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`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
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
`
`
`
`
`
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`
`
`IPR2022-01137 Petition
`Inter Partes Review of U.S. 8,581,706
`
`TABLE OF CONTENTS
`
`PETITIONER’S EXHIBIT LIST .............................................................................. 5
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 7
`
`GROUNDS FOR STANDING ........................................................................ 8
`
`III. NOTE ............................................................................................................... 8
`
`IV. SUMMARY OF THE ’706 PATENT ............................................................. 8
`
`V.
`
`PROSECUTION HISTORY .........................................................................11
`
`VI. LEVEL OF ORDINARY SKILL IN THE ART ...........................................13
`
`VII. CLAIM CONSTRUCTION ..........................................................................13
`
`VIII. RELIEF REQUESTED AND THE REASONS FOR THE
`REQUESTED RELIEF .................................................................................14
`
`IX. DISCRETIONARY DENIAL WOULD BE INAPPROPRIATE .................14
`
`A. Discretionary denial under the Fintiv factors is not appropriate ........ 14
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`No evidence regarding a stay ................................................... 15
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`Parallel proceeding trial date ................................................... 15
`
`Investment in the parallel proceeding ...................................... 16
`
`Overlapping issues with the parallel proceeding ..................... 17
`
`Petitioner is a defendant ........................................................... 17
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`Other circumstances ................................................................. 17
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`The Fintiv Framework Should Be Overturned................................... 18
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`Discretionary denial under General Plastic is not appropriate .......... 18
`
`B.
`
`C.
`
`2
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`IPR2022-01137 Petition
`Inter Partes Review of U.S. 8,581,706
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`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Apple is a different, unrelated petitioner. ................................ 19
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`Factor 2 is of little probative value. ......................................... 20
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`No previous patent owner preliminary response. .................... 21
`
`Fourth and fifth factors are inapplicable. ................................. 21
`
`The resources of the Board and the requirement under
`35 U.S.C. § 316(a)(11). ............................................................ 21
`
`D. Discretionary denial under 35 U.S.C. § 325(d) is not appropriate .... 21
`
`X.
`
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE ....22
`
`A.
`
`B.
`
`C.
`
`Challenged Claims ............................................................................. 22
`
`Statutory Grounds for Challenges ...................................................... 22
`
`Ground 1: Claims 1-3 and 11-12 are obvious under 35 U.S.C. §
`103 over Guthery and Nozawa. .......................................................... 24
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`Summary of Guthery ................................................................ 24
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`Summary of Nozawa ................................................................ 29
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`Reasons to Combine Guthery and Nozawa ............................. 30
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`Claim 1 ..................................................................................... 35
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`Claim 2 ..................................................................................... 50
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`Claim 3 ..................................................................................... 52
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`Claim 11 ................................................................................... 54
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`Claim 12 ................................................................................... 63
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`D. Ground 2: Claim 16 is obvious over Guthery, Nozawa, and the
`RFID Handbook. ................................................................................ 64
`
`3
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`IPR2022-01137 Petition
`Inter Partes Review of U.S. 8,581,706
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`1.
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`2.
`
`3.
`
`Summary of the RFID Handbook ............................................ 64
`
`Reasons to Combine the RFID Handbook with Guthery
`and Nozawa .............................................................................. 66
`
`Claim 16 ................................................................................... 70
`
`E.
`
`Ground 3: Claim 18 is obvious over Guthery and the Smart Card
`Handbook. .......................................................................................... 73
`
`1.
`
`2.
`
`3.
`
`Summary of the Smart Card Handbook ................................... 73
`
`Reasons to Combine the Smart Card Handbook with
`Guthery ..................................................................................... 75
`
`Claim 18 ................................................................................... 78
`
`F.
`
`Ground 4: Claim 20 is obvious over Guthery and the RFID
`Handbook. .......................................................................................... 84
`
`4.
`
`Claim 20 ................................................................................... 84
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`XI. CONCLUSION ..............................................................................................89
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`XII. MANDATORY NOTICES ...........................................................................90
`
`A.
`
`B.
`
`C.
