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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`__________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`__________________________
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`GOOGLE LLC, MICROSOFT CORPORATION
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`Petitioners
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`v.
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`CAROLYN W. HAFEMAN
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`Patent Owner.
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`__________________________
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`IPR2022-01192
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`U.S. Patent No. 9,892,287
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`__________________________
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`PETITIONERS’ NOTICE OF MULTIPLE PETITIONS
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313–1450
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`IPR2022-01192
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`Petitioners, Google LLC and Microsoft Corporation, have requested Inter
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`Partes Review (“IPR”) of claims 1-7 (the “Challenged Claims”) of U.S. Patent No.
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`9,892,287 (“the ’287 Patent”). Petitioners have presented two materially distinct,
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`non-cumulative petitions addressing a priority dispute regarding the effective filing
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`date of the Challenged Claims. See IPR2022-01192 (the “November 2002 Priority
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`Petition”) and IPR2022-01193 (the “November 2013 Priority Petition”). Petitioners
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`respectfully request institution of both petitions for the reasons detailed below.
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`I.
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`Detailed Reasons for Multiple Petitions Against the ’287 Patent.
`The ’287 patent claims priority through a series of continuations to U.S.
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`Patent No. 8,601,606 (“the ’606 patent”), filed September 20, 2004, which is a
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`continuation-in-part of Application No. 10/304,827 (“the ’827 application”), filed
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`on November 25, 2002. Petitioners understand that Patent Owner (“PO”) is
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`asserting a priority date no later than August 30, 2002 (prior to the filing date of
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`the ’827 application) in the co-pending district court litigation. (See EX-1019, 9.)
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`However, the November 2013 Priority Petition (IPR2022-01193) details that
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`Patent Owner (“PO”) introduced new matter into ’606 patent which severed any
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`potential for priority benefit to the ’827 application. Specifically, the ’606 patent
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`introduced a Retriever program which enabled remote communications solely for
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`the purpose of changing the return/recovery information stored in a device.
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`Additionally, even though designated as a continuation, U.S. Patent No. 9,021,610,
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`- 1 -
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`IPR2022-01192
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`filed November 22, 2013, introduced more new matter through its originally filed
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`claims, namely, initiating of return/recovery information by remote
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`communications. The four corners of the ’606 patent specification, as filed, do not
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`provide any disclosure of the claimed remote initiating. The November 2013
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`Priority Petition demonstrates that the earliest effective filing date for the
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`Challenged Claims is no earlier than November 22, 2013.
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`
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`The priority dispute between the parties justifies two petitions. The Patent
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`Trial and Appeal Board’s Consolidated Trial Practice Guide expressly
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`acknowledges that “a dispute about priority date requiring arguments under
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`multiple prior art references” is a situation in which it is appropriate to file multiple
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`petitions against the same patent. See Office Consolidated Trial Practice Guide, 84
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`Fed. Reg. 64280 (Nov. 20, 2019) (“TPG”). While the TPG notes that such
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`circumstances may be rare, the facts in the present case here justify institution of
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`two petitions challenging the ’287 Patent. See, e.g., 10X Genomics, Inc. v. Bio-Rad
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`Laboratories, Inc., IPR2020-00088, Paper 8, 46-47 (PTAB April 27, 2020)
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`(granting institution of two parallel petitions, explaining that a priority fight
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`concerning swear-behind dates for prior art references justifies concurrent filings
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`with no stipulation by Patent Owner).
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`The November 2002 Priority and November 2013 Priority Petitions rely on
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`completely distinct prior art combinations asserted to address the different
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`- 2 -
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`IPR2022-01192
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`effective filing dates for the Challenged Claims. The November 2002 Priority
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`Petition relies on four different prior art references (two grounds) all of which pre-
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`date the filing date of the ’827 application. The two November 2002 Priority
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`grounds are viable regardless of whether the Challenged Claims are entitled to a
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`pre-November 2013 filing date. The November 2013 Priority Petition, in contrast,
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`presents a ground of anticipation based on the publication of the application for the
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`’606 parent patent and a ground of obviousness based on the publication of the
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`’827 application in combination with Chiu which describes the well-known
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`process of remote management of a mobile device. The November 2013 Priority
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`Petition relies almost exclusively on PO’s own prior art, removing the burden that
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`might otherwise be imposed to analyze unfamiliar prior art.
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`II. Ranking of the Petitions
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`As set forth in the following table, Petitioners rank the November 2013
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`Priority Petition higher than the November 2002 Priority Petition. Petitioners
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`believe, however, that instituting both petitions is the fairest outcome because of
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`the dispute regarding priority benefit between the parties. Petitioners have
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`intentionally streamlined the November 2013 Priority Petition which is
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`significantly below the permitted word count to limit the additional effort required
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`by the parties and the Board to resolve the priority issue. Petitioners have also
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`- 3 -
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`IPR2022-01192
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`relied on PO’s own prior art in the November 2013 Priority Petition, limiting the
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`burden imposed on PO to analyze unfamiliar art.
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`Petition
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`1 November 2013
`IPR2022-01193
`2 November 2002
`IPR2002-01192
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`Claims
`1-7
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`1-7
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`Grounds
`Obviousness over Hafeman ’298 and Chiu
`Anticipation by Hafeman ’670
`Obviousness over Jenne and Cohen
`Obviousness over Angelo and Helle
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`Date: July 8, 2022
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`Respectfully submitted,
` /LORI A. GORDON/
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`Lori A. Gordon
`Reg. No. 50,633
`Attorney for Petitioner
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`PERKINS COIE LLP
`700 Thirteenth Street, NW, Suite 800
`Washington, DC 2005
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`- 4 -
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`IPR2022-01192
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that true copies of the Petitioners’ Notice
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`of Multiple Petitions were served via overnight delivery on the Patent Owner at the
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`correspondence address of record as listed on PAIR:
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`ANSEL M. SCHWARTZ
`201 North Craig Street, Suite 304
`Pittsburgh, PA 15213
`(412) 621-9222
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`A courtesy copy was also sent via electronic mails to Patent Owner’s litigation
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`counsel listed below:
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`SUSMAN GODFREY LLP
`Max L. Tribble Jr.
`mtribble@susmangodfrey.com
`Krisina J. Zuniga
`kzuniga@susmangodfrey.com
`Thomas V. DelRosario
`tdelrosario@susmangodfrey.com
`Kalpana Srinivasan
`ksrinivasan@susmangodfrey.com
`Genevieve Wallace
`gwallace@susmangodfrey.com
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`Date: July 8, 2022
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`GLASER WEIL FINK HOWARD
`AVCHEN & SHAPIRO LLP
`Lawrence M. Hadley
`lhadley@glaserweil.com
`Christopher N. McAndrew
`cmcandrew@glaserweil.com
`Jason C. Linger
`jlinger@glaserweil.com
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`Respectfully submitted,
` /LORI A. GORDON/
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`Lori A. Gordon
`Reg. No. 50,633
`Attorney for Petitioner
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`- 5 -
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