Case 6:21-cv-01101-ADA Document 73-11 Filed 01/19/23 Page 1 of 72
`Case 6:21-cv-01101-ADA Document 73-11 Filed 01/19/23 Page 1 of 72
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`EXHIBIT I
`EXHIBITI
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`Case 6:21-cv-01101-ADA Document 73-11 Filed 01/19/23 Page 2 of 72
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`———————
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`———————
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`AIRE TECHNOLOGY LIMITED,
`Patent Owner.
`———————
`
`IPR2022-01135
`U.S. Patent No. 8,205,249
`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. § 312 AND 37 C.F.R. § 42.104
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`Case 6:21-cv-01101-ADA Document 73-11 Filed 01/19/23 Page 3 of 72
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`IPR2022-01135 Petition
`Inter Partes Review of U.S. 8,205,249
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`TABLE OF CONTENTS
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`PETITIONER’S EXHIBIT LIST .............................................................................. 5
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`I.
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`II.
`
`INTRODUCTION ........................................................................................... 7
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`GROUNDS FOR STANDING ........................................................................ 8
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`III. NOTE ............................................................................................................... 8
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`IV. SUMMARY OF THE ’249 PATENT ............................................................. 8
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`V.
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`PROSECUTION HISTORY .........................................................................11
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`VI. LEVEL OF ORDINARY SKILL IN THE ART ...........................................13
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`VII. CLAIM CONSTRUCTION ..........................................................................14
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`VIII. RELIEF REQUESTED AND THE REASONS FOR THE
`REQUESTED RELIEF .................................................................................16
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`IX. DISCRETIONARY DENIAL WOULD BE INAPPROPRIATE .................16
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`A. Discretionary denial under the Fintiv factors is not appropriate ........ 16
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`1.
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`2.
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`3.
`
`4.
`
`5.
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`6.
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`No evidence regarding a stay ................................................... 16
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`Parallel proceeding trial date ................................................... 17
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`Investment in the parallel proceeding ...................................... 17
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`Overlapping issues with the parallel proceeding ..................... 18
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`Petitioner is a defendant ........................................................... 19
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`Other circumstances ................................................................. 19
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`The Fintiv Framework Should Be Overturned................................... 19
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`Discretionary denial under General Plastic is not appropriate .......... 20
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`B.
`
`C.
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`2
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`Case 6:21-cv-01101-ADA Document 73-11 Filed 01/19/23 Page 4 of 72
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`IPR2022-01135 Petition
`Inter Partes Review of U.S. 8,205,249
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`1. Whether the same petitioner previously filed a petition
`directed to the same claims of the same patent. ....................... 20
`
`2. Whether at the time of filing of the first petition the
`petitioner knew of the prior art asserted in the second
`petition or should have known of it. ........................................ 22
`
`3. Whether at the time of filing of the second petition the
`petitioner already received the patent owner’s
`preliminary response to the first petition or received the
`Board’s decision on whether to institute review in the
`first petition. ............................................................................. 23
`
`4.
`
`5.
`
`Fourth and fifth factors are inapplicable. ................................. 23
`
`The finite resources of the Board and the requirement
`under 35 U.S.C. § 316(a)(11). .................................................. 23
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`D. Discretionary denial under 35 U.S.C. § 325(d) is not appropriate .... 23
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`X.
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`IDENTIFICATION OF HOW THE CLAIMS ARE UNPATENTABLE ....24
`
`A.
`
`B.
`
`C.
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`Challenged Claims ............................................................................. 24
`
`Statutory Grounds for Challenges ...................................................... 24
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`Ground 1: Claims 1-12 are obvious under 35 U.S.C. § 103 over
`Burger and Cheng. .............................................................................. 25
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
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`Summary of Burger .................................................................. 25
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`Summary of Cheng .................................................................. 30
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`Reasons to Combine Burger and Cheng .................................. 32
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`Claim 1 ..................................................................................... 38
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`Claim 2 ..................................................................................... 55
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`Claim 3 ..................................................................................... 56
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`3
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`IPR2022-01135 Petition
`Inter Partes Review of U.S. 8,205,249
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`7.
