Paper No. 7
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`COREPHOTONICS, LTD.,
`Patent Owner.
`____________
`
`Case No. IPR2020-00906
`U.S. Patent No. 10,225,479
`____________
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`COREPHOTONICS, LTD.,
`Patent Owner.
`____________
`
`Case No. IPR2020-00906
`U.S. Patent No. 10,225,479
`____________
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`Case No. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`TABLE OF CONTENTS
`
`LIKELIHOOD OF A PRIMA FACIE CASE OF
`
`INTRODUCTION .................................................................. 1
`I.
`II. OVERVIEW OF THE ’479 PATENT ....................................... 3
`III. LEGAL STANDARDS ........................................................... 5
`IV. THE PETITION FAILS TO ESTABLISH THE REASONABLE
`OBVIOUSNESS ..................................................................... 7
`A.
`Cited References ............................................................................. 7
`B.
`Limitations ...................................................................................... 8
`C.
`Demonstrated How Parulski’s Wide Lens is Focused ................... 11
`V.
`THE ’479 PATENT ............................................................... 12
`VI. CONCLUSION .................................................................... 15
`
`The Petition Fails To Demonstrate A Motivation To Combine The
`
`The Petition Fails To Demonstrate [19.5.1] And [19.5.2] Because It
`Fails To Show That A Camera Controller Configured For Those
`
`Petitioner Has Failed To Show [19.3] Because Petitioner Has Not
`
`THE BOARD SHOULD EXERCISE ITS DISCRETION TO
`DENY INSTITUTION OF MULTIPLE IPR PETITIONS ON
`
`
`
`i
`
`
`
`Case No. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`Cases
`
`TABLE OF AUTHORITIES
`
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012) .................................................................. 6
`
`Ariosa Diagnostics v. Verinata Health, Inc.,
`805 F.3d 1359 (Fed. Cir. 2015) .................................................................. 6
`
`Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc.,
`381 F.3d 1371 (Fed. Cir. 2004) .................................................................. 8
`
`In re Dow Chem. Co.,
`837 F.2d 469 (Fed. Cir. 1988) ................................................................ 7, 8
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) .................................................................... 7
`
`In re Magnum Oil Tools Int’l, Ltd.,
`829 F.3d 1364 (Fed. Cir. 2016) .................................................................. 6
`
`Innogenetics, N.V. v. Abbott Labs.,
`512 F.3d 1363 (Fed. Cir. 2008) .................................................................. 7
`
`SAS Inst., Inc. v. Iancu,
`138 S. Ct. 1348 (2018) ............................................................................ 12
`
`Wasica Finance GMBH v. Continental Auto. Systems,
`853 F.3d 1272 (Fed. Cir. 2017) .................................................................. 6
`
`Statutes
`Other Authorities
`
`35 U.S.C. § 314(a) ........................................................................................ 12
`
`Consolidated Trial Practice Guide November 2019 ..................................... 13
`
`ii
`
`
`
`Case No. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`Rules
`
`37 C.F.R. § 42.108 .......................................................................................... 5
`
`
`
`iii
`
`
`
`Case No. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`I.
`
`INTRODUCTION
`
`This Petition should be denied because Petitioner has failed to make out
`
`a prima facie case for invalidity for a number of reasons.
`
`First, Petitioner has failed to provide a motivation to combine Parulski,
`
`Ogata, Kawamura, and Soga (the basis of Ground 1). Instead of showing a
`
`motivation to create this four-reference combination, Petitioner has purport-
`
`edly identified a motivation to create three different two-reference combina-
`
`tions: Parulski and Ogata; Parulski and Kawamura; and Parulski and Soga.
`
`But Petitioner has not asserted that any of these two-reference combinations
`
`invalidate any claim of the ’479 patent. The Petition’s second ground, assert-
`
`ing the five-reference combination of Parulski, Ogata, Kawamura, Soga and
`
`Morgan-Mar, also fails to include a motivation of combine all five references.
`
`Because it is Petitioner’s burden to provide a motivation to combine all of the
`
`invalidating references, the Petition must be denied.
`
`Second, the Petition has failed to demonstrate that the claim elements
`
`styled [19.5.1] and [19.5.2] (portions of claim element 19e) are disclosed by
`
`Parulski because it ignores the requirement that the claimed “camera control-
`
`1
`
`
`
`Case No. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`ler” must be configured to perform these limitations. Indeed, Petitioner com-
`
`pletely ignores this requirement in its argument. Without such a showing, the
`
`Petition should not be granted.
