`Filed on behalf of Apple Inc.
`By: Jason D. Kipnis, Reg. No. 40,680
`David L. Cavanaugh, Reg. No. 36,476
`Mary V. Sooter, Reg. No. 71,022
`Richard Goldenberg, Reg. No. 38,895
`Ravinder Deol, Reg. No. 62,165
`Wilmer Cutler Pickering Hale and Dorr LLP
`60 State Street
`Boston, Massachusetts 02109
`Tel: (617) 526-6000
`Email:
`Jason.Kipnis@wilmerhale.com
`David.Cavanaugh@wilmerhale.com
`Mindy.Sooter@wilmerhale.com
`Richard.Goldenberg@wilmerhale.com
`Ravi.Deol@wilmerhale.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`
`APPLE INC.
`Petitioner
`
`v.
`
`OPTIS CELLULAR TECHNOLOGY, LLC
`Patent Owner
`
`Case IPR2020-00465
`U.S. Patent No. 8,102,833
`
`
`PETITIONER’S NOTICE OF CLAIMS AND GROUNDS OF INVALIDITY
`PRESENTED AT DISTRICT COURT TRIAL
`
`
`
`
`
`
`
`Notice of Claims and Grounds of Invalidity Presented at District Court Trial
`IPR2020-00465
`
`
`Pursuant to the Board’s email request of August 13, 2020, Petitioner hereby
`
`submits that the following claims of U.S. Patent No. 8,102,833 “were asserted at
`
`trial to be invalid” based on the following “ground(s) of invalidity for each claim
`
`presented at trial” in Optis Wireless Technology, LLC v. Apple Inc., Case No. 2:19-
`
`cv-000666 (E.D. Tex.):
`
`Claim(s)
`
`Ground(s) of Invalidity Presented at Trial (in District Court)
`
`8
`
`Obviousness over Qualcomm R1-075037, Malladi 161 (U.S.
`Patent No. 8,374,161), Samsung R1-073094, and Malladi 367
`(U.S. Patent No. 8,467,367)
`
`
`
`Defendant’s expert (Dr. Jonathan Wells) testified about the above-listed ground of
`
`invalidity and references at trial. Each of the above-listed references was shown to
`
`the jury and entered into evidence. 1
`
`
`
`
`1 The Patent Owner takes the position that testimony by Plaintiffs’ expert,
`
`Dr. Vijay Madisetti, about additional prior art references that were not part of the
`
`Defendant’s invalidity case qualify as “ground(s) of invalidity for each claim
`
`presented at trial.” This is incorrect. First, Plaintiffs’ complaint did not seek a
`
`declaration of validity, so Plaintiffs cannot independently introduce grounds of
`
`invalidity at trial that were not addressed during direct testimony by Defendant’s
`
`witnesses. Second, because none of the additional references was offered or
`
`1
`
`
`
`Notice of Claims and Grounds of Invalidity Presented at District Court Trial
`IPR2020-00465
`
`
`Respectfully Submitted,
`
`Dated: August 19, 2020
`
`
`
`
`
`
`/Jason Kipnis/ (Registration No. 40,680)
`Jason D. Kipnis
`Lead Counsel for Petitioner Apple Inc.
`
`David L. Cavanaugh
`Registration No. 36,476
`
`Mary V. Sooter
`Registration No. 71,022
`
`Richard Goldenberg
`Registration No. 38,895
`
`Ravinder Deol
`Registration No. 62,165
`
`
`admitted into evidence (much less shown to the jury), the jury could not have
`
`considered any of those references in reaching its verdict.
`
`2
`
`
`
`Notice of Claims and Grounds of Invalidity Presented at District Court Trial
`IPR2020-00465
`
`
`CERTIFICATE OF SERVICE
`I hereby certify that on August 19, 2020, I caused a true and correct copy of
`Petitioner’s Notice of Claims and Grounds of Invalidity Presented at District Court
`Trial to be served via email on the following attorneys of record as listed in Patent
`Owner’s mandatory notices:
`
`
`
`
`
`
`
`
`
`Hong Annita Zhong (Reg. No. 66,530)
`Lead Counsel for Patent Owner
`hzhong@irell.com
`azhong@irell.com
`
`Jason Sheasby
`jsheasby@irell.com
`
`PanOptisIPRs@irell.com
`
`
`
`/Jason Kipnis/
`Jason D. Kipnis
`Registration No. 40,680
`
`3
`
`
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