IPR2021-00972
`PATENT OWNER’S SUR-REPLY
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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.,
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`Petitioner,
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`V.
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`ALIVECOR,INC.,
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`Patent Owner.
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`Case IPR2021-00972
`Patent 10,638,941
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`PATENT OWNER’S SUR-REPLY TO PRELIMINARY RESPONSE
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`

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`Exhibit List
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`IPR2021-00972
`PATENT OWNER’S SUR-REPLY
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`Description
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`2002
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`
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`(June 25, 2021)
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`Exhibit
`No.
`2001|Declaration of Dr. Igor Efimov In Support of Patent Owner’s
`Preliminary Response
`B. S. Kim andS. K. Yoo, “Motion artifact reduction in
`photoplethysmography using independent component analysis,” IEEE
`Transactions on Biomedical Engineering, vol. 53, no. 3, pp. 566-568,
`March 2006, doi: 10.1109/TBME.2005.869784
`Maoet al., Motion Artifact Reduction In Photoplethysmography For
`2003
`Reliable Signal Selection, arXiv, Sep 6, 2021; arXiv:2109.02755
`Apple’s September 10, 2021 Disclosure ofInitial Invalidity
`2004
`Contentions in Responseto Individual Interrogatory Nos. 19-21 of
`AliveCor’s First Set of Interrogatories to Apple, Jn the Matter of
`Certain Wearable Electronic Devices with ECG Functionality and
`Components Thereof, Inv. No. 337-TA-1266
`Certain Automated Storage and Retrieval Systems, Robots, and
`Components Thereof, Inv. No. 337-TA-1228, Order No. 6 Denying
`Respondents’ Motion For A Stay (Mar. 9, 2021)
`Certain Wearable Electronic Devices with ECG Functionality and
`2006
`Components Thereof, Inv. No. 337-TA-1266, Order No. 6 Setting
`Procedural Schedule (June 25, 2021
`Respondent Apple Inc.’s Response to the Amended Complaint of
`AliveCor, Inc. Under Section 337 of the Tariff Act of 1930, As
`Amended,and Notice of Investigation, In the Matter of Certain
`Wearable Electronic Devices with ECG Functionality and
`Components Thereof, Inv. No. 337-TA-1266 (June 28, 2021) (Public)
`Apple’s August 18, 2021 List of Claim Terms To Be Construed, Jn
`2008
`the Matter of Certain Wearable Electronic Devices with ECG
`Functionality and Components Thereof, Inv. No. 337-TA-1266
`Joint Disclosure Of Proposed Claim Constructions, In the Matter of
`2009
`Certain Wearable Electronic Devices with ECG Functionality and
`Components Thereof, Inv. No. 337-TA-1266 (Sept. 13, 2021
`Certain Wearable Electronic Devices with ECG Functionality and
`Components Thereof, Inv. No. 337-TA-1266, Order No. 12
`Construing the Termsof the Asserted Claims of the Patents at Issue
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`2005
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`2007
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`2010
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`2011
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`Apple’s September 24, 2021 Notice of Prior Art, In the Matter of
`Certain Wearable Electronic Devices with ECG Functionality and
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`

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`Components Thereof, Inv. No. 337-TA-1266
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`IPR2021-00972
`PATENT OWNER’S SUR-REPLY
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` 2012|Complaint For Patent Infringement, AliveCor, Inc. v. Apple, Inc.,
`
`
`Case 6:20-cv-01112-ADA (W.D. Texas) (December 7, 2020)
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`2013|Complaint, iRobot Corporation v. SharkNinja Operating LLCetal.,
`Case 1:21-cv-10155-FDS (D.Del.) January 28, 2021)
`2014|October 12, 2021 Email from Maria King, Deputy Chief Clerk for
`Trials, PTAB, USPTO,authorizing Petioner’s Reply to Patent Owner
`Preliminary
`Response
`2015|Apple’s September 22, 2021 Opening Claim Construction Brief, Jn
`the Matter of Certain Wearable Electronic Devices with ECG
`Functionality and Components Thereof, Inv. No. 337-TA-1266
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`

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`IPR2021-00972
`PATENT OWNER’S SUR-REPLY
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`Despite having ample opportunity, Petitioner has given the Board no reason
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`whythis petition should proceed. Petitioner does not dispute that the parallel
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`judicial proceeding will pre-date the Board’s Final Written Decision, and yet
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`Petitioner refuses to commit to a forum byfiling a Sotera-endorsed waiver.
