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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`———————
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`———————
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`APPLE INC.,
`Petitioner
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`v.
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`
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`SCRAMOGE TECHNOLOGY, LTD.,
`Patent Owner
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`———————
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`IPR2022-00351
`U.S. Patent No. 10,622,842
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`PETITIONER’S AUTHORIZED REPLY
`TO PATENT OWNER’S PRELIMINARY RESPONSE
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2022-00351 (U.S. Patent 10,622,842)
`Pursuant to the Board’s Order dated May 18, 2022, Petitioner files this
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`Reply to Patent Owner’s Preliminary Response (“POPR,” Paper 6).
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`I. THE FINTIV FACTORS FAVOR INSTITUTION
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`Due to developments in the co-pending litigation that have occurred since
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`the Petition was filed, the Fintiv factors now more strongly favor institution. Most
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`importantly, on May 24, the day before this filing, the case was transferred from
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`the Western District of Texas to the Northern District of California. A trial date
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`will not be set until after the Board’s institution decision. Discretionary denial
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`would thus be inappropriate.
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`A. Factor 1 is neutral (likelihood of a stay)
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`Whether a stay will be granted remains speculative. Factor 1 is thus neutral
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`without “specific evidence” relating to this case. Sand Revolution II, LLC v.
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`Continental Intermodal Group – Trucking LLC, IPR2019-01393, Paper 24 at 7
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`(June 16, 2020) (informative) (“Sand”) (finding Factor 1 neutral given only
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`generalized evidence); Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 12
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`(May 13, 2020) (informative).
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`B. Factor 2 weighs strongly against denial (timing of trial)
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`This factor weighs strongly against denial because a trial date as still not
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`been set. The Texas District Court had expected to set the trial date at the
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`Markman hearing, but the hearing was cancelled in view of a May 17 order
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`1
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`
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2022-00351 (U.S. Patent 10,622,842)
`transferring the case to the Northern District of California. See Ex.1021 (Docket
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`entries for May 17, 2022: “Case transferred to Northern District of California.”;
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`“Sealed Order. Signed by Judge Alan D Albright.”). On May 24, the case was
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`transferred to the Northern District of California and assigned to Judge Keulen
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`(Case No. 5:22−cv−03041). See Ex.1022. The initial case management conference
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`in the California District Court will not be held until August 23, 2022—after the
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`deadline for institution on August 8, 2022. Ex.1022, 2. Accordingly, no trial date
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`will be set when the Board makes its institution decision.
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`Without a trial date, this factor weighs strongly against denial. See
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`Microchip Technology Inc. v. HD Silicon Solutions LLC, Paper 9 at 10, IPR2021-
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`01042 (PTAB Dec. 15, 2021) (finding that factor 2 “weighs strongly against
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`exercising discretion to deny inter partes review” in a case that had been
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`transferred from the Western District of Texas to the Northern District of
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`California and was “without a trial date set”).
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`C. Factor 3 favors institution (investment in parallel proceeding)
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`Patent Owner identifies several litigation-related activities, including
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`Markman briefing and the Markman hearing that had been scheduled for May 23,
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`2022, as evidence of significant investment in the parallel proceeding. POPR, 7-8.
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`The Markman hearing was cancelled in light of the transfer order. See Ex.1020.
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`Further, the Markman briefing activity is ancillary to the invalidity issues raised in
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`2
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`
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2022-00351 (U.S. Patent 10,622,842)
`the Petition. See Sand at 10 (noting that “much of the district court’s investment
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`relates to ancillary matters untethered to the validity issue itself”). Neither
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`Petitioner nor Patent Owner construe any claim terms in the Petition or POPR. See
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`generally Petition, POPR. Under similar circumstances, the Board consistently
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`finds that Factor 3 favors institution. See, e.g., Huawei Tech. Co., Ltd., v. WSOU
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`Invs., LLC, IPR2021-00229, Paper 10 at 12-13 (Jul. 1, 2021) (finding factor 3
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`favoring institution and noting that “much of the invested effort is unconnected to
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`the patentability challenges”); Apple Inc. v. Koss Corp., IPR2021-00381, Paper 15,
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`at 16-17 (Jul. 2, 2021). Further, given the transfer, it is now unknown when fact
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`and expert discovery on invalidity issues will close.
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`Accordingly, this factor weighs against discretionary denial.
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`D. Factor 4 favors institution (overlap of issues)
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`While the degree of overlap is only speculative at this point,1 Petitioner
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`stipulates that it will not pursue in the parallel district court proceeding the prior art
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`obviousness combinations on which trial is instituted for the claims on which trial
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`is instituted. In Sand, a nearly identical stipulation was found to effectively address
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`the risk of duplicative efforts. Sand at 11-12. Accordingly, this factor favors
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`institution.
