`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`APPLE INC.,
`Petitioner
`
`v.
`
`AIRE TECHNOLOGY LIMITED,
`Patent Owner
`
`———————
`
`IPR2022-01137
`U.S. Patent No. 8,581,706
`
`
`
`
`
`
`
`
`PETITIONER’S AUTHORIZED REPLY
`TO PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2022-01137 (U.S. Patent 8,581,706)
`Pursuant to the Board’s email dated October 13, 2022, Petitioner files this
`
`Reply to Patent Owner’s Preliminary Response (“POPR,” Paper 6). Ex.1024.
`
`I. THE FINTIV FACTORS FAVOR INSTITUTION
`
`The Fintiv factors now more strongly favor institution due to recent district
`
`court developments and also due to the Director’s June 21, 2022 memorandum on
`
`discretionary denials (“Memo”). For example, under Factor 2, the projected district
`
`court trial date—based on median time-to-trial statistics—is one month after the
`
`Board’s final written decision is due. Further, the petition presents undisputed and
`
`compelling evidence of unpatentability, rendering the Fintiv analysis moot.
`
`A. Factor 1 is neutral (possibility of a stay)
`
`Factor 1 is neutral without “specific evidence” relating to this case. Sand
`
`Revolution II, LLC v. Continental Intermodal Group – Trucking LLC, IPR2019-
`
`01393, Paper 24 at 7 (June 16, 2020) (informative) (“Sand”) (finding Factor 1
`
`neutral given only generalized evidence that WDTX routinely denies stays); Apple
`
`Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 12 (May 13, 2020) (informative)
`
`(finding Factor 1 neutral after “declin[ing]to infer” how WDTX would rule based
`
`on actions taken in “different cases with different facts”).
`
`B. Factor 2 strongly favors institution (timing of trial)
`
`This factor weighs strongly against discretionary denial because the
`
`projected trial date—based on median time-to-trial statistics—is in late February of
`
`1
`
`
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2022-01137 (U.S. Patent 8,581,706)
`2024, more than one month after the Board’s Final Written Decision due date on
`
`January 6, 2024. While trial is currently scheduled for November 6, 2023, the
`
`Board now uses median time-to-trial statistics in the relevant venue to determine a
`
`projected trial date for Fintiv purposes. Memo, 9. The co-pending district court
`
`case was filed in the Western District of Texas on October 22, 2021. The most
`
`recent statistics show a median time-to-trial in the Western District of 28.3 months.
`
`Ex.1023, 5. Accordingly, the projected trial date for purposes of the Board’s Fintiv
`
`analysis is late February 2024—approximately 28 months after October 2021.
`
`The co-pending litigation is at an early stage, and the district court has
`
`already moved back the trial date once. On September 21, 2022, the district court
`
`entered a revised scheduling order that sets the trial for November 6, 2023.
`
`Ex.2002, 3. However, the trial schedule, including the trial date, remains uncertain
`
`given Aire’s motion to add claim 13 to the litigation. See Ex.1025.
`
`Even if trial did occur as scheduled on November 6, 2023, the Board would
`
`issue its Final Written Decision only two months later—a gap the Board routinely
`
`finds does not warrant denial. See, e.g., MediaTek Inc. et al. v. Nippon Telegraph
`
`and Telephone Corp., IPR2020-01607, Paper 12 at 14 (April 2, 2021); Progenity,
`
`Inc v. Natera, Inc., IPR2021-00279, Paper 12 at 29.
`
`C. Factor 3 favors institution (investment in parallel proceeding)
`
`Patent Owner identifies several litigation-related activities, including the
`
`2
`
`
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2022-01137 (U.S. Patent 8,581,706)
`scheduled Markman hearing, as evidence of significant investment in the parallel
`
`proceeding. POPR, 6-7. Sand emphasized, however, that the focus of this factor is
`
`not the total amount invested by the court and parties, but rather the amount
`
`invested “in the merits of the invalidity positions.” Sand at 10. Here, as in Sand,
`
`“much of the district court’s investment relates to ancillary matters untethered to
`
`the validity issue itself.” Id.