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`Instead, Petitioner insists on reserving its right to present printed-publication-based
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`invalidity defenses both here and in the ITC. But that is precisely the type of
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`inefficiency Fintiv strove to prevent. Institution thus should be denied.
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`A.
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`There Is Substantial Overlap Between the Two Proceedings
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`Both the ITC and the PTAB are reviewingthe validity of the Asserted
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`Patents—a substantial overlap between the proceedingsthat increases the
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`likelihood of conflicting judicial decisions. Petitioner’s “waiver” does notalleviate
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`the issue.! Apple’s waiver does not prohibit Apple from asserting printed
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`publicationsin the litigation that are identical in scope to the references presented
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`here. Nor has Apple asserted that the art it asserts in thelitigation differs in any
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`substantive way from the art presented here.
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`Apple’s arguments about the breadth ofits stipulation are unavailing. In
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`Sotera, the stipulation stated that the Petitioner “will not pursue in [the parallel
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`' Apple claimsthat, with institution, the IPR prior art will never enter the
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`ITC case. Not so. The IPR priorart has already entered the ITC case. See Ex. 2011.
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`IPR2021-00972
`PATENT OWNER’S SUR-REPLY
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`proceeding] the specific grounds [asserted in the IPR petition], or on any other
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`ground .. . that was raised or could have been reasonably raised in an IPR.”
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`Sotera at 13 (emphasis added). The Sotera stipulation would bar the groundsraised
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`in this petition and any groundsthat could have been reasonablyraised, including
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`every priorart invalidity argument that Apple currently asserts in the ITC. Indeed,
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`Apple’s initial ITC invalidity contentions cite 13 purported prior art references that
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`could have beenraised in its petition. Its notice of prior art cites 191 references,
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`including every prior art reference at issue in Apple’s petition. See Ex. 2011.
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`Apple’s limited stipulation creates the possibility of conflicting decisions on the
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`validity of the same claims and the same patents, which should be avoided.
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`Apple also argues AliveCor’s reduction of asserted claims in the ITC will
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`result in the ITC addressing only a subset of the claims challenged in the IPR. But
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`missing from that argumentis any indication the narrowedset of claims would be
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`substantially different than those challenged in the IPR petition. See Samsung v.
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`Clear Imaging Research, IPR2020-01399, Paper 13 at 20 (Feb. 3, 2021).
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`Accordingly, where, as here, the Petitioner has filed a limited stipulation, this
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`factor should weigh against institution. Regeneron Pharm., Inc. v. Novartis
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`Pharma AG, IPR2020-01317, Paper 15 at 15, 19-22 (Jan. 15, 2021).
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`B.
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`The ITC’s Investigation Will Conclude Before the Board’s FWD
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`Neither party disputes that the target date for the ITC Investigation
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`IPR2021-00972
`PATENT OWNER’S SUR-REPLY
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`conclusion predates the expected FWD date by two months. Apple’s reply,
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`however, ignoresa line of decisions—cited by AliveCor—finding that an ITC
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`Investigation’s conclusion that pre-dated a FWD by approximately two months
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`weighed againstinstitution. Preliminary Response at 19. Apple instead cites a
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`dissimilar case wherea district court vacated all Markman deadlines, amendedits
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`case managementorder twice, andthe trial was “scheduled to begin around the
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`sametime as [the Board’s] deadline to reach a final decision.” Petitioner’s Reply at
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`1; Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 13 (Dec.1,
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`2020) (precedential). Apple’s citation is not only distinguishable, but its arguments
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`about “proximity” based on that citation directly contradict the plain language of
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`Apple Inc. v. Fintiv, Inc.
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`Apple also argues the Board should considerits offer to shorten the typical
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`3-month period for the Petitioner Reply by up to 7 weeks. Petitioner’s Reply at 1-
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`2. This should be rejected for two reasons. First, Apple could have madethis offer
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`whenit filed its petition because it is not based on “developmentsin the co-
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`pending ITC case that occurred after the filing of the Petition.” Ex. 2014. Second,
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`Apple neverraised this schedule change whenthe parties conferred. Such a
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`shortened schedule prejudices AliveCor and should not be permitted. AliveCor
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`must prepare andpresentits expert witness for deposition during the period for the
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`Petitioner’s Reply—shortening the schedule also shortens the deposition window.
