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`PATENT OWNER'S SUR-REPLY TO PETITIONER'S REPLY TO
`PATENT OWNER'S PRELIMINARY RESPONSE
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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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`10855810
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`Case IPR2020-00465
`Patent No. 8,102,833
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`TABLE OF CONTENTS
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`Page
`Factor 1: stay at this stage is highly improbable ................................ 1
`Factor 3: Apple confuses Fintiv Factor 3 General Plastic
`factors ................................................................................................. 1
`Factor 4: Notwithstanding Apple's last-minute
`gamesmanship, the Petition and the district court case
`overlap substantially ........................................................................... 2
`Factor 6: Apple inappropriately used the Reply to
`supplement its Petition after reviewing the POPR ............................. 5
`None of the other factors recited by Apple favors institution ............ 7
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`A.
`B.
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`C.
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`D.
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`E.
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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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`EXHIBIT LIST
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`Declaration of Professor Vijay Madisetti in Support of Patent
`Owner's Preliminary Response
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`2020-06-09 Docket Control Order in parallel district court
`action
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`Judge Gilstrap's Standing Order Regarding Pretrial
`Procedures in Civil Cases During the Present COVID-19
`Pandemic
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`Law360 Article on Judge Gilstrap's readiness for resuming
`trial in June
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`2020-04-07 Claim Construction Order in parallel district
`court action
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`Claim Construction Order in Optis Cellular Technology LLC
`et al. v. Kyocera Corporation, 2:16-cv-0059-JRG-RSP (E.D.
`Tex.)
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`Email from Apple litigation counsel electing prior art
`combinations in the parallel district court case
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`Table of Contents for Dr. Jonathan Wells' Invalidity Report
`Of the '833 Patent
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`Excerpt of 2019-08-19 Apple's Invalidity Contentions
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`3GPP TS 36.212 v8.1.0 (2007-11)
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`3GPP TS 36.212 v8.3.0 (2008-05)
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`3GPP TS 36.212 v8.8.0 (2009-12)
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`3GPP Tdoc R1-08267, "PUSCH multiplexing of data,
`control and ACK/NACK information" by LG Electronics,
`submitted to 3GPP TSG RAN WG1 #51bis
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`Ex. 2014
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`R1-080631 (Report of 3GPP TSG RAN WG1 #51bis)
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`10836940
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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
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`3GPP R1-080871, "Summary of email discussion on UL
`control signaling" submitted for discussion to TSG-RAN
`WG1 #52
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`3GPP R1-081004, "Multiplexing of ACK/NACK in
`PUSCH," submitted by LG Electronics to TSG-RAN WG1
`#52
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`3GPP R1-081005, "Multiplexing of Control and Data in
`PUSCH," submitted by LG Electronics to TSG-RAN WG1
`#52
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`R1-081166, "Report of 3GPP TSG RAN WG1 #52"
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`R1-081157, Change Request to TS 36.212 v8.1.0
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`Stefan Parkvall biography on IEEE Xplore
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`R1-081732, "Multiplexing of Rank and CQI/PMI in PUSCH
`Channel," submitted to 3GPP TSG-RAN Working Group
`1#53 (May 2008)
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`R1-080002, "Draft Report of 3GPP TSG RAN WG1 #51"
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`Tdoc list for RAN#51 (November 2007)
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`R1-075111, Change Request to TS 36.212, v. 8.0.0
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`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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`Ex. 2029
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`(Gilstrap) Order denying request for stay of trial because of
`Covid-19
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`Ex. 2030
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`Ex. 2031
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`Ex. 2032
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`Ex. 2033
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`Ex. 2034
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`Ex. 2035
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`Ex. 2036
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`Ex. 2037
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`Ex. 2038
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`Ex. 2039
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`2020-07-07 Email exchange between Patent Owner and
`Petitioner regarding filings of replies in support of summary
`judgment motions and motions to exclude/strike
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`2020-07-03 Apple's Identification of Prior Art pursuant to 35
`USC § 282
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`2020-07-02 Email from Sheasby to Apple Counsel
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`Texas Coronavirus Map and Case Count, New York Time,
`July 7, 2020, 2:10 P.M. E.T.