`
`For example, although claim construction briefing has been provided, the
`
`Markman hearing was moved to May 16, 2023 and will take place well after
`
`institution. Further, this activity is ancillary to the invalidity issues raised in the
`
`Petition. Neither Petitioner nor Patent Owner construe any terms in the Petition or
`
`POPR. See generally Petition, POPR.
`
`As also in Sand, at the time of institution “much work” will remain in the
`
`district court case as it relates to invalidity. Sand at 10-11. Fact discovery will not
`
`close until two months after institution. Ex.2002, 2. Expert discovery will not close
`
`until seven months after institution. Ex.2002, 2. Opening expert invalidity reports
`
`will not be due for four months after institution. Ex.2002, 4. This lack of
`
`investment in invalidity matters and “weigh[s] against” denial. Apple Inc. v. Fintiv,
`
`Inc., IPR2020-00019, Paper 11 at 11 (Mar. 20, 2020) (precedential).
`
`D. Factor 4 favors institution (overlap of issues)
`
`Although the degree of overlap with the District Court on invalidity issues is
`
`3
`
`
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2022-01137 (U.S. Patent 8,581,706)
`thus far speculative1, Petitioner nevertheless stipulates that it will not pursue in the
`
`parallel district court proceeding the prior art obviousness combinations on which
`
`trial is instituted for the claims on which trial is instituted. In Sand, a nearly
`
`identical stipulation was found to effectively address the risk of duplicative efforts.
`
`Sand at 11-12. Accordingly, this factor favors institution.
`
`E. Factor 5 favors institution (overlapping parties)
`
`Although Petitioner is the defendant in the parallel proceeding, the Board
`
`has noted that this factor “could weigh either in favor of, or against, exercising
`
`discretion to deny institution, depending on which tribunal was likely to address
`
`the challenged patent first.” Google LLC v. Parus Holdings, Inc., IPR2020-00846,
`
`Paper 9 at 21 (Oct. 21, 2020). Here, considering the median time-to-trial statistics,
`
`the Board will likely address invalidity first by issuing a Final Written Decision a
`
`month before the projected trial date. This factor thus favors institution.
`
`F. Factor 6 favors institution (other circumstances)
`
`“[T]he PTAB will not deny institution of an IPR or PGR under Fintiv (i)
`
`when a petition presents compelling evidence of unpatentability.” Memo, 2.
`
`“Compelling, meritorious challenges are those in which the evidence, if unrebutted
`
`in trial, would plainly lead to a conclusion that one or more claims are unpatentable
`
`
`1 Only preliminary invalidity contentions have been served. See Ex.2002, 2.
`
`4
`
`
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2022-01137 (U.S. Patent 8,581,706)
`by a preponderance of the evidence.” Memo, 4. Here, the petition—along with Dr.
`
`Phinney’s unrebutted expert testimony—plainly shows that the ’706 patent claims
`
`are no more than well-known and obvious methods for conducting communication
`
`between a reading device and applications on a data carrier. Tellingly, Patent
`
`Owner did not challenge the merits of the prior art grounds in the POPR. The
`
`evidence of unpatentability is compelling, and thus the PTAB should not deny
`
`institution under Fintiv.