`
`Third, the Petition must be denied because Petitioner’s argument as to
`
`the claim limitation styled [19.3] is contradicted by Parulski. Petitioner argues
`
`that this limitation, which requires “a first autofocus (AF) mechanism” on the
`
`Wide lens, is disclosed by Parulski because a POSITA “would have known”
`
`to use a first AF mechanism with the Wide lens. But Petitioner ignores that
`
`the lack of a first AF mechanism is actually a feature of Parulski. It was an
`
`intentional design choice, made to minimize the cost and size of Parulski’s
`
`device. Petitioner ignores this disclosure, let alone explains why a POSITA
`
`would have implemented a first AF mechanism despite Parulski teaching
`
`away from the use of such a mechanism.
`
`For at least these reasons, Petitioner has failed to establish a likelihood
`
`of prevailing and the Petition should not be instituted.
`
`Moreover, the Board should exercise its discretion to deny institution,
`
`even if it does find a likelihood of prevailing. This is one of two IPRs filed
`
`2
`
`
`
`Case No. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`simultaneously by Petitioner to challenge the claims of the ’479 patent. Peti-
`
`tioner has failed to establish that this is one of the “rare” cases where multiple
`
`simultaneous petitions against the same patent are justified.
`
`II. OVERVIEW OF THE ’479 PATENT
`
`The ’479 patent is generally directed to “thin digital cameras with both
`
`still image and video capabilities.” Ex. 1001 at 1:24-26. It was issued on
`
`March 5, 2019, and claims priority to a provisional patent application filed on
`
`June 13, 2013. As the patent described, the prior art included “[a]ttempts to
`
`use multi-aperture imaging systems to approximate the effect of a zoom lens.”
`
`Id. at 1:59-60. One problem with such prior art systems was that they led to
`
`parallax effects when taking video. Id. at 2:39-55. Other solutions led to de-
`
`graded image quality. Id. at 2:56-67. The patent owner, Corephotonics, devel-
`
`oped an innovated dual-aperture camera technology “with fixed focal length
`
`lenses, the camera configured to operate in both still mode and video mode to
`
`provide still and video images, wherein the camera configuration uses partial
`
`or full fusion to provide a fused image in still mode and does not use any
`
`fusion to provide a continuous, smooth zoom in video mode.” Id. at 3:20-25.
`
`The Petitioner, Apple, adopted this technology in its iPhone models with dual
`
`3
`
`
`
`Case No. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`rear cameras, starting with the iPhone 7 Plus in September 2016 and continu-
`
`ing with its successive generations of new iPhone models. The technology is
`
`also now used in smartphones made by other manufacturers, such as Samsung
`
`and Huawei.
`
`
`
`Ex. 1001 at Fig. 1B.
`
`To make this technology a reality, Corephotonics developed solutions
`
`to practical issues, some of which are the subject matter of the ’479 patent.
`
`For example, Corephotonics developed technology that results in a “fused im-
`
`age including always information from both W [“Wide”] and T [“Tele”] im-
`
`ages.” Id. at 3:48-51. One embodiment of this technology allows out-of-focus
`
`background to be fused with another image of an in focus subject, creating for
`
`example a blurrier background and creating the effect of a shallower DOF.
`
`4
`
`
`
`Case No. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`This effect is often used, for example, in “Portrait” pictures. The inventive
`
`process is summarized in the ’479 patent as follows:
`
`Due to the large focal length, objects that are in front or behind the
`plane of focus appear very blurry, and a nice foreground-to-back-
`ground contrast is achieved. However, it is difficult to create such
`a blur using a compact camera with a relatively short focal length
`and small aperture size, such as a cell-phone camera. In some em-
`bodiments, a dual-aperture zoom system disclosed herein can be
`used to capture a shallow DOF photo (shallow compared with a
`DOF of a Wide camera alone), by taking advantage of the longer
`focal length of the Tele lens. The reduced DOF effect provided by
`the longer Tele focal length can be further enhanced in the final
`image by fusing data from an image captured simultaneously with
`the Wide lens. Depending on the distance to the object, with the
`Tele lens focused on a subject of the photo, the Wide lens can be
`focused to a closer distance than the subject so that objects behind
`the subject appear very blurry. Once the two images are captured,
`information from the out-of-focus blurred background in the Wide
`image is fused with the original Tele image background infor-
`mation, providing a blurrier background and even shallower DOF.
