`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`APPLE INC.,
`Petitioners,
`
`
`v.
`
`
`LOGANTREE LP
`Patent Owner
`______________
`
`Case IPR2022-00037
`Patent 6,059,576
`______________
`
`PATENT OWNER’S SUR-REPLY
`
`
`
`
`
`
`
`

`

`Case No. IPR2022-00037
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`TABLE OF CONTENTS
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`INTRODUCTION ................................................................................................. 1 
`I. 
`sur-reply to PETITIONER’S reply ARGUMENTS.............................................. 2 
`II. 
`A.  GROUND 1 ....................................................................................................... 2 
`B.  GROUND 2 ..................................................................................................... 14 
`C.  GROUND 3A .................................................................................................. 14 
`D.  GROUND 3B .................................................................................................. 16 
`E.  GROUND 4 ..................................................................................................... 17 
`F.  GROUND 5A .................................................................................................. 18 
`G.  GROUND 5B, 6A, 6B, 7, 8A, and 8B ............................................................ 18 
`III.  CONCLUSION ................................................................................................... 18 
`
`i
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` 
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`Case No. IPR2022-00037
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`CASES
`
`TABLE OF AUTHORITIES
`
`Bayer Pharma AG v. Watson Labs., Inc., 874 F.3d 1316, (Fed. Cir. 2017) ................................... 4
`
`Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, (Fed. Cir. 2015) .................................................... 11
`
`Cisco Sys., Inc. v. C-Cation Techs., LLC, Case IPR2014 00454, (PTAB Aug. 29, 2014) ....... 3, 15
`
`CustomPlay, LLC v. ClearPlay, Inc., Case IPR2014-00430, (PTAB Aug. 14, 2015) ............. 6, 15
`
`Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, (Fed.Cir. 2016) ............................................... 6
`
`In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, (Fed.Cir. 2016) ................................... 2, 6, 11
`
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge, Ltd., 821 F.3d 1359, (Fed. Cir. 2016) ............... 2
`
`Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, (Fed. Cir. 2012) ........................ 2
`
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, (2007)....................................................................... 3
`
`STATUTES
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`35 U.S.C. § 312(a)(3) ................................................................................................................ 2, 11
`
`REGULATIONS
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`37 C.F.R. § 42.104(b)(4)-(5) ........................................................................................................... 2
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`37 C.F.R. § 42.22(a)(2) ................................................................................................................... 2
`
`37 CFR § 42.6(a)(3) .................................................................................................................. 6, 14
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`ii
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`Case No. IPR2022-00037
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`LoganTree, LP submits the following Sur-Reply to Petitioner Apple, Inc.’s Reply in Inter
`
`Partes Review No. 2022-00037, instituted against U.S. Patent No. 6,059,576 (’576 Patent).
`I. INTRODUCTION
`A common theme running throughout Petitioner’s Reply is that Petitioner appears
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`to entirely forget that it has the burden of persuasion.1 As discussed below, Petitioner
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`repeatedly argues that LoganTree hasn’t disproven issues on which Petitioner bears this burden
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`but entirely failed to argue, such as whether a POSITA would have had an “expectation of success”
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`in combining references.
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`Another theme is that the Petition’s arguments remain conclusory and obfuscated by
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`unexplained citations. The Reply cannot save them by incorporating “Dr. Kenny’s detailed
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`explanations” by reference without pointing out which specific opinions of Dr. Kenny advances
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`Petitioners’ arguments, and how. As LoganTree pointed out in its Response (e.g., Paper 17 at 22–
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`23, 42, 43, 49), Petitioner repeatedly argues without explanation, relying instead only on long,
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`unexplained string cites.2 See, e.g., Paper 3 at 28–29 (regarding Ground 1 Element 1a); id. at 92
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`(regarding Ground 3A Claim 31); id. at 92–93 (regarding Ground 3A Claim 41); id. at 102
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`(regarding Ground 5A Claim 31). The sheer volume of cited material routinely obfuscates the
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`evidentiary support for the Petition’s assertions and makes it essentially impossible to determine
`
`
`1 LoganTree acknowledges that it inadvertently referenced outdated language on the evidentiary
`burden. But to be clear, LoganTree has never argued (and Petitioner does not claim LoganTree
`argued) that Petitioner fails the clear-and-convincing evidentiary burden, but would have
`otherwise met a preponderance burden. LoganTree’s argument has been, and is, that Petitioner
`failed to meet any burden to show that the challenged claims are invalid.
