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 IPR2022-00602
`U.S. Patent No. 9,665,705
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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 IPR2022-00602
`U.S. Patent No. 9,665,705
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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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`CPC does not pretend to know whether a stay will issue in the separate district
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`court proceeding against Apple, and neither does Apple. Nonetheless, Apple
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`contends that the district court “now appears poised to grant Apple’s request.” Paper
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`8 at 1. The basis for this clairvoyance is the court’s decision to expedite oral
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`argument on Apple’s stay motion. See id. Of course, the court could have done so
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`already, foregoing oral argument. See N.D. Cal. R. 7-1(b) (“a motion may be
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`determined without oral argument or by telephone conference call”). In any event,
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`Apple fails to address the Board’s consistent resistance to speculation as to how
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`courts will rule on stay motions, and the fact that HMD has not sought a stay in the
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`co-pending litigation. See Paper 7 at 5. This factor is, at worst, neutral.
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`II. Fintiv Factor 2
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`Apple challenges the applicability of the co-pending HMD litigation. Apple’s
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`principal argument is that such consideration would deprive a “petitioner of its
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`ability to control how it chooses to challenge validity of patents, including the art,
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`experts, and counsel.” Paper 8 at 2. Apple, identifies no daylight between what
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`HMD purports to argue about the cited art and what Apple argues in the instant
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`Petition.
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`Further, Apple’s suggestion that it is somehow at the “mercy of” HMD, which
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`is represented by a premier patent litigation firm in the district court action, is
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`1
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`specious. 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 inefficiencies of having two different forums consider the same
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`prior art combination.
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`Apple also takes CPC to task for referencing the scheduled trial date in the
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`HMD litigation. See Paper 8 at 2. However, CPC also cites to the “median time-to-
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`trial” in the Western District of Texas, which the Interim Guidance deems the most
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`relevant metric related to this factor. See Paper 7 at 5-6. That time to trial is
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`approximately two years from the filing of the complaint, which, in the co-pending
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`HMD litigation, would mean a trial date in February 2023 – some seven months
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`before any final written decision in this proceeding. See id.
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`And, after invoking the Interim Guidance on this issue, Apple proceeds to
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`ignore it by citing to the actual trial date in a single case. See Paper 8 at 3, citing Ex.
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`1085 (Order continuing Fintiv trial). Apple also cites to a recent order in the HMD
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`litigation “extending the previously scheduled dates by ‘about four months.’” Id.,
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`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 a trial scheduled
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`to take place some four months before a written decision in this case.
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`2
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`Apple also cites to a litany of statistics regarding Judge Albright’s docket
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`without any explanation as to how those statistics impact the median time-to-trial in
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`the Western District of Texas. See Interim Guidance at 9 (“[w]here the parties rely
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`on time-to-trial statistics, the PTAB will also consider additional supporting factors
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`such as the number of cases before the judge in the parallel litigation . . .” (emphasis
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`added)). In any event, Apple argues only that Judge Albright’s statistics suggest “no
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`weight should be given to the HMD trial date.” Paper 8 at 4. Even so, Apple cannot
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`dispute that the median time-to-trial in the Western District of Texas is well before
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`the scheduled final written decision in the instant proceedings.
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`III. Fintiv Factor 4
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`Apple characterizes CPC’s position regarding the HMD litigation as being
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`dependent upon “speculation” regarding whether HMD will actually assert the
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`subject prior art combination at trial. Paper 8 at 4. It is indeed Apple that speculates
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`that HMD will jettison before trial the sole prior art combination upon which Apple
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`chose to rely in this proceeding, implying somehow that better prior art combinations
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`are out there, but Apple did not find them, or opted not to rely on them in this
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`proceeding.
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`Further, Apple points out that HMD has relied on “at least 14 other
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`references,” including 11 other references as “potential combinations” with
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`Mathiassen, resulting in “dozens (if not hundreds) of potential combinations.” Paper
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`3
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`8 at 4. This, in fact, proves CPC’s case with regard to Fintiv factor 4. Apple, in its
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`own district court action, has asserted 23 different grounds each for alleged
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`anticipation and obviousness, the vast majority of which do not involve the prior art
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`Apple cites in this Petition. See Paper 7 at 10. Yet, Apple’s stipulation regarding
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`non-reliance pertains only to challenges involving such cited art. See id.
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`IV. Fintiv Factor 6
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`Apple implies that its merits position on obviousness is sufficiently
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`“compelling” to avoid discretionary denial altogether. Apple’s analysis regarding
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`element 1(d1) of the ʼ705 Patent is hardly compelling. That element requires that
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`there be a “duration” with respect to each signal in a series of biometric signals. See
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`Paper 7 at 15. As Apple recognizes, CPC points to “Anderson’s distinction between
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`a digitizer pad and fingerprint sensor,” the former of which does not generate a
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`biometric signal at all. Paper 8 at 5. Yet, Apple relies solely on the former as
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`satisfying the “duration” requirement of element 1(d1). Paper 7 at 14. As such,
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`Anderson fails to teach the claimed “duration” for a biometric signal. Id.
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`Apple’s single-sentence, “compelling” response regarding the distinction
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`between Anderson’s digitizer pad and fingerprint sensor is that “CPC ignores the
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`extensive motivations to combine.” Paper 8 at 5. The point, however, is that, even
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`if Anderson were combined with one or more of the other cited references, further
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`modification would be required to Anderson itself to yield a duration for a biometric
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`4
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`signal, as required by element 1(d1). Apple has provided no evidence that such
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`modification would be obvious. And, on a related note, Apple completely ignores
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`Anderson’s denigration of fingerprint sensors, making such a modification all the
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`more unlikely. See 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. Yet Apple admits that it relies upon “Mathiassen’s teaching of matching
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`biometric signals and a series of finger movements, modified to include McKeeth’s
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`duress or alert accessibility attributes.” Id. (emphasis added). And that is the
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`problem – the subject accessibility attributes in McKeeth result from a series of
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`fingerprint movements, e.g., a triangle, rather than biometric information as required
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`by the challenged claims. See Paper 7 at 18.
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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 limitation of the subject
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`claims. Paper 7 at 18-19. This alone warrants rejecting Apple’s obviousness
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`challenge based upon the 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
`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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