`Ex. 1001 at 4:18-38.
`
`III. LEGAL STANDARDS
`
`The petitioner has the burden to “demonstrate that there is a reasonable
`
`likelihood that at least one of the claims challenged in the petition is unpatent-
`
`able.” 37 C.F.R. § 42.108. A petition challenging a claim on grounds of obvi-
`
`ousness must sufficiently explain (1) “how specific references could be
`
`combined,” (2) “which combination(s) of elements in specific references
`
`would yield a predictable result,” and (3) “how any specific combination
`
`5
`
`
`
`Case No. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`would operate or read on” the claims. ActiveVideo Networks, Inc. v. Verizon
`
`Commc’ns, Inc., 694 F.3d 1312, 1327–28 (Fed. Cir. 2012).
`
`Moreover, a petitioner may not rely on the Board to substitute its own
`
`reasoning to remedy the deficiencies in a petition. In re Magnum Oil Tools
`
`Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (rejecting the Board’s reli-
`
`ance on obviousness arguments that “could have been included” in the petition
`
`but were not, and holding that the Board may not “raise, address, and decide
`
`unpatentability theories never presented by the petitioner and not supported
`
`by the record evidence”); Ariosa Diagnostics v. Verinata Health, Inc., 805
`
`F.3d 1359, 1367 (Fed. Cir. 2015) (holding that “a challenge can fail even if
`
`different evidence and arguments might have led to success”). Nor may the
`
`petitioner remedy the deficiencies in a reply brief. Wasica Finance GMBH v.
`
`Continental Auto. Systems, 853 F.3d 1272, 1286 (Fed. Cir. 2017) (“Rather
`
`than explaining how its original petition was correct, Continental’s subse-
`
`quent arguments amount to an entirely new theory of prima facie obviousness
`
`absent from the petition. Shifting arguments in this fashion is foreclosed by
`
`statute, our precedent, and Board guidelines.”) (internal citations omitted).
`
`6
`
`
`
`Case No. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`IV. THE PETITION FAILS TO ESTABLISH THE
`REASONABLE LIKELIHOOD OF A PRIMA FACIE CASE
`OF OBVIOUSNESS
`
`A. The Petition Fails To Demonstrate A Motivation To Combine
`The Cited References
`
`Ground 1 of the Petition asserts obviousness over a combination of Pa-
`
`rulski, Ogata, Kawamura, and Soga. E.g., Paper 3 at i, 12, 62. Petitioner, how-
`
`ever, has failed to disclose a motivation to combine all of these references, let
`
`alone in the specific manner to achieve the claimed inventions. Instead, Peti-
`
`tioner has identified purported motivations for creating two-reference combi-
`
`nations of Parulski/Ogata, Parulski/Kawamura and Parulski/Soga. Paper 2 at
`
`21-24, 28-30, 33-39. Because Petitioner does not argue that any of these two-
`
`reference combinations invalidate the claims, the Petition must fail on its face.
`
`It is Petitioner’s burden to show a motivation to combine all of the references
`
`it combines to invalidate claims 19 and 20. E.g., Innogenetics, N.V. v. Abbott
`
`Labs., 512 F.3d 1363, 1373 (Fed. Cir. 2008) (“There must be some articulated
`
`reasoning with some rational underpinning to support the legal conclusion of
`
`obviousness.” (internal quotations omitted) (citing In re Kahn, 441 F.3d 977,
`
`988 (Fed. Cir. 2006))); In re Dow Chem. Co., 837 F.2d 469, 473 (Fed. Cir.
`
`1988) (“[t]here must be a reason or suggestion in the art for selecting the pro-
`
`7
`
`
`
`Case No. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`cedure used, other than the knowledge learned from the applicant’s disclo-
`
`sure”); Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 381 F.3d 1371,
`
`1376 (Fed. Cir. 2004) (“the suggestion to combine references must not be de-
`
`rived by hindsight from knowledge of the invention itself.”). Having failed to
`
`provide a motivation to combine, Ground 1 must not be instituted.