`
`
`2 Petitioner has combed through the Petition’s long, unexplained string cites for material to
`retroactively (and improperly) patch the Petition’s holes with new arguments. LoganTree was
`not required to go through every string cite in the Petition to rebut potential arguments that were
`not even mentioned.
`
`
`
`1
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`Case No. IPR2022-00037
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`what Petitioner’s arguments are. In short, the Petition’s marshaling of evidence in support of its
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`burden fail the particularity and specificity required by 35 U.S.C. § 312(a)(3), 37 C.F.R.
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`§ 42.22(a)(2), and 37 C.F.R. § 42.104(b)(4)-(5); see also Paper 13 at 23.3
`II. SUR-REPLY TO PETITIONER’S REPLY ARGUMENTS
`
`A. GROUND 1
`Petitioner’s Reply as to Ground 1 addresses only whether a POSITA would have combined
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`Ono and Hutchings and the following individual claims/elements: Claims 1 (Elements 1a, 1f, and
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`1k), 20 (Elements 20a and 20f), 30, 41, and 42. LoganTree addresses these below.
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`A POSITA would not have combined Ono and Hutchings.
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`On motivation to combine, Petitioner has the burden of persuasion and must provide
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`actual argument to meet this burden: “[i]t was [Petitioner’s] burden to demonstrate both ‘that a
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`skilled artisan would have been motivated to combine the teachings of the prior art references to
`
`achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation
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`of success in doing so.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge, Ltd., 821 F.3d 1359,
`
`1367-68 (Fed. Cir. 2016) (citing, inter alia, Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688
`
`F.3d 1342, 1360 (Fed. Cir. 2012)). “[M]ere conclusory statements” cannot suffice; Petitioner
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`“must instead articulate specific reasoning, based on evidence of record” to support its grounds of
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`unpatentability. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed.Cir. 2016).
`
`
`3 “One purpose of the prohibition against incorporation by reference is to eliminate abuses” of the
`word count limits established for the parties’ substantive papers, because “[i]ncorporation by
`reference amounts to a self-help increase in the length of the brief.” See Cisco Sys., Inc. v. C-
`Cation Techs., LLC, Case IPR2014-00454, Paper 12 at 10 (PTAB Aug. 29, 2014) (Paper 12)
`(citations and internal quotations omitted) (informative). This is especially significant here,
`because Petitioner’s opening brief is 13,956 words—only 44 words below the limit set in 37 CFR
`§ 42.24(a)(1)(i). See Paper 3 at 115. The amount of argument that Petitioner is now trying to
`incorporate by reference from Dr. Kenny’s declaration would have pushed the Petition well
`beyond the 14,000-word limit.
`
`
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`2
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`Case No. IPR2022-00037
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`Regarding the “expectation of success”: As LoganTree’s Response pointed out (Paper 17
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`at 19), the Petition comes nowhere near meeting its burden for this element—Petitioner’s argument
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`was limited to the bare conclusory statement that a POSITA “would have expected success in
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`enhancing Ono’s device [by combining it with Hutchings],” with no articulation of the specific
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`reasoning. Paper 3 at 26.4 This falls well short of the Magnum Oil Tools standard.
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`Petitioner’s Reply does nothing to clarify the Petition, but instead misrepresents
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`LoganTree’s Response as focusing “on whether components of Ono and Hutchings can be
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`physically combined together.” Paper 21 at 6. This is a strawman. LoganTree’s argument was
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`never physical incompatibility, but rather logical/architectural/system design incompatibility.
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`LoganTree pointed out that Ono uses a “sensor-centric architecture (offloading much of the work
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`onto analog circuits and counters external to the processor), while Hutchings uses a (fundamentally
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`incompatible) more complex and power-intensive microprocessor-centric architecture.” Paper 17
`
`at 20. Combining Ono with Hutchings’s sensors would not work unless Ono were given a
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`complete, ground-up redesign—something that makes sense only in the context of litigation-driven
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`hindsight; Paper 17 at 19–20. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“A
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`factfinder should be aware, of course, of the distortion caused by hindsight bias….”).