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`Real Party-in-Interest ......................................................................... 90
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`Related Matters ................................................................................... 90
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`Lead and Back-up Counsel and Service Information ........................ 90
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`CERTIFICATE OF WORD COUNT ......................................................................92
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`CERTIFICATE OF SERVICE ................................................................................93
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`4
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`
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`
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`Ex.1001
`
`Ex.1002
`
`Ex.1003
`Ex.1004
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`Ex.1005
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`Ex.1006
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`Ex.1007
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`Ex.1008
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`Ex.1009
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`Ex.1010
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`Ex.1011
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`Ex.1012
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`Ex.1013
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`IPR2022-01137 Petition
`Inter Partes Review of U.S. 8,581,706
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`PETITIONER’S 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)
`
`Ex.1014
`
`Standing Order Governing Proceedings (OGP) 4.1
`
`Ex.1015
`
`Ex.1016
`
`Ex.1017
`
`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
`
`5
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`
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`IPR2022-01137 Petition
`Inter Partes Review of U.S. 8,581,706
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`Edition,”
`https://web.archive.org/web/20041026102425/http://www.wiley.co
`m:80/WileyCDA/WileyTitle/productCd-0470856688.html
`(archived October 26, 2004)
`
`Ex.1018
`
`Declaration of Franchesca Ruiz
`
`
`
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`
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`6
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`
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`I.
`
`INTRODUCTION
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`IPR2022-01137 Petition
`Inter Partes Review of U.S. 8,581,706
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`U.S. Patent No. 8,581,706 (the “’706 patent,” Ex.1001) describes and claims
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`concepts related to contactlessly communicating data carriers (e.g., proximity chip
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`cards/smart cards). According to the background of the ’706 patent, these chip
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`cards were already standardized and “frequently” used in commercial applications.
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`Ex.1001, 1:22-2:29. The ’706 background similarly makes clear that many of the
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`chip card concepts recited in the claims were already known. For example, it was
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`already “known” for a smart card to host multiple applications, and it was already
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`“possible” for a reading device to address the multiple applications. Ex.1001, 2:5-
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`21. It was additionally made clear during prosecution that generating
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`communication-readiness signals was already “taught in the prior art.” Ex.1002,
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`20.
`
`The ’706 patent is instead directed at an incremental improvement—
`
`selectively addressing chip card applications by their application identifier. This
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`alleged improvement, however, was already known in the art. For example, U.S.
`
`Patent No. 6,824,064 to Guthery teaches selectively addressing an application on a
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`smart card using a Request-to-Send packet containing the application’s unique
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`identifier.
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`Accordingly, pursuant to 35 U.S.C. §§ 311, 314(a), and 37 C.F.R. § 42.100,
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`Apple Inc. (“Petitioner”) respectfully requests that the Board review and cancel as
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`7
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`
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`unpatentable under (pre-AIA) 35 U.S.C. §103(a) claims 1-3, 11-12, 16, 18 and 20.
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`IPR2022-01137 Petition
`Inter Partes Review of U.S. 8,581,706
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`(hereinafter, the “Challenged Claims”) of the ’706 patent.
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`II. GROUNDS FOR STANDING
`
`Petitioner certifies that the ’706 patent is eligible for IPR and that Petitioner
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`is not barred or estopped from requesting IPR challenging the patent claims. 37
`
`C.F.R. § 42.104(a).
`
`III. NOTE
`Petitioner cites to exhibits’ original page numbers. Emphasis in quoted
`
`material has been added. Claim terms are presented in italics.
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`IV. SUMMARY OF THE ’706 PATENT
`
`The ’706 patent relates to smart cards, and in particular, “a method for
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`contactless communication of at least two applications stored on a common
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`portable data carrier.” Ex.1001, 1:8-11. The background of the ’706 patent explains
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`that, by the time the ’706 patent application was filed, smart cards were already
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`well known and used in commercial applications such as “public transport.”
`
`Ex.1001, 1:22-29. It was further already “known that a plurality of applications can
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`be located on a portable data carrier at the same time.” Ex.1001, 2:5-9. And,
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`reading devices could already “address [the] plurality of different concurrent
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`applications” on a smart card through the use of “logical channels.” Ex.1001, 2:19-
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`21. Moreover, ISO/IEC 14443 provided a solution for environments with multiple
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`8
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`data carriers seeking to communicate with a terminal—“an anti-collision method
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`IPR2022-01137 Petition
`Inter Partes Review of U.S. 8,581,706
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`on the basis of a unique identification number of the data carrier, for example a
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`UID (unique identifier), a PUPI (pseudo-unique PICC identifier).” Ex.1001, 1:52-
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`56. The ’706 patent alleges, however, that the use of logical channels for multiple
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`applications within a single data carrier causes various problems, and thus
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`proposes a method whereby a reading device selectively communicates with the
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`smart card using the application identifier, similar to the anti-collision protocol’s
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`use of the UID/PUPI in the ISO/IEC 14443 standard. Ex.1001, 2:28-60, 3:23-30
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`(“The reading device can thus address one application of a plurality of applications
`
`located on a data carrier selectively and independently of the data carrier via the
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`identification number.”). As shown in this petition, however, this alleged
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`“improvement” in the well-developed field of smart cards was already described in
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`the prior art. Ex.1003, ¶28.
