UNITED STATES PATENT AND TRADEMARK OFFICE
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`PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner,
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`v.
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`CPC PATENT TECHNOLOGIES PTY, LTD.,
`Patent Owner.
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`Case IPR2022-00601
`U.S. Patent No. 9,269,208
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`SUR-REPLY OF PATENT OWNER CPC PATENT
`TECHNOLOGIES PTY, LTD.
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`PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner,
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`v.
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`CPC PATENT TECHNOLOGIES PTY, LTD.,
`Patent Owner.
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`
`
`
`Case IPR2022-00601
`U.S. Patent No. 9,269,208
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`SUR-REPLY OF PATENT OWNER CPC PATENT
`TECHNOLOGIES PTY, LTD.
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`I.
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`Fintiv Factor 1
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`Apple cites the Interim Guidance regarding “parallel litigation,” which Apple
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`supposes must involve the same parties and the same patent. However the Interim
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`Guidance does not say that. It would be counterintuitive to exclude from
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`consideration a district court proceeding involving virtually identical subject matter
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`(such as here), simply because a different defendant and a different patent, albeit
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`with an identical claim limitation, is involved. Apple does not dispute the relatedness
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`between the ʼ208 Patent and the ʼ705 Patent, which is the subject of the HMD
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`litigation. In fact, Apple itself proves the related nature of those patents by positing
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`identical characterizations of the alleged strengths of its challenges to the ʼ208
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`Patent (Paper 8 at 5) and the ʼ705 Patent (IPR2022-00602, Paper 8 at 5).
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`Apple argues that CPC’s dismissal of its infringement claim for the ʼ208
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`Patent does not warrant discretionary denial of institution. Contrary to Apple’s
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`characterization, CPC makes no such argument. And, to Apple’s argument that CPC
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`could simply refile such claim, thereby time-barring Apple from petitioning for inter
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`partes review, the doctrine of claim preclusion would prohibit such gamesmanship:
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`[C]laim preclusion prevents parties from raising issues that could have been
`raised and decided in a prior action—even if they were not actually litigated.
`If a later suit advances the same claim as an earlier suit between the same
`parties, the earlier suit’s judgment ‘prevents litigation of all grounds for, or
`defenses to, recovery that were previously available to the parties, regardless
`of whether they were asserted or determined in the prior proceeding.’ Suits
`involve the same claim (or ‘cause of action’) when they ‘aris[e] from the
`same transaction,’ or involve a ‘common nucleus of operative facts.’
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`1
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`
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`Lucky Brand Dungarees, Inc. v. Marcel Fashions Group, Inc., __ U.S. __, 140 S.
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`Ct. 1589, 1594-95 (2020) (emphasis added) (internal citations omitted).
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`II. Fintiv Factor 2
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`
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`Apple challenges the applicability of the co-pending HMD litigation. Apple’s
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`principal argument against considering that case is that such consideration would
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`deprive “petitioners of their ability to control how it chooses to challenge validity of
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`patents, including the art, experts, and counsel.” Paper 8 at 2. Apple identifies no
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`daylight between what HMD purports to argue about the cited prior art to the ’705
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`Patent and what Apple argues in the Petition regarding the ʼ208 Patent.
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`More to the point is that Apple’s suggestion that it is at the “mercy of” HMD,
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`represented by a premier patent litigation firm in the district court action, is specious.
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`Indeed, Apple’s reasoning would preclude the Board from ever denying institution
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`based upon prior unsuccessful invalidity challenges by other parties simply because
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`the newest challenger wants to take its own whack at invalidating the same patent.
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`Apple’s suggestion that it may see something different about the prior art does not
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`warrant ignoring the obvious inefficiencies of having two different forums consider
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`the same prior art combination.
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`Apple takes CPC to task for referencing the scheduled trial date in the HMD
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`litigation. Paper 8 at 2. However, CPC also cites to the “median time-to-trial” in the
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`Western District of Texas, which the Interim Guidance deems the most relevant
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`2
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`
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`metric under this factor. Paper 7 at 7. That time to trial is approximately two years
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`from the filing of the complaint, which, in the co-pending HMD litigation, would
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`mean a trial date in February 2023 – some seven months before any final written
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`decision in this proceeding. See id. at 8.
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`After invoking the Interim Guidance, Apple proceeds to ignore it by citing to
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`the actual trial date in a single case, rather than the median time-to-trial. Paper 8 at
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`3, citing Ex. 1085 (Order continuing Fintiv trial). Apple also cites to a recent order
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`in the HMD case “extending the previously scheduled dates by ‘about four months.’”
