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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
`
`v.
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`
`
`SCRAMOGE TECHNOLOGY, LTD.,
`Patent Owner
`
`———————
`
`IPR2022-00573
`U.S. Patent No. 7,825,537
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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
`IPR2022-00573 (U.S. Patent 7,825,537)
`Pursuant to the Board’s email dated June 22, 2022, Petitioner files this Reply
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`to Patent Owner’s Preliminary Response (“POPR,” Paper 9).
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`I. THE FINTIV FACTORS FAVOR INSTITUTION
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`The Fintiv factors now more strongly favor institution due to recent district
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`court developments and also due to the Director’s June 21, 2022 memorandum on
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`discretionary denials (“Memo”). For example, under Factor 2, the projected district
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`court trial date—based on median time-to-trial statistics—is four months after the
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`Board’s final written decision is due. Further, the petition presents compelling
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`evidence of unpatentability, rendering the Fintiv analysis moot.
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`A. Factor 1 is neutral (possibility of a stay)
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`Factor 1 is neutral without “specific evidence” relating to this case. Sand
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`Revolution II, LLC v. Continental Intermodal Group – Trucking LLC, IPR2019-
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`01393, Paper 24 at 7 (June 16, 2020) (informative) (“Sand”) (finding Factor 1
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`neutral given only generalized evidence that WDTX routinely denies stays); Apple
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`Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 12 (May 13, 2020) (informative)
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`(finding Factor 1 neutral after “declin[ing]to infer” how WDTX would rule based
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`on actions taken in “different cases with different facts”).
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`B. Factor 2 strongly favors institution (timing of trial)
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`This factor weighs strongly against discretionary denial because the
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`projected trial date—based on median time-to-trial statistics—is in January of
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`1
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`
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2022-00573 (U.S. Patent 7,825,537)
`2024, four months after the Board’s Final Written Decision due date in September
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`of 2023. While trial is currently scheduled for July of 2023, the Board recognizes
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`“that scheduled trial dates are unreliable and often change.” Memo, 8.
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`Accordingly, the Board now uses median time-to-trial statistics in the relevant
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`venue to determine a projected trial date for Fintiv purposes: “The PTAB will
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`weigh this factor [factor 2] against exercising discretion to deny institution under
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`Fintiv if the median time-to-trial is around the same time or after the projected
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`statutory deadline for the PTAB's final written decision.” Memo, 9. The co-
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`pending district court case was filed in the Western District of Texas on October
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`15, 2021. The most recent statistics show a median time-to-trial in the Western
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`District of Texas of 27.2 months. Ex.1020, 5. Accordingly, the projected trial date
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`for purposes of Fintiv is January of 2024—approximately 27 months after October
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`of 2021, and four months after the Board’s Final Written Decision is due on
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`September 16, 2023.
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`Even if trial did occur as scheduled on July 31, 2023, the Board would issue
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`its Final Written Decision less than two months later—a gap the Board routinely
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`finds does not warrant denial. See, e.g., MediaTek Inc. et al. v. Nippon Telegraph
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`and Telephone Corp., IPR2020-01607, Paper 12 at 14 (April 2, 2021) (finding
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`factor 2 “as slightly favoring proceeding” where “final decision will be within
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`three months of trial”); Progenity, Inc v. Natera, Inc., IPR2021-00279, Paper 12 at
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`2
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`
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2022-00573 (U.S. Patent 7,825,537)
`29 (with trial estimated three months before final written decision “concerns about
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`the Board duplicating efforts … are diminished.”); Western Digital Corp. et al. v.
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`Martin Kuster, IPR2020-01391, Paper 10 at 9 (Feb. 16, 2021).
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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 the
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`scheduled Markman hearing, as evidence of significant investment in the parallel
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`proceeding. POPR, 6-7. Sand emphasized, however, that the focus of this factor is
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`not the total amount invested by the court and parties, but rather the amount
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`invested “in the merits of the invalidity positions.” Sand at 10. Here, as in Sand,
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`“much of the district court’s investment relates to ancillary matters untethered to
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`the validity issue itself.” Id.
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`For example, final invalidity contentions are not due until September 22,
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`2022—after institution. Ex.2002, 3. And, although Markman briefing will take
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`place before institution, this activity is ancillary to the invalidity issues raised in
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`the Petition. Neither Petitioner nor Patent Owner construe any terms in the Petition
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`or POPR. See generally Petition, POPR. Accordingly, even if the district court
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`issues a Markman order before institution, that order will not reflect any
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`investment in the merits of the invalidity issues here. Under similar circumstances,
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`the Board consistently finds that Factor 3 favors institution. See, e.g., Huawei
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`Tech. Co., Ltd., v. WSOU Invs., LLC, IPR2021-00229, Paper 10 at 12-13 (Jul. 1,
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`3
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`
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2022-00573 (U.S. Patent 7,825,537)
`2021) (factor 3 favoring institution “while a Markman hearing has occurred, much
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`of the invested effort is unconnected to the patentability challenges”); Apple Inc. v.
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`Koss Corp., IPR2021-00381, Paper 15, at 16-17 (Jul. 2, 2021).