`
`Ground 2 should not be instituted for similar reasons. Ground 2 is a
`
`five-reference combination of Parulski, Ogata, Kawamura, Soga and Morgan-
`
`Mar. Paper 3 at ii, 67-74. Petitioner, however, has only provided a purported
`
`motivation to combine for three of the five references: Parulski, Soga and
`
`Morgan-Mar. Paper 3 at 67-69. Petitioner does not provide a motivation to
`
`combine Parulski, Soga and Morgan-Mar with Ogata and Kawamura. Ground
`
`2 must therefore not be instituted. E.g., In re Dow Chem. Co., 837 F.2d at 473;
`
`Cardiac Pacemakers, 381 F.3d at 1376.
`
`B.
`
`The Petition Fails To Demonstrate [19.5.1] And [19.5.2] Be-
`cause It Fails To Show That A Camera Controller Configured
`For Those Limitations
`
`Petitioner has failed to show that its proposed combination discloses
`
`the claim limitations styled [19.5.1] and [19.5.2]. [19.5.1] and [19.5.2] are ex-
`
`cerpts from claim 19e of the ’479 patent:
`
`a camera controller operatively coupled to the first and second
`AF mechanisms and to the Wide and Tele image sensors and
`
`8
`
`
`
`Case No. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`configured to control the AF mechanisms, to process the Wide
`and Tele images to find translations between matching points
`in the images to calculate depth information and to create a
`fused image suited for portrait photos, the fused image having
`a DOF shallower than DOFT and having a blurred background.
`Ex. 1001 at 15:25-32 (emphasis added). For the purposes of this argument,
`
`the relevant portions have been highlighted. The claim limitations require that
`
`the camera controller be configured to both “process the Wide and Tele im-
`
`ages to find translations” and “create a fused image suited for portrait photos.”
`
`Id. Petitioner identifies Parulski’s image processor 50 as being the camera
`
`controller. Paper 3 at 52. Petitioner fails to demonstrate that image processor
`
`50 is configured as required in both [19.5.1] and [19.5.2].
`
`For [19.5.1], Petitioner argues that it identifies a “process for calculat-
`
`ing depth information based on wide and tele images” in Parulski that pur-
`
`portedly discloses the “to process the Wide and Tele images to find
`
`translations between matching points in the images to calculate depth in-for-
`
`mation” limitation. Paper 3 at 53-54. Petitioner has failed, however, to show
`
`that image processor 50 is involved in Parulski’s “process for calculating
`
`depth information based on wide and tele images,” let alone that the image
`
`processor 50 is “configured . . . to process the Wide and Tele images to find
`
`9
`
`
`
`Case No. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`translations be-tween matching points in the images to calculate depth in-for-
`
`mation” as required by [19.5.1]. The Petition should not be instituted for this
`
`reason alone.
`
`Similarly, Petitioner has failed to show that Parulski’s image processor
`
`50 is configured to perform [19.5.2]. Petitioner argues that “Parulski’s dual-
`
`lens camera system implementing Soga’s image capture and enhancement
`
`method” renders this limitation obvious. Petitioner has failed, however, to
`
`show that image processor 50, the portion of the combination identified as the
`
`claimed camera controller, is configured to perform the recited limitation. In-
`
`deed, other than a general reference to “Parulski’s dual-lens camera system,”
`
`Petitioner fails to identify any specific aspect of Parulski or Soga that is con-
`
`figured to perform [19.5.2], let alone demonstrate that image processor 50 is
`
`“configured . . . to create a fused image suited for portrait photos.” The Peti-
`
`tion should not be instituted for this reason alone.
`
`By separating claim 19e into multiple elements, Petitioner has obfus-
`
`cated the actual requirements of [19.5.1] and [19.5.2]. As shown above, the
`
`claim language as written imposes multiple limitations on the claimed camera
`
`controller. Petitioner, through its excerpting, has removed this limitation from
`
`claim 19. According to the Petition, a camera controller is only needed to meet
`
`10
`
`
`
`Case No. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`[19.5]. Paper 3 at 51-52. As shown above, it removed the camera controller
`
`elements from both [19.5.1] and [19.5.2]. The Petitioner therefore leads the
`
`Board to potential error.
`
`C.
