IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`Burnett
`In re Patent of:
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`8,280,072
`U.S. Patent No.:
`October 2, 2012
`Issue Date:
`Appl. Serial No.: 12/163,617
`Filing Date:
`June 27, 2008
`Title:
`MICROPHONE ARRAY WITH REAR VENTING
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`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`PETITIONER’S NOTICE RANKING AND EXPLAINING MATERIAL
`DIFFERENCES BETWEEN PETITIONS FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,280,072
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`Burnett
`In re Patent of:
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`8,280,072
`U.S. Patent No.:
`October 2, 2012
`Issue Date:
`Appl. Serial No.: 12/163,617
`Filing Date:
`June 27, 2008
`Title:
`MICROPHONE ARRAY WITH REAR VENTING
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`PETITIONER’S NOTICE RANKING AND EXPLAINING MATERIAL
`DIFFERENCES BETWEEN PETITIONS FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,280,072
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`Petitioner Apple Inc. (“Apple”) is filing two petitions (IPR2022-01243 and
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`IPR2022-01244) challenging U.S. Patent No. 8,280,072 (the “’072 Patent”).
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`Pursuant to the Board’s July 2019 Trial Practice Guide Update, Apple submits this
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`paper to “identify: (1) a ranking of the Petitions in the order in which it wishes the
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`Board to consider the merits…, and (2) a succinct explanation of the differences
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`between the Petitions, why the issues addressed by the differences are material,
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`and why the Board should exercise its discretion to institute additional petitions.”
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`I.
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`Ranking of Petitions
`Although Apple believes that both Petitions are meritorious and justified,
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`Apple requests that the Board consider the Petitions in the following order:
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`Rank
`1
`2
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`Petition
`IPR2022-01243
`IPR2022-01244
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`Primary References
`Zhang, Arndt
`Ikeda, Sasaki
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`II. Differences that Compel Permitting Multiple Petitions
`A.
`Priority Date and Distinct Prior Art
`Petition 1 (IPR2022-01243) challenges the priority date of the ’072 Patent.
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`Although the ’072 Patent was filed as a continuation-in-part application, the ’072
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`Patent should not be eligible to claim priority to the earlier-filed U.S. App. Nos.
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`11/805,987 (filed May 25, 2007), 10/667,207 (filed Sep. 18, 2003), and 10/400,282
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`(filed Mar. 27, 2003) in its family because the claims that ultimately issued in the
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`’072 Patent do not have written description support in any of these earlier
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`1
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`applications. Instead, as explained in Petition 1, the ’072 Patent is entitled only to
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`the later filing date (Jun. 27, 2007) of U.S. Provisional App. No. 60/937,603, and,
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`as such, the earliest effective filing date of the ’072 Patent is Jun. 27, 2007.
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`Accordingly, Petition 1 relies on primary references that post-date the earlier US
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`application filing dates, but pre-date the earliest effective filing date. In contrast,
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`Petition 2 (IPR2022-01244) does not challenge the priority date of the ’072 Patent
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`and relies on references that pre-date the earlier US application filing dates.
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`Specifically, Petition 1 relies on (i) U.S. Patent App. Pub. 2008/0170716
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`(“Zhang”) under §§ 102 (Grounds 1A, 2A) and 103 (Grounds 1B, 2B); and (ii)
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`U.S. Patent App. Pub. 2005/0041824 (“Arndt”) under §§ 102 (Grounds 3A, 4A)
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`and 103 (Grounds 3B, 4B). Zhang was filed on Jan. 11, 2007, and published on
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`Jul. 17, 2008, while Arndt was filed on Jul. 16, 2004, and published on Feb. 24,
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`2005. Accordingly, based on the Jun. 27, 2007, filing date of the priority
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`provisional application, Zhang qualifies as prior art under pre-AIA 35 U.S.C. §
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`102(e) while Arndt qualifies as prior art under pre-AIA 35 U.S.C. § 102(b).
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`However, each of Zhang and Arndt post-dates the filing dates of at least the earlier-
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`filed US Applications 10/667,207 (Sep. 18, 2003) and 10/400,282 (Mar. 27, 2003).
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`In contrast, Petition 2 relies on (i) Japanese Patent App. Pub. No.
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`H11-18186A (“Ikeda”) under §§ 102 and 103 (Grounds 1, 2) and (ii) U.S. Patent
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`5,471,538 (“Sasaki”) and U.S. Patent 5,526,430 (“Ono”) in combination under §
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`2
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`103. Ikeda published on Jan. 22, 1999, while Sasaki and Ono issued respectively
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`on Nov. 28, 1995, and Jun. 11, 1996. Accordingly, each of Ikeda, Sasaki, and Ono
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`qualifies as prior art under pre-AIA 35 U.S.C. § 102(b) based on the Jun. 27, 2007,
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`filing date of the priority provisional application, as well as the earlier-filed
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`applications in the ’072 Patent family.
