`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE 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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`IPR2022-00602
`Patent No. 9,665,705
` ____________
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`REPLY BRIEF OF PETITIONER APPLE INC.
`TO PATENT OWNER PRELIMINARY RESPONSE
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`Pursuant to the Board’s email dated July 29, 2022, Petitioner files this Reply
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`to the Patent Owner’s Preliminary Response (“POPR”) (Paper 7).
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`I.
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`THE FINTIV FACTORS FAVOR INSTITUTION
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`Due to developments in the District Court since the Petition was filed, along
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`with Director Vidal’s Interim Guidance, the Fintiv factors strongly favor institution.
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`A. Factor 1 – The District Court Is Highly Likely to Grant a Stay
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`CPC cursorily acknowledges that Apple was successful in having the
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`litigation transferred from the Western District of Texas to the Northern District of
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`California but does not elaborate on the impact. Reply at 1, n.1; Ex. 1081 (Order on
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`Motion to Transfer). Instead, CPC criticizes Apple for requesting a “pre-institution
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`stay.” Id., at 5 (emphasis in original). The Court in the N.D.Cal. now appears poised
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`to grant Apple’s request. The N.D.Cal. Court has stayed briefing on CPC’s summary
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`judgment motion and expedited the briefing and hearing on Apple’s motion to stay,
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`moving it up three months from November 10, 2022, to August 2022. Ex. 1082
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`(Order on Motion to Expedite); Ex. 1083 (Order rescheduling the hearing for August
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`29, 2022). Thus, it appears likely a stay will be granted by the N.D.Cal. Court, giving
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`deference to the PTAB to determine the validity of the ’705 Patent.
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`B. Factor 2 – Even Without a Stay in the N.D.Cal., the Final Written
`Decision Will Still Precede the District Court’s Trial
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`CPC does not acknowledge that a new, and significantly extended, trial date
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`will now govern. The N.D.Cal. litigation is in its early stages and no trial date has
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`been set. Of course, if the stay is granted the Board’s final decision will precede any
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`trial in the district court. But even if the stay is not granted, the Board’s final decision
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`will still very likely occur well before any trial. Current statistics indicate the average
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`time to trial in the N.D.Cal. is 31.1 months. Ex. 1084 (Trial Statistics). Thus, any
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`trial will very likely not occur until at least 2025, well after the Board’s final
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`decision.
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`In arguing for discretionary denial under nearly every Fintiv factor, CPC
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`focuses almost exclusively on its W.D.Tex litigation against third party HMD. Yet
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`nothing in the Fintiv decision or the Interim Guidance suggests that reliance on a
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`third-party trial date not involving the petitioner is a basis for discretionary denial.
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`CPC fails to cite any authority for such an analysis. This is not surprising because it
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`is highly prejudicial to petitioners. It would deprive a petitioner of its ability to
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`control how it chooses to challenge validity of patents, including the art, experts, and
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`counsel. Instead, petitioners would be at the mercy of a third party’s selection of art,
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`counsel, experts, and forums. The Board should not adopt such a prejudicial
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`application of Fintiv in this proceeding. But even if the Board were to improperly
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`entertain the HMD trial date here, it does not compel discretionary denial.
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`CPC relies on the January 2023 trial date in the HMD litigation as the basis
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`for discretionary denial. But as Director Vidal notes in the Interim Guidance,
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`“scheduled trial dates are unreliable and often change.” Interim Guidance, at 8. This
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`is particularly true in the W.D.Tex. where 70% of trial dates change. Ex. 1068.
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`Indeed, the Fintiv litigation upon which the Board’s precedent was set still has not
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`proceeded to trial. The June 21, 2022, trial date was, once again, continued and no
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`new trial date has been set. Ex. 1085 (Order continuing Fintiv trial). As for the HMD
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`litigation upon which CPC relies, the trial date already has slipped. In the short time
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`since the filing of CPC’s POPR, the W.D.Tex. ordered the parties to submit an
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`amended scheduling order extending the previously scheduled dates by “about four
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`months.” Ex. 1086 (CPC/HMD Order Extending Schedule). Thus, the January 2023
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`trial date is no longer valid, and no new trial date has been set.