`
`Petitioner Has Failed To Show [19.3] Because Petitioner Has
`Not Demonstrated How Parulski’s Wide Lens is Focused
`
`[19.3] requires “a first autofocus (AF) mechanism coupled mechani-
`
`cally to, and used to perform an AF action on the Wide lens.” Paper 3 at 45.
`
`Petitioner has failed, however, to show that wide angle lens 612 in Parulski,
`
`which is purported to be the claimed Wide lens, has a “first autofocus (AF)
`
`mechanism coupled mechanically to it.” In the portion of Parulski cited by
`
`Petitioner, Parulski discloses autofocus subsystem 628, which is connected to
`
`telephoto lens 616, not wide angle lens 612. Ex. 1005 at 23:62-24:7; Paper 3
`
`at 45-46.
`
`Petitioner recognizes this issue, and argues that a POSITA “would have
`
`understood” to use a similar “autofocus mechanism” with the purported Wide
`
`lens. Paper 3 at 46. But Petitioner cites no evidence for its argument. Instead,
`
`it cites to the Durand Declaration (Ex. 1003) that simply parrots Petitioner’s
`
`attorney argument. Neither Petitioner nor the Durand Declaration explain
`
`why, without the benefit of hindsight, a POSITA would have understood this.
`
`Further, Petitioner also fails to explain why a POSITA would have known to
`
`11
`
`
`
`Case No. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`use a separate autofocus (AF) mechanism coupled mechanically to the
`
`Wide lens instead of, for example, utilizing autofocus subsystem 628. Peti-
`
`tioner’s argument is also contradicted by Parulski itself. Parulski deliberately
`
`discloses a single focusing subsystem: to reduce “cost and size.” Ex. 1005 at
`
`24:17-19; see also id. at Fig. 16B (showing only one focusing subsystem).
`
`Parulski discloses that size (which is reduced by not having a second focusing
`
`subsystem) is an “important constraint.” Id. at 24:20-27. Simply put, Parulski
`
`teaches away from using a second focusing subsystem. Petitioner does not
`
`explain why, despite these disclosures of Parulski, a POSITA “would have
`
`understood” the use of an autofocus system on wide angle lens 612.
`
`The Petition should not be instituted for this reason as well.
`
`V. THE BOARD SHOULD EXERCISE ITS DISCRETION
`TO DENY INSTITUTION OF MULTIPLE IPR
`PETITIONS ON THE ’479 PATENT
`
`The Board is never required to institute an IPR. Even if the Board de-
`
`termines the reasonable likelihood standard is met by a petition, the decision
`
`to institute is discretionary. 35 U.S.C. § 314(a); SAS Inst., Inc. v. Iancu, 138
`
`S. Ct. 1348, 1361 (2018) (“Even if there is one potentially meritorious chal-
`
`lenge, we have said that the statute contains ‘no mandate to institute review,’
`
`so the Director still has discretion to deny a petition.”).
`
`12
`
`
`
`Case No. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`The Board has recognized that multiple petitions filed against the same
`
`patent at the same time “may place a substantial and unnecessary burden on
`
`the Board and the patent owner and could raise fairness, timing, and efficiency
`
`concerns.” Consolidated Trial Practice Guide November 2019 at 59). The
`
`Board has indicated that such multiple petitions “are not necessary in the vast
`
`majority of cases” and “should be rare.” Id.
`
`Petitioner fails to show this case is “rare” such that multiple petitions
`
`are justified. The Petition adds only an additional four challenged claims to
`
`the claims challenged in IPR2020-00905. Furthermore, the challenges to all
`
`of the claims in both petitions are based on obviousness with the same primary
`
`reference, Parulski. This is not a case involving “a large number of claims
`
`[asserted] in litigation” or “a dispute about priority date,” which are the cir-
`
`cumstances identified in the Trial Practice Guide as potentially justifying mul-
`
`tiple petitions. Consolidated Trial Practice Guide November 2019 at 59. A
`
`petition raising this number of grounds against a small number of claims could
`
`readily have been drafted within the 14,000-word limit for a single petition.
`
`But petitioner has instead burdened the Board and patent owner with petitions
`
`totaling 27,619 words (just shy of the 28,000-word limit for two petitions),
`
`and the need to prepare double the number of filings and double the number
`
`13
`
`
`
`Case No. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`of decisions that would ordinarily be required to resolve the challenges to a
`
`single patent.