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`U.S. Patent No. 8,467,367, issued June 18, 2013 to Malladi
`et al. ("Malladi-367")
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`U.S. Patent No. 8,374,161, issued Feb. 12, 2013 to Malladi,
`("Malladi-161")
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`2020-07-07 Email from Board authorizing Patent Owner to
`file sur-replies (with required page limits) in IPR2020-00465,
`IPR2020-00466, IPR2020-00642
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`Excerpt of Expert Report of DR. Jonathan Wells Regrading
`Invalidity Of US Patent No. 8,102,833
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`Excerpt of Apple's 2nd Amended Invalidity Contentions dated
`March 31, 2020
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`Excerpt of Rebuttal Expert Report of Dr. Vijay Madisetti
`Regarding Invalidity Of US Patent No. 8,102,833
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`Apple represented to this Board that it sought a reply to address the Apple v.
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`Fintiv factors. It used the reply instead to: (1) respond substantively to the POPRs
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`on the technical merits, in effect using the POPRs as a roadmap; (2) creating "new"
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`facts, e.g., by announcing in a cryptic letter sent less than 30 minutes before it filed
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`the reply that it was going to drop certain grounds of invalidity in the district court
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`for the '833 patent (Ex. 1063). It also impermissibly addressd the legality of the
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`Fintiv decision, which Patent Owner will not address due to the page limit. As to
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`Apples' Fintiv factor analysis, it is inapposite and/or improper.
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`A.
`Factor 1: stay at this stage is highly improbable
`Apple alleges that because it had not requested a stay, the Board should
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`assume this factor is neutral. Reply at 1. Not so. Apple does not dispute that the
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`district court trial is scheduled to start in less than a month, the Board's institution
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`decision would come after the trial, Judge Gilstrap has never before granted a stay
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`pre-institution, and Apple has not cited a single instance where he has granted a
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`stay where review of fewer than all patents at issue was instituted. POPR at 7-8;
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`Reply at 1. Judge Gilstrap recently denied a request to stay a trial because of
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`Covid-19, further demonstrating the unlikeliness of a stay. Ex. 2029.
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`B.
`Factor 3: Apple confuses Fintiv Factor 3 General Plastic factors
`Apple does not dispute any of the facts regarding Fintiv factor 3 presented in
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`POPR. Reply 1-2; POPR 10-11. Since the POPR, the parties have filed
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`oppositions to each other's dispositive and Daubert motions and have agreed to file
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`the associated replies tomorrow. Ex. 2030. That is, even more substantive work
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`has occurred in the district court.
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`Apple argues that because it exercised diligence and allegedly gained no
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`tactical advantage, Fintiv factor 3 weighs in favor of institution. Reply at 1-2. But
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`diligence and tactical advantage are factors addressed under General Plastic.
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`General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357,
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`Paper 19 at 16 (PTAB, Sept. 6, 2017) (precedential). Apple's case law is also not
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`on point: unlike Med-El, where petitioner demonstrated that the ground of petition
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`was only newly known to it a few days before filing the petition, Apple does not
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`dispute that it has known about the particular combination since August 2019. See
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`Ex. 2009; POPR 14. That is, contrary to its representation to the Board, Apple did
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`not search for any new art for the Petition. Reply 1. Moreover, the totality of the
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`circumstance indicates that Apple has gained undue advantage by using POPR as a
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`roadmap to surreptitiously modify its Petition by arguing the merits of its case and
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`after wasting Patent Owner's resources, unilaterally announcing that it would
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`abandon certain grounds of challenge in the district court. See Reply 2, 3-4.
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`C.
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`Factor 4: Notwithstanding Apple's last-minute gamesmanship, the
`Petition and the district court case overlap substantially
`Apple asserts that it has agreed to drop two nearly identical grounds of
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`challenge in the district court, one of which is the same as that in the Petition. Ex.
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`1063. This is a move devised solely by Apple. That maneuver is not going to
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`avoid substantial overlap between the two proceedings.
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`First, the very references (Exs. 1005-1008) that Apple relies on in the
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`Petition and that it allegedly has agreed to drop from the district court case still
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`appear on Apple's formal statutory notice of prior art at issue in the case served on
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`July 3 (i.e., the very next day after Apple represented to the Board that it had
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`withdrawn those references from the district court action). Ex. 2031-p.4 at row 11
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`(Cho), p. 6 at rows 5, 7, and 14 (the other three references at issue in this Petition),
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`row 8 (Qualcomm-926 that is substantially the same as Qualcomm-269 and which
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`Apple also represented it would drop in Ex. 1063). Further, both Apple's expert
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`and Patent Owner's expert have opined on and testified regarding the two grounds
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`of validity that Apple wants to drop in the district court and Patent Owner has
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`made clear that it intends to present the issues to the jury. Ex. 2032 ("PanOptis
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`intends to present all of the art Apple has cited as to these patents to the jury and
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`obtain a definitive ruling on validity.").
