IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`Elenga et al.
`In re Patent of:
`Attorney Docket No. 50095-0179IP1
`9,941,830
`U.S. Patent No.:
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`April 10, 2018
`Issue Date:
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`Appl. Serial No.: 15/181,249
`
`Filing Date:
`June 13, 2016
`Title:
`LINEAR VIBRATION MODULES AND LINEAR-RESONANT
`VIBRATION MODULES
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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. 9,941,830
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`Elenga et al.
`In re Patent of:
`Attorney Docket No. 50095-0179IP1
`9,941,830
`U.S. Patent No.:
`
`April 10, 2018
`Issue Date:
`
`Appl. Serial No.: 15/181,249
`
`Filing Date:
`June 13, 2016
`Title:
`LINEAR VIBRATION MODULES AND LINEAR-RESONANT
`VIBRATION MODULES
`
`
`
`
`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. 9,941,830
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`Petitioner is filing two petitions challenging U.S. Patent No. 9,941,830 (“the
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`Attorney Docket No. 50095-0179IP1
`IPR of U.S. Patent No. 9,941,830
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`’830 patent”), one relying on Gregorio as the primary reference (IPR2024-00806;
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`50095-0179IP1) and one relying on Wakuda as the primary reference (IPR2024-
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`00808; 50095-0179IP2).
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`I.
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`Ranking of Petitions
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`Although both Petitions are meritorious and justified as required, Petitioner
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`requests that the Board consider the Petitions in the following order:
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`Rank
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`Petition
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`Primary Reference
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`Claims
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`1
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`2
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`IPR2024-00806
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`IPR2024-00808
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`Gregorio
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`Wakuda
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`1-8, 14-17, 19, 20
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`1-8, 14-17, 19, 20
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`II. Material Differences that Compel Permitting Multiple Petitions
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`The Board has recognized “that there may be circumstances in which more
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`than one petition may be necessary.” Consolidated Trial Practice Guide November
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`2019 (TPG), 59. One of the examples provided by the Board for justifying the
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`institution of multiple petitions is a “dispute about priority date.” Id. In these
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`proceedings, the priority date accorded to the ’083 patent is potentially in dispute.
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`As background, the ’830 patent includes a priority claim to a provisional
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`application filed on May 18, 2009, and no other claim had been made during
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`prosecution. See generally APPLE-1002. Therefore, the Petition has applied
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`references that predate this alleged priority date. Pet., 2.
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`1
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`Attorney Docket No. 50095-0179IP1
`IPR of U.S. Patent No. 9,941,830
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`Despite the clear prosecution history of no priority date dispute, Patent
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`Owner alleges that the prior date of the ’830 patent is “at least as early as May 18,
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`2009” in co-pending litigation. APPLE-1044, 2 (Resonant Systems Preliminary
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`Infringement Contentions) (emphasis added). While failing to identify the earliest
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`priority date, Patent Owner has reserved the right to change its claim, and nothing
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`prevents Patent Owner from alleging its baseless contention of a priority date
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`earlier than May 18, 2009 in this forum. For these reasons, the priority date is in
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`sufficient dispute to justify institution of two petitions against the ’830 patent.
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`Here, two Petitions challenging the ’830 patent are based on materially
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`different primary references—Gregorio and Wakuda—with different dates.
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`Specifically, Petition 1 applies Gregorio as a base reference that qualifies as prior
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`art under Pre-AIA §102(e). Gregorio was filed December 16, 2008, less than five
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`(5) months before the May 18, 2009 priority date of the ’830 patent, and therefore
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`can be subject to different legal standards and potential defenses including swear-
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`behind. Petition 2 applies Wakuda as a base reference that qualifies as prior art
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`under Pre-AIA §102(b) and thus cannot be sworn behind. Therefore, in the event
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`that Patent Owner attempts to rely on an earlier date (particularly before
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`Gregorio’s filing date of December 16, 2008, as discussed below), Petition 2
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`provides arguments based on prior art references that predate such an earlier date.
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`2
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`Attorney Docket No. 50095-0179IP1
`IPR of U.S. Patent No. 9,941,830
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`In light of these important legal differences and attendant options for Patent
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`Owner defenses (which do not need to be employed until after institution), and, as
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`a matter of policy, Petitioner should not be denied an opportunity to have
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`considered by the PTAB the best available prior art on various applicable legal
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`standards, when applicable, as here. Indeed, both the Gregorio-based grounds and
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`the Wakuda-based grounds fully provide all elements of the challenged claims with
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`different strengths. In particular, Gregorio offers additional details that may be
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`helpful to inform an inquiry on patentability. For example, Gregorio provides a
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`detailed disclosure of closed-loop control based on sensor signals, which read
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`squarely on features in claims 2-6 of the ’830 patent. E.g., APPLE-1004, 3:65-6:4.