`
`The Reply argues that that Dr. Kenny gave opinions about “expectation of success” in his
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`declaration. Paper 21, Reply at 27. But these supposed arguments are not even mentioned in the
`
`Petition. See Paper 3 at 98–99. This is textbook improper incorporation by reference. Cisco Sys.,
`
`Inc. v. C-Cation Techs., LLC, Case IPR2014 00454, Paper 12 at 8 (PTAB Aug. 29, 2014)
`
`
`4 Petitioner’s “expectation of success” argument is so perfunctory that Petitioner does not even
`dedicate an entire sentence to it—rather, it’s combined with a motivation standard that appears
`to be borrowed from KSR v. Teleflex.
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`
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`3
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`Case No. IPR2022-00037
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`(informative) (Citing “large portions of another document, without sufficient explanation of those
`
`portions, amounts to incorporation by reference.”).
`
`Regarding “teaching away”: Even if a POSITA would have had a motivation to combine
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`Ono with Hutchings, and even if a POSITA would have had a reasonable expectation of success,
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`they would not have done so because the prior art and a POSITA’s knowledge teach away from
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`this combination. As LoganTree pointed out in its Response (Paper 17 at 19), integrating
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`Hutchings’s complex sensors would have a dramatic negative impact on battery life on the Ono
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`device (among other problems). Petitioner’s Reply to this (Paper 21 at 5–6) is confused, and
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`appears to conflate “teaching away” and “motivation to combine.” Petitioner argues that
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`“Hutchings nowhere describes or suggests that its multidimensional sensors… have ‘a dramatic
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`negative impact on battery life’” (Paper 21 at 4) but ignores its own argument that “a POSITA
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`would have found it obvious to turn off Hutchings’ measuring system using a mode select switch
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`to conserve battery when Hutchings’ measuring system is not being used.” Paper 3 at 26. Petitioner
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`then states that “obviousness ‘does not require that the motivation be the best option, only that it
`
`be a suitable option from which the prior art did not teach away’” (Paper 21 at 5, citing Bayer
`
`Pharma AG v. Watson Labs., Inc., 874 F.3d 1316, 1328 (Fed. Cir. 2017))—but “teaching away”
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`is exactly what LoganTree established.
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`Element 1a: Petitioners have not met their burden to show that the prior art disclosed the
`“unrestrained movement” limitation.
`
`As LoganTree pointed out in its Response, the Petition makes no argument (and cites no
`
`evidence) showing that Hutchings (alone or with Ono) discloses the “unrestrained movement”
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`limitation of Element 1a. See Paper 17 at 22–23 (citing Paper 3 at 28). Although Petitioner
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`downplays it, this limitation is not a trivial one—as LoganTree pointed out in its Response (as
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`being “[o]f particular relevance”), the word “unrestrained” was added to Claim 1 as part of an
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`4
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`Case No. IPR2022-00037
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`amendment during prosecution. Paper 17 at 5. Despite this, the only part of the Petition that
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`Petitioner can point to is what it characterizes as the Petition’s “clear and detailed explanations
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`of Hutchings’s disclosure of multidimensional accelerometers and rotational sensors” and “citation
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`to Hutchings at 3:22-26….” Paper 21 at 7 (emphasis added). Petitioner’s attempt to salvage its
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`failure to meet its burden on the “unrestrained movement” limitation fails for the following
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`reasons.
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`First, Petitioner is incorrect—its original Petition had no “clear and detailed explanation”
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`of the “unrestrained movement” limitation. Rather, the cited portion (which contains the only
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`mention of the word “unrestrained” in the body of the Petition) is a single sentence (backed only
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`by a long, unexplained string cite) making the bare assertion that “Ono-Hutchings’ movement
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`sensor measures unrestrained movement in any direction through accelerometers that measure
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`accelerations in three dimensions, and rotational sensors that provide the angle of rotation along
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`each axis of the translational coordinate.” Paper 3 at 28. While this argument may have touched
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`on the “in any direction” limitation, it does not address the “unrestrained” limitation.
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`In Reply, Petitioner argues that its unexplained citation to Hutchings at 3:22–26 patches
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`this deficiency, claiming “[t]here is no dispute that Hutchings discloses a movement sensor
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`‘capable of measuring data associated with unrestrained movement,’ i.e., ‘absolute motion of a
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`person….’” Paper 21 at 7. But to be clear, the Petition does not discuss this excerpt at all—it
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`doesn’t even mention the phrase “absolute motion,” let alone argue that “absolute motion”
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`disclosed in Hutchings equates to the claimed “unrestrained movement.” See Paper 3at 28–29.