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`Moreover, “additional supporting factors such as the number of cases before
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`the judge in the parallel litigation” warrant against discretionary denial due to the
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`HMD trial date. Interim Guidance, at 9. Judge Albright is presiding over the HMD
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`litigation in the W.D.Tex. Recent statistics indicate a heavy load for Judge Albright:
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`793 patent cases were filed in his court in 2020, 932 cases were filed in 2021, and
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`over 800 cases already have been filed in 2022. Ex. 1087 (J. Albright Statistics). As
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`of July 25, Judge Albright had over 861 open patent cases and was responsible for
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`over 20% of all patent cases filed in the United States. Id. And while cases filed in
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`the Waco Division of the W.D.Tex. are now being randomly assigned to all
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`W.D.Tex. judges, Judge Albright’s pending caseload will continue to impact trial
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`dates well into the future. Under Director Vidal’s Interim Guidance, should the
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`Board consider the proximity of third-party HMD’s trial date (which already has
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`moved once), the sheer volume of cases before Judge Albright suggests no weight
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`should be given to the HMD trial date.
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`C. Factor 4 – CPC Asks the Board to Speculate that the HMD Trial Will
`Involve the Same Issues as this IPR
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`CPC also asks the Board to speculate on what invalidity position HMD will
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`present at trial (if it ever proceeds to trial). In its POPR, CPC argues with certainty
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`that HMD’s trial will present Mathiassen/Anderson, “the same prior art combination
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`relied upon by Apple” in this IPR. POPR, at 10. However, it is entirely unclear what
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`art actually will be presented at the HMD trial. CPC only provides “Exhibit B-15 to
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`HMD’s Invalidity Contentions” (emphasis added). There are at least 14 other
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`references charted and relied upon by HMD that were not identified to the Board by
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`CPC, and possibly more. As for HMD’s charting of Mathiassen, it relies on eleven
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`other references as potential combinations that it may present for invalidating the
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`’705 Patent. Ex. 2002, at 1-2. Charts B1-B14, which were not provided by CPC,
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`presumably are similar, providing dozens (if not hundreds) of potential combinations
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`HMD may use at trial. In advance of HMD’s narrowing of its prior art references (a
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`deadline previously set for September 28, but now extended), the Board can do
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`nothing more than guess as to what references HMD may present at trial. It is likely
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`that HMD itself does not know what prior art references and/or combinations it will
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`actually present at trial, which is likely still a year away (at best).
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`D. Factor 6 – The Merits of Apple’s Combination are Exceedingly Strong
`and Demonstrates the PTAB Should Not Discretionarily Deny
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`When “the information presented at the institution stage presents a compelling
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`unpatentability challenge, that determination alone demonstrates that the PTAB
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`should not discretionarily deny institution under Fintiv.” Interim Guidance, at 5.
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`CPC only spends a few pages on a merits discussion, noting it “has determined not
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`to burden the Board with a full discussion of the merits of the Petition.” POPR (Paper
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`7), at 2-3. An unusual strategy if the merits were weak as CPC claims.
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`CPC’s first merits argument is that Anderson does not teach a fingerprint
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`sensor for limitation 1(d1), which CPC names the “duration” limitation. POPR, at
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`14-15. First, Anderson teaches a digitizer pad that includes a fingerprint sensor,
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`which CPC admits. Id, at 15. Second, the Petition mapped Mathiassen as teaching a
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`fingerprint sensor for limitation 1(d1). Seemingly admitting the art teaches the
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`claimed limitation, CPC complains Dr. Sears did not address Anderson’s distinction
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`between a digitizer pad and fingerprint sensor and provided conclusory opinions. Id,
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`at 16. CPC ignores the extensive motivations to combine. Ex. 1003, ¶¶ 220-225.