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`Although Patent Owner did not dispute the priority arguments raised in
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`Petition 1 prior to institution, Patent Owner could raise priority arguments post-
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`institution and the assessment of priority is necessary for the Zhang and Arndt
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`references to be considered prior art. Because the decision on whether the ’072
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`Patent is eligible to claim priority to the earlier-filed US Applications in its family
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`will necessarily continue through final written decision, institution of both petitions
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`is necessary to ensure Apple’s prior art grounds are properly considered through
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`final written decision.
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`Thus, the present circumstance is consistent with the example in the July
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`2019 Trial Practice Guide Update (pg. 26), where “the Board recognizes that there
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`may be circumstances in which more than one petition may be necessary,
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`including, for example, … when there is a dispute about priority date requiring
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`arguments under multiple prior art references.” Here, Apple disputes the priority
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`date of the ’072 Patent in Petition 1. But in the event that the Board finds that the
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`’072 Patent is entitled to its earliest claimed priority date and the references in
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`Petition 1 are found deficient as a consequence, Petition 2 provides arguments
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`under prior art references that pre-date that priority date.
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`For the reasons above, the Board should exercise its discretion to institute
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`both Petitions. Both Petitions are necessary to show the breadth of prior art that
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`reads on the overly broad claims of the ’072 Patent. The Petitions are not
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`redundant, duplicative, or substantially similar. Moreover, each Petition provides a
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`strong showing of unpatentability (see Samsung Electronics Co., Ltd. v. Seven
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`Networks, LLC, IPR2018-01106, Paper 21, 30-41 (PTAB Nov. 28, 2018); Samsung
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`Electronics Co., Ltd. v. Seven Networks, LLC, IPR2018-01108, Paper 22, 36-49
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`(PTAB Nov. 28, 2018)), relying on entirely different references without repeating
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`the same theory or points. Instituting on only one Petition would give Patent
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`Owner an unfair advantage, allowing Patent Owner to strategically attempt to
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`distinguish its claims over the instituted prior art even if those same arguments
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`would effectively show invalidity over the non-instituted prior art.
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`Moreover, this is not a situation where Apple has filed many IPR petitions
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`against one patent or is asserting dozens of independent grounds. Rather, Apple
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`has filed only two petitions, each based on a limited number of references for the
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`challenged claims and each as a copycat of a prior-filed petition. With these facts,
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`granting of Apple’s two petitions would not increase the complexity of the
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`proceedings already before the Board and, instead, would lead to efficient
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`resolution of the validity of the ’072 Patent should either or both of the prior
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`petitioners settle. Indeed, Apple’s two petitions challenge the validity of the same
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`claims of the ’072 Patent on identical grounds to those in the prior-filed petitions.
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`There are no substantive differences between Apple’s petitions and the prior-filed
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`petitions, and Apple also relies on the same substantive evidence in its petitions as
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`relied on in the earlier cases. Apple is concurrently seeking joinder with the prior-
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`filed petitions and has agreed to adhere to all applicable deadlines set forth in the
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`earlier cases. Apple also is agreeing to take an understudy role as long as the
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`petitioners in the prior-filed petitions remain party to their respective cases.
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`Accordingly, instituting both of Apple’s petitions along with consolidation with the
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`prior-filed petitions via joinder will not (i) raise any new issues of unpatentability;
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`(ii) impose any additional burden on the Board or Patent Owner; (iii) add
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`additional complexity to the cases; or (iv) result in any changes to the schedules in
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`each of the earlier cases.
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`For at least these reasons, Apple requests that the Board institute trial on
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`both Petitions.
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`Dated: July 8, 2022
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`Respectfully submitted,
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`/Jeremy J. Monaldo/
`W. Karl Renner, Reg. No. 41,265
`Jeremy Monaldo, Reg. No. 58,680
`Ayan Roy-Chowdhury, Reg. No. 72,483
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 612-335-5070
`F: 612-288-9696
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`Attorneys for Petitioner
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`6
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4)(i) et seq. and 42.105(b), the undersigned
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`certifies that on July 8, 2022, a complete and entire copy of this Petition for Inter
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`Partes Review and all supporting exhibits were provided via Federal Express, to
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`the Patent Owner by serving the correspondence address of record as follows:
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`NUTTER MCCLENNEN & FISH LLP
`SEAPORT WEST
`155 SEAPORT BOULEVARD
`BOSTON MA 02210-2604
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`7
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`/Crena Pacheco/
`Crena Pacheco
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(617) 956-5938
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