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`8.
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`9.
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`Claim 4 ..................................................................................... 57
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`Claim 5 ..................................................................................... 57
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`Claim 6 ..................................................................................... 58
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`10. Claim 7 ..................................................................................... 60
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`11. Claim 8 ..................................................................................... 61
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`12. Claim 9 ..................................................................................... 63
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`13. Claim 10 ................................................................................... 65
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`14. Claim 11 ................................................................................... 66
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`15. Claim 12 ................................................................................... 67
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`XI. CONCLUSION ..............................................................................................67
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`XII. MANDATORY NOTICES ...........................................................................68
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`A.
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`B.
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`C.
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`Real Party-in-Interest ......................................................................... 68
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`Related Matters ................................................................................... 68
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`Lead and Back-up Counsel and Service Information ........................ 68
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`CERTIFICATE OF WORD COUNT ......................................................................70
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`CERTIFICATE OF SERVICE ................................................................................71
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`4
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`Case 6:21-cv-01101-ADA Document 73-11 Filed 01/19/23 Page 6 of 72
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`Ex.1001
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`Ex.1002
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`Ex.1003
`Ex.1004
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`Ex.1005
`Ex.1006
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`Ex.1007
`
`Ex.1008
`Ex.1009
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`Ex.1010
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`Ex.1011
`Ex.1012
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`Ex.1013
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`Ex.1014
`Ex.1015
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`Ex.1016
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`Ex.1017
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`Ex.1018
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`IPR2022-01135 Petition
`Inter Partes Review of U.S. 8,205,249
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`PETITIONER’S EXHIBIT LIST
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`U.S. Patent No. 8,205,249
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`Prosecution History of U.S. Patent No. 8,205,249
`
`Declaration of Dr. Clifford Neuman under 37 C.F.R. § 1.68
`Curriculum Vitae of Dr. Clifford Neuman
`
`U.S. Patent No. 7,080,037 to Burger et al.
`U.S. Application Publication No. 2004/0039909 to Cheng
`
`U.S. Application Publication No. 2003/0101348 to Russo et al.
`
`U.S. Patent No. 7,127,606 to Wheeler et al.
`U.S. Patent No. 7,260,724 to Dickinson et al.
`
`U.S. Patent No. 6,941,285 to Sarcanin
`
`U.S. Patent No. 5,422,953 to Fischer
`U.S. Patent No. 7,941,669 to Foley et al.
`
`U.S. Patent No. 7,137,008 to Hamid et al.
`
`U.S. Patent No. 5,721,781 to Deo et al.
`U.S. Application Publication No. 2002/0016913 to Wheeler et al
`
`Complaint, Aire Technology Ltd. v. Apple Inc. 6-21-cv-01101
`(W.D. Tex. Oct. 22, 2021)
`Complaint, Aire Technology Ltd v. Samsung Electronics Co., Ltd.,
`6:21-cv-00955 (W.D. Tex. Sep. 15, 2021)
`Plaintiff’s Preliminary Disclosure of Asserted Claims and
`Infringement Contentions To Defendant Apple Inc, Aire
`Technology Ltd. v. Apple Inc. 6-21-cv-01101 (W.D. Tex. Oct. 22,
`2021)
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`Case 6:21-cv-01101-ADA Document 73-11 Filed 01/19/23 Page 7 of 72
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`IPR2022-01135 Petition
`Inter Partes Review of U.S. 8,205,249
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`Standing Order Governing Proceedings (OGP) 4.1 – Patent Cases
`(W.D. Tex.) (filed Apr. 14, 2022)
`Scheduling Order, Aire Technology Ltd. v. Apple Inc. 6-21-cv-
`01101 (W.D. Tex. Oct. 22, 2021)
`Kohl et al., rfc1510, The Kerberos Network Authentication Service
`(V5) (1993)
`
`Ryutov et al., Access control framework for distributed
`applications (2000)
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`
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`
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`Ex.1019
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`Ex.1020
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`Ex.1021
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`Ex.1022
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`Case 6:21-cv-01101-ADA Document 73-11 Filed 01/19/23 Page 8 of 72
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`I.