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`Instead, the relevant portion of the Petition discusses only 8:53–59 of Hutchings. Compare Paper
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`3 at 28 (“accelerometers that measure accelerations in three dimensions, and rotational sensors that
`
`provide the angle of rotation along each axis”) with EX1102 at 8:53–59.
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`5
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`Case No. IPR2022-00037
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`The problem with simply referring to an unexplained citation as its invalidity argument,
`
`however, is that Petitioner carries the burden of persuasion on establishing unpatentability. See In
`
`re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1375–77 (Fed.Cir. 2016). Petitioner argues that
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`“[t]here is no dispute that Hutchings discloses a movement sensor ‘capable of measuring data
`
`associated with unrestrained movement,’” Paper 21 at 7. But the Party with the burden of
`
`persuasion cannot simply cite prior art language, with no explanation or argument, and claim that
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`the prior art language discloses an element with “no dispute.” Because Petitioner made no
`
`argument for LoganTree to dispute in the first place, Petitioner loses. Harmonic Inc. v. Avid Tech.,
`
`Inc., 815 F.3d 1356, 1363 (Fed.Cir. 2016) (“In an IPR, the petitioner has the burden from the onset
`
`to show with particularity why the patent it challenges is unpatentable.”); see also Magnum Oil
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`Tools, 829 F.3d at 1380 (“[M]ere conclusory statements” cannot suffice; the Petitioner “must
`
`instead articulate specific reasoning, based on evidence of record” to support its grounds of
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`unpatentability.).
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`Besides an unexplained citation in Hutchings, Petitioner also makes equally conclusory
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`reference to “Dr. Kenny’s clear and detailed explanations.” Paper 21 at 7. But Petitioner cannot
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`make up for its lack of specific arguments by telling LoganTree and the Board to go find its
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`arguments in a declaration. “Arguments must not be incorporated by reference from one document
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`into another document.” 37 CFR § 42.6(a)(3); see also CustomPlay, LLC v. ClearPlay, Inc., Case
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`IPR2014-00430, Paper 20 at n.4 (PTAB Aug. 14, 2015) (“We do not consider information
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`presented in other papers or exhibits, but not discussed sufficiently” in the briefing.).
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`Element 1f: The Reply rehashes the same arguments as the Petition, but in a different order
`to obscure the flaws—which still exist.
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`For clarity, LoganTree summarizes the relevant Element 1f arguments below.
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`6
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`Case No. IPR2022-00037
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`For the first sub-element5 (“storing first event information related to the detected first
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`user-defined event”), the Petition recycles Ono’s alleged disclosures of 1d (the stored “movement
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`data” and “user-defined operational parameters”) and argues that these alleged disclosures of
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`Element 1d also disclose this part 1f (“event information related to the detected user-defined
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`event”).6 Compare Paper 3 at 38–39 with id. at 49–50; see also Paper 17 at 25.
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`LoganTree’s Response pointed out that Ono’s microprocessor doesn’t store information
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`relating to any detected event, as required by 1f. Instead, according to Petitioner, Ono stores user-
`
`defined operational parameters and movement data. See Paper 3 at 36–38; compare with Paper 17
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`at 25–26. Although this information may later become “related to the detected first use-defined
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`event” (if it is used to detect the event), at this step the event is not yet “detected” and therefore
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`the stored information as described by Ono could not logically be “related” to any “detected event,”
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`and thus the microprocessor is not “storing… information related to the detected… event.” Paper
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`17 at 25 (“In short: Ono does not disclose this limitation because no new or separate “first event
`
`information” is stored upon the detection of that user-defined event.”)
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`In Reply, Petitioner argues the “fact that Ono stores the event information used to detect
`
`the user-defined event prior to detecting the user-defined event does not make it any less ‘related
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`to’ the detected user-defined event or any less of an indication that the predetermined threshold is
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`met.” Paper 21 at 9. Reciting 1f with the context of 1e makes the flaws clearer:
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` 1e: “detecting a first user-defined event based on the movement data and at least
`one of the user-defined operational parameters regarding the movement data, and”
`
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`5 The first sub-element is argued in the Response at 25–26 and in the Reply at 9–16. Petitioner
`also elaborates in this section of its Reply on its alternative arguments related to the hypothetical
`scenario where the user intervenes to stop the watch after hearing an alarm. This is more closely
`related to the second sub-element, so LoganTree discusses it there.
`6 Petitioner argues that this does happen, in Element 1e. See Paper 3 at 44–47.