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`Id., citing Ex. 1086. Apart from being inapplicable to the median time-to-trial in the
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`Western District of Texas, this single-case extension still results in the HMD trial
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`occurring some four months before any written decision.
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`Apple also cites to a litany of statistics regarding Judge Albright’s docket
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`without explaining how those statistics impact the median time-to-trial in the
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`Western District of Texas. Interim Guidance at 9 (“[w]here the parties rely on time-
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`to-trial statistics, the PTAB will also consider additional supporting factors such as
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`the number of cases before the judge in the parallel litigation . . .” (emphasis added)).
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`In any event, Apple argues only that Judge Albright’s statistics suggest “no weight
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`should be given to the HMD trial date.” Paper 8 at 4. Even so, Apple cannot dispute
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`that the median time-to-trial in the Western District of Texas is well before the
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`scheduled final written decision in the instant proceedings.
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`3
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`III. Fintiv Factor 4
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`Apple characterizes CPC’s position on the HMD litigation as dependent upon
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`“speculation” as to whether HMD will actually assert the subject prior art
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`combination at trial. Paper 8 at 4. It is Apple who relies on speculation, namely that
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`HMD, in challenging the validity of the related ʼ705 Patent, will jettison the sole
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`prior art combination upon which Apple chose to rely in challenging the ʼ208 Patent
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`in this proceeding, implying that better prior art combinations are out there, but
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`Apple did not find them, or opted not to rely on them in this proceeding.
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`IV. Fintiv Factor 6
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`Apple’s analysis regarding claim element 1(d1) is hardly “compelling,”
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`despite its assertion. That claim element requires a “duration” with respect to each
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`signal in a series of biometric signals. Paper 7 at 14. As Apple recognizes, Anderson
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`makes a distinction “between a digitizer pad and fingerprint sensor,” the former of
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`which does not generate a biometric signal at all. Paper 8 at 5. Yet, Apple relies
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`solely on the former as satisfying the “duration” requirement of element 1(d1). Paper
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`7 at 14. As such, Anderson fails to teach the claimed “duration” for a biometric
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`signal. Id.
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`Apple’s single-sentence response on this point is that “CPC ignores the
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`extensive motivations to combine.” Paper 8 at 5. The point, which Apple misses, is
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`that even if Anderson were combined with one or more of the other cited references,
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`4
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`further modification would be required to Anderson itself to yield a duration for a
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`biometric signal, as required by element 1(d1). Apple has provided no evidence that
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`such modification would be obvious. And Apple completely ignores Anderson’s
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`denigration of fingerprint sensors, making such a modification all the more unlikely.
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`Paper 7 at 15.
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`As for the failure of the Mathiassen/McKeeth combination to teach the “under
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`which conditions” limitation, Apple accuses CPC of being “misleading.” Paper 8 at
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`5. Apple admits that it relies upon “Mathiassen’s teaching of matching biometric
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`signals and a series of finger movements, modified to include McKeeth’s duress or
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`alert accessibility attributes” which identifies the problem. Id. (emphasis added). The
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`accessibility attributes in McKeeth result from a series of fingerprint movements,
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`e.g., a triangle, not biometric information as required by the claims. Paper 7 at 17.
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`Separately, Apple fails to address the fact that Mathiassen’s “open door” is
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`merely a manifestation of whether to determine access to a car, rather than “under
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`which conditions” such access is granted which is the actual claim limitation. Paper
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`7 at 18. This alone warrants rejecting Apple’s obviousness challenge based upon the
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`Mathiassen/McKeeth combination.
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`Dated: August 12, 2022
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`Respectfully submitted,
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`By:
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`/Darlene F. Ghavimi-Alagha/
`Darlene F. Ghavimi-Alagha
`Reg. No. 72,631
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`5
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`CERTIFICATE OF SERVICE
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`I hereby certify that on August 12, 2022, I caused a true and correct copy of
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`the foregoing to be served on the following counsel for Petitioner by electronic mail
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`to the following email addresses:
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`
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`Jennifer C. Bailey
`Adam P. Seitz
`Erise IP
`7015 College Blvd., Suite 700
`Overland Park, Kansas 66211
`Email: Jennifer.Bailey@eriseip.com
`Email: Adam.Seitz@eriseip.com
`Email: PTAB@eriseip.com
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`
`By:
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`
`
`/Darlene F. Ghavimi-Alagha/
`Darlene F. Ghavimi-Alagha
`Reg. No. 72,631
`K&L GATES LLP
`Darlene.Ghavimi@klgates.com
`T: (512) 482-6919
`F: (512) 482-6859
`2801 Via Fortuna, Suite 650
`Austin, Texas 78746
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`Counsel for Patent Owner
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`6
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