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`INTRODUCTION
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`IPR2022-01135 Petition
`Inter Partes Review of U.S. 8,205,249
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`U.S. Patent No. 8,205,249 (the “’249 patent,” Ex.1001) is directed to user
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`authentication in the context of an electronic transaction. The background of the
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`’249 explains that it was common for a user of a chip card to establish proof of
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`their identity using several different methods, including by entering a PIN or
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`analyzing a biometric feature, e.g., a fingerprint. Ex.1001, 1:15-30. According to
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`the ’249 patent, these different methods are of different “quality.” Ex.1001, 1:36-
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`38. The alleged invention of the ’249 patent simply takes into account the “quality
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`of the user authentication performed” when several different authentication
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`methods are available. Ex.1001, 1:39-42. Accounting for the “quality” of an
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`authentication method, however, was already well known in the prior art. For
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`example, U.S. Publication No. 2004/0039909 to Cheng teaches assigning
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`“authentication levels” to authentication methods based on a “confidence in
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`security.” Ex.1006, [0033]; see also, e.g., Ex.1009, 34:51-35:35 (accounting for the
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`“reliability of the authentication technique being used”); Ex.1007, [0051]
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`(generating a “Authentication Trust Metric” that “indicates a degree of confidence
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`in the security of a method of authentication”).
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`Accordingly, pursuant to 35 U.S.C. §§ 311, 314(a), and 37 C.F.R. § 42.100,
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`Apple Inc. (“Petitioner”) respectfully requests that the Board review and cancel as
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`unpatentable under (pre-AIA) 35 U.S.C. §103(a) claims 1-12 (hereinafter, the
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`IPR2022-01135 Petition
`Inter Partes Review of U.S. 8,205,249
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`“Challenged Claims”) of the ’249 patent.
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`II. GROUNDS FOR STANDING
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`Petitioner certifies that the ’249 patent is eligible for IPR and that Petitioner
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`is not barred or estopped from requesting IPR challenging the patent claims. 37
`
`C.F.R. § 42.104(a).
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`III. NOTE
`Petitioner cites to exhibits’ original page numbers. Emphasis in quoted
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`material has been added. Claim terms are presented in italics.
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`IV. SUMMARY OF THE ’249 PATENT
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`The ’249 patent generally relates to “secure authentication of a user of a
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`portable data carrier communicating with a terminal.” Ex.1001, 1:9-10. The
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`portable data carrier may, for example, be a “chip card” carried by a user for use in
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`a secure electronic transaction effected between the terminal and the portable data
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`carrier. Ex.1001, 3:3-9, Abstract. Fig. 1 of the ’249 patent, annotated below,
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`illustrates the portable data carrier and the terminal.
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`IPR2022-01135 Petition
`Inter Partes Review of U.S. 8,205,249
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`terminal
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`portable data carrier
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`user
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`Ex.1001, Fig. 1 (annotated); Ex.1003, ¶ 34.
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`
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`The ’249 patent explains that the “portable data carrier 20 is further set up to
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`perform … a plurality of different quality user authentication methods.” Ex.1001,
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`3:22-26. For example, the portable data carrier “expediently supports at least one
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`knowledge-based authentication method, e.g., a PIN check, and at least one
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`biometric method.” Ex.1001, 3:26-28. The ’249 patent notes that the “biometric
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`method inherently constitutes the higher-quality one here, since it presupposes the
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`personal presence of the user 30; this is not ensured in the knowledge-based
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`method since the knowledge can have been acquired by an unauthorized user.”