`7
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`Case No. IPR2022-00037
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` 1f: “storing first event information related to the detected first user-defined event
`along with first time stamp information reflecting a time at which the movement
`data causing the first user-defined event occurred;”
`
`EX1001 at Cl. 1 (emphasis added). Petitioner is, in effect, arguing that 1f can happen before 1e,
`
`i.e., one can store information related to a “detected event” without ever having detected any event.
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`See Paper 21 at 9. This is illogical. The claim language makes clear that the “first event
`
`information” being stored must be “related to” a user-defined event that has been detected (past
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`tense). The disclosures in Ono Petitioner points to discuss storing background parameters used to
`
`detect a user-defined event. These citations to Ono do not disclose storing of information related
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`to the already-detected user-defined event.
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`Petitioner also attempts to salvage this by arguing that, if LoganTree had intended to
`
`require 1f to occur after 1e, then it would have used the phrase “based on the detection of the [first]
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`user defined event” that it used in several dependent claims. Paper 21 at 9. As discussed in the
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`Response, this is a weak argument—it would entirely moot out a limitation (the first sub-element).
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`Additionally, Petitioner omits context: in many instances it is “…based on the detection of the first
`
`user-defined event [end of claim]” but in many cases it adds an additional limitation, e.g., “…based
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`on the first user-defined event and the first time stamp information.” Compare EX1006 Cl.73
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`with id. at Cl. 75; see also id. at Cl.57 (using different phrasing altogether).
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`For the second sub-element7 (the first event information must be stored “along with first
`
`time stamp information reflecting a time at which the movement data causing the first user-defined
`
`event occurred”), Petitioner argues that the time stamp limitation is satisfied because if an event
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`occurs, then the value that happens to be temporarily stored in Ono’s time-counting register (which
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`is essentially a watch that updates every second) serves as 1f’s “time stamp information reflecting
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`7 The second sub-element is argued in the Response at 26–30 and in the Reply at 16–21.
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`Case No. IPR2022-00037
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`a time at which the movement data… occurred.” See Paper 3 at 49–51. This is essentially the same
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`argument as discussed for the first sub-element, above, and fails for the same reasons.
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`The Reply’s main argument is that the claim language “simply does not require that the
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`storing of time stamp information be prompted by the event or the movement data causing the
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`event” (Paper 21 at 17), but Petitioner again fails to address that the information must “reflect a
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`time at which the movement data causing the… event occurred.” Paper 21 at 17. The remainder of
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`the Reply’s new arguments are unclear, but appear to misinterpret the Response as having a claim
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`construction argument. See Paper 21 at 17–18. Based on that, Petitioner’s differentiation argument
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`assumes that “in association with” is the only limitation in Claim 42. Claim 42 requires the memory
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`to be configured to store the items in association, whereas Element 1f has the “storing… along
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`with” being done by the microprocessor. EX1007 at Cl.1, Cl.42. Additionally, Petitioner is making
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`pseudo-claim construction argument about the meaning of “associat[ing] with” and “in association
`
`with,” but does not review how those words are used elsewhere in the ’576 Patent.
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`Regarding Petitioner’s second invalidity theory, the Petition argues that if the user
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`intervenes by pressing a button after hearing an alarm indicating the detection of an event, then
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`various information (the event information) will be stored. See Paper 3 at 53–56. LoganTree’s
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`Response pointed to four separate flaws in this. See Paper 17 at 28–30.
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`In its Reply, Petitioner argues that the “red processing path highlighted in Ono’s FIGS. 18
`
`and 20 below explicitly shows” this situation where a user manually intervenes (Paper 21 at 10).
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`Petitioner essentially restates this argument on page 19 of the Reply. See Paper 21. This “red
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`processing path” is Petitioner’s own markup on a collated diagram. Id. at 10–12. To be clear, this
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`diagram showing the “red processing path” does not exist in Ono—as LoganTree previously
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`pointed out, it “is a hypothetical scenario that Petitioner invented with the benefit of hindsight.”
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`9
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`Case No. IPR2022-00037
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`Paper 17 at 29. An additional problem is that both iterations of Petitioner’s argument (Paper 21 at
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`10 and 19) are backed only by unexplained string cites (which, as discussed above, is improper).
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`In addition, the key limitation that is missing in all of Petitioner’s arguments is the time
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`stamp. Even if the Panel credited Petitioner’s “combination” (which it should not), Petitioner’s
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`arguments for disclosure of a “time stamp” stops at disclosure of the duration an event occurred.
