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`Paper No. 10
`IPR2019-00251
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`
`
`Case IPR2019-00251
`Patent 6,993,049 B2
`
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION
`TO FILE SUPPLEMENTAL INFORMATION
`
`
`
`Paper No. 10
`IPR2019-00251
`Petitioner Apple’s Motion to File Supplemental Information (“Mot.” or
`“Motion”) should be rejected as failing to address or even mention the two basic
`questions set forth in the Board’s authorization, emailed on August 27, 2019. The
`Board’s authorization clearly stated “[t]he papers should address why the
`supplemental information reasonably could not have been obtained earlier, and why
`consideration of the supplemental information would be in the interests-of-justice.”
`Rather than address why the supplemental information reasonably could not
`have been obtained earlier, as ordered by the Board, Apple defies the Board by
`challenging the relevance of the question itself. Mot. 1. Apple purports to justify its
`stance by pointing to Rule 42.123(a) and a non-precedential opinion. Id. (citing
`IPR2014-01204, Paper 26, 4). However, nothing in the cited rule (or the non-
`precedential opinion for that matter) proscribes the Board from ordering the movant
`to provide certain information the Board deems useful to its discretionary decision.
`The PTAB considered a similar a motion to submit supplemental information
`under 37 C.F.R. § 42.123(a) in IPR2017-01541, Paper 14. The Board there observed
`that “the requirements laid out in 37 C.F.R. § 42.123(a) do not prohibit us from
`exercising discretion.” Id. at 3 (citing Redline Detection, 811 F.3d 435, 446–49 (Fed.
`Cir. 2015)). In denying the motion, the Board further explained that “Petitioner has
`not sufficiently persuaded us why the supplemental information could not have been
`filed with the Petition or why granting such a motion would be more than an
`opportunity ‘to supplement a petition after initial comments or arguments have been
`laid out by a patent owner.’” Id. (citing IPR2014–00561, Paper 23 at 3, which quotes
`Redline, 811 F.3d at 448).
`
`
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`1
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`Paper No. 10
`IPR2019-00251
`There is a simple explanation for why Apple avoided the specific question the
`Board ordered Apple to address. The facts here confirm that Apple reasonably could
`have obtained—and admittedly did obtain—the information much earlier.
`Apple cited the same reference at issue (Ex. 1014, which Petitioner refers to
`as the BT Core document) well over a year ago in IPR2018-01092, filed on May 29,
`2018. Apple fails to explain why it took nearly a year (i.e., in the time since Apple
`filed the instant Petition) for Apple to seek to submit the supplemental information
`