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`IPR2022-01135 Petition
`Inter Partes Review of U.S. 8,205,249
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`Ex.1001, 3:29-34.
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`With reference to Figs. 2 and 3, the ’249 patent describes using the portable
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`data carrier in the context of a secure electronic transaction—where Fig. 2
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`illustrates user authentication with a PIN-based method and Fig. 3 illustrates user
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`authentication with a biometric-based method. In steps 114/116 (Fig. 2) and steps
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`134-140 (Fig. 3), the portable data carrier respectively receives either the PIN or
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`biometric, e.g., fingerprint, input by the user and either “checks the transmitted
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`PIN” or “compares the received extracted [fingerprint] features with the reference
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`features stored in the storage means and checks whether a sufficient match is
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`present.” Ex.1001, 4:19-64. If the PIN or fingerprint is a match with the stored
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`values, the portable data carrier “confirms the correctness to the terminal” in steps
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`117 and 142, respectively. Ex.1001, 4:27-28, 4:64-67. In steps 118 and 144, the
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`portable data carrier “perform[s] the security-establishing operation, i.e. the digital
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`signature.” Ex.1001, 4:30-32, 5:1-6. The ’249 patent explains that this step “is not
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`restricted to … a digital signature” and may more generally include, for example,
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`the portable data carrier “subject[ing] a supplied data record 40 … to a
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`cryptographic algorithm, whereby it uses at least one secret key stored in the
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`storage means 26.” Ex.1001, 2:28-33, 3:16-20.
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`Further, in step 148 of Fig. 3, the portable data carrier “forms quality
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`Case 6:21-cv-01101-ADA Document 73-11 Filed 01/19/23 Page 12 of 72
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`information,” where the “quality information is about the quality of the previously
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`IPR2022-01135 Petition
`Inter Partes Review of U.S. 8,205,249
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`performed user authentication.” Ex.1001, 5:15-17, 5:39-41. As discussed above,
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`the ’249 patent alleges that previous methods did not generate or take into account
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`such quality information. Ex.1001, 1:36-38 (“However, the thereby realized quality
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`difference with regard to user authentication is hitherto not reflected in the
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`usability of the particular electronic signature produced.”). Then in step 150, a
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`“security message consisting of digital signature and quality information is sent by
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`the portable data carrier 20 back to the terminal 14.” Ex.1001, 5:21-23.
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`V.
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`PROSECUTION HISTORY
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`The ’249 patent was filed in the U.S. on April 24, 2006 as a national stage
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`entry of PCT Publication No. WO2004/038665, filed October 23, 2003. The PCT
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`application claims priority to German application DE10249801 filed October 24,
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`2002. The ’249 patent issued on June 19, 2012. It is unnecessary to determine
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`whether the ’249 patent is entitled to its earliest alleged priority date because the
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`prior art relied upon herein pre-dates the earliest alleged priority date.
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`During a prolonged prosecution that included a Notice of Appeal, the
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`Examiner rejected the pending application over numerous references, including
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`U.S. Patent Application No. 2003/0101348 to Russo (“Russo”) Ex.1007 that
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`teaches the allegedly novel aspect of the ’249 patent. Ex.1002, 402. Specifically,
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`with respect to the claimed “authentication quality information,” the Examiner
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`pointed to Russo’s teaching of an “Authentication Trust Metric” that indicates a
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`IPR2022-01135 Petition
`Inter Partes Review of U.S. 8,205,249
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`“degree of confidence in the security of a method of authentication.” Ex.1002, 402-
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`404 (citing Ex.1007, [0046], [0051]). In response, the Applicants explicitly
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`acknowledged that “the trust metric Russo [] may be interpreted to represent the
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`authentication quality information of the present invention.” Ex.1002, 387.
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`Despite this admission, Applicants eventually overcame the rejection by arguing
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`Russo did not teach various other limitations in the pending claims. Ex.1002, 385-
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`88.