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`See Paper 3 at 53–56; Paper 21 at 19–20. To be clear, the ’576 Patent specifically distinguishes
`
`between when an event occurs (time stamp), and how long that event has occurred (duration). See
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`EX1001 at, e.g., 8:46-48 (distinguishing between “when, how long, and how many times” an event
`
`occurred.) Tellingly, Ono itself makes the same distinction between “time” and “time duration.”
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`EX1101 at 14:35-37 (distinguishing between “displaying time and time durations measured.”)
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`Notably, while Ono specifically discusses measuring and displaying “time,” nowhere does Ono
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`disclose saving to memory a “time” associated with movement causing the occurrence of a user
`
`defined event. Instead, Ono merely discusses saving “date” and “duration” as Petitioner
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`acknowledges.
`
`Ignoring the clear distinction between “time” and “duration” in both the ’576 Patent and in
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`the Ono itself, Petitioner brings in six new extrinsic references in its Reply to make a pseudo claim
`
`construction argument that time stamp can also mean duration.8 Paper 21 at 20–21. Tellingly, this
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`is not a claim construction Petitioner requested in its original Petition. Paper 3 at 17-18. Even more
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`tellingly, nothing in Petitioner’s expert’s declaration supports this eleventh-hour, back-door claim
`
`
`8 Among other problems, regardless of what the “time stamp” itself means, it must still “reflect
`a time at which the movement data causing the first user-defined event occurred”—not a
`duration over which the movement data causing the first user-defined event occurred. EX1006
`at Claim 1 (emphasis added). Petitioner’s new claim construction arguments do not address
`this.
`
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`10
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`Case No. IPR2022-00037
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`construction argument that a POSITA would understand how long an event occurred to mean the
`
`same thing as what time that event occurred. See generally EX1100.
`
`Element 1k: Petitioner cannot save its failure to make actual arguments on the “movement
`sensor measures the angle… of said movement” limitation by citing an unrelated, unargued
`disclosure from its arguments for Element 1a.
`
`LoganTree pointed out in its Response that the Petition makes no argument (and cites no
`
`evidence showing) that Ono-Hutchings discloses the “movement sensor measures the angle … of
`
`said movement” limitation of Element 1k. See Paper 17 at 31. Petitioner’s Reply incorrectly
`
`implies that LoganTree carried the burden of establishing that the prior art does not disclose
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`Element 1k, rather than Petitioner carrying the burden of establishing unpatentability. See Paper
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`21 at 8 (“LoganTree also does not dispute that Hutchings discloses element [1k]…”) (citing Paper
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`17 at 31); see also In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1375–77 (Fed.Cir. 2016)
`
`(Petitioner carries the burden of establishing unpatentability).
`
`The only argument Petitioner now makes in attempt to meet its burden on the angle
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`measurement limitation is that “the Petition had established in the analysis of element [1a] prior to
`
`its analysis of element [1k] [that] Hutchings discloses rotational sensors that measure the angle
`
`of movement.” Paper 21 at 8. But the cited portion of the Petition does not use (or relate this
`
`structure to) any claim language. Petitioner’s theory appears to be that by merely reciting
`
`(anywhere in the Petition—e.g., the section for Element 1a in this case) the existence of a structure
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`in the prior art, it has adequately established the disclosure of any elements that arguably are
`
`disclosed by this structure—even if those elements are discussed in an entirely separate part of the
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`Petition (here, Element 1k) and even if the Petition draws no connection between the two. This
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`falls entirely flat of the specificity requirement laid out in 35 U.S.C. § 312 (a)(3) (the petition must
`
`identify, “with particularity,… the grounds on which the challenge to each claim is based, and the
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`Case No. IPR2022-00037
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`evidence that supports the grounds for the challenge…”); see also Belden Inc. v. Berk-Tek LLC,
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`805 F.3d 1064, 1080 (Fed. Cir. 2015) (“These rules help ensure that the owner of a challenged
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`patent receives notice of and a fair opportunity to meet alleged grounds of invalidity.”) (emphasis
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`added).
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`[20a]
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`Petitioner’s Reply combines its arguments for 20a with those for 1a. LoganTree
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`incorporates its own corresponding arguments in all respects.