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`Apple also fails to inform the Board that the ground of challenge remaining
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`in the district court ("Ground 3") relies on two of the same references (Exs. 1006
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`and 1008) as the Petition. Ex. 2007 at 1 (1 & 2 are grounds Apple attempts to
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`withdraw from the district court case).
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`Ground 3 additionally relies on U.S. 8,467,367 (Malladi-367, Ex. 2034) and
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`US 8,374,161 (Malladi-161, Ex. 2035), which replace Qualcomm-269 (Ex. 1007)
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`and Cho (Ex. 1005) respectively. The similarities in analysis can be readily seen
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`from Apple's second amended invalidity contentions served on March 31, 2020
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`(Ex. 2038). In the contentions, Apple treated Cho interchangeably with Malladi-
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`161 and Qualcomm-926 (R1-073269) interchangeably with Malladi-367. Ex. 2038
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`at 80-83 (Cho and Malladi-161 are lumped together in Apple's analysis for the
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`multiplexing limitation with exactly the same reason for modification), 88-91
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`(Qualcomm-269 and Malladi-367 are lumped together in obviousness analysis for
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`the ACK/NACK punctuirng limitation with the same reason for modification).
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`The similarity between Ground 3 ground and the Petition's ground of
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`challenge is also readily seen from Dr. Wells' analysis for these two combinations.
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`Compare Ex. 1002 ¶¶ 76-78, 79-84, 85-94, 95-101, 102-104, 105-113, 114-119,
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`120-123 (Petition ground) with respectively Ex. 2037, ¶¶ 268-270, 271-278, 279-
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`288, 289-294, 295, 296-306, 307-312, 313-316 (Malladi ground). Dr. Wells used
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`similar language for both what the references supposedly disclosed and the reasons
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`for combining. Id.
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`For example, for both Cho and Malladi-161, Dr. Wells asserts that they
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`teach (1) a multiplexing control and data "similar to Qualcomm-037," (2) the
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`multiplexing allegedly creates a 2-dimensional array of symbols having a control
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`information at the top and data at the bottom; (3) each resulting "symbol block
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`comprises multiple subcarriers, and the set of symbol blocks together corresponds
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`to the information transmitted from the two-dimensional array in Qualcomm[-037],
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`in which each symbol block corresponds to a column in the array and the multiple
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`subcarriers in each symbol block correspond to the rows of the array." Ex. 1002,
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`¶ 82 (Cho); Ex. 2037, ¶¶ 275, 274 and 276 (Malladi-161).
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`Similarly, the relevant parts of Qualcomm-269 and Malladi-367—i.e.,
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`Figure 1 of Qualcomm-269 and Figures 5A and 5B of Mallaid-367—are similar.
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`Ex. 2039, ¶ 83 (the parts relied on for Malladi-367 is "very similar to Figure 1 of
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`Qualcomm-269 [Ex 1007] in relevant part"); compare Ex. 1007, Fig. 1 and Ex.
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`2034, Figs. 5A, 5B, 6A.
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`D.
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`Factor 6: Apple inappropriately used the Reply to supplement its
`Petition after reviewing the POPR
`While the strength of the Petition is one factor in Fintiv, that does not mean
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`it is procedurally appropriate for Apple to use a Reply to modify and supplement
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`its petition. For example, to justify its piecemeal analysis of the four-reference
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`combination, it now asserts that "Qualcomm-037 and -269 teach how to form
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`signals for transmission, whereas Cho and Samsung-094 discloses where to place
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`Patent No. 8,102,833
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`particular signals." Reply 3. That statement appears nowhere in the Petition. Its
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`attempt to make this argument now, without any factual support shows why it has
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`not met the burden to justify initiation.
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`Next, to address the fact that it failed to tell the Board that its primary
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`reference, Qualcomm-037, was actually rejected by the 3GPP working group as
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`presented, Apple makes attorney arguments to justify why that omission is
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`allegedly immaterial. Reply 3. The proper place for that argument is in the
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`Petition and not as a supplement to the Petition after it has a chance to review the
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`POPR. Attorney argument is not evidence and does not create disputed facts.
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`Apple next explains for the first time why its mapping of "first control
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`signal" is consistent with intrinsic evidence, in the processing even introducing
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`new substantive evidence. Reply 4. It also cites to Pet. 54-59 concerning element
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`1.3 or step (c) of claim 1 to argue that the analysis there would somehow now be
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`also applicable to elements 1.1 and 1.2 of claim 1 (steps a and b). Reply 4. In the
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`Petition, the analysis for elements 1.1 and 1.2 never mentions Samsung-094. Pet.