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`The Examiner replaced Russo with U.S. Application Publication No.
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`2002/0016913 to Wheeler (Ex.1015) and maintained his rejection over Wheeler
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`through a Non-Final Rejection, a Final Rejection, an Advisory Action, and a
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`Notice of Appeal. Ex.1002, 352-59, 313-22, 301-03, 289. By the Pre-Appeal
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`Conference, Applicants had narrowed down their argument to a single issue—
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`whether Wheeler taught the claimed “authentication quality information.”
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`Ex.1002, 292-95. Specifically, Applicants argued that “Wheeler represents the
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`quality of the match for different executions of a particular authentication method,”
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`whereas the claims “relate to the quality of the user authentication method, itself.”
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`Ex.1002, 293-94 (emphasis in original). Based on this argument, the Examiner re-
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`opened prosecution and allowed the application. Ex.1002, 286, 256-58. In other
`
`words, the ’249 patent was allowed because Wheeler allegedly did not teach the
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`Case 6:21-cv-01101-ADA Document 73-11 Filed 01/19/23 Page 14 of 72
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`“quality information” that Applicants had already admitted was taught by Russo:
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`IPR2022-01135 Petition
`Inter Partes Review of U.S. 8,205,249
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`“[T]he trust metric Russo [] may be interpreted to represent the authentication
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`quality information of the present invention.” Ex.1002, 387. Accordingly, the
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`Examiner erred in allowing the ’249 patent.
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`As illustrated in this petition, Russo’s trust metric is just one example of
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`authentication quality information in the prior art. See, e.g., Ex.1006, [0033]
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`(describing “authentication levels” corresponding to authentication methods based
`
`on a “level of confidence in security”); Dickenson, 34:51-35:35 (accounting for the
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`“inherent reliability of the authentication technique being used”).
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`VI. LEVEL OF ORDINARY SKILL IN THE ART
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`A person of ordinary skill in the art (“POSITA”) in the field of the ’249
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`patent, as of Oct. 24, 2002, would have been someone knowledgeable and familiar
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`with the secure electronic transaction arts that are pertinent to the ’249 patent. That
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`person would have at least a four-year degree in electrical engineering, computer
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`engineering, computer science, or a related field and two years of relevant
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`experience in computer security, and developing, implementing, or deploying
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`portable devices on systems connected to computer networks. A Master’s or Ph.D.
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`degree in a relevant field may substitute for some work experience and greater
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`experience might substitute for a four-year degree. Ex.1003, ¶ 18.
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`Case 6:21-cv-01101-ADA Document 73-11 Filed 01/19/23 Page 15 of 72
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`VII. CLAIM CONSTRUCTION
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`IPR2022-01135 Petition
`Inter Partes Review of U.S. 8,205,249
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`In an inter partes review, claims “shall be construed using the same claim
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`construction standard that would be used to construe the claim in a civil action
`
`under 35 U.S.C. 282(b), including construing the claim in accordance with the
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`ordinary and customary meaning of such claim as understood by one of ordinary
`
`skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. §
`
`42.100(b). The Board only construes the claims to the extent necessary to resolve
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`the underlying controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
`
`Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Petitioner submits that for the purposes
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`of this proceeding, the terms of the challenged claims should be given their plain
`
`and ordinary meaning, and no terms require specific construction.1 Ex.1003, ¶ 38.
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`Petitioner notes that for the term “an inherently relatively lower quality and
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`an inherently relatively higher quality from a security perspective” in claims 1 and
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`10, Petitioner and Patent Owner have proposed the following constructions in
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`District Court:
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`
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`1 Petitioner does not concede that any term in the challenged claims meets the
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`statutory requirements of 35 U.S.C. § 112, or that the challenged claims recite
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`patentable subject matter under 35 U.S.C. § 101.
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`Patent Owner
`No construction necessary.
