Ex. 3006
`IPR2022-01006
`
`From: Devkar, Andrew V. <andrew.devkar@morganlewis.com>
`Sent: Monday, December 12, 2022 3:38 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: HID-IPRs <HID-IPRs@morganlewis.com>; Coyle, Steve <Scoyle@CantorColburn.com>; Ryan,
`Andrew <aryan@cantorcolburn.com>; Geiger, Nicholas <NGeiger@CantorColburn.com>
`Subject: IPR2022-01006 -- Institution Decision
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
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`
`Your Honors,
`
`Last Friday, December 9, Patent Owner informed Petitioners of an error in the Institution Decision
`issued in this case on December 1, 2022 (Paper 23). The “Mathiassen” reference relied on by
`Petitioners as a secondary reference in the present Petition is WO 02/28067 to Camilla Mathiassen
`(“Mathiassen-067”). This reference was correctly identified on page 10 of the Institution Decision,
`which sets forth the grounds in the Petition. However, in the background of prior art section (pages
`50-51), it appears that the Board inadvertently included a background excerpt regarding a different
`Mathiassen reference that is included in Apple’s petition (IPR2022-00602)—that reference is US
`Pub 2004/0123113 to Svein Mathiassen et al. (“Mathiassen-113”). On page 15, the Institution
`Decision also mentions that “Mathiassen is the only reference common to both the ’602 Apple
`petition and the Petition in the case now before us,” which is not correct because the Mathiassen
`references are different.
`
`Petitioners’ Position: Petitioners believe this is an inadvertent and harmless error that can be easily
`addressed by issuance of a corrected institution decision that corrects the references to the incorrect
`Mathiassen reference. The background section that mentioned the incorrect Mathiassen reference
`(pages 50-51) did not include any substantive analysis of the Mathiassen reference, nor did Patent
`Owner challenge the merits of the Petition’s grounds in its Preliminary Response. The Institution
`Decision also relied upon Petitioners’ “clause-by-clause analysis of claim 1” for the Bianco and
`Mathiassen combination (page 51).
`
`Patent Owner’s Position: Patent Owner does not agree that the Board’s reliance on a reference not
`cited in the Petition is harmless, even if inadvertent. Patent Owner respectfully submits that
`institution must be assessed in light of the correct Mathiassen reference. If the Board prefers, Patent
`Owner is willing to address this issue in a request for rehearing. Patent Owner would not address the
`merits of institution in light of Mathiassen-067 as it did not do so in its Preliminary Response.
`
`Ex. 3006
`IPR2022-01006
`pg. 1/2
`
`

`

`Rather, Patent Owner would simply note that institution must be assessed based on the references
`cited in the Petition.
`
`If needed, the parties are available for a conference call with the Board within the following times:
`Tuesday (12/13): noon-1 pm, 1:30-4 pm EST; Wednesday (12/14): 10-12 pm EST.
`
`Thank you,
`
`Andrew
`Counsel for Petitioners
`
`Andrew V. Devkar
`Morgan, Lewis & Bockius LLP
`2049 Century Park East, Suite 700 | Los Angeles, CA 90067
`Direct: +1.310.255.9070 | Main: +1.310.907.1000 | Fax: +1.310.907.1001
`andrew.devkar@morganlewis.com | www.morganlewis.com
`Assistant: Verastine Mills | +1.310.907.1056 | verastine.mills@morganlewis.com
`
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`
`Ex. 3006
`IPR2022-01006
`pg. 2/2
`
`