IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`Ren et al.
`In re Patent of:
`7,749,641
`U.S. Patent No.:
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`July 6, 2010
`Issue Date:
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`Appl. Serial No.: 10/491,134
`
`Filing Date:
`May 6, 2004
`Title:
`SECONDARY LITHIUM ION CELL OR BATTERY, AND
`PROTECTING CIRCUIT, ELECTRONIC DEVICE, AND
`CHARGING DEVICE OF THE SAME
`
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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. 7,749,641
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`Ren et al.
`In re Patent of:
`7,749,641
`U.S. Patent No.:
`
`July 6, 2010
`Issue Date:
`
`Appl. Serial No.: 10/491,134
`
`Filing Date:
`May 6, 2004
`Title:
`SECONDARY LITHIUM ION CELL OR BATTERY, AND
`PROTECTING CIRCUIT, ELECTRONIC DEVICE, AND
`CHARGING DEVICE OF THE SAME
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`PETITIONER’S NOTICE RANKING AND EXPLAINING MATERIAL
`DIFFERENCES BETWEEN PETITIONS FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,749,641
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`Apple previously filed a petition in IPR2023-01350 (“Apple’s Petition”)
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`challenging claims of U.S. Patent No. 7,749,641 (“the ’641 Patent”). The Board
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`has yet to render an institution decision based on Apple’s Petition. Apple now files
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`an additional petition in IPR2024-00597 (“Joinder Petition”) challenging claims of
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`the ’641 Patent with a motion for joinder to Samsung’s IPR2023-01183 proceeding
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`(“the Samsung Proceeding”), which was instituted on January 22, 2024. Pursuant
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`to the November 2019 Consolidated Trial Practice Guide (“CTPG”), this paper
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`provides: “(1) a ranking of the petitions in the order in which [Petitioner] wishes
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`the Board to consider the merits, if the Board uses its discretion to institute any of
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`the petitions, and (2) a succinct explanation of the differences between the
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`petitions, why the issues addressed by the differences are material, and why the
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`Board should exercise its discretion to institute additional petitions.” CTPG, 59-
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`61.
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`I.
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`Ranking of Petitions
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`The merits of both Apple’s Petition and the Joinder Petition are particularly
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`strong. Specifically, as demonstrated in Apple’s Petition with reference to Mr.
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`Hruska’s testimony and additional evidence, institution would result in invalidation
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`of claims 5-14 of the ’641 Patent. Moreover, as demonstrated in the Joinder
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`Petition with reference to Mr. Juzkow’s testimony and additional evidence,
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`institution would result in invalidation of all claims 1-18 of the ’641 Patent.
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`1
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`Indeed, the Joinder Petition is substantially the same as the petition filed in the
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`already-instituted Samsung Proceeding.
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`As explained below, Apple believes that both petitions are meritorious and
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`justified, and respectfully requests institution of both Apple’s Petition and the
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`Joinder Petition. Nevertheless, to the extent required by the Trial Practice Guide,
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`Apple requests that the Board prioritize institution of Apple’s Petition over
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`consideration of the Joinder Petition.
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`II. Material Differences Between the Petitions Compel Institution of
`Multiple Petitions
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`Apple submits that institution of both Apple’s Petition and the Joinder
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`Petition also is warranted due to the different grounds and different sets of claims
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`challenged in the two petitions.
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`Apple’s Petition and the Joinder Petition each demonstrate the obviousness
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`of claims of the ’641 Patent, but they do so on the basis of different combinations
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`of references that address the respectively challenged claims in materially different
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`ways. At bottom, the petitions are non-redundant in their reliance on these
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`different combinations of references.
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`The grounds of rejection set forth in Apple’s Petition feature two distinct
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`combinations of references: Yamaki-Sakamoto and Yasunami-Koyama. Each of
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`these primary references (i.e., Yamaki and Yasunami) describes a battery having a
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`charge cut-off voltage that is above 4.2 V. Moreover, as explained at length in the
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`2
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`petition, a POSITA would have found it obvious to modify a battery such as that of
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`either primary reference to incorporate positive and negative electrode materials
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`within the claimed range of ratios, as taught by the secondary references,
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`Sakamoto and Koyama.
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`In contrast, the grounds of rejection set forth in the Joinder Petition raise
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`different issues and rely on different prior art. For instance, the Joinder Petition
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`asserts unpatentability of the claims over each of two single references, Uemura
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`and Abe, each of which discloses, or otherwise renders obvious, all of the features
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`of at least the independent claims of the ’641 Patent, including both the recited
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`charge cut-off voltage range and the claimed range of positive and negative
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`electrode material ratios.
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`Moreover, Apple’s Petition and the Joinder Petition challenge different sets
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`of claims. Apple’s Petition challenges claims 5-14 of the ’641 Patent while the
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`Joinder Petition challenges claims 1-18.
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`III.
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`Institution of Both Petitions Would Not Impose Extraordinary Burden
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`The Joinder Petition is substantively the same as the petition filed in the
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`Samsung Proceeding (“the Samsung Petition”): it challenges the same claims, on
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`the same grounds, and relies on the same prior art as the Samsung Petition. The
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`Samsung Petition has been instituted. Institution of the Joinder Petition (along
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`with grant of Apple’s Motion for Joinder) would create no additional burden for
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`3
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`the Board, the Samsung Proceeding Petitioner, or Patent Owner if joined.
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`Specifically, the present Joinder Petition introduces no new substantive issues
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`relative to the Samsung Proceeding, and institution of the Joinder Petition (along
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`with grant of Apple’s Motion for Joinder) would not impact the trial schedule of
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`the Samsung Proceeding.
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`IV. CONCLUSION
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`For at least these reasons, Apple respectfully submits that efficiency and
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`integrity of the system as whole would be best served by instituting Apple’s
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`Petition, and requests that the Board prioritize institution of Apple’s Petition.
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`However, if the Board were to deny institution of Apple’s Petition, Apple
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`alternatively requests that the Board institute review of IPR2024-00597 and grant
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`Apple’s motion to join Samsung’s already-instituted IPR2023-01183 proceeding.
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`4
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`Dated: February 22, 2024
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`Respectfully submitted,
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`/W. Karl Renner/
`W. Karl Renner, Reg. No. 41,265
`Hyun Jin In, Reg. No. 70,014
`Gretchen DeVries, Reg. No. 72,505
`Fish & Richardson P.C.
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: 202-783-5070
`Fax: 877-769-7945
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`Attorneys for Petitioner
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`5
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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 February 22, 2024, a complete and entire copy of this Paper
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`Ranking Petitions was provided via Federal Express, to the Patent Owner by
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`serving the correspondence address of record as follows:
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`EDELL, SHAPIRO & FINNAN, LLC
`9801 Washingtonian Blvd., Suite 750
`Gaithersburg, MD 20878
`(301) 424-3640
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`6
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`/Crena Pacheco/
`Crena Pacheco
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`pacheco@fr.com
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