UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`APPLE INC. & MICROSOFT CORPORATION
`Petitioners
`
`v.
`
`Neodron, Ltd.
`Patent Owner
`____________
`
`
`Case Nos. IPR2020-00998; IPR2020-01000
`U.S. Patent No. 8,749,251
`____________
`
`
`
`
`
`
`PETITIONERS’ REASONS FOR AND RANKINGS OF PARALLEL
`PETITIONS
`
`
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`APPLE INC. & MICROSOFT CORPORATION
`Petitioners
`
`v.
`
`Neodron, Ltd.
`Patent Owner
`____________
`
`
`Case Nos. IPR2020-00998; IPR2020-01000
`U.S. Patent No. 8,749,251
`____________
`
`
`
`
`
`
`PETITIONERS’ REASONS FOR AND RANKINGS OF PARALLEL
`PETITIONS
`
`
`
`
`
`
`
`IPR2020-00998; IPR2020-01000
`U.S. Patent No. 8,749,251
`Petitioners Apple Inc. and Microsoft Corporation (“Petitioners”) have
`
`requested Inter Partes Review (“IPR”) of claims 1-20 (the “Challenged Claims”) of
`
`U.S. Patent No. 8,749,251 (“the ’251 Patent”). Petitioners have addressed the
`
`unpatentability of the Challenged Claims in two materially distinct, non-cumulative
`
`petitions uniquely positioned to address a priority dispute regarding the effective
`
`filing date of the Challenged Claims. See IPR2020-00998 (the “102(b) Petition”);
`
`IPR2020-01000 (the “Priority Petition”). Accordingly, Petitioners respectfully
`
`request institution of all grounds of invalidity asserted against the ’251 Patent.
`
`I.
`
`REASONS TO INSTITUTE BOTH PETITIONS
`A. The unique priority dispute justifies two petitions
`The Patent Trial and Appeal Board’s Consolidated Trial Practice Guide
`
`expressly acknowledges situations at which it is appropriate to file multiple petitions
`
`against the same patent, including, as in the case here, “when there is a dispute about
`
`priority date requiring arguments under multiple prior art references.” Office
`
`Consolidated Trial Practice Guide, 84 Fed. Reg. 64280 (Nov. 20, 2019)1 (“TPG”).
`
`While the TPG notes that such circumstances may be rare, the egregious facts at
`
`issue here justify institution of two petitions challenging the ’251 Patent.
`
`As thoroughly discussed in the Priority Petition, during prosecution of the
`
`application that resulted as the ’251 Patent, applicant introduced new matter in 2011
`
`
`1 Available at http://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`
`
`2
`
`
`
`IPR2020-00998; IPR2020-01000
`U.S. Patent No. 8,749,251
`that severed the priority chain back to its July 26, 2007 provisional or to its July 25,
`
`2008 utility application in an attempt to circumvent its own prior art. More
`
`specifically, applicant added the concept of triggering a time duration from a “key
`
`touch on the touch screen.” With this new matter, applicant sought to distinguish its
`
`own prior art—used to reject all proposed claims in the parent patent’s prosecution—
`
`that taught time durations triggered from touching a standard on/off capacitive
`
`sensor. Because the pre-2011 intrinsic record disclosed only standard on/off
`
`capacitive sensors, inserting the concept of “touch screens” is “new matter” and the
`
`Challenged Claims are not entitled to claim priority to any pre-2011 applications.
`
`The Priority Petition demonstrates the Challenged Claims’ earliest effective filing
`
`date is May 26, 2011 and presents a proposed ground of invalidity on this basis.
`
`B.
