IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BOSHERNITZAN et al.
`In re Patent of:
`9,996,738
`
`
`U.S. Patent No.:
`
`June 12, 2018
`Issue Date:
`
`Appl. Serial No.: 15/043,283
`
`Filing Date:
`February 12, 2016
`Title:
`SYSTEM AND METHOD FOR CONTROLLING A TERMINAL
`DEVICE
`
`
`
`
`
`
`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 UNITED STATES PATENT NO. 9,996,738
`
`
`
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`
`
`BOSHERNITZAN et al.
`In re Patent of:
`9,996,738
`
`
`U.S. Patent No.:
`
`June 12, 2018
`Issue Date:
`
`Appl. Serial No.: 15/043,283
`
`Filing Date:
`February 12, 2016
`Title:
`SYSTEM AND METHOD FOR CONTROLLING A TERMINAL
`DEVICE
`
`
`
`
`
`
`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 UNITED STATES PATENT NO. 9,996,738
`
`
`
`
`
`
`
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`IPR of U.S. Patent No. 9,996,738
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`
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`Per the Consolidated Trial Practice Guide (“Guide”), Petitioner Apple submits
`
`this Notice including (1) a ranking of the petitions in the order in which Apple wishes
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`the Board to consider the merits, and (2) a succinct explanation of the differences
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`between the petitions, why issues addressed by the differences are material, and why
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`the Board should use its discretion to institute both petitions if it identifies one
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`petition that satisfies Apple’s burden under 35 U.S.C. § 314(a). Apple offers the two
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`petitions with efficiencies of the Board in mind and requests consolidation of the
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`proceedings if both petitions are instituted to further simplify the proceedings.
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`I.
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`Ranking of Petitions
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`Apple presents two petitions, which address mutually exclusive groups of
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`’738 patent claims. Multiple petitions are justified by (1) the need to address all
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`claims of the ’738 patent to protect against suit due to Haptic’s refusal to stipulate to
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`non-assertion of any claims, (2) non-overlapping subject matter in the dependent
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`claims, (3) the length and complexity of the claims in the ’738 patent, (4) the
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`presence of multiple means-plus-function claim terms, and (5) the number of terms
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`for which multiple constructions have arisen in co-pending litigation due to Haptic’s
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`vastly different interpretation of numerous claim terms in the co-pending litigation.
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`Although both of Apple’s petitions are meritorious and justified, Apple
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`requests the Board to consider the Petitions according to the following ranking:
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`Rank Petition
`1
`IPR2024-01475
`(Petition 1)
`IPR2024-01476
`(Petition 2)
`
`2
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`IPR of U.S. Patent No. 9,996,738
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`Prior Art
`Claims
`1-2, 4-5, 8-11 Murakoshi, Li, Stewart, Sachs, Orr,
`iFixit
`3, 6-7, 12-13 Murakoshi, Stewart, Sachs, Orr
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`II. Material Differences Compelling Permitting Multiple Petitions
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`First, Apple is forced to address all claims of the ’738 patent because Haptic
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`refuses to provide assurances that non-asserted claims will not be added to the co-
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`pending district court litigation. Haptic has asserted claims 1-2, 4-5, and 9 of the
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`’738 patent in the co-pending litigation. Despite Apple’s attempts to streamline these
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`proceedings by requesting that Haptic stipulate to not assert other claims of the ’738
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`patent against Apple, Haptic has refused, further supporting the necessity of two
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`petitions. APPLE-1109; see Intex Recreation Corp. v. Bestway Inflatables &
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`Materials Corp., IPR2023-00488, Paper 12 at 14 (PTAB Oct. 2, 2023) (“Patent
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`Owner’s failure to stipulate that the claims challenged in the present petition will not
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`be asserted in the parallel District Court litigation supports our decision to decline
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`to exercise our discretion to deny institution”); Square, Inc. v. 4361423 Canada, Inc.,
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`IPR2019-01653, Paper 9 at 51 (May 12, 2020) (instituting a second petition where
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`“Patent Owner did not … stipulate that certain claims challenged in these Petitions
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`would not be asserted in the parallel litigation”). Accordingly, Apple is forced to
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`challenge all claims of the ’738 patent to protect itself from further suit.
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`IPR of U.S. Patent No. 9,996,738
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`
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`Second, the petitions address mutually exclusive groups of non-overlapping
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`claim sets. Petition 1 challenges claims 1-2, 4-5, and 8-11. Petition 2 challenges
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`claims 3, 6-7, and 12-13, which recite non-overlapping features such as “a spring
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`loaded portion” (claim 3) and “an additional sensor” with related additional
`
`components (claims 6-7 and 12). See Samsung Elecs. C., Ltd. v. Mojo Mobility, Inc.,
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`IPR2023-01089, Paper 11, 26 (“[W]e find persuasive Petitioner’s reasons for filing
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`two parallel petitions, particularly because the petitions challenge different claims
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`of the ’349 patent. In effect, the two petitions were filed instead of one merely
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`because our Rules have page limit restrictions”). Accordingly, the petitions present
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`materially different challenges, each to a unique non-overlapping subset of the ’738
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`patent’s claims that necessitate additional analyses and explanations.
