`
`IPR2025-00075
`U.S. Patent No. 9,679,289
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`APPLE INC.,
`
`Petitioner,
`
` v.
`
`PROXENSE, LLC,
`
`Patent Owner.
`_______________________
`
`Case No. IPR2025-00075
`
`U.S. Patent No. 9,679,289
`_____________________
`
`
`PETITIONER’S SUPPLEMENTAL PAPER AND NOTICE RANKING
`PETITIONS1
`
`
`
`1 Petitioner is filing a substantively identical document in IPR2025-00074.
`
`
`
`
`
`I.
`
`IPR2025-00075
`U.S. Patent No. 9,679,289
`
`Introduction
`Petitioner is concurrently filing petitions for inter partes review of U.S. Patent
`
`No. 9,679,289 (“the ’289 patent”) in IPR2025-00075 (“the 0075 IPR”) and IPR2025-
`
`00074 (“the 0074 IPR”). In the 0075 IPR, Petitioner seeks to join Google LLC v.
`
`Proxense, LLC, IPR2024-00783 (“the Google IPR”). In the 0074 IPR, Petitioner
`
`files a petition that is substantively identical to the petition in Microsoft Corp. v.
`
`Proxense, LLC, IPR2024-00407 (“the Microsoft 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 0074 IPR and the
`
`0075 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 ’289 patent,
`
`Petitioner requests that the Board institute Petitioner’s petition in the 0075 IPR and
`
`grant its Motion for Joinder of the Google IPR if the Board institutes that proceeding;
`
`
`
`1
`
`
`
`
`
`IPR2025-00075
`U.S. Patent No. 9,679,289
`
`otherwise, Petitioner requests that the Board institute Petitioner’s petition in the 0074
`
`IPR.
`
`III. Background and Related Proceedings
`On January 16, 2024, Microsoft filed a petition (“the Microsoft Petition”) to
`
`challenge the validity of the ’289 patent in the Microsoft IPR. On April 29, 2024,
`
`Proxense, LLC (the “Patent Owner”) filed its patent owner’s preliminary response
`
`in the Microsoft IPR. On July 22, 2024, the Board granted institution of the
`
`Microsoft IPR.
`
`Separately, on April 19, 2024, Google filed a petition for review of the ’289
`
`patent (“the Google Petition”) 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 Google Petition and the Microsoft
`
`Petition. As such, Petitioner’s petitions in the 0075 IPR and the 0074 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.
`
`IPR2025-00075 Petition (substantively identical to the Google Petition)
`Ground
`Claim(s) Challenged
`35 U.S.C. §
`Reference(s)
`1
`1-6, 8-11, and 14-19
`103
`Dua, Giobbi157
`
`
`
`2
`
`
`
`IPR2025-00075
`U.S. Patent No. 9,679,289
`
`2
`3
`4
`5
`
`1-6, 8-11, and 14-19
`1-7, 10-11, and 14-19
`4, 8-10, 12, 13, 17, and 20
`4
`
`103
`103
`103
`103
`
`Dua, Giobbi157, Kotola
`Buer
`Buer, Giobbi157
`Buer, Nishikawa
`
`
`
`
`
`
`
`1B
`
`2A
`2B
`
`IPR2025-00074 Petition (substantively identical to the Microsoft Petition)
`Ground
`Claim(s) Challenged
`35 U.S.C. §
`Reference(s)
`1A
`1-20
`103
`Giobbi-157 in view of
`Giobbi-139
`Giobbi-157 in view of
`Giobbi-139 and Dua
`Broadcom
`Broadcom in view of
`Giobbi-157
`
`1-20
`
`1-8, 10-11, and 14-19
`1-20
`
`103
`
`103
`103
`
`As shown in the above tables, Petitioner’s petition in the 0075 IPR challenges the
`
`claims of the ’289 patent based on significantly different invalidity grounds than its
`
`petition in the 0074 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.
`
`
`
`3
`
`
`
`
`
`IPR2025-00075
`U.S. Patent No. 9,679,289
`
`Petitioner respectfully submits that application of the General Plastic analysis
`
`is inapplicable here. Petitioner merely seeks to join the Google IPR and files a
`
`petition in the 0074 IPR that is substantively identical to the petition in the Microsoft
`
`IPR, both of which are already pending. As such, Petitioner respectfully submits that
`
`General Plastic does not apply in this circumstance because Petitioner would be
`
`taking an understudy role in the Google IPR, and because the 0074 IPR is
`
`substantively identical to the Microsoft IPR. As such, the Board’s finite resources
`
`would not be impacted. Moreover, a joinder petition in these circumstances is not
`
`the type of serial petition to which General Plastic applies. The PTAB has
`
`previously stated that a joinder petition “effectively neutralizes” a General Plastic
`
`analysis. See Apple Inc. v. Uniloc 2017 LLC, IPR2018-00580, Paper 13 at 10 (PTAB
`
`Aug. 21, 2018) (instituting a joinder petition where joinder petitioner previously
`
`filed a non-instituted IPR, stating joinder petitioner’s joinder motion agreeing to a
`
`passive understudy role “effectively neutraliz[es] the General Plastic factors”); see
`
`also Celltrion, Inc. v. Genentech, Inc., IPR2018-01019, Paper 11 at 10 (PTAB Oct.
`
`30, 2018) (instituting a joinder petition where joinder petition previously filed a non-
`
`instituted IPR, stating the joinder motion “effectively obviates any concerns of serial
`
`harassment and unnecessary expenditure of resources”).
`
`
`
`
`
`
`
`4
`
`
`
`
`
`IPR2025-00075
`U.S. Patent No. 9,679,289
`
`VI. Conclusion
`Should the Board decide to institute only a single petition and grant only a
`
`single motion for joinder against the ’289 patent, Petitioner requests that the Board
`
`institute Petitioner’s petition in the 0075 IPR and grant its motion to join the Google
`
`IPR; otherwise, the Petitioner requests that the Board institute Petitioner’s petition
`
`in the 0074 IPR.
`
`
`
`Date: November 4, 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
`
`
`
`
`
`IPR2025-00075
`U.S. Patent No. 9,679,289
`
`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 by Federal Express, to the Patent Owner, by serving the correspondence
`
`address of record as follows:
`
`Patent Law Works/Proxense
`Greg Sueoka
`4516 South 700 East, Suite 290
`Salt Lake City, UT 84107
`
`Additionally, a courtesy copy of the IPR and all supporting exhibits were
`
`emailed to counsel of record for the Patent Owner in the litigation before the
`
`United States District Court for the Western District of Texas:
`
`
`
`Date: November 4, 2024
`
`Brian D. Melton
`Susman Godfrey, LLP
`1000 Louisiana St.
`Suite 5100
`Houston, TX 77002
`Email: bmelton@susmangodfrey.com
`
`
`
`
`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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