`
`IPR2024-01398
`U.S. Patent No. 8,646,042
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`APPLE INC.,
`
`Petitioner,
`
` v.
`
`PROXENSE, LLC,
`
`Patent Owner.
`_______________________
`
`Case No. IPR2024-01398
`
`U.S. Patent No. 8,646,042
`_____________________
`
`
`PETITIONER’S SUPPLEMENTAL PAPER AND NOTICE RANKING
`PETITIONS1
`
`
`
`1 Petitioner is filing a substantively identical document in IPR2024-01399.
`
`
`
`
`
`IPR2024-01398
`U.S. Patent No. 8,646,042
`
`I.
`
`Introduction
`Petitioner is concurrently filing petitions for inter partes review of U.S. Patent
`
`No. 8,646,042 (“the ’042 patent”) in IPR2024-01398 (“the 1398 IPR”) and IPR2024-
`
`01399 (“the 1399 IPR”). In the 1398 IPR, Petitioner seeks to join Microsoft Corp. v.
`
`Proxense, LLC, IPR2024-00573 (“the Microsoft IPR”). In the 1399 IPR, Petitioner
`
`seeks to join Google LLC v. Proxense, LLC, IPR2024-00782 (“the Google IPR”).
`
`Since Petitioner has two concurrent petitions challenging the validity of the
`
`same patent, Petitioner hereby provides: (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.” Consolidated Trial Practice Guide (Nov. 2019) (“CTPG”), 60.
`
`II. Ranking of Petitions
`Petitioner believes that the petitions submitted in both the 1398 IPR and the
`
`1399 IPR are meritorious and justified. Should the Board decide to institute only a
`
`single petition and grant only a single motion for joinder against the ’042 patent,
`
`Petitioner requests that the Board institute Petitioner’s petition in the 1399 IPR and
`
`grant its Motion for Joinder of the Google IPR if the Board institutes that proceeding;
`
`otherwise, Petitioner requests that the Board institute Petitioner’s petition in the 1398
`
`IPR.
`
`
`
`1
`
`
`
`
`
`IPR2024-01398
`U.S. Patent No. 8,646,042
`
`III. Background and Related Proceedings
`On February 15, 2024, Microsoft filed a petition for review of the ’042 patent
`
`(“the Microsoft Petition”) in the Microsoft IPR. On June 10, 2024, Proxense, LLC
`
`(the “Patent Owner”) filed its patent owner’s preliminary response in the Microsoft
`
`IPR. On August 13, 2024, the Board granted institution of the Microsoft IPR.
`
`Separately, on April 19, 2024, Google filed a petition (“the Google Petition”)
`
`to challenge the validity of the ’042 patent in the Google IPR. The Patent Owner
`
`filed its preliminary response in the Google IPR on August 20, 2024, setting a
`
`deadline for the Board to issue an institution decision of November 20, 2024. 35
`
`U.S.C. § 315(b).
`
`IV. Material Differences Support Instituting Multiple Petitions
`Material differences exist between the Microsoft Petition and the Google
`
`Petition. As such, Petitioner’s petitions in the 1398 IPR and the 1399 IPR are
`
`likewise materially different. For example, and as illustrated in the tables below, the
`
`two petitions raise different invalidity grounds relying on different prior art
`
`combinations, and raise different arguments.
`
`IPR2024-01398 Petition (substantively identical to the Microsoft Petition)
`Ground Claim(s) Challenged 35 U.S.C. §
`Reference(s)
`1
`1, 5, 6, 8–11, 13, 14
`103
`Giobbi ’157, Giobbi ’139
`2
`1, 5, 6, 8–11, 13, 14
`103
`Giobbi ’157, Giobbi ’139, Dua
`
`
`
`2
`
`
`
`
`
`IPR2024-01398
`U.S. Patent No. 8,646,042
`
`3
`
`10, 11, 13, 14
`
`103
`
`Broadcom2
`
`
`
`IPR2024-01399 Petition (substantively identical to the Google Petition)
`Ground Claim(s) Challenged 35 U.S.C. §
`Reference(s)
`1
`10
`103
`Dua
`2
`10
`103
`Dua, Kotola
`3
`1, 3-6, 8-15, and 17
`103
`Buer2
`4
`2
`103
`Buer, Lee
`5
`12
`103
`Buer, Nishikawa
`6
`3 and 18-20
`103
`Buer, Hoffmann
`
`
`As shown in the above tables, Petitioner’s petition in the 1398 IPR challenges
`
`different claims of the ’042 patent based on significantly different invalidity grounds
`
`than its petition in the 1399 IPR.