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`IPR2022-01135 Petition
`Inter Partes Review of U.S. 8,205,249
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`Petitioner
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`Indefinite.
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`For the purposes of this proceeding, Petitioner adopts Patent Owner’s
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`constructions for the above term. See 37 C.F.R. § 42.104(b)(3) (requiring the
`
`petition to set forth only “how the challenged claim is to be construed”); see also
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`Google LLC v. AGIS Software Devel., LLC, IPR2018-01083, Paper 10 at 10-11
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`(Jan. 10, 2019) (explaining that the language of § 42.104(b)(3) “does not refer to
`
`belief in the correctness of the construction” and instituting because the “Petition
`
`sets forth with sufficiency [Petitioner’s] assertions as to how the claims are to be
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`construed in this proceeding”); Hospira, Inc. et al. v. Amgen Inc., IPR2021-00528,
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`Paper 7 at 7 (Aug. 17, 2021) (“Whether Petitioner ultimately argues that the
`
`proposed claim constructions it seeks to adopt for this proceeding will render the
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`claims indefinite is immaterial insofar as indefiniteness is not an unpatentability
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`ground that can be asserted in an inter partes review petition.”).
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`Regardless of the indefiniteness of the term, claim 1 is still rendered obvious
`
`by art cited in this petition. For example, any uncertainty as to the outer boundaries
`
`of the term claim does not preclude application of prior art that discloses the same
`
`authentication methods as described in the ’249 patent. Compare Ex.1001, 3:55-
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`62, Figs. 2, 3 (describing a “PIN check” and a “fingerprint check”) with Ex.1005,
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`12:9-25 (describing a “PIN code” and a “fingerprint scan”).
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`Case 6:21-cv-01101-ADA Document 73-11 Filed 01/19/23 Page 17 of 72
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`IPR2022-01135 Petition
`Inter Partes Review of U.S. 8,205,249
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`VIII. RELIEF REQUESTED AND THE REASONS FOR THE
`REQUESTED RELIEF
`
`Petitioner asks that the Board institute a trial for inter partes review and
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`cancel the Challenged Claims in view of the analysis below.
`
`IX. DISCRETIONARY DENIAL WOULD BE INAPPROPRIATE
`A. Discretionary denial under the Fintiv factors is not appropriate
`
`The six factors considered for § 314 denial strongly favor institution. See
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`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020)
`
`(precedential). The district court case is at an early stage—the claims have not yet
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`been construed nor has fact discovery opened. Petitioner has diligently prepared
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`and filed this petition within five months of being served Patent Owner’s
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`preliminary infringement contentions. Ex.1018, 6. The petition is also well within
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`the one-year timeframe allowed by Congress.
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`1. No evidence regarding a stay
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`No motion to stay has been filed, so the Board should not infer the outcome
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`of such a motion. Sand Revolution II LLC v. Continental Intermodal Group –
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`Trucking LLC, IPR2019-01393, Paper 24 at 7 (PTAB June 16, 2020)
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`(informative); see also Dish Network L.L.C. v. Broadband iTV, Inc., IPR2020-
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`01359, Paper 15 at 11 (Feb. 12, 2021) (“It would be improper to speculate, at this
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`stage, what the Texas court might do regarding a motion to stay…”). Thus, this
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`IPR2022-01135 Petition
`Inter Partes Review of U.S. 8,205,249
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`factor is neutral on discretionary denial.
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`2. Parallel proceeding trial date
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`The co-pending litigation is at an early stage. The district court’s scheduling
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`order currently sets the trial date for July 20, 2023, and the Markman hearing for
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`July 18, 2022. Ex.1013, 5. This trial date is uncertain. Petitioner has filed a motion
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`to transfer the case to the Northern District of California. Per a Standing Order
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`entered by the district court Judge, if the district court has not resolved the motion
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`to transfer prior to the Markman hearing, the district court will postpone the
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`Markman hearing. Ex.1014, 5-6. Patent Owner’s opposition to the venue motion is
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`due July 7 and Petitioner’s reply to that opposition is due July 31—after the
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`scheduled Markman hearing. Accordingly, the Markman hearing will be
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`postponed. Additionally, if the district court grants the transfer motion, then the
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`current schedule will be vacated. See Sand Revolution II at 8-10, 14 (uncertainty
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`over district court’s trial date weighed against discretionary denial).