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`In contrast, Wakuda provides details of a physical structure of the vibration module
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`that are similar to the ’830 patent’s disclosure. E.g., APPLE-1005, 4:27-6:62.
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`Petitioner should not be forced to forego Gregorio’s detailed disclosure due
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`to the above described concerns of a swear-behind defense possibility. Imposing
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`such a requirement on petitioners would be contrary to Congressional intent, as it
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`would prevent strong prior art from being raised before the Patent Office for fear
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`of petitions being denied due to non-merit issues, severely limiting the ability of
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`the public to ensure that deficient patents are not allowed to remain enforceable.
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`In view of the above material differences between two petitions, the Board
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`should exercise its discretion to institute both Petitions. The Petitions are not
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`3
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`redundant, duplicative, or substantially similar, and this is not a situation in which
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`Attorney Docket No. 50095-0179IP1
`IPR of U.S. Patent No. 9,941,830
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`it would be reasonable to include all challenges in a single petition, as both
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`Petitions challenges fourteen claims under two different claim interpretations
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`(plain-and-ordinary meaning and means-plus-function interpretations). Moreover,
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`each Petition provides a strong showing of unpatentability with a different primary
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`reference—Gregorio or Wakuda. Instituting on only one Petition would give
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`Patent Owner an unfair advantage, allowing Patent Owner to strategically attempt
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`to 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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`III.
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`Institution of Both Petitions Would Not Be an Undue Burden on the
`Board
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`In an effort to minimize the burden of institution of two petitions, Petitioner
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`has purposefully used the same secondary references in the same manner with
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`respect to the same claims in the two petitions, except that Amaya is used as an
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`additional secondary reference to address certain dependent claims in the Wakuda
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`Petition. This similarity includes substantially similar motivations to combine
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`these secondary references with the respective primary references. This overlap in
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`secondary references and analysis greatly reduces the burden of instituting both
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`petitions in that both proceedings are likely to focus on the same arguments with
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`respect to the secondary references.
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`4
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`Attorney Docket No. 50095-0179IP1
`IPR of U.S. Patent No. 9,941,830
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`These Petitions are far from the “abuse” or “repeated attacks” feared in the
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`General Plastic Co., Ltd. v. Canon Kabushiki Kaisha decision. IPR2016-01357,
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`Paper 19 at 16–17 (PTAB Sept. 6, 2017) (precedential). The present situation is
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`also unlike situations in which Petitioners take multiple bites at the apple by
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`presenting duplicative prior art based grounds relying on myriad different primary
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`and secondary references. In contrast to such scenarios, here, Petitioner frames in
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`its two petitions grounds that rely on just two different primary references (for the
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`above discussed reasons) in combination with the same secondary references
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`(except for only one secondary reference—Amaya—for a small set of dependent
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`claims) across both petitions, to minimize the number of potential issues.
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`Additionally, the strong merits justify institution of both IPR Petitions.
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`Efficiencies and public policy concerns warrant PTAB consideration of both
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`Petitions. Institution of both IPR petitions would prevent the unjust result of
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`otherwise strong invalidity grounds being dismissed for procedural reasons. Any
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`burden is a product of Patent Owner’s decisions and not something that should
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`benefit them, which would amount to discretionary denial. In addition, Petitioner
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`requests consolidation of the two proceedings, as permitted by 35 U.S.C. §§ 315(d)
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`and 325(d) to simplify the complexity of the proceedings.
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`For at least these reasons, Petitioner requests that the Board institute trial on
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`both Petitions.
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`5
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`Dated: April 12, 2024
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`Attorney Docket No. 50095-0179IP1
`IPR of U.S. Patent No. 9,941,830
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`Respectfully submitted,
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`/Thomas Rozylowicz/
`W. Karl Renner, Reg. No. 41,265
`Thomas Rozylowicz, Reg. No. 50,620
`Sangki Park, Reg. No. 77,261
`Fish & Richardson P.C.
`60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
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`Attorneys for Petitioner
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`6
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`Attorney Docket No. 50095-0179IP1
`IPR of U.S. Patent No. 9,941,830
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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 April 12, 2024, a complete and entire copy of this Notice Ranking
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`Petitions was provided via Federal Express, to the Patent Owner by serving the
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`correspondence address of record as follows:
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`WESTMAN CHAMPLIN & KOEHLER, P.A.
`121 South Eighth Street
`Suite 1100
`Minneapolis, MN 55402
`(612) 334-3222
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`/Crena Pacheco/
`Crena Pacheco
`Fish & Richardson P.C.
`60 South Sixth Street
`Minneapolis, MN 55402
`pacheco@fr.com
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`7
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