`
`V. General Plastics Is Not Applicable
`In General Plastic Co., Ltd. v. Canon Kabushiki Kaisha, the Board
`
`“recognize[d] the potential for abuse of the review process by repeated attacks on
`
`patents.” IPR2016-01357, slip op. 16–17 (PTAB Sept. 6, 2017) (Paper 19)
`
`(precedential). In General Plastic, the Board set forth a series of factors that may be
`
`analyzed for follow-on petitions to help conserve the finite resources of the Board.
`
`The Board has applied the General Plastic framework to the joinder petition of a
`
`petitioner that previously filed its own petition. Apple Inc. v. Uniloc 2017 LLC,
`
`
`2 Buer and Broadcom are the same EP 1536306 reference.
`
`
`
`3
`
`
`
`
`
`IPR2024-01398
`U.S. Patent No. 8,646,042
`
`IPR2020-00854, Paper 9 (PTAB Oct. 28. 2020) (precedential); General Plastic
`
`Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB
`
`Sept. 6, 2017) (precedential).
`
`Petitioner respectfully submits that application of the General Plastic analysis
`
`is inapplicable here. Petitioner has not previously filed its own petition. Instead,
`
`Petitioner merely seeks to join an IPR—the Google IPR if the Board institutes, or
`
`otherwise the Microsoft IPR—that is already pending, and does not present any new
`
`grounds. As such, Petitioner respectfully submits that General Plastic does not apply
`
`in this circumstance because Petitioner would be taking an understudy role and the
`
`Board’s finite resources would not be impacted.
`
`VI. Conclusion
`Should the Board decide to institute only a single petition and grant only a
`
`single motion for joinder against the ’042 patent, Petitioner requests that the Board
`
`institute Petitioner’s petition in the 1399 IPR and grant its motion to join the Google
`
`IPR if the Board institutes that proceeding; otherwise, the Petitioner requests that the
`
`Board institute Petitioner’s petition in the 1398 IPR.
`
`
`
`
`
`
`
`
`
`
`
`4
`
`
`
`
`
`IPR2024-01398
`U.S. Patent No. 8,646,042
`
`Date: September 12, 2024
`
`Respectfully submitted,
`
`
`
`DUANE MORRIS LLP
`
`BY: /Philip W. Woo/
`Philip W. Woo
`USPTO Reg. No. 39,880
`Duane Morris LLP
`260 Homer Avenue #202
`Palo Alto, CA 94301
`
`ATTORNEY FOR PETITIONER
`
`
`
`
`
`5
`
`
`
`
`
`IPR2024-01398
`U.S. Patent No. 8,646,042
`
`CERTIFICATE OF SERVICE
`The undersigned certifies that a true and correct copy of the PETITIONER’S
`
`SUPPLEMENTAL PAPER AND NOTICE RANKING PETITIONS has been
`
`served via Federal Express, postage prepaid, to Patent Owner, by serving the
`
`correspondence address of record for the ’042 Patent:
`
`89194 - Patent Law Works/Proxense
`Greg Sueoka
`4516 South 700 East, Suite 290
`Salt Lake City, UT
`UNITED STATES
`
`and, by email, upon counsel of record for the Patent Owner in the litigation before
`
`the United States District Court for the Western District of Texas:
`
`Brian D. Melton
`Susman Godfrey, LLP
`1000 Louisiana St.
`Suite 5100
`Houston, TX 77002
`Email: bmelton@susmangodfrey.com
`
`
`Date: September 12, 2024
`
`
`
`
`BY: /Philip W. Woo/
`Philip W. Woo, Reg. No. 39,880
`Duane Morris LLP
`260 Homer Avenue #202
`Palo Alto, CA 94301
`P: (650) 847 4145
`F: (650) 644 0150
`pwwoo@duanemorris.com
`
`ATTORNEY FOR PETITIONER
`
`
`
`
`
`6
`
`
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