IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`Seung Jin Kim
`In re Patent of:
`9,807,491 Attorney Docket No.: 39521-0091IP2
`U.S. Patent No.:
`October 31, 2017
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`Issue Date:
`Appl. Serial No.: 15/625,935
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`Filing Date:
`June 16, 2017
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`Title:
`ELECTRONIC DEVICE WITH WIRELESS EARBUD
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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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`PETITIONER’S NOTICE RANKING AND EXPLAINING MATERIAL
`DIFFERENCES BETWEEN PETITIONS FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,807,491
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`Seung Jin Kim
`In re Patent of:
`9,807,491 Attorney Docket No.: 39521-0091IP2
`U.S. Patent No.:
`October 31, 2017
`
`Issue Date:
`Appl. Serial No.: 15/625,935
`
`Filing Date:
`June 16, 2017
`
`Title:
`ELECTRONIC DEVICE WITH WIRELESS EARBUD
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`PETITIONER’S NOTICE RANKING AND EXPLAINING MATERIAL
`DIFFERENCES BETWEEN PETITIONS FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,807,491
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` Attorney Docket No. 39521-0091IP2
`IPR of U.S. Patent No. 9,807,491
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`Apple previously filed a petition in IPR2020-00999 (“Petition 1”)
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`challenging U.S. Patent No. 9,807,491 (“the ’491 Patent”) on June 11, 2020.
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`Apple now files a second petition (“Petition 2”) also challenging the ’491 Patent.
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`Pursuant to the November 2019 Trial Practice Guide Update, this paper provides:
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`“(1) a ranking of the petitions in the order in which [Petitioner] wishes the Board to
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`consider the merits, if the Board uses its discretion to institute any of the petitions,
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`and (2) a succinct explanation of the differences between the petitions, why the
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`issues addressed by the differences are material, and why the Board should
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`exercise its discretion to institute additional petitions.” Trial Practice Guide, 59-
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`61.
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`I.
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`Ranking of Petitions
`Apple believes that both petitions are meritorious and justified. Petition 1
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`relies on references that establish that features claimed in the ’491 Patent would
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`have been obvious as early as 2007, almost eight years before the ’491 Patent’s
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`purported priority date. Petition 2 relies on primary references that each alone
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`discloses nearly every limitation of the challenged claims, which Pinn
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`acknowledges. Petition 2, Section II. However, if the Board should exercise its
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`discretion and deny a petition, Petitioner requests that the Board institute Petition
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`1.
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` Attorney Docket No. 39521-0091IP2
`IPR of U.S. Patent No. 9,807,491
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`II. Material Differences and Additional Factors that Compel Permitting
`Multiple Petitions
`A.
`Priority Date
`Petition 2 challenges the priority date of the ’491 patent—that the ’491
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`Patent is not entitled to the filing date of U.S. Provisional Application No.
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`62/142,978 (“the ’978 Provisional”) and, as Petition 2 points out, the earliest
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`effective filing date of the ’491 patent is therefore April 4, 2016. Petition 2,
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`Section III.B. Petition 2 relies on primary references that pre-date this earliest
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`effective filing date, but which do not predate the ’978 Provisional filing date . In
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`fact, a further priority analysis is required under Dynamic Drinkware to apply
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`Petition 2 primary references to this earliest effective filing date. Petition 2,
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`Sections V.A.1 and V.D.1. Thus, with respect to Petition 2, two opportunities for
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`dispute on priority exist. While each is addressed thoroughly within Petition 2, a
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`full resolution of these issues will not be known until well after institution of either
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`Petition 1 or 2, as Apple anticipates that Pinn will not concede the priority issue as
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`Pinn acknowledges that each Watson reference provides disclosure of essentially
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`all of the accused features in the litigation. Meanwhile, in contrast, the
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`applicability of Petition 1 prior art does not require any priority date analysis, as
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`Petition 1 prior art pre-dates even the provisional application filing date.
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`Institution of Petition 1 and Petition 2 is fully consistent with the guidance
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`2
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`offered by the July 2019 Trial Practice Guide Update. <cite> Noteably, page 26
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` Attorney Docket No. 39521-0091IP2
`IPR of U.S. Patent No. 9,807,491
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`of the Trial Practice Guide Update indicates that “the Board recognizes that there
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`may be circumstances in which more than one petition may be necessary,
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`including, for example, … when there is a dispute about priority date requiring
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`arguments under multiple prior art references.” Here, in Petition 2, Petitioner notes
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`the existence of two disputes involving priority date, and the unresolved nature of
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`these priority date issues creates uncertainty, which leads Petitioner to rank
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`Petition 2 lower than Petition 1, despite the clear case of unpatentability
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`demonstrated through Petition 2 prior art, endorsed by Pinn’s acknowledgement
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`that each of the Watson references discloses essentially all of the accused features
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`in the litigation. Petition 2, Section II.