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`Third, the ’738 patent’s claims are long: 1,296 words across 13 claims, with
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`independent claims 1 and 10 having 309 and 335 words, respectively, and dependent
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`claims 6 and 12 having 113 and 116 words, respectively. See Visa Inc. v. Cortex
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`MCP, Inc., IPR2024-00486, Paper 8 at 42 (PTAB Aug. 2, 2024) (instituting two
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`petitions where the Board agreed “the claims are relatively lengthy”—1,691 words
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`total and claim 1 having 257 words).
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`Fourth, claim 1, which is necessarily addressed in both petitions, includes
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`multiple means-plus-function limitations, including “engagement means” and
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`“means for initiating activity,” and other terms that include nonce words that should
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`IPR of U.S. Patent No. 9,996,738
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`
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`be subject to § 112(f). See Cisco Sys., Inc. v. Lionra Techs., Ltd., IPR2023-00670,
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`Paper 10, 21 (PTAB Oct. 23, 2023) (instituting two petitions where “Petitioner
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`‘devote[d] a substantial portion’ of the 14,000 word-count limit to the potential
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`constructions of claims … under § 112, sixth paragraph”).
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`Fifth, Haptic’s interpretations of claim terms are vastly different from
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`Apple’s—and the plain language of the ’738 patent and claims, as evidenced by its
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`infringement contentions and the parties’ joint claim construction statement, further
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`necessitating different invalidity grounds that fully address the constructions. For
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`instance, Haptic’s infringement contentions map a “server” to various components
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`on the iPhone’s logic board resulting in the claimed housing and server being located
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`within the same device—a position unsupported by the ’738 patent. APPLE-1101,
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`20-28, 54-60; APPLE-1001, 5:22-28, 7:24-25, 9:35-43, Fig. 1. Similarly, Haptic’s
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`infringement contentions treat the term “said contact interaction being comprised of
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`an impact on said mounting surface” as broad enough to encompass tapping on a
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`back cover of an iPhone when the sensor is mounted inside the iPhone—directly in
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`opposition to Applicant’s position during prosecution. APPLE-1101, 12, 46;
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`APPLE-1002, 103-104, 133, 142-145.
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`Accordingly, two petitions are necessary to address each of the challenged
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`claims—including the asserted claims and those that Haptic refuses to stipulate will
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`not be later asserted—in sufficient detail. Guide, 59 (“[T]here may be circumstances
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`IPR of U.S. Patent No. 9,996,738
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`
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`in which more than one petition may be necessary.”); see Novartis Gene Therapies,
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`Inc. v. Genzyme Corp., IPR2023-01045, Paper 10 at 3-5 (PTAB Jan. 17, 2024)
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`(instituting multiple petitions and noting “[i]f we ‘discretionarily dismissed one
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`petition or the other, some claims of the [] patent would be left uncovered by any
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`ground alleged by Petitioner.’”) (quoting Marvell Semiconductor, Inc. v. Uniloc 2017
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`LLC, IPR2019-01349, Paper 9 at 14 (PTAB Feb. 4, 2020)); Apple, Inc. v. Seven
`
`Networks, LLC, IPR2020-00157, Paper 10 at 23-28 (PTAB Jun. 15, 2020) (granting
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`institution of multiple petitions for patent with 20 claims despite partial overlap in
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`challenged claims); Visa, Paper 8 at 42. Here, Apple has worked to fit as many claims
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`as possible into Petition 1, but because of non-overlapping limitations in the
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`dependent claims in Petition 2, Apple has presented mappings of these claims in a
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`second petition. Given the material differences between the claims addressed by the
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`two petitions, the Board should institute both petitions. Moreover, because the
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`petitions are filed simultaneously, they can track the same schedule post-institution,
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`maximizing the efficiency of depositions, briefing, and oral argument. See Intex,
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`Paper 12 at 14 (noting that proceedings for petitions filed simultaneously “can be
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`coordinated and that a similar or common schedule can be adopted, thus decreasing
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`the inconvenience to the Patent Owner”). Additionally, Apple uses the same expert
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`to support the petitions, so one deposition should suffice. Thus, Apple respectfully
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`requests that the Board institute Inter Partes Review on both petitions.
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`Dated: September 30, 2024
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`IPR of U.S. Patent No. 9,996,738
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`Respectfully submitted,
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`/W. Karl Renner/
`W. Karl Renner, Reg. No. 41,265
`Jennifer J. Huang, Reg. No. 64,297
`Kiersten Batzli, Reg. No. 75,476
`Fish & Richardson P.C.
`60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
`
`Attorneys for Petitioner
`
`
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