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`[20c]
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`A problem LoganTree raised with Ground 1 Element 20c is that “Petitioner fails to
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`provide supporting argument that Element 20c’s ‘interpreting’ happens ‘based on ... a real-time
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`clock’ in Ono or Hutchings.” Paper 17 at 33. Petitioner now tries to argue that it is the duration
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`measurements of Element 20f that count for this. Paper 21 at 22. This is a recycling of the time
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`stamp of Element 20 (for which Petitioner relies on its 1f arguments, and for which Petitioner
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`argues that the duration is the time stamp), and it fails for the same reasons as stated in Element
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`1f. Additionally, if the real-time clock is only used only for duration, then there would be no
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`reason to add a real-time clock in the first place—defeating Petitioner’s obviousness argument
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`(that “it would have been obvious to implement Ono’s device to have a real-time clock,” Paper
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`21 at 22)—because there would be no need for the clock to be “real-time” if it is only used to
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`measure durations.
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`[20f]
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`Petitioner’s Reply combines its arguments for 20f with those for 1f. LoganTree
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`incorporates its own corresponding arguments in all respects.
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`[30]
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`Petitioner’s Reply combines its arguments for 30 with those for 1f. LoganTree incorporates
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`Case No. IPR2022-00037
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`its own corresponding arguments in all respects.
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`[41]
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`Petitioner’s Reply combines its arguments for 41 with those for 1f. LoganTree incorporates
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`its own corresponding arguments in all respects.
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`[42]
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`Petitioner’s Reply combines its arguments for 42 with its arguments for 1f. LoganTree
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`incorporates its own corresponding arguments in all respects.
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`LoganTree also notes that while discussing Element 1f, Petitioner makes a claim
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`differentiation argument. See Paper 21 at 18. Replying to LoganTree’s argument that “nothing in
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`Ono discloses associating the value in the time-counting register with any first event information,”
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`Paper 17 at 27, Petitioner argues that “along with” (from Element 1f) doesn’t mean “associat[ed]
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`with,” including because that limitation (“in association with”) is in Claim 42 and they must be
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`differentiated.9 Id.
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`Petitioner doesn’t address Claim 42 separately in its Petition. See Paper 3 at 77. And its
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`only argument for why Ono-Hutchings discloses Element 1f’s “along with” limitation is that the
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`“event information” and “time stamp” are stored “together” in RAM. Paper 3 at 52; Paper 21 at
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`18. Petitioner never argued (until the Reply) that this meets the requirements of Claim 42 (the
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`word “association” never appears in its Ground 1 arguments). Paper 3 at 18–78. Even now, the
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`only limitation of Claim 42 that Petitioner discusses is the “in association with” limitation—it
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`9 As LoganTree explains above, Claim 42 contains additional limitations, so that argument fails.
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`Case No. IPR2022-00037
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`doesn’t discuss the remainder in either brief. Id.; Paper 21 at 18. If Petitioner’s Claim 1 arguments
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`are correct and if claim differentiation does apply, then Claim 42 must be narrower than 1f, so at
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`least Claim 42 survives.
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`B. GROUND 2
`Ground 2 is Petitioner’s attempt to save Ground 1 by adding a real-time clock from Amano.
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`Of course, adding a real-time clock from Amano does not cure the numerous problems with
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`Ground 1 described above, from the insufficient arguments to justify the Ono-Hutchings
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`combination, to the numerous other missing elements described above.
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`Regarding Element 20c (“interpreting based on ... a real-time clock”), Apple identifies
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`nothing specific in Amano that adds to how the “combination” would or would not disclose that
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`element. Paper 21 at 24 (“Apple does not rely on Amano’s disclosure alone for element [20c], but
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`rather Ono-Hutching’s teachings …”)
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`C. GROUND 3A
`The Reply’s arguments as to Ground 3A are limited to motivation to add Conlan to the
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`Ono-Hutchings combination and to Elements 1d, 1i, and 20d.
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`A POSITA would not have combined Ono, Hutchings, and Conlan.
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`Ground 3A is another example of Petitioner’s improper attempts to incorporate arguments
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`from Dr. Kenny’s Declaration into the Petition. As LoganTree pointed out in its Response, one
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`reason Petitioner’s combination argument fails is that “Petitioner has entirely failed to argue that
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`a POSITA would have had a reasonable expectation of success in modifying the Ono/Hutchings
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`device to add elements from Conlan.” Paper 17 at 39–40. Petitioner now complains that Dr. Kenny
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`argued “expectation of success” in his declaration at ¶166 and that “LoganTree failed to address
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`Case No