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`CPC’s second merits argument relates to McKeeth's security alert and
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`mischaracterizes the Petition. The Petition relies on Mathiassen’s teaching of
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`matching biometric signals and a series of finger movements, modified to include
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`McKeeth’s duress or alert accessibility attributes. Paper 1, 23-24. CPC’s misleading
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`argument simply ignores the Petition’s mapping and should be disregarded.
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`Respectfully submitted,
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`By:
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`_____
`/s/ Adam P. Seitz
`Adam P. Seitz, Reg. No. 52,206
`Jennifer C. Bailey, Reg. No. 52,583
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`COUNSEL FOR PETITIONER
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`to
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`UPDATED EXHIBIT LIST
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`Exhibit 1001 U.S. Patent No. 9,665,705 to Burke (“the ’705 Patent”)
`Exhibit 1002 File History for the ’705 Patent (“the ’818 Application File
`History”)
`Exhibit 1003 Declaration of Dr. Andrew Sears
`Exhibit 1004 U.S. Patent Application Publication No. 2004/0123113
`Mathiassen et al. (“Mathiassen”)
`Exhibit 1005 U.S. Patent No. 6,766,456 to McKeeth (“McKeeth”)
`Exhibit 1006 U.S. Patent No. 6,509,847 to Anderson (“Anderson”)
`Exhibit 1007 U.S. Patent No. 6,927,668 to Odle et al. (“Odle”)
`Exhibit 1008 Exhibit intentionally left blank
`Exhibit 1009 Merriam Webster, Webster’s New Collegiate Dictionary, 1981
`Exhibit 1010 U.S. Patent No. 6,612,928 to Bradford, et al. (“Bradford”)
`Exhibit 1011 Anil Jain, et al., Biometric Identification, Communication of the
`ACM, February 2000
`Exhibit 1012 Henry C. Lee, et al., Advances in Fingerprint Technology, Second
`Edition, CRC Press, copyright 2001
`Exhibit 1013 P. Jonathon Phillips, et al., An Introduction to Evaluating
`Biometric Systems, National
`Institute of Standards and
`Technology, IEEE, copyright 2000
`Exhibit 1014 U.S. Patent Publication No. 2003/0117261 to Gunsch (“Gunsch”)
`Exhibit 1015 U.S. Patent Publication No. 2003/0036825 to Kim (“Kim”)
`Exhibit 1016 U.S. Patent No. 6,140,939 to Flick (“Flick”)
`Exhibit 1017 U.S. Patent No. 6,164,403 to Wuidart (“Wuidart”)
`Exhibit 1018 U.S. Patent No. 7,239,227 to Gupta, et al. (“Gupta”)
`Exhibit 1019 U.S. Patent No. 6,877,097 to Hamid, et al. (“Hamid”)
`Exhibit 1020 U.S. Patent Publication No. 2001/0049785 to Kawan, et al.
`(“Kawan”)
`Exhibit 1021 U.S. Patent Publication No. 2002/0091937 to Ortiz (“Ortiz”)
`Exhibit 1022 U.S. Patent Publication No. 2003/0046552 to Hamid ’552 (“Hamid
`’552”)
`Exhibit 1023 U.S. Patent Publication No. 2002/0063154 to Hoyos, et al.