`
`Petitioner acknowledges that “all of the claims are directed to a dual-
`
`lens camera with wide and telephoto lenses (1) having overlapping fields of
`
`view (FOV) and (2) an autofocus mechanism providing each lens with sepa-
`
`rate focusing control.” Paper 2. However, it attempts to justify its decision to
`
`file two-separate, near 14,0000-word IPRs because the claims purportedly
`
`“perform different image processing steps.” Id. at 1. This assertion rings hol-
`
`low. It is always the case that there are differences in claims. The ’479 patent
`
`is no different than any other patent in this respect. Indeed, even under Peti-
`
`tioner’s summary, the primary difference between the claims is a “different
`
`image processing steps” involves “calculating a depth map.” The first element
`
`of all of the claims is “controlling the autofocus mechanism.” Id. at 2. Like-
`
`wise, the final step under Petitioner’s summary of the claimed inventions both
`
`involve outputting a “fused image.” Id. Petitioner fails to show why image
`
`processing elements alone requires almost 14,000 additional words.
`
`The overlap between the two Petitions is also emphasized by the fact
`
`that the Petitioner uses the same prior art as its “primary” reference (Parulski)
`
`14
`
`
`
`Case No. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`and the secondary prior art references in both Petitions relate to the same sub-
`
`ject area.
`
`Moreover, Petitioner previously filed an unsuccessful IPR petition
`
`IPR2018-01348, which challenged U.S. Patent No. 9,185,291, the grandpar-
`
`ent to the ’479 patent. In that petition, Petitioner challenged 10 claims of the
`
`’291 patent, again using Parulski as the primary prior art reference. IPR2018-
`
`01348, Paper 2 at 8. In IPR2018-01348, Petitioner was able to challenge 10
`
`claims, concerning both image processing and optical design. Petitioner has
`
`not shown why it was able to address all of the claims in IPR2018-01348 but
`
`needs an additional 14,000-word Petition to address a similar number of
`
`claims in the Petitions at issue here.
`
`Petitioner’s unjustified decision to burden the Board and patent owner
`
`with 27,619 words of Petitions challenging the ’479 patent should not be re-
`
`warded, and the Board should exercise its discretion to deny this Petition.
`
`VI. CONCLUSION
`
`For the reasons set forth above, the petition fails to establish a reasona-
`
`ble likelihood of prevailing on any challenged claim. The Petition should also
`
`be denied in the Board’s discretion as a result of Petitioner’s multiple Petitions
`
`15
`
`
`
`Case No. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`addressing the ’479 patent. Patent Owner respectfully requests that the Board
`
`deny institution.
`
`
`
`Dated: August 13, 2020
`
`
`
` /Neil A. Rubin/
`Neil A. Rubin (Reg. No. 67,030)
`RUSS AUGUST & KABAT
`12424 Wilshire Boulevard, 12th Floor
`Los Angeles, CA 90025
`Telephone: 310-826-7474
`
`Attorney for Patent Owner,
`COREPHOTONICS, LTD.
`
`16
`
`
`
`Case No. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`CERTIFICATE REGARDING WORD COUNT
`
`Pursuant to 37 C.F.R. § 42.24(d), Patent Owner certifies that there are 2,514
`
`words in the paper excluding the portions exempted under 37 C.F.R. §
`
`42.24(a)(1).
`
`
`
`
` /Neil A. Rubin/
`Neil A. Rubin (Reg. No. 67,030)
`
`
`17
`
`
`
`Case No. IPR2020-00906
`U.S. Patent No. 10,225,479
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that “Patent Owner’s Preliminary Response” (Paper No. 6)
`
`was served on August 13, 2020 by email sent to:
`
`David W. O’Brien
`Hong Shi
`HAYNES AND BOONE, LLP
`600 Congress Ave. Suite 1300
`Austin, TX 78701
`Telephone: 512-867-8400
`Email: david.obrien.ipr@haynesboone.com
`Email: hong.shi.ipr@haynesboone.com
`
`Andrew S. Ehmke
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`Telephone: 214-651-5000
`Email: andy.ehmke.ipr@haynesboone.com
`
`
` /Neil A. Rubin/
`Neil A. Rubin (Reg. No. 67,030)
`
`
`18
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