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`B. Material Differences Between the Petitions
`Material differences exist. At bottom, the Petitions are non-redundant
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`simply in their reliance on different combinations of references that address the
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`claim elements in materially different ways. Although the combinations of
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`references presented in each Petition render obvious the claims of the ’491 Patent,
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`they do so in different ways, using different description.
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`Petition 1 relies on Hankey Group which features a docking/charging device
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`with a user-selectable button (APPLE-1005, 6:17-19) and which contemplates
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`soliciting user input prior to performing wireless pairing via a user prompt that
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`requires a user response (APPLE-1005, 15:65-16:3). Hankey Group in
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` Attorney Docket No. 39521-0091IP2
`IPR of U.S. Patent No. 9,807,491
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`combination with Lydon provides augmentation of wireless pairing functionality
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`on an already-present charging device button, within a reference that already
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`sometimes solicits user input as a condition precedent to pairing. APPLE-1007,
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`23:23-33. As such, the Hankey Group and Lydon combination offers an
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`alternative that can offer convenience, particularly when user access to a
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`smartphone may be limited and for inbound communications where the earbud
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`case may be readily available for physical manipulation in response an inbound
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`call whose ring creates an exigent circumstance.
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`By contrast, Petition 2 relies on Watson-350 and Watson-510 as primary
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`references, which each by itself describes a button on the charging case that when
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`pressed causes the case to initiate a process whereby an ear bud is placed into
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`discovery mode for pairing via Bluetooth with a smartphone. APPLE-1053,
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`[0008]-[0009], [0020]-[0021], [0026], [0028]-[0029], [0038]-[0040], [0050]-
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`[0052], [0063], [0067]; APPLE-1054, [0007]-[0008], [0019]-[0020], [0025],
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`[0027]-[0028], [0037]-[0039], [0048]-[0050]; APPLE-1051, [0047]; APPLE-1052,
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`[0046]. In particular, Watson-350’s “wireless ear bud case determines whether a
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`user has performed an action, ( e.g., pushed a button on the wireless ear bud case),
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`the action indicating that the user wants the wireless ear buds to be discoverable
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`for connections to other communication devices” and “as the button 360 has been
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`pressed, the wireless ear bud case 300 causes the wireless ear buds 305, 310 to
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` Attorney Docket No. 39521-0091IP2
`IPR of U.S. Patent No. 9,807,491
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`become discoverable to new connections with other communication devices.”
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`APPLE-1053, [0050], [0039]-[0040]; APPLE-1054, [0049], [0038]-[0039]; see
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`Petition 2, Ground 1A, 1[g]. Similarly, Watson-510’s “wireless ear bud case 400
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`also includes an input 460, such as a depressible button, to receive manual input to
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`cause the wireless ear buds 405, 410 in the wireless ear bud case 400 to pair to
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`each other and/or to become discoverable to other devices, such as to companion
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`communication devices.” APPLE-1051, [0047]; APPLE-1052, [0046]; see
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`Petition 2, Ground 2A, 1[g].
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`These distinct primary references, in combination with various secondary
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`references, apply differently to the claims of the ’491 Patent. Additionally,
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`motivation to combine the distinct sets of references presented in the two Petitions
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`materially differs.
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`In summary, the Petitions are not redundant, duplicative, or substantially
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`similar. Each Petition provides a strong showing of unpatentability and/or
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`obviousness, without repeating the same theory. Accordingly, Petitioner requests
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`that the Board institute trial on both Petitions.
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`Dated: September 25, 2020
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` Attorney Docket No. 39521-0091IP2
`IPR of U.S. Patent No. 9,807,491
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`Respectfully submitted,
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` /W. Karl Renner/
`W. Karl Renner, Reg. No. 41,265
`Kim Leung, Reg. No. 64,399
`Usman Khan, Reg. No. 70,439
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
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`Attorneys for Petitioner
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` Attorney Docket No. 39521-0091IP2
`IPR of U.S. Patent No. 9,807,491
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4)(i) et seq. and 42.105(b), the undersigned
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`certifies that on September 25, 2020, a complete and entire copy of this Notice
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`Ranking Petitions was provided via Federal Express, to the Patent Owner by
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`serving the correspondence address of record as follows:
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`KASHA LAW LLC
`14532 Dufief Mill Rd.
`North Potomac, MD 20878
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`/Diana Bradley/
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`Diana Bradley
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(858) 678-5667
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