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`31-53. That supplementation is impermissible (and at any rate incomprehensible
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`to Patent Owner). See Ex. 2036 (the Board reminding the parties that it "will not
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`consider any arguments regarding the merits that were not raised in the Petition or
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`the Preliminary Response").
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`Finally, Apple alleges that because "the patent provides no such reasoning"
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`as to why ACK/NACK puncturing would occur from the last row, its analysis
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`could not have been based on hindsight. Reply 4. That is non sequitur: hindsight
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`also occurs when the challenger uses the claim or inventors' insight in their
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`technical papers as a roadmap to assemble the various pieces and this is precisely
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`what Apple did. POPR at 52, 72.
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`Noticeable is what Apple does not dispute, which includes at least: POPR
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`50-51 regarding its failure to show the timing requirements under Apple's claim
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`construction, POPR 56-58 regarding the fact that its primary reference Qualcomm-
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`037 was rejected, POPR 62-66 regarding the falsity of the Petition's listed reasons
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`for combining Cho and Qualcomm-069, 67-69 regarding the lack of reason to
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`combine Samsung-094 with Qualcomm-037 as proposed by Apple modified after
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`steps (a) and (b), and 69-71 regarding the lack of reasoning for altering the timing
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`requirements under Apple's claim construction.
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`E. None of the other factors recited by Apple favors institution
`Apple asserts that institution is justified because allegedly Patent Owner has
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`asserted the '833 patent five times "while avoiding any determination on validity."
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`Reply 4-5. Not so. Its own evidence showed that in 2018, the PTAB denied
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`institution on the merits. Ex. 1011.
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`There are also ample procedural safeguards for Apple to challenge the '833
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`patent in the district court, including an experienced trial team, availability of
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`vigorous live cross-examination of witnesses, pre-trial and post-trial motions, and a
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`Federal Circuit appeal. Additionally, the one hour trial time that Apple spends on
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`the '883 patent (Reply 5) is as much as or more than the time that it is likely going
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`to get in an oral argument at the PTAB. Thus, Apple's assertion that it can only
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`adequately challenge the validity of the '833 patent in an IPR proceeding is
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`disconnected from reality. Likewise, Apple's argument that a detailed order is
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`unlikely to issue in the district court is again fiction. See Reply 5. The Federal
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`Circuit requires a judge to separately analyze validity, and the opinion of that judge
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`will be scrutinized by the Federal Circuit.
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`Apple also speculates that the district court might delay the case due to
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`COVID19. Apple fails to report that Judge Gilstrap has recently denied a party's
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`request to continue a trial due to COVID19. Ex. 2029. Apple also fails to report
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`that Harrison County where the trial is has a low infection rate, currently below
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`400 total cases. Ex. 2033. Further, evidence cited by Apple—that Judge Gilstrap
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`rejected the parties' proposed September 2020 trial date and picked August 3, 2002
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`instead—showed that he is serious to have the trial occur as scheduled. Reply 5.
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`Contrary to Apple's speculation, PanOptis will not drop the '883 patent.
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`Date: July 9, 2020
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`Respectfully submitted,
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`/Hong Zhong/
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`H. Annita Zhong (Reg. No. 66,530)
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6, the undersigned certifies that on June 18, 2020,
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`a copy of the foregoing documents PATENT OWNER'S SUR-REPLY TO
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`PETITIONER'S REPLY TO PATENT OWNER'S PRELIMINARY
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`RESPONSE and EXHIBITS 2029-2039 were served, by electronic mail, as
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`agreed to by the parties, upon the following:
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`WILMER CUTLER PICKERING HALE AND DORR, LLP
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`Jason D. Kipnis, Reg. No. 40,680
`Jason.Kipnis@wilmerhale.com
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`Mary V. Sooter, Reg. No. 71,022
`Mindy.Sooter@wilmerhale.com
`
`Richard Goldenberg, Reg. No. 38,895
`Richard.Goldenberg@wilmerhale.com
`
`David L. Cavanaugh, Reg. No. 36,476
`David.Cavanaugh@wilmerhale.com
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`Ravinder Deol, Reg. No. 62,165
`Ravi.Deol@wilmerhale.com
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`WH-Apple-Optis-833-IPR@wilmerhale.com
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` /Susan M. Langworthy/
` Susan M. Langworthy
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