UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`
`APPLE INC.,
`Petitioner
`v.
`CARBYNE BIOMETRICS, LLC,
`Patent Owner
`
`———————
`IPR2024-00333,
`IPR2024-00507
`U.S. Patent No. 11,475,105
`_____________________
`
`PETITIONER’S NOTICE RANKING PETITIONS AND
`EXPLAINING MATERIAL DIFFERENCES BETWEEN PETITIONS
`FOR U.S. PATENT NO. 11,475,105
`
`
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`
`APPLE INC.,
`Petitioner
`v.
`CARBYNE BIOMETRICS, LLC,
`Patent Owner
`
`———————
`IPR2024-00333,
`IPR2024-00507
`U.S. Patent No. 11,475,105
`_____________________
`
`PETITIONER’S NOTICE RANKING PETITIONS AND
`EXPLAINING MATERIAL DIFFERENCES BETWEEN PETITIONS
`FOR U.S. PATENT NO. 11,475,105
`
`
`
`
`
`
`
`I.
`
`INTRODUCTION
`Petitioner filed two Petitions challenging claims of U.S. Patent 11,475,105
`
`IPR2024-00333 Petition
`IPR2024-00507 Petition
`U.S. Patent No. 11,475,105
`
`
`
`
`
`(the “’105 patent”). Pursuant to the Consolidated Trial Practice Guide November
`
`2019 (“TPG”), Petitioner submits this paper to “identify: (1) a ranking of the
`
`Petitions in the order in which it wishes the Board to consider the merits..., and (2)
`
`a succinct explanation of the differences between the petitions, why the issues
`
`addressed by the differences are material, and why the Board should exercise its
`
`discretion to institute additional petitions.” TPG, 60.
`
`II. RANKING OF PETITIONS
`Per the Board’s TPG guidance, Petitioner ranks as follows:
`
`RANK
`
`PETITION
`
`CLAIMS
`
`GROUNDS
`
`IPR2024-00333
`(challenges all
`asserted claims
`together with
`claims 10
`and 29)
`
`IPR2024-00507
`(all challenged
`claims are not
`presently
`asserted)
`
`1, 14, 18, 33 and 35
`
`9-11 and 28-30
`
`1, 9-11, 14, 18, 28-30, 33
`and 35
`2, 4, 12, 15, 21, 23, 31 and
`34
`5, 6, 24, 25
`
`2, 4, 12, 15, 21, 23, 31 and
`34
`5, 6, 24, 25
`
`Kesanupalli, Cheng,
`Kodama
`Kesanupalli, Cheng,
`Kodama, Challener
`[priority break]
`Jakobsson ’351, Kodama
`Kesanupalli, Cheng,
`Kodama
`Kesanupalli, Cheng,
`Kodama, Hubner
`[priority break]
`Jakobsson ’351, Kodama
`[priority break]
`Jakobsson ’351,
`Kodama, Hubner
`
`- 1 -
`
`1
`
`2
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2024-00333 Petition
`IPR2024-00507 Petition
`U.S. Patent No. 11,475,105
`
`III. MATERIAL DIFFERENCES BETWEEN THE PETITIONS
`Parallel Petitions challenge different claims. The first Petition challenges
`
`claims 1, 9-11, 14, 18 and 28-30, while the second challenges claims 2, 4-6 12, 15,
`
`21, 23-25, 31 and 34.1 Different claims are challenged in each Petition. Challenges
`
`to dependent claims involve materially different secondary references with
`
`different motivations to combine and different claim construction issues.
`
`IV.
`
`INSTITUTION OF AN ADDITIONAL PETITION IS WARRANTED
`The Board has recognized “there may be circumstances in which more than
`
`one petition may be necessary, including, for example, when the patent owner has
`
`asserted a large number of claims in litigation or when there is a dispute about
`
`priority date requiring arguments under multiple prior art references.” TPG, 59.
`
`These circumstances are present here.
`
`Parallel Petitions here address a priority date dispute. The ’105 Patent issued
`
`on a continuation-in-part (CIP) application (17/123,018) filed December 15, 2020
`
`claiming priority (as a CIP) to Application 17/027,481 (“the ’481 App”), which in
`
`turn claims priority through a chain of applications to provisional applications
`
`
`
`1 The second petition necessarily sets forth each and every element of claims 1 and
`
`18, which are the base claims for the challenged dependent claims.