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`The claims of the ’706 patent generally recite the alleged improvement plus
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`other known smart card concepts, including: (i) the use of a communication-
`
`readiness signal, and (ii) storing information that indicates which of the plurality of
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`applications on the smart card was selected by a reader most recently. Ex.1003,
`
`¶29.
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`In more detail, ’706 patent describes that the portable data carrier (i.e., smart
`
`card) transmits communication-readiness signals for each of its applications to the
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`9
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`reading device. For example, “a first communication-readiness signal to the
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`IPR2022-01137 Petition
`Inter Partes Review of U.S. 8,581,706
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`reading device is generated for a first of the at least two applications … indicating
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`to the reading device the communication readiness of said first application.”
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`Ex.1001, 3:8-13. Additionally, “a second communication-readiness signal to the
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`reading device is generated for a second of the at least two applications … and
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`indicates to the reading device the communication readiness of said second
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`application.” Ex.1001, 3:13-20. The communication-readiness signals include an
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`application identification number assigned to the corresponding application. See
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`Ex.1001, 3:5-20; Ex.1003, ¶30.
`
`applications
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`portable data
`carrier
`
`application
`identification
`number
`
`reading
`device
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`Ex.1001, Fig. 1 (annotated); Ex.1003, ¶30.
`
`
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`10
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`IPR2022-01137 Petition
`Inter Partes Review of U.S. 8,581,706
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`The smart card of the ’706 patent also keeps a record of which applications
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`
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`have been recently used: “According to the invention, the communication device
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`70 of the data carrier 100 can be set up to store in a nonvolatile memory of the data
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`carrier 100 information about which of the applications 10, 20, 30 last
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`communicated with the reading device 200.” Ex.1001, 9:5-9. This record may then
`
`be used to select the application that was most recently used: “It is also possible,
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`however, to first generate a communication-readiness signal for that application
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`10, 20, 30 with which the reading device 200 actively communicated last, in order
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`for example to bring to an end a data communication that was commenced but not
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`completed.” Ex.1001, 9:18-23. In some cases, however, the application that was
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`not the most recently used is selected: “[I]t is then possible e.g. to generate a
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`communication-readiness signal first for an application 10, 20, 30 that did not
`
`communicate with the reading device 200 last, in order e.g. to prevent the same
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`application 10, 20, 30 from always being served first and other applications 10, 20,
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`30 from possibly having to put up with long waiting periods or not being executed
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`at all.” Ex.1001, 9:12-18; Ex.1003, ¶31.
`
`As shown below, all of these smart card concepts claimed by the ’706 patent
`
`were previously known in the art. Ex.1003, ¶32.
`
`V.
`
`PROSECUTION HISTORY
`
`The ’706 patent is a national stage application of PCT Application
`
`11
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`
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`PCT/EP2007/005185 filed June 12, 2007, which claims priority to German patent
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`IPR2022-01137 Petition
`Inter Partes Review of U.S. 8,581,706
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`application DE 10 2006 027 200 filed June 12, 2006. It is unnecessary to determine
`
`whether the ’706 patent is entitled to its earliest alleged priority date because the
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`prior art relied upon herein pre-dates the earliest alleged priority date.
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`After receiving a final office action, the Applicant amended the claims to
`
`recite the alleged improvement described in the ’706 patent: “wherein the reading
`
`device selects for further communication one or more of the at least two
`
`applications via the identification numbers assigned to the applications.” Ex.1002,
`
`37. The Examiner allowed the claims after this amendment. Ex.1002, 20. In the
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`Reasons for Allowance, the Examiner confirmed that the other claimed
`
`limitations—for example, multiple applications on a portable data carrier and using
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`communication-readiness signals—were already “taught in the art”:
`
`Although the limitations directed to the at least two applications on a
`portable data carrier and the generating of communication-readiness
`signals for each application, as presented in the independent claims is
`taught in the prior art (see rejections dated 9/05/2012 and 1/18/2013);
`these limitations in combination with the additional limitations of each
`independent claim, as presented in each independent claim, are not
`taught by the prior art.