`(“Hoyos”)
`Exhibit 1024 U.S. Patent No. 6,484,260 to Scott, et al. (“Scott”)
`Exhibit 1025 U.S. Patent No. 7,404,086 to Sands, et al. (“Sands”)
`Exhibit 1026 Ross Tester, A Rolling Code 4-Channel UHF Remote Control:
`What is “Code Hopping” or “Rolling Code”, Silicon Chip.com.au,
`July 2002
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`Code,
`
`Exhibit 1027 Brent A. Miller, et al., Bluetooth Revealed: The Insider’s Guide to
`an Open Specification for Global Wireless Communications, 2001
`Exhibit 1028 U.S. Patent No. 7,284,266 to Morris, et al. (“Morris”)
`Exhibit 1029 Bricolage:
`Data
`Compression
`– Morse
`https://perl.plover.com/Huffman/huffman.html, 1998
`Exhibit 1030 U.S. Patent No. 6,323,565 to Williams, Jr., et al. (“Williams”)
`Exhibit 1031 U.S. Patent No. 7,020,270 to Ghassabian (“Ghassabian”)
`Exhibit 1032 U.S. Patent Publication No. 2003/0048260 to Matusis (“Matusis”)
`Exhibit 1033
`International Publication WO 02/27455
`to Mathiassen
`(“Mathiassen ’455”)
`Exhibit 1034 European Patent Application No. 88301738.6 to Araki et al.
`(“Araki”)
`Exhibit 1035 U.S. Patent No. 7,152,045 to Hoffman (“Hoffman”)
`Exhibit 1036 U.S. Patent No. 6,833,785 to Brown, et al. (“Brown”)
`Exhibit 1037 U.S. Patent Publication No. 2004/0015450 to Zingher, et al.
`(“Zingher”)
`Exhibit 1038 U.S. Patent No. 6,498,970 to Colmenarez, et al. (“Colmenarez”)
`Exhibit 1039 U.S. Patent No. 6,100,811 to Hsu, et al. (“Hsu”)
`Exhibit 1040 U.S. Patent No. 4,638,292 to Mochida, et al. (“Mochida”)
`Exhibit 1041 K-9 Car Alarm Owner’s Guide and Installation Instructions, K-9
`Mundial, Omega Research and Development, 2000
`Exhibit 1042 U.S. Patent No. 7,110,580 to Bostrom (“Bostrom”)
`Exhibit 1043 U.S. Patent No. 7,336,174 to Maloney (“Maloney”)
`Exhibit 1044 Microsoft Press Computer Dictionary, second edition, Microsoft
`Press, 1994
`Exhibit 1045 Microsoft Computer Dictionary, fifth edition, Microsoft Press,
`2002
`Exhibit 1046 OnStar Features, OnStar,
`https://web.archive.org/web/20000619021703/http://www.onstar.
`com/features/3button.htm June 19, 2000
`Exhibit 1047 U.S. Patent No. 6,420,975 to DeLine, et al. (“DeLine”)
`Exhibit 1048 Exhibit Intentionally left blank
`Exhibit 1049 PC Basics: Get a Great Start, Survive and Thrive, 2002
`Exhibit 1050 U.S. Patent Publication 2003/0160692 to Nonaka (“Nonaka”)
`Exhibit 1051 U.S. Patent No. 5,307,048 to Sonders (“Sonders”)
`Exhibit 1052 Merriam Webster’s Collegiate Dictionary, tenth edition, 1998
`Exhibit 1053 Alan Gatherer, et al., The Application of Programmable DSPs in
`Mobile Communications: Biometric Systems applied to Mobile
`Communications, 2002
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`Exhibit 1054 McGraw-Hill, Dictionary of Electrical and Computer Engineering,
`2003
`Exhibit 1055 U.S. Patent No. 6,970,970 to Jung et al. (“Jung”)
`Exhibit 1056 Exhibit Intentionally left blank
`Exhibit 1057 Exhibit Intentionally left blank
`Exhibit 1058 Exhibit Intentionally left blank
`Exhibit 1059 Exhibit Intentionally left blank
`Exhibit 1060 Exhibit Intentionally left blank
`Exhibit 1061 Exhibit Intentionally left blank
`Exhibit 1062 Exhibit Intentionally left blank
`Exhibit 1063 Exhibit Intentionally left blank
`Exhibit 1064 Exhibit Intentionally left blank
`Exhibit 1065
` Case No. 6:21-cv-00166-ADA Scheduling Order (Dkt No. 37)
`Exhibit 1066 Case No. 6:21-cv-00165-ADA Motion to Transfer Venue (Dkt No.