`
`
`
`- 2 -
`
`
`
`
`
`IPR2024-00333 Petition
`IPR2024-00507 Petition
`U.S. Patent No. 11,475,105
`
`
`including Application No. 61/587,387 (“the ’387 Prov”), dated January 17, 2012.
`
`
`
`Priority date—the effective filing date of the ’105 patent claims—is in dispute.
`
`Patent Owner has asserted priority based on the ’387 Prov. See Preliminary
`
`Infringement Contentions (“PICs”), APPL-1029, 9. Petitioner asserts that neither
`
`the ’481 App nor any application in the ’105 patent’s chain of priority provides
`
`written description support for the subject matter claimed in the ’105 patent, and as
`
`such, the effective filing date of each of the claims of the ’105 patent is no earlier
`
`than December 15, 2020. Accordingly, the Petitions present challenges based on a
`
`first primary reference (Kesanupalli), which is prior art even with respect to the
`
`Patent Owner’s asserted 2012 priority date, as well as challenge(s) based on a
`
`different primary reference (Jakobsson ’351) that is prior art with respect to the
`
`much later effective filing date asserted by Petitioner.
`
`Parallel Petitions here challenge numerous complex claims. Patent Owner
`
`currently asserts three independent claims and five dependent claims of the ’105
`
`patent are infringed and also “reserves the right to amend or supplement its
`
`contentions to identify additional claims infringed by Defendant after discovery
`
`proceeds.” PICs, APPL-1029 at 2. Patent Owner’s attempt to reserve of rights to
`
`assert further claims on a timeline that could bar Petitioner’s challenge of such
`
`claims itself supports the filing of the second petition. Moreover, the convoluted
`
`nature of independent claims, together reciting over 775 words of claim language,
`- 3 -
`
`
`
`
`
`
`
`IPR2024-00333 Petition
`IPR2024-00507 Petition
`U.S. Patent No. 11,475,105
`
`
`contributes to circumstances that support exercise of discretion and institution of
`
`
`
`two petitions so that Petitioner may sufficiently address all desired claims.
`
`As an additional factor, the first Petition covers claims that include
`
`“restricted interface” limitations for which Petitioner relies on a combination with
`
`Challener (APPL-1007) and for which application of an appropriate claim
`
`construction tracks added matter of the ’105 patent (a CIP) that purports to
`
`introduce new and materially different examples of a “restricted interface.” On the
`
`other hand, the second Petition covers claims that include “pairing” limitations for
`
`which Petitioner relies upon a combination with Hubner (APPL-1030) and for
`
`which the added matter of the ’105 patent suggests possible alternative meanings.
`
`Adequate treatment of these issues was not possible in a single petition. Thus,
`
`materially different secondary references, different motivations to combine and
`
`different claim construction issues also contribute to word counts that necessitate
`
`multiple petitions.
`
`Parallel Petitions here would not materially increase burden on the Board.
`
`Despite the challenge of distinct sets of claims, the Board can efficiently resolve
`
`the grounds of the first and second Petitions, as second-Petition challenges rely on
`
`a combination of the same base prior art (Kesanupalli/Cheng/Kodama; Jakobsson
`
`’351/Kodama), with only the addition of a single prior art reference (Hubner) for a
`
`
`
`- 4 -
`
`
`
`
`
`IPR2024-00333 Petition
`IPR2024-00507 Petition
`U.S. Patent No. 11,475,105
`
`
`subset of dependent claims in the second Petition. Petitioner intends to seek
`
`
`
`consolidation of the two proceedings under 35 U.S.C. § 315(d), if instituted.
`
`V. CONCLUSION
`Petitioner has shown material differences between the two Petitions in that
`
`the Petitions address different set of claims. The Board should exercise its
`
`discretion to institute a second petition at least due to the parties’ priority date
`
`dispute, which drives the need to present obviousness challenges with respect to
`
`each of the Patent Owner’s asserted 2012 priority date and the Petitioner’s asserted
`
`2020 priority date. The Board can efficiently resolve the grounds of the second
`
`petition as those challenges rely on the same base combination of references to
`
`illustrate obviousness as the first petition, with a single additional reference added
`
`to the obviousness combinations for a sub-set of claims of the second Petition.
`
`
`
`Dated: January 31, 2024
`
`
`
`
`
`Respectfully submitted,
`
`
`
`/David W. OBrien/
`David W. O’Brien
`Lead Counsel for Petitioner
`Registration No. 40,107
`
`
`
`- 5 -
`
`
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