From:
`To:
`Cc:
`
`Subject:
`Date:
`Attachments:
`
`Karl Renner
`Director_PTABDecision_Review
`Usman Khan; Gregory Cordrey; Matthew.Satchwell@dlapiper.com; brent.yamashita@dlapiper.com;
`chris.duerden@us.dlapiper.com; erika.arner@finnegan.com; cory.bell@finnegan.com; yanyi.liu@finnegan.com;
`yinan.liu@finnegan.com; Andrew Patrick; Todd; IPR50095-0108IP1; Kenneth Darby; Karl Renner
`IPR2023-00242: Petitioner"s Request for Director Review
`Monday, July 15, 2024 10:28:27 PM
`IPR2023-00242 Petitioner"s Request for Director Review.pdf
`
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`Dear Director,
`
`Apple Inc., the Petitioner in IPR2023-00242, respectfully recommends and requests
`Director Review or rehearing by the Delegated Review Panel of the Final Written Decision
`issued by the Board in this proceeding. Attached is a copy of Petitioner’s Request for
`Director Review submitted today via P-TACTS.
`
`The Board’s Final Written Decision fails to resolve a case dispositive question of
`obviousness. The unresolved question is whether a particular claim limitation, construed
`narrowly in the manner proposed post-institution by the Patent Owner, is proven obvious
`by prior art the Petition initially presented under a plain meaning interpretation. While the
`Board’s Decision finds that the reference does not expressly “teach[]” the narrowly
`construed claim limitation, it fails to consider whether a skilled artisan would have arrived at
`such a limitation by making the sort of reasonable “inferences,” envisioned by the Supreme
`Court in KSR. Petitioner submitted uncontroverted expert testimony on this point, and yet
`the Board’s Decision dismisses that critical evidence as having “little value.”
`
`The following list of three issues, all directed to the same narrowly construed claim
`limitation, are ranked in order of priority, just as they are presented in Section III of
`Petitioner’s Request for Director Review.
`
`1. Important Issue of Law: The Board failed to consider Petitioner’s argument in reply
`to Patent Owner’s post-institution construction regarding a skilled artisan’s inferences
`from the prior art that would arrive at the narrowly construed claim limitation.
`2. Important Issue of Law: The Board overlooked uncontroverted expert testimony
`on the dispositive question of how a skilled artisan would have viewed and
`understood the prior art.
`3. Erroneous Conclusion of Law: The Board imported unrecited claim limitations
`when narrowly construing the disputed claim term that spurred its flawed obviousness
`analysis.
`
`IPR2023-00242
`Ex. 3100
`
`

`

`Respectfully,
`
`Karl Renner
`_______________________________
`W. Karl Renner
`Post Grant Group Chair | Fish & Richardson P.C.
`1000 Maine Ave., SW, Suite 1000 | Washington, D.C. 20024
`Tel: (202) 626-6447 | renner@fr.com
`
`
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