`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`APPLE INC.,
`Petitioner
`
`v.
`
`GUI GLOBAL PRODUCTS, LTD.,
`Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2021-01291
`Patent 10,562,077
`
`
`
`
`
`
`
`
`
`
`
`
`PETITIONER’S NOTICE RANKING AND EXPLAINING MATERIAL
`DIFFERENCES BETWEEN PETITIONS
`
`
`
`
`
`Atty. Dkt. 50095-0030IP2
`U.S. Patent No. 10,562,077
`Apple previously filed a petition in IPR2021-00472 (“Apple’s Petition”)
`
`challenging claims of U.S. Patent No. 10,562,077 (“the ’077 Patent”) on February
`
`5, 2021. The Board has yet to render an institution decision based on Apple’s
`
`Petition. Apple now files an additional petition in IPR2021-01291 (“Copycat
`
`Petition”) challenging claims of the ’077 Patent with a conditional motion for joinder
`
`to Samsung’s IPR2021-00337 proceeding, which was instituted on July 2, 2021.
`
`Pursuant to the November 2019 Consolidated Trial Practice Guide (“CTPG”), this
`
`paper provides: “(1) a ranking of the petitions in the order in which [Petitioner]
`
`wishes the Board to consider the merits, if the Board uses its discretion to institute
`
`any of the petitions, and (2) a succinct explanation of the differences between the
`
`petitions, why the issues addressed by the differences are material, and why the
`
`Board should exercise its discretion to institute additional petitions.” CTPG, 59-61.
`
`I.
`
`Ranking of Petitions
`The merits of Apple’s Petition are particularly strong. As demonstrated in
`
`Apple’s Petition with reference to Dr. Cooperstock’s testimony and additional
`
`evidence, institution would result in invalidation of the challenged claims of the ’077
`
`Patent. Apple respectfully requests that the Board prioritize institution of Apple’s
`
`Petition over consideration of the Copycat Petition.
`
`
`
`1
`
`
`
`Atty. Dkt. 50095-0030IP2
`U.S. Patent No. 10,562,077
`
`II. Material Differences Between the Petitions
`Apple’s Petition and the Copycat Petition each demonstrate the obviousness
`
`of claims of the ’077 Patent, but they do so on the basis of different combinations of
`
`references that address the respectively challenged claims in materially different
`
`ways. At bottom, the petitions are non-redundant in their reliance on these different
`
`combinations of references.
`
`The grounds of rejection set forth in Apple’s Petition each feature U.S. Patent
`
`Publication No. 2008/0132293 (Gundlach) as a primary reference. Gundlach
`
`describes wireless headsets having “relatively thin shape[s] [that] may allow the
`
`headset[s] to be stored and charged in…portable cradle[s]” that are described as
`
`incorporating embedded magnets and/or mechanical elements for headset retention.
`
`Gundlach, [0003], [0005], [0055]-[0056], [0068], [0073], [0075], Figures 10a-19b.
`
`Further, and as explained at length in Apple’s Petition, a POSITA would have found
`
`it obvious in view of U.S. Patent No. 7,548,040 (Lee) to modify Gundlach to
`
`incorporate inductive charging components. See Apple’s Petition, 8-17.
`
`In contrast, the grounds of rejection set forth in the Copycat Petition feature
`
`U.S. Patent Publication No. 2010/0227642 (Kim) as a primary reference. Kim
`
`describes mobile terminals (e.g., smart phones and devices with watch-type form
`
`factors) that include “a main device (first device) 100 and one or more sub-devices
`
`(second devices) 300a to 300n that can be detachably attached to the main device”
`
`2
`
`
`
`Atty. Dkt. 50095-0030IP2
`U.S. Patent No. 10,562,077
`using magnetic components. Kim, [0069], [0070], [0181], [0185], [0218].
`
`As is apparent, Gundlach and Kim offer very different disclosures that, in
`
`combination with non-overlapping secondary
`
`references, demonstrate
`
`the
`
`obviousness of the ’077 Patent’s claims in materially different ways. Additionally,
`
`the motivations to combine the distinct sets of references presented in each of the
`
`two petitions materially differ. In at least these ways, Apple’s Petition and the
`
`Copycat Petition offer non-redundant, non-duplicative, and substantially dissimilar
`
`challenges to a patent that has been simultaneously asserted against each of Apple
`
`and Samsung. In summary, each petition provides strong showings of obviousness,
`
`without repeating the same theories.
