IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`Pepin et al.
`In re Patent of:
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`8,093,767
`U.S. Patent No.:
`January 10, 2012
`Issue Date:
`Appl. Serial No.: 12/782,697
`Filing Date:
`May 18, 2010
`Title:
`LINEAR-RESONANT VIBRATION MODULE
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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. 8,093,767
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`Pepin et al.
`In re Patent of:
`
`8,093,767
`U.S. Patent No.:
`January 10, 2012
`Issue Date:
`Appl. Serial No.: 12/782,697
`Filing Date:
`May 18, 2010
`Title:
`LINEAR-RESONANT VIBRATION MODULE
`
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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. 8,093,767
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`Petitioner is filing two concurrent Petitions challenging the validity of all
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`claims of U.S. Patent No. 8,093,767 (“the ’767 patent”). Pursuant to the Board’s
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`July 2019 Trial Practice Guide Update, Petitioner submits this paper to “identify:
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`(1) a ranking of the Petitions in the order in which it wishes the Board to consider
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`the merits…, 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.”
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`I. Ranking of Petitions
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`Although Petitioner believes that both Petitions are meritorious and justified,
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`Petitioner requests that the Board consider the Petitions in the following order:
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`Rank
`1
`2
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`Petition
`IPR2024-00697
`IPR2024-00698
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`Primary Reference Claims
`Shahoian
`1-5
`Izumi
`1-5
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`II. Factors Supporting Institution, Including Material Differences
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`Material differences exist between the petitions, which are non-redundant at
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`least in their reliance on different combinations of references that demonstrate the
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`obviousness of the Challenged Claims in materially different ways.
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`For example, IPR2024-00697 relies on Shahoian as a primary reference, and
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`asserts grounds presenting Shahoian in combinations with each of Cosper, Rossi,
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`Ramsay, and Aldrich. Shahoian describes a haptic “force feedback interface
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`2
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`device” having a “linear actuator” that includes a moving magnet. APPLE-1004,
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`Abstract; 2:1-3:2; 3:9-10; 3:21-5:39; 6:3-7:63. Notably, the Examiner failed to
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`apply prior art references describing linear actuator modules in “haptic” feedback
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`applications, introducing material error by overlooking this body of art. Shahoian
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`describes features of independent claim 1, and combines with other references that
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`describe conventional feedback control techniques and conventional circuit
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`components in similar systems.
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`In contrast, IPR2024-00698 relies on Izumi as a primary reference, and
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`asserts grounds presenting Izumi in combinations with each of Cosper, Rossi,
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`Ibuki, and Aldrich. Izumi describes a driving unit that drives a linear actuator
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`resonance system that can be used in a handheld (shaver) device. APPLE-1005,
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`Abstract, [0007]. Ibuki likewise describes a handheld (shaver) device, including
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`user input switches to select between modes having different oscillating output.
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`While both the Shahoian and Izumi grounds disclose each element of the
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`challenged claims, these distinct primary references disclose the claimed features,
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`and combine with secondary references, in materially different ways. Compare
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`APPLE-1004, 3:21-5:39, with APPLE-1005, [0007]-[0009]. The motivations to
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`combine the distinct sets of references presented in the two petitions materially
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`differ, with the Shahoian combinations focused on considerations related to
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`Shahoian’s “haptic” application, and the Izumi combinations focused on
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`3
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`considerations related to Izumi’s shaver application. The petitions are not
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`redundant, duplicative, or substantially similar. Rather, each petition compellingly
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`demonstrates the unpatentability of the Challenged Claims, without repeating the
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`same theory. The ability to completely address the Challenged Claims with
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`meaningfully different references highlights the overbreadth of the Challenged
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`Claims and the appropriateness of two petitions.
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`In view of the material differences shown above, the Board should exercise
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`its discretion to institute both Petitions—both Petitions are necessary to show the
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`breadth of prior art that reads on the overly broad claims.
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`To be clear, this is not a situation in which all challenges should reasonably
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`be included in a single petition. Both petitions challenge five claims which include
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`means-plus-function limitations that involve numerous features in the
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`specification. The Board has found means-plus-function issues to be a compelling
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`justification for two petitions, including in scenarios where considerably fewer
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`than 20 claims are challenged. E.g., DJI Europe BV v. Daedulus Blue LLC.,
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`IPR2020-01474, Paper 14 (PTAB Feb. 12, 2021) (involving 12 challenged claims
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`and many means-plus-function terms). Here, the means-plus-function terms
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`(particularly “control component”) involve detailed limitations according to the
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`corresponding structure in the specification. Appropriately addressing these terms
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`necessitates additional analysis amounting to roughly 5000 words.
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`4
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`Additionally, given the overlap in the analysis of the ’767 petition and the
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`construction of the Challenged Claims, consideration of a second petition does not
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`present undue burden on the Board or Patent Owner, and two petitions facilitates
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`clarity in the presentation of the issues. Moreover, Petitioner has purposefully
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`used Rossi and Aldrich secondary references for common elements in the two
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`petitions, streamlining review by the Board and Patent Owner.
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`Finally, each Petition provides a strong showing of unpatentability.
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`Instituting on only one Petition would give Patent Owner an unfair advantage,
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`allowing Patent Owner to strategically attempt to distinguish its claims over the
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`instituted prior art even if those same arguments would effectively show invalidity
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`over the non-instituted prior art. Indeed, the overbreadth of the claims is
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`highlighted by the compelling showing of unpatentability based on different types
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`of device applications (e.g., Shahoian’s module described in the context of a
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`“haptic” system vs. Izumi’s module described in the context of a shaver device).
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`Institution of both IPR petitions would prevent the unjust result of otherwise strong
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`invalidity grounds being dismissed for procedural reasons. Any burden is a
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`product of Patent Owner’s decisions and not something that should benefit them,
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`which would amount to discretionary denial. In addition, Petitioner requests
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`consolidation of the two proceedings, as permitted by 35 U.S.C. §§ 315(d) and
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`325(d) to simplify the complexity of the proceedings.
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`5
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`Dated: April 12, 2024
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`/Craig A. Deutsch/
`
`W. Karl Renner, Reg. No. 41,265
`Craig Deutsch, Reg. No. 69,264
`Karina Calliste, Reg. No. 75,834
`Fish & Richardson P.C.
`60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
`
`Attorneys for Petitioner
`
`6
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