`
`
`
`Date: October 19, 2022
`
`
`
`Respectfully submitted,
`
`
`/Scott T. Jarratt/
`Scott T. Jarratt
`Lead Counsel for Petitioner
`Registration No. 70,297
`
`
`
`
`
`
`
`5
`
`
`
`Ex.1001
`
`Ex.1002
`Ex.1003
`
`Ex.1004
`
`Ex.1005
`
`Ex.1006
`
`Ex.1007
`
`Ex.1008
`
`Ex.1009
`Ex.1010
`
`Ex.1011
`
`Ex.1012
`
`Ex.1013
`
`Ex.1014
`
`Ex.1015
`
`Ex.1016
`
`Ex.1017
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2022-01137 (U.S. Patent 8,581,706)
`
`PETITIONER’S UPDATED EXHIBIT LIST
`
`U.S. Patent No. 8,581,706
`
`Prosecution History of U.S. Patent No. 8,581,706
`Declaration of Dr. Joshua Phinney under 37 C.F.R. § 1.68
`
`Curriculum Vitae of Dr. Joshua Phinney
`
`U.S. Patent No. 6,824,064 to Guthery et al. (“Guthery”)
`JP2000163539 to Nozawa et al. (“Nozawa”) – Certified English
`Translation
`
`RFID Handbook: Radio-Frequency Identification Fundamentals
`and Applications, Klause Finkenzeller (1999)
`
`Smart Card Handbook: Third Edition, Wolfgang Rankl (3rd ed.
`2003)
`
`Reserved.
`Reserved.
`
`Complaint, Aire Technology Ltd. v. Apple Inc. 6-21-cv-01101
`(W.D. Tex. Oct. 22, 2021)
`
`Infringement Contentions, Aire Technology Ltd. v. Apple Inc. 6-21-
`cv-01101 (W.D. Tex. Oct. 22, 2021)
`
`Scheduling Order, Aire Technology Ltd. v. Apple Inc. 6-21-cv-
`01101 (W.D. Tex. Oct. 22, 2021)
`
`Standing Order Governing Proceedings (OGP) 4.1
`Complaint, Aire Technology Ltd v. Samsung Electronics Co., Ltd.,
`6:21-cv-00955 (W.D. Tex. Sep. 15, 2021)
`
`JP2000163539 to Nozawa et al. (original)
`
`Internet Archive capture of “Wiley:Smart Card Handbook, 3rd
`
`6
`
`
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2022-01137 (U.S. Patent 8,581,706)
`
`Edition,”
`https://web.archive.org/web/20041026102425/http://www.wiley.co
`m:80/WileyCDA/WileyTitle/productCd-0470856688.html
`(archived October 26, 2004)
`Declaration of Franchesca Ruiz
`Reserved.
`Reserved.
`Reserved.
`Reserved.
`Federal District Court Trial Statistics (June 2022)
`Email chain with Board granting Petitioner’s request to file
`preliminary reply briefs
`Plaintiff Aire Technology Ltd.’s Motion to Amend Preliminary
`Infringement Contentions, Aire Technology Ltd. v. Apple Inc. 6-
`21-cv-01101 (W.D. Tex. Sept. 30, 2022)
`
`
`Ex.1018
`Ex.1019
`Ex.1020
`Ex.1021
`Ex.1022
`Ex.1023
`
`Ex.1024
`
`Ex.1025
`
`
`
`7
`
`
`
`Petitioner’s Reply to Patent Owner’s Preliminary Response
`IPR2022-01137 (U.S. Patent 8,581,706)
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies, under 37 C.F.R. § 42.6, that service was made on
`the Patent Owner as detailed below.
`Date of service October 19, 2022
`
`Manner of service Electronic Service by E-mail: bcooper@bc-lawgroup.com;
`robert@auchterlaw.com; Aire_Counsel@b-clg.com
`
`to Patent Owner’s
`Documents served Petitioner’s Authorized Reply
`Preliminary Response and Exs.1023-1025.
`
`Persons served Brett Cooper
`BC Law Group, P.C.
`200 Madison Avenue, 24th Floor
`New York, NY 10016
`
`Robert A. Auchter
`Auchter PLLC
`1629 K Street, NW, Suite 300
`Washington, DC 20006
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Scott T. Jarratt/
`Scott T. Jarratt
`Lead Counsel for Petitioner
`Registration No. 70,297
`
`
`
`8
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