`
`Ex.1002, 20. The ’706 patent then issued on November 12, 2013. Ex.1002, 4.
`
`12
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`
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`VI. LEVEL OF ORDINARY SKILL IN THE ART
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`IPR2022-01137 Petition
`Inter Partes Review of U.S. 8,581,706
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`A Person of Ordinary Skill in The Art (“POSITA”) in June of 2006 (the
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`alleged priority date) would have been someone knowledgeable and familiar with
`
`the smart card and Radio Frequency Identifier (RFID) arts that are pertinent to the
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`’706 patent. That person would have a bachelor’s degree in electrical engineering,
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`computer engineering, computer science, or equivalent training, and approximately
`
`two years of experience working in the electrical engineering field. Lack of work
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`experience can be remedied by additional education, and vice versa. Ex.1003,
`
`¶¶18-20.
`
`VII. CLAIM CONSTRUCTION
`
`In an inter partes review, claims “shall be construed using the same claim
`
`construction standard that would be used to construe the claim in a civil action
`
`under 35 U.S.C. 282(b), including construing the claim in accordance with the
`
`ordinary and customary meaning of such claim as understood by one of ordinary
`
`skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. §
`
`42.100(b). The Board only construes the claims to the extent necessary to resolve
`
`the underlying controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
`
`Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Petitioner submits that for the purposes
`
`13
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`of this proceeding, the terms of the challenged claims should be given their plain
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`IPR2022-01137 Petition
`Inter Partes Review of U.S. 8,581,706
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`and ordinary meaning, and no terms require specific construction.1 Ex.1003, ¶33.
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`VIII. RELIEF REQUESTED AND THE REASONS FOR THE
`REQUESTED RELIEF
`
`Petitioner asks that the Board institute a trial for inter partes review and
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`cancel the Challenged Claims in view of the analysis below.
`
`IX. DISCRETIONARY DENIAL WOULD BE INAPPROPRIATE
`A. Discretionary denial under the Fintiv factors is not appropriate
`
`The six factors considered for § 314 denial strongly favor institution. See
`
`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (Mar. 20, 2020) (precedential).
`
`The district court case is at an early stage—the claims have not yet been construed
`
`nor has fact discovery opened. Petitioner has diligently prepared and filed this
`
`petition within five months of being served Patent Owner’s preliminary
`
`infringement contentions. Ex.1012, 6. The petition is also well within the one-year
`
`timeframe allowed by Congress.
`
`
`1 Petitioner does not concede that any term in the challenged claims meets the
`
`statutory requirements of 35 U.S.C. § 112, or that the challenged claims recite
`
`patentable subject matter under 35 U.S.C. § 101.
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`14
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`IPR2022-01137 Petition
`Inter Partes Review of U.S. 8,581,706
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`1. No evidence regarding a stay
`
`No motion to stay has been filed, so the Board should not infer the outcome
`
`of such a motion. Sand Revolution II LLC v. Continental Intermodal Group –
`
`Trucking LLC, IPR2019-01393, Paper 24 at 7 (June 16, 2020) (informative); see
`
`also Dish Network L.L.C. v. Broadband iTV, Inc., IPR2020-01359, Paper 15 at 11
`
`(Feb. 12, 2021) (“It would be improper to speculate, at this stage, what the Texas
`
`court might do regarding a motion to stay…”). Thus, this factor is neutral on
`
`discretionary denial.
`
`2. Parallel proceeding trial date
`
`The co-pending litigation is at an early stage. The district court’s scheduling
`
`order currently sets the Markman hearing for July 18, 2022, and the trial date for
`
`July 20, 2023. Ex.1013, 3, 5. This trial date is uncertain. Petitioner has filed a
`
`motion to transfer the case to the Northern District of California. Per a Standing
`
`Order entered by the district court Judge, if the district court has not resolved the
`
`motion to transfer prior to the Markman hearing, the district court will postpone
`
`the Markman hearing. Ex.1014, 5-6. Patent Owner’s opposition to the venue
`
`motion is due July 7 and Petitioner’s reply to that opposition is due July 31—after
`
`the scheduled Markman hearing. Accordingly, the Markman hearing will be
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`postponed. Additionally, if the district court grants the transfer motion, then the
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`15
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`
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`current schedule will be vacated. See Sand Revolution II at 8-10, 14 (uncertainty
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`IPR2022-01137 Petition
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`over district court’s trial date weighed against discretionary denial).