`The petitions present materially distinct, non-cumulative grounds
`The 102(b) and Priority Petitions rely on completely distinct prior art
`
`combinations asserted to address different effective filing dates for the Challenged
`
`Claims. The 102(b) Petition relies on five different prior art references—all of which
`
`pre-date the ’251 Patent’s provisional filing date by more than one-year—to support
`
`five separate proposed grounds of invalidity. All five grounds are viable regardless
`
`of whether the Challenged Claims are entitled a pre-2011 effective filing date. The
`
`Priority Petition, on the other hand, presents only one ground of obviousness based
`
`on the ’251 Patent’s own parent patent publication and assumes an effective filing
`
`
`
`3
`
`
`
`IPR2020-00998; IPR2020-01000
`U.S. Patent No. 8,749,251
`date of May 26, 2011. While one common reference, QT60161, is used in both
`
`petitions, the Priority Petition relies on QT60161 solely for its touch screen
`
`teaching—a materially different reliance
`
`than
`
`the 102(b) Petition, which
`
`demonstrates QT60161 renders obvious all limitations in 15 claims. These material
`
`differences justify institution of both the 102(b) and the Priority Petitions. 10X
`
`Genomics, Inc. v. Bio-Rad Laboratories, Inc., IPR2020-00088, Paper 8, at *46-47
`
`(PTAB April 27, 2020) (granting institution of two parallel petitions, explaining that
`
`a priority fight concerning swear-behind dates for prior art references justifies
`
`concurrent filings with no stipulation by Patent Owner).
`
`II. RANKINGS OF THE PETITIONS
`Rank
`Petition
`Prior Art Grounds
`
`1
`
`IPR2020-00998
`
`Challenged
`Claims
`1-20
`
`1-20
`
`Obviousness based on:
`(1) Koziuk;
`(2) Koziuk in view of
`Kalendra;
`(3) Koziuk in view of QT110;
`(4) Koziuk in view of Bruwer;
`(5) QT60161
`Obviousness based on:
`(1) The ’068 Publication in
`view of QT60161
`
`IPR2020-01000
`
`2
`
`
`
`
`Petitioners rank the 102(b) Petition higher than the Priority Petition because
`
`it is unclear what arguments and evidence Patent Owner may rely upon to dispute
`
`the Priority Petition’s premise that new matter was added in 2011. Instituting at least
`
`the 102(b) Petition ensures the validity of the Challenged Claims is assessed
`
`
`
`4
`
`
`
`IPR2020-00998; IPR2020-01000
`U.S. Patent No. 8,749,251
`regardless of the outcome of this priority issue. Were the Priority Petition alone
`
`instituted, the Challenged Claims may avoid a prior art review entirely if Patent
`
`Owner were to successfully rebut the “new matter” argument.
`
`
`
`Petitioners do insist, however, that instituting both petitions is the fairest
`
`outcome. Petitioners have intentionally streamlined the Priority Petition—far below
`
`the permitted length—in order to limit the additional effort required of the parties
`
`and the Board to resolve the priority issue. Petitioners have also relied entirely on
`
`prior art in the Priority Petition that is attributable to the Patent Owner, removing the
`
`burden that might otherwise be imposed to analyze unfamiliar prior art. Accordingly,
`
`Patent Owner should not be permitted to avoid reckoning with its improper addition
`
`of “new matter” in 2011 on the basis of an undue burden imposed by a second
`
`petition.
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`BY: /s/ Adam P. Seitz
`
`
`Adam P. Seitz, Reg. No. 52,206
`Paul R. Hart, Reg. No. 59,646
`
`COUNSEL FOR PETITIONERS
`
`
`
`
`
`5
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2020-00998; IPR2020-01000
`U.S. Patent No. 8,749,251
`
`
`
`CERTIFICATE OF SERVICE ON PATENT OWNER
`UNDER 37 C.F.R. § 42.105
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105, the undersigned certifies that on
`June 16, 2020, a complete and entire copy of this Petition for Inter Partes Review
`including exhibits was provided via Federal Express to the Patent Owner by serving
`the correspondence address of record for the ’251 Patent as listed on PAIR:
`
`Shami Messinger PLLC
`1000 Wisconsin Ave. NW, Suite 200
`Washington DC 20007
`
`Further, a courtesy copy of this Petition for Inter Partes Review was sent via
`email to Patent Owner’s litigation counsel:
`Kent N. Shum
`kshum@raklaw.com
`Paul A. Kroeger
`pkroeger@raklaw.com
`Philip X. Wang
`pwang@raklaw.com
`Reza Mirzaie
`rmirzaie@raklaw.com
`Russ August & Kabat
`12424 Wilshire Blvd., 12th Floor
`Los Angeles, CA 90025
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`BY: /s/ Adam P. Seitz
`Adam P. Seitz, Reg. No. 52,206
`
`COUNSEL FOR PETITIONERS
`
`6
`
`
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