`22
`Exhibit 1067 Federal Court Management Statistics–Comparison Within Circuit,
`June 30, 2021 (Average time to trial statistics)
`Exhibit 1068 Scott McKeown, District Court Trial Dates Tend to Slip After PTAB
`Discretionary Denials, July 24, 2020
`Exhibit 1069 Case No. 1:21-cv-00896-ADA, Order Setting Jury Selection and
`Trial (Dkt No. 423)
`Judge Albright’s Second Amended Standing Order Regarding
`Motions for Inter-District Transfer, August 18, 2021
`Exhibit 1071
`In re Apple Inc., No 20-135 Order (Dkt No. 55)
`Exhibit 1072 Case No. 6:21-cv-00165 (W.D. Tex.), Plaintiff CPC Patent
`Technologies Pty Ltd.’s Proposed Claim Constructions (“CPC’s
`Initial Constructions”)
`Exhibit 1073 Case No. 6:21-cv-00165 (W.D. Tex.), Plaintiff CPC Patent
`Technologies Pty Ltd.’s Proposed Updated Claim Constructions
`(“CPC’s Initial Updated Constructions”)
`* Note that document was served without a cover page
`Exhibit 1074 Case No. 6:21-cv-00165 (W.D. Tex.), Joint Claim Construction
`Statement
`Exhibit 1075 Case No. 6:21-cv-00165 (W.D. Tex.), Plaintiff CPC Patent
`Technologies Pty Ltd.’s Response to Defendant Apple Inc.’s Claim
`Construction Brief
`Exhibit 1076 Case No. 6:21-cv-00165 (W.D. Tex.), Plaintiff CPC Patent
`Technologies Pty Ltd.’s Sur-Reply to Defendant Apple Inc.’s
`Claim Construction Brief
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`Exhibit 1070
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`Exhibit 1077 Case No. 6:21-cv-00165 (W.D. Tex.), Claim Construction Order,
`Dated February 10, 2022
`Exhibit 1078 Case No. 6:21-cv-00166 (W.D. Tex.), Email from Peter Tong, Law
`Clerk to J. Albright, to the Parties Re Meet & Confer, Dated
`February 10, 2022
`Exhibit 1080 Case No. 6:21-cv-00166 (W.D. Tex.), Claim Construction Order,
`Dated January 25, 2022 (“HMD Claim Construction Order”)
`Exhibit 1081 Order on Motion to Transfer
`Exhibit 1082 Order on Motion to Expedite
`Exhibit 1083 Order rescheduling the hearing for August 29, 2022
`Exhibit 1084 Trial Statistics
`Exhibit 1085 Order continuing Fintiv trial
`Exhibit 1086 CPC/HMD Order Extending Schedule
`Exhibit 1087 J. Albright Statistics
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`CERTIFICATE OF SERVICE ON PATENT OWNER
`UNDER 37 C.F.R. § 42.105
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`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105, the undersigned certifies that on August 5,
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`2022, a complete and entire copy of this Reply Brief Of Petitioner Apple Inc. To Patent Owner
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`Preliminary Response was served by filing this document through the E2E system and via email
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`to Patent Owner’s designated correspondence address for its counsel of record:
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`Darlene F. Ghavimi-Alagha (Darlene.Ghavimi@klgates.com)
`Brian P. Bozzo (brian.bozzo@klgates.com)
`George C. Summerfield (George.Summerfield@klgates.com)
`Jonah Heemstra (Jonah.Heemstra@klgates.com)
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`BY:
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` /s/ Adam P. Seitz
`Adam P. Seitz, Reg. No. 52,206
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