`
`3. Investment in the parallel proceeding
`
`The investment in the co-pending litigation has been minimal. As mentioned
`
`above, a claim construction hearing has not yet occurred, fact discovery has not yet
`
`commenced and will not close until February 2023, and expert discovery has not
`
`commenced and will not close until April 2023. Ex.1013, 4; see PEAG LLC v.
`
`Varta Microbattery GmbH, IPR2020-01214, Paper 8 at 17 (Jan. 6, 2021). This lack
`
`of investment favors institution.
`
`Moreover, Petitioner only learned which claims were being asserted on
`
`January 20, 2022. See Ex.1012 (preliminary infringement contentions). Since then,
`
`Petitioner has worked expeditiously to file this petition. And, as of this filing,
`
`Patent Owner has not yet served its final infringement contentions. Under Fintiv,
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`Petitioner’s prompt filing “weigh[s] against exercising the authority to deny
`
`institution.” Fintiv, Paper 11 at 11 (“If the evidence shows that the petitioner filed
`
`the petition expeditiously, such as promptly after becoming aware of the claims
`
`being asserted, this fact has weighed against exercising the authority to deny
`
`institution under NHK.”); see also Apple Inc. v. Koss Corporation, IPR2021-
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`00592, Paper 9 at 16 (Aug. 23, 2021) (“It was reasonable in this proceeding for
`
`16
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`
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`Petitioner to take about four months after the preliminary infringement contentions
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`IPR2022-01137 Petition
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`to prepare and file the Petition.”).
`
`4. Overlapping issues with the parallel proceeding
`
`Because the co-pending litigation is in its early stages, Petitioner’s invalidity
`
`positions have not yet been fully developed—only the preliminary invalidity
`
`contentions have been served. Final invalidity contentions are not due until
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`September 15, 2022. See Ex.1013, 3. The extent of overlap is thus speculative at
`
`this point in time.
`
`5. Petitioner is a defendant
`
`Petitioner is a defendant in the co-pending litigation. That is true of most
`
`Petitioners in IPR proceedings, making this factor neutral. See HP Inc. v. Slingshot
`
`Printing LLC, IPR2020-01084, Paper 13 at 9 (Jan. 14, 2021) (having the “same
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`parties as parallel proceeding” makes factor 5 “neutral”).
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`6. Other circumstances
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`The prior art presented in this Petition renders the Challenged Claims
`
`unpatentable as obvious. The merits of Petitioner’s arguments are strong.
`
`Moreover, Patent Owner has engaged in a campaign of asserting the ’706 patent
`
`against multiple defendants across the industry, including a recently filed case
`
`against Garmin, which is in its infancy. See Aire Technology Ltd. v. Garmin
`
`International, Inc., 8-22-cv-01027 (CDCA) (filed May 20, 2022). There is thus a
`
`17
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`
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`strong public interest in the Office adjudicating the validity of the claims here. This
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`IPR2022-01137 Petition
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`factor weighs against discretionary denial.
`
`As such, because the Fintiv factors are either neutral or weigh against
`
`discretionary denial, and because this Petition was filed well before the statutory
`
`bar date, institution should not be denied on discretionary factors.
`
`B.
`
`The Fintiv Framework Should Be Overturned
`
`Apart from Petitioner’s showing that the Fintiv factors favor institution, the
`
`Fintiv framework should be overturned because it (1) exceeds the Director’s
`
`authority, (2) is arbitrary and capricious, and (3) was adopted without notice-and-
`
`comment rulemaking.
`
`C. Discretionary denial under General Plastic is not appropriate
`
`On September 15, 2021, Patent Owner filed suit against Samsung
`
`Electronics Co., Ltd. et al (“Samsung”). More than five weeks later, on October 22,
`
`2021, Patent Owner filed suit against Petitioner Apple. On May 2, 2022, Samsung
`
`filed inter partes review proceeding IPR2022-00876 against the ’706 patent (the
`
`“Samsung IPR”). Apple was not involved in preparing and filing the Samsung IPR.