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`3. Investment in the parallel proceeding
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`The investment in the co-pending litigation has been minimal. As mentioned
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`above, a claim construction hearing has not yet occurred, fact discovery has not yet
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`commenced and will not close until February 2023, and expert discovery has not
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`commenced and will not close until April 2023. Ex.1020, 4; see PEAG LLC v.
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`Varta Microbattery GmbH, IPR2020-01214, Paper 8 at 17 (Jan. 6, 2021). This lack
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`of investment favors institution.
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`Moreover, Petitioner only learned which claims were being asserted on
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`January 20, 2022. See Ex.1018, 1 (preliminary infringement contentions). Since
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`then, Petitioner has worked expeditiously to file this petition. And, as of this filing,
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`Patent Owner has not yet served its final infringement contentions. Under Fintiv,
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`Petitioner’s prompt filing “weigh[s] against exercising the authority to deny
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`institution.” Fintiv, Paper 11 at 11 (“If the evidence shows that the petitioner filed
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`the petition expeditiously, such as promptly after becoming aware of the claims
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`being asserted, this fact has weighed against exercising the authority to deny
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`institution under NHK.”); see also Apple Inc. v. Koss Corporation, IPR2021-
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`00592, Paper 9 at 16 (PTAB Aug. 23, 2021) (“It was reasonable in this proceeding
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`for Petitioner to take about four months after the preliminary infringement
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`contentions to prepare and file the Petition.”).
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`4. Overlapping issues with the parallel proceeding
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`Because the co-pending litigation is in its early stages, Petitioner’s invalidity
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`positions have not yet been fully developed—only the preliminary invalidity
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`contentions have been served. Final invalidity contentions are not due until
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`September 15, 2022. Ex.1020, 3. The extent of overlap is thus speculative at this
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`point in time.
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`Case 6:21-cv-01101-ADA Document 73-11 Filed 01/19/23 Page 20 of 72
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`5. Petitioner is a defendant
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`Petitioner is a defendant in the co-pending litigation. That is true of most
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`Petitioners in IPR proceedings, making this factor neutral. See HP Inc. v. Slingshot
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`Printing LLC, IPR2020-01084, Paper 13 at 9 (PTAB Jan. 14, 2021) (having the
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`“same parties as parallel proceeding” makes factor 5 “neutral”).
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`6. Other circumstances
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`The prior art presented in this Petition renders the Challenged Claims
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`unpatentable as obvious. The merits of Petitioner’s arguments are strong.
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`Moreover, Patent Owner has engaged in a campaign of asserting the ’249 patent
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`against multiple defendants across the industry, including Samsung Electronics Co.
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`and Google LLC. See infra Section XII.B. There is thus a strong public interest in
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`the Office adjudicating the validity of the claims here. This factor weighs against
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`discretionary denial.
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`As such, because the Fintiv factors are either neutral or weigh against
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`discretionary denial, and because this Petition was filed well before the statutory
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`bar date, institution should not be denied on discretionary factors.
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`B.
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`The Fintiv Framework Should Be Overturned
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`Apart from Petitioner’s showing that the Fintiv factors favor institution, the
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`Fintiv framework should be overturned because it (1) exceeds the Director’s
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`authority, (2) is arbitrary and capricious, and (3) was adopted without notice-and-
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`comment rulemaking.