`
`III. Additional Factors that Support Institution in the Alternative
`The purpose of the Copycat Petition and the accompanying conditional
`
`motion for joinder is twofold: (1) to avoid the unnecessary cost of duplicative
`
`litigation in different forums on the subject of validity over printed publication prior
`
`art; and (2) to avoid potentially inconsistent decisions from different forums
`
`addressing the same prior art grounds. If the Board were to deny both Apple’s
`
`Petition and the Copycat Petition, Apple would have no choice but to pursue its
`
`printed publication invalidity grounds in district court, separate and apart from the
`
`already-instituted proceeding in IPR2021-00337. Additionally, because Apple is
`
`unrelated to the petitioner in IPR2021-00337, settlement and termination of
`
`3
`
`
`
`Atty. Dkt. 50095-0030IP2
`U.S. Patent No. 10,562,077
`IPR2021-00337 would harm Apple if both Petitions were denied. See Iron Oak
`
`Techs., LLC v. Samsung Elecs. Co., LTD., IPR2018-01554, Paper 9 at 29 (PTAB
`
`Feb. 13, 2019). Patent Owner’s infringement suit against Apple would remain, and
`
`the ’077 Patent’s challenged claims would go untested at the PTAB.
`
`On the other hand, institution in the alternative of either Apple’s Petition or
`
`the Copycat Petition would promote adjudication of all printed publication prior art
`
`by the PTAB, and likely also result in a stay of the district court litigation. EX1116,
`
`2 (noting that stay will be unopposed if Apple’s originally-filed petitions are
`
`instituted). As such, the present circumstances offer a prime opportunity for IPR to
`
`serve its intended role as a true alternative to district court litigation. The Board’s
`
`final written decision in a proceeding involving the ’077 Patent and Apple as a
`
`petitioner would bind Apple via the § 315(e)(2) estoppel before a jury trial, and
`
`thereby promote judicial efficiency.1 See Apple Inc. v. Fintiv, Inc., IPR2020-00019,
`
`Paper 11 at 6 (PTAB 2020).
`
`More specifically, Apple respectfully requests that the Board institute Apple’s
`
`Petition, which would promote adjudication of Apple’s and Samsung’s printed
`
`publication invalidity grounds by a single forum—the PTAB—which could serve as
`
`
`1 The district court as yet to set a trial date, and there is no reasonable expectation
`
`that it will schedule a trial ahead of the Board’s final written decision.
`
`4
`
`
`
`Atty. Dkt. 50095-0030IP2
`U.S. Patent No. 10,562,077
`a true alternative to the district court litigation. Cf. Snap, Inc. v. SRK Technology
`
`LLC, IPR2020-00820 Pap. 15 at 9, 19 (PTAB Oct. 21, 2020)(precedential); Sotera
`
`Wireless, Inc. v. Masimo Corp., IPR2020-01019 Pap. 12 at 19-21 (PTAB Dec. 1,
`
`2020)(precedential). However, if the Board were to decline to institute Apple’s
`
`Petition, the next-most efficient course of action would be for the Board to institute
`
`the Copycat Petition. That would enable the parties to avoid the unnecessary costs
`
`of duplicative litigation in different forums on the subject of validity over the same
`
`prior art grounds, and would also avoid the possibility of potentially inconsistent
`
`decisions from different forums addressing those grounds. Indeed, a single Board
`
`decision may dispose of the issues raised in IPR2021-00337 for all interested parties.
`
`IV. CONCLUSION
`For at least these reasons, Apple respectfully submits that efficiency and
`
`integrity of the system as whole would be best served by instituting Apple’s Petition,
`
`and requests that the Board prioritize institution of Apple’s Petition. However, if
`
`the Board were to deny institution of Apple’s Petition, Apple alternatively requests
`
`that the Board institute review of IPR2021-01291 and grant Apple’s conditional
`
`motion to join Samsung’s already-instituted IPR2021-00337 proceeding.
`
`
`
`
`
`
`
`5
`
`
`
`Atty. Dkt. 50095-0030IP2
`U.S. Patent No. 10,562,077
`
`
`
`
`
`
`
`
`Dated: July 30, 2021
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`(Control No. IPR2021-01291)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
` /Andrew B. Patrick/
`W. Karl Renner, Reg. No. 41,265
`Andrew B. Patrick, Reg. No. 63,471
`Roberto Devoto, Reg. No. 55,108
`Kenneth Wayne Darby Jr., Reg. No. 65,068
`Kim Leung, Reg. No. 64,399
`
`
`
` Attorneys for Petitioner
`
`6
`
`
`
`CERTIFICATE OF SERVICE
`
`Atty. Dkt. 50095-0030IP2
`U.S. Patent No. 10,562,077
`
`Pursuant to 37 CFR § 42.6(e), the undersigned certifies that on July 30, 2021,
`
`a complete and entire copy of this Notice Ranking Petitions was provided via
`
`Express Mail, to the Patent Owner by serving the correspondence address of record
`
`as follows:
`
`Mossman, Kumar & Tyler PC
`P.O. Box 421239
`Houston TX 77242
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Crena Pacheco/
`Crena Pacheco
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(202) 783-5070
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`