`
`Discretionary denial of this petition would unfairly deprive Apple of access
`
`to inter partes review with respect to the ’706 patent. Patent Owner separately sued
`
`Apple, alleging infringement by Apple products. Ex.1011, 1-5. This Petition
`
`18
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`presents new grounds and prior art not found in the Samsung IPR. Moreover, this
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`IPR2022-01137 Petition
`Inter Partes Review of U.S. 8,581,706
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`is Apple’s first challenge to the claims of the ’706 patent.
`
`The Board considers the General Plastic factors when multiple petitions are
`
`filed against the same patent. Here, all factors weigh in favor of institution.
`
`1.
`
`Apple is a different, unrelated petitioner.
`
`This factor weighs against denial because Apple is a different petitioner than
`
`the petitioner in the Samsung IPR. Moreover, there is not a significant relationship
`
`between Samsung and Apple. Although the Board held in Valve Corp. v. Elec.
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`Scripting Prods., Inc., IPR2019-00062, Paper 11 (Apr. 2, 2019) (precedential) that
`
`the application of the first Generic Plastic factor is not limited to instances where
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`multiple petitions are filed by the same petitioner, the facts here are distinguishable
`
`from Valve. First, in Valve, both the petitioner (Valve) and HTC (who filed the
`
`earlier IPR) were co-defendants in the same district court case and were accused of
`
`infringing the patent-at-issue based on the same product. See Valve, Paper 11, at 9.
`
`However, in the present case, petitioners were sued separately and accused of
`
`infringement based on different products. Compare Ex.1011, 5 with Ex.1015, 5.
`
`Additionally, Patent Owner elected to file suit against Apple more than five weeks
`
`after Samsung.
`
`The Board routinely finds that “General Plastic and Valve do not apply” to
`
`the circumstances here, where the petitioners were sued independently, were sued
`
`19
`
`
`
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`on different products, and have no significant relationship. See, e.g., NetNut Ltd. v.
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`IPR2022-01137 Petition
`Inter Partes Review of U.S. 8,581,706
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`Bright Data Ltd., IPR2021-00465, Paper 11 at 8-11 (Aug. 12, 2021) (“NetNut”);
`
`Sony Mobile Commc’ns AB. v. Ancora Techs., Inc., IPR2021-00663, Paper 17, 7-
`
`11 (Jun. 10, 2021) (“Sony Mobile”); Shenzhen AOTO Elecs. Co., Ltd. v.
`
`Ultravision Techs., LLC, IPR2021-00190, Paper 7, 14-16 (Jun. 9, 2021).
`
`Furthermore, the attorneys preparing this IPR have not coordinated with
`
`Samsung in doing so. See Twitter, Inc., v. Palo Alto Research Center Inc.
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`IPR2021-01458, Paper 11 at 33 (April 6, 2022) (declining to discretionarily deny
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`the petition under General Plastic and finding that there was no evidence that
`
`Petitioner had coordinated with previous filers).
`
`Accordingly, with no significant relationship between Apple and Samsung,
`
`this factor heavily weighs against discretionary denial.
`
`2.
`
`Factor 2 is of little probative value.
`
`Because Apple is not a petitioner in the Samsung IPR, factor 2 “is of little
`
`probative value.” NetNut, 9; Western Digital Corp. v. Spex Technologies, Inc.,
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`IPR2018-00084, Paper 14 at 17 (April 25, 2018) (“Because Petitioner has not
`
`previously filed a petition against the same patent, factors 2–5 bear little relevance
`
`in this case.”). In any event, the prior art combinations asserted in the instant
`
`Petition are different than the combinations asserted in the Samsung IPR. This
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`factor thus weighs against discretionary denial.
`
`20
`
`
`
`
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`IPR2022-01137 Petition
`Inter Partes Review of U.S. 8,581,706
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`3.
`
`No previous patent owner preliminary response.
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`As of the filing of this petition, no patent owner preliminary response has
`
`been filed in the Samsung IPR. Apple has thus not gained any unfair tactical
`
`advantage. Accordingly, this factor weighs against discretionary denial.
`
`4.
`
`Fourth and fifth factors are inapplicable.
`
`Because this is Apple’s first petition challenging the ’706 patent, the fourth
`
`and fifth factors are inapplicable. See, e.g, Sony Mobile, 13-15. Accordingly, these
`
`factors weigh “strongly” against discretionary denial. Id. at 14, 15.