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`C. Discretionary denial under General Plastic is not appropriate
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`On September 15, 2021, Patent Owner filed suit against Samsung
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`Electronics Co., Ltd. et al (“Samsung”). More than five weeks later, on October 22,
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`2021, Patent Owner filed suit against Petitioner Apple. On April 22, 2022,
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`Samsung filed inter partes review proceeding IPR2022-00875 against the ’249
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`patent (the “Samsung IPR”). Apple was not involved in preparing and filing the
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`Samsung IPR.
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`Discretionary denial of this petition would unfairly deprive Apple of access
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`to inter partes review with respect to the ’249 patent. Patent Owner separately sued
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`Apple, alleging infringement by Apple products. Ex.1016, 1-5. This Petition
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`presents new grounds and prior art not found in the Samsung IPR. Moreover, this
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`is Apple’s first challenge to the claims of the ’249 patent.
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`The Board considers the General Plastic factors when multiple petitions are
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`filed against the same patent. Here, all factors weigh in favor of institution.
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`Whether the same petitioner previously filed a petition
`1.
`directed to the same claims of the same patent.
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`This factor weighs against denial because Apple is a different petitioner than
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`the petitioner in the Samsung IPR. Moreover, there is not a significant relationship
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`between Samsung and Apple. Although the Board held in Valve Corp. v. Elec.
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`Scripting Prods., Inc., IPR2019-00062, Paper 11 (PTAB Apr. 2, 2019)
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`(precedential) that the application of the first Generic Plastic factor is not limited
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`to instances where multiple petitions are filed by the same petitioner, the facts here
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`are distinguishable from Valve. First, in Valve, both the petitioner (Valve) and
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`HTC (who filed the earlier IPR) were co-defendants in the same district court case
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`and were accused of infringing the patent-at-issue based on the same product. See
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`Valve, Paper 11, at 9. However, in the present case, petitioners were sued
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`separately and accused of infringement based on different products. Compare
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`Ex.1016, 5 with Ex.1017, 5. Additionally, Patent Owner elected to file suit against
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`Apple more than five weeks after Samsung.
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`The Board routinely finds that “General Plastic and Valve do not apply” to
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`the circumstances here, where the petitioners were sued independently, were sued
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`on different products, and have no significant relationship. See, e.g., NetNut Ltd. v.
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`Bright Data Ltd., IPR2021-00465, Paper 11 at 8-11 (PTAB Aug. 12, 2021)
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`(“NetNut”) (“Under these circumstances, we decline to extend General Plastic and
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`Valve to the situation here: where a follow-on petition is filed by a petitioner who
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`is not the same as previous petitioners and does not have any relationship, much
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`less a significant relationship, with previous petitioners.”); Sony Mobile Commc’ns
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`AB. v. Ancora Techs., Inc., IPR2021-00663, Paper 17, 7-11 (PTAB Jun. 10, 2021)
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`(“Sony Mobile”); Shenzhen AOTO Elecs. Co., Ltd. v. Ultravision Techs., LLC,
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`IPR2021-00190, Paper 7, 14-16 (PTAB Jun. 9, 2021).
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`Furthermore, the attorneys preparing this IPR have not coordinated with
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`Samsung in doing so. See Twitter, Inc., v. Palo Alto Research Center Inc.
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`IPR2021-01458, Paper 11 at 33 (PTAB April 6, 2022) (declining to discretionarily
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`deny the petition under General Plastic and finding that there was no evidence that
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`Petitioner had coordinated with previous filers).
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`Accordingly, with no significant relationship between Apple and Samsung,
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`this factor heavily weighs against discretionary denial.
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`Whether at the time of filing of the first petition the
`2.
`petitioner knew of the prior art asserted in the second petition or
`should have known of it.
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`Because Apple is not a petitioner in the Samsung IPR, factor 2 “is of little
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`probative value.” NetNut, 9 (“Because Petitioner was not a petitioner in previous
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`proceedings … whether Petitioner knew of or should have known of the asserted
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`references at the time of the prior petition, is of little probative value.”); Western
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`Digital Corp. v. Spex Technologies