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`1 Only preliminary invalidity contentions have been served.
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`3
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`
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2022-00351 (U.S. Patent 10,622,842)
`E. Factor 5 favors institution (overlapping parties)
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`Although Petitioner is the defendant in the parallel proceeding, the Board
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`has noted that this factor “could weigh either in favor of, or against, exercising
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`discretion to deny institution, depending on which tribunal was likely to address
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`the challenged patent first.” Google LLC v. Parus Holdings, Inc., IPR2020-00846,
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`Paper 9 at 21 (Oct. 21, 2020). Here, given the transfer, it is unlikely a district court
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`tribunal will address validity first. This factor thus weighs in favor of institution.
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`F. Factor 6 favors institution (other circumstances)
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`Patent Owner did not challenge the merits of Petitioner’s prior art grounds in
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`its POPR. This factor thus weighs against discretionary denial.
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`
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`Respectfully submitted,
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`Date: May 25, 2022
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`
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`
`
`/Scott T. Jarratt/
`Scott T. Jarratt
`Lead Counsel for Petitioner
`Registration No. 70,297
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`4
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2022-00351 (U.S. Patent 10,622,842)
`PETITIONER’S UPDATED EXHIBIT LIST
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`U.S. Patent No. 10,622,842
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`Prosecution History of U.S. Patent No. 10,622,842
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`Declaration of Dr. Joshua Phinney under 37 C.F.R. § 1.68
`Curriculum Vitae of Dr. Joshua Phinney
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`U.S. 8,421,574 to Suzuki et al. (“Suzuki”)
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`U.S. Patent No. 8,922,162 to Park et al. (“Park”)
`Prosecution History of U.S. Patent No. 10,153,666
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`U.S. Patent No. 10,069,346
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`U.S. Patent Publication No. 2010/0203831 to Muth (“Muth”)
`U.S. Patent No. 8,687,536 to Michaelis (“Michaelis”)
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`Redline comparison between U.S. Patent No. 10,069,346
`specification in the issued patent (text taken from USPTO website)
`with the as-filed specification of U.S. Patent No. 10,153,666 (text
`taken from publication 2017/0338697 on the USPTO website,
`which represents the as-filed specification of the ’666 patent).
`Reserved.
`
`Reserved.
`
`Reserved.
`Scheduling Order, Scramoge Tech. Ltd. v. Apple Inc., WDTX-6-21-
`cv-00579 (filed Sept. 28, 2021)
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`Plaintiff’s Preliminary Disclosure of Asserted Claims and
`Infringement Contentions to Apple Inc., Scramoge Tech. Ltd. v.
`Apple Inc., WDTX-6-21-cv-00579 (served Sept. 7, 2021)
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`Ex.1001
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`Ex.1002
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`Ex.1003
`Ex.1004
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`Ex.1005
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`Ex.1006
`Ex.1007
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`Ex.1008
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`Ex.1009
`Ex.1010
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`Ex.1011
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`Ex.1012
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`Ex.1013
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`Ex.1014
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`Ex.1015
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`Ex.1016
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`Ex.1017
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`Reserved
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`5
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`
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2022-00351 (U.S. Patent 10,622,842)
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`Reserved
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`Reserved
`Order Cancelling Markman Hearing, Scramoge Tech. Ltd. v.
`Apple Inc., WDTX-6-21-cv-00579 (filed Sept. 28, 2021)
`Docket Sheet, Scramoge Tech. Ltd. v. Apple Inc., WDTX-6-21-
`cv-00579
`Order Setting Initial Case Management Conference and ADR
`Deadlines, Scramoge Tech. Ltd. v. Apple Inc., NDCA-22-cv-
`03041 (filed May 24, 2022)
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`Ex.1018
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`Ex.1019
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`Ex.1020
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`Ex.1021
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`Ex.1022
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`6
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2022-00351 (U.S. Patent 10,622,842)
`CERTIFICATE OF SERVICE
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`The undersigned certifies, under 37 C.F.R. § 42.6, that service was made on
`the Patent Owner as detailed below.
`Date of service May 25, 2022
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`Manner of service Electronic Service by E-mail
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`to Patent Owner’s
`Documents served Petitioner’s Authorized Reply
`Preliminary Response and Exhibits Ex.1020-1022.
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`Persons served Brett Cooper (bcooper@raklaw.com)
`Reza Mirzaie (rmirzaie@raklaw.com)
`rak_scramoge@raklaw.com
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`/Scott T. Jarratt/
`Scott T. Jarratt
`Lead Counsel for Petitioner
`Registration No. 70,297
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`
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`7
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