`
`The resources of the Board and the requirement under 35
`5.
`U.S.C. § 316(a)(11).
`
`This petition requires only modest resources from the Board that are
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`reasonable under the circumstances. This is Petitioner’s first petition and Petitioner
`
`is challenging only the claims for which it has been accused of infringing. There is
`
`no indication that the Board would be unduly burdened or unable to render a final
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`written decision within the statutory deadline.
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`D. Discretionary denial under 35 U.S.C. § 325(d) is not appropriate
`
`Denial under § 325(d) is not warranted because the challenges presented in
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`this petition are neither cumulative nor redundant to the prosecution of the ’706
`
`patent. The Examiner did not consider any of the references relied upon in this
`
`petition. Moreover, the challenges in this petition are non-cumulative because the
`
`21
`
`
`
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`art relied upon here teaches the claim elements that the Examiner deemed
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`IPR2022-01137 Petition
`Inter Partes Review of U.S. 8,581,706
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`allowable. Compare Ex.1002, 20, 37 (allowance after claims were amended to
`
`recite “wherein the reading device selects for further communication one or more
`
`of the at least two applications via the identification numbers assigned to the
`
`applications”) with Ex.1005, 3:49-51 (teaching the reading device transmitting a
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`“Request-to-Send packet” that selects a smart card application using its unique
`
`“application index number”).
`
`X.
`
`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE
`
`A. Challenged Claims
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`Petitioner challenges claims 1-3, 11-12, 16, 18, and 20, which correspond to
`
`the claims asserted in the plaintiff’s infringement contentions in the co-pending
`
`litigation. Ex.1012, 1.
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`B.
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`Statutory Grounds for Challenges
`
`Grounds
`#1
`
`#2
`
`#3
`
`#4
`
`
`
`16
`
`Basis
`Claim(s)
`1-3 and 11-12 35 U.S.C. 103 are obvious over Guthery et al. in
`view of Nozawa et al.
`35 U.S.C. 103 are obvious over Guthery et al.,
`Nozawa et al. in view of RFID Handbook
`35 U.S.C. 103 is obvious over Guthery et al,
`Nozawa et al. in view of Smart Card Handbook
`35 U.S.C. 103 is obvious over Guthery et al. in
`view of RFID Handbook
`
`18
`
`20
`
`22
`
`
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`IPR2022-01137 Petition
`Inter Partes Review of U.S. 8,581,706
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`U.S. Patent No. 6,824,064 to Guthery et al. (“Guthery,” Ex.1005) was filed
`
`
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`December 6, 2000 and issued on November 30, 2004. Guthery is thus prior art
`
`under at least 35 U.S.C. § 102(b).
`
`JP Patent Application No. 2000-163539 to Nozawa et al. (“Nozawa”) was
`
`filed November 25, 1998 and published June 16, 2000. Nozawa is thus prior art
`
`under at least 35 U.S.C. 102(b). Ex.1016 is the original Japanese document.
`
`Ex.1006 is a certified translation.
`
`RFID Handbook: Radio-Frequency Identification Fundamentals and
`
`Applications, Klause Finkenzeller (1999), (“RFID Handbook,” Ex.1007) is a
`
`textbook that was published by John Wiley & Sons Inc. in 1999. The RFID
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`Handbook was publicly available and routinely cited by POSITAs before the filing
`
`date of the ’706 patent. Ex.1003, ¶¶118-19 (listing patent literature citing to the
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`RFID Handbook as a background resource); Ex.1018. The RFID Handbook is thus
`
`prior art under at least 35 U.S.C. 102(b).
`
`Smart Card Handbook: Third Edition, Wolfgang Rankl (3rd ed. 2003)
`
`(“Smart Card Handbook,” Ex.1008) is a textbook that was published by John
`
`Wiley & Sons Inc. in 2003. The Smart Card Handbook was publicly available and
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`routinely cited by POSITAs before the filing date of the ’706 patent. Ex.1003,
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`¶¶137-39 (listing patent literature citing to the Smart Card Handbook series as a
`
`background reference); Ex.1018. The Smart Card Handbook is thus prior art under
`
`23
`
`
`
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`at least 35 U.S.C. 102(b).
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`IPR2022-01137 Petition
`Inter Partes Review of U.S. 8,581,706
`
`Petitioner’s analysis also cites additional prior art to demonstrate the
`
`background knowle
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