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`IPR2021-00972
`PATENT OWNER’S SUR-REPLY
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`C.
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`Significant Resources Will Be Invested in the ITC Investigation
`Before the Board Issues an Institution Decision
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`Apple all but ignores this Fintiv factor and the arguments AliveCorraised in
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`its Preliminary Response and instead focuses on its purported diligence. But this
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`factor concerns“investmentin the parallel proceeding by the court and the
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`parties,” not “diligence in filing.” Fintiv at 6. Diligence is only one componentof
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`evaluating investmentin the parallel proceeding. Jd. at 9-12. A party’s diligence
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`makesit more likely that the parallel proceeding will be limited in its progression
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`and investment. A party’s lack of diligence, like Apple’s here, makes it more likely
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`the parallel proceeding will be advancedby the time ofthe institution decision.
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`Here,it is undisputed that significant resources have been, and will continue
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`to be, invested before this Board makesits institution decision. See Preliminary
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`Responseat 20-21. For example, the ITC issued a Markman Order on November5,
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`2021. Ex. 2010; Fintiv at 10. Apple relies on SharkNinja v. iRobot Corp.,
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`IPR2021-00545, Paper 11 at 7 (September8, 2021) and Ocado v. Autostore,
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`IPR2021-00311, Paper 11 at 14-15 (June 28, 2021) to argue that it should not be
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`faulted for any unwanted duplication of efforts. But in SharkNinja, the Petitioner
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`filed its IPR petitions one month the complaint wasfiled. See Ex. 2013. In Ocado,
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`the Petitioner filed its IPR petitions a little more than two monthsafter the
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`complaint wasfiled. Ocado at 9, 14. Here, it is undisputed that Apple filed its IPR
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`petitions more than six monthsafter AliveCorfiled its District Court complaint.
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`IPR2021-00972
`PATENT OWNER’S SUR-REPLY
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`See Preliminary Response at 22; Ex. 2012. This delay directly resulted in the
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`significant investment of party and judicial resourcesin parallel proceedings.
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`D.
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`Other Considerations Also Weigh in Favor of DenyingInstitution
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`The Markman Orderthat issued in the ITC conflicts with Apple’s positions
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`in this proceeding. Here, Apple argues that the term “discordance” should be
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`construed as “whena first sensed parameter value would not be expected to
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`coincide with a second sensed parametervalue.” Petition at 8-10. Yet in the ITC,
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`the ALJ found that “discordance” should be given its plain and ordinary meaning.
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`Ex. 2010 at 30. In addition, in the ITC, the ALJ rejected Apple’s arguments
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`regarding the properlevel of ordinary skill. Apple argued that a skilled artisan
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`could have a medical degree coupled with at least two years of work experience
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`using biomedical sensors and/or analyzing their data, including in clinical practice
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`treating patients. /d. at 7-8. But the ALJ held that a person of ordinary skill in the
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`art with a medical degree haveat least five years of relevant work experience
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`designing wearable devices and/or sensors for measuring physiological signals or
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`parameters of mammals. /d. That definition not only conflicts with Apple’s
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`position here, see Petition at 8, it also excludes Apple’s expert, who appearsto
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`have no relevant experience. See Ex. 1003 at 5-7. For this Board to credit Apple’s
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`expert’s arguments when he maynotconstitute a person of ordinary skill at the
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`ITC raises the likelihood of conflicting judicial decisions.
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`IPR2021-00972
`PATENT OWNER’S SUR-REPLY
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`Respectfully submitted,
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`Date: November8, 2021
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`/s/ James M. Glass
`
`James M. Glass
`Registration No. 46,729
`Quinn Emanuel Urquhart & Sullivan LLP
`51 Madison Ave, 22™ Floor
`New York, New York, 10010
`Tel: (212) 849-7142
`Fax (212) 849-7100
`Email: ge-alivecor@quinnemanuel.com
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`Counselfor Patent Owner AliveCor, Inc.
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`IPR2021-00972
`PATENT OWNER’S SUR-REPLY
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6, I hereby certify that on November8, 2021, the
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`foregoing Patent Owner Preliminary Response as served via email on the following
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`counsel of record for the Petitioner:
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`W.Karl Renner
`Jeremy J. Monaldo
`IPR50095-0033IP1@fr.com
`PTABInbound@fr.com
`axf-ptab@fr.com
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`Date: November8, 2021
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`/s/James M. Glass
`
`James M. Glass
`Registration No. 46,729
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