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`As also in Sand, at the time of institution “much work” will remain in the
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`district court case as it relates to invalidity. Sand at 10-11. Fact discovery will not
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`close until five months after institution. Ex.2002, 4. Expert discovery will not close
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`until seven months after institution. Ex.2002, 4. Expert invalidity reports will not
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`be due for five months. Ex.2002, 4. This lack of investment in invalidity matters,
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`combined with Petitioner’s promptness in filing within one week after being served
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`infringement contentions “weigh[s] against” denial. Apple Inc. v. Fintiv, Inc.,
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`IPR2020-00019, Paper 11 at 11 (Mar. 20, 2020) (precedential).
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`D. Factor 4 favors institution (overlap of issues)
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`Although the degree of overlap with the District Court on invalidity issues is
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`thus far speculative1, Petitioner nevertheless stipulates that it will not pursue in the
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`parallel district court proceeding (WDTX-6-21-cv-01071) the prior art obviousness
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`combinations on which trial is instituted for the claims on which trial is instituted.
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`In Sand, a nearly identical stipulation was found to effectively address the risk of
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`duplicative efforts. Sand at 11-12. Accordingly, this factor favors institution.
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`1 Only preliminary invalidity contentions have been served. See Ex.2002, 3.
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`4
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`
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2022-00573 (U.S. Patent 7,825,537)
`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, considering the median time-to-trial statistics,
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`the Board will likely address invalidity first by issuing a Final Written Decision
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`four months before the projected trial date. This factor thus favors institution.
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`F. Factor 6 favors institution (other circumstances)
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`“[T]he PTAB will not deny institution of an IPR or PGR under Fintiv (i)
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`when a petition presents compelling evidence of unpatentability.” Memo, 2.
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`“Compelling, meritorious challenges are those in which the evidence, if unrebutted
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`in trial, would plainly lead to a conclusion that one or more claims are unpatentable
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`by a preponderance of the evidence.” Memo, 4. Here, the petition—along with Dr.
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`Szepesi’s unrebutted expert testimony—plainly shows that the ’537 patent claims
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`no more than well-known subject matter. Tellingly, Patent Owner did not
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`challenge the merits of the prior art grounds in the POPR. The evidence of
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`unpatentability is compelling, and thus the PTAB should not deny institution under
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`Fintiv.
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`5
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2022-00573 (U.S. Patent 7,825,537)
`Respectfully submitted,
`
`/Scott T. Jarratt/
`Scott T. Jarratt
`Lead Counsel for Petitioner
`Registration No. 70,297
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`Date: June 30, 2022
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`6
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2022-00573 (U.S. Patent 7,825,537)
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`PETITIONER’S UPDATED EXHIBIT LIST
`U.S. Patent 7,825,537 to Freer (“the ’537 patent”)
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`EX1001
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`EX1002
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`Prosecution History of the ’537 patent (Serial No. 12/271,023)
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`EX1003
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`Declaration of Thomas Szepesi, Ph.D.
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`EX1004
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`U.S. Pub. 2009/0174263 (“Baarman”)
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`EX1005
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`U.S. Pub. 2007/0279002 (“Partovi-002”)
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`EX1006
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`U.S. Pub. 2009/0096413 (“Partovi-413”)
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`EX1007
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`U.S. Patent 7,211,986 (“Flowerdew”)
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`EX1008
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`U.S. Patent 6,825,620 (“Kuennen”)
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`EX1009
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`U.S. Prov. App. Serial No. 61/019,411 (“’411 Provisional”)
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`EX1010
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`U.S. Pub. 2004/0218406 (“Jang”)
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`EX1011
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`Reserved.
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`EX1012
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`U.S. Pub. 2008/0079392 (“Baarman-392”)
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`EX1013
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`U.S. Patent 5,600,225 (“Goto”)
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`EX1014
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`EX1015
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`Kim et al., A Contactless Power Supply for Photovoltaic Power
`Generation System, 2008 IEEE Applied Power Electronics
`Conference (pp. 1910-13 in the APEC 2008 Proceedings)
`
`Severns et al., MODERN DC-TO-DC SWITCH MODE POWER
`CONVERTER CIRCUITS, Van Nostrand Reinhold Co. (1985) (selected
`excerpts)
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`EX1016
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`Baker et al., CMOS CIRCUIT DESIGN, LAYOUT, AND SIMULATION,
`IEEE Press (1998) (selected excerpts)
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`7
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`
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`EX1017
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2022-00573 (U.S. Patent 7,825,537)
`Erickson, FUNDAMENTALS OF POWER ELECTRONICS, Chapman & Hall,
`International Thomson Publishing (1997) (selected excerpts)
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`EX1018
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`Horowitz et al., THE ART OF ELECTRONICS, 2nd Ed., Cambridge
`University Press (1989) (selected excerpts)
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`EX1019
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`Daniel M. Mitchell, DC-DC SWITCHING REGULATOR ANALYSIS,
`McGraw-Hill (1986) (selected excerpts)
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`EX1020
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`Federal District Court Trial Statistics
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`8
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`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2022-00573 (U.S. Patent 7,825,537)
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`
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`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 June 30, 2022
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`Manner of service Electronic Service by E-mail
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`to Patent Owner’s
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`Documents served Petitioner’s Authorized Reply
`Preliminary Response and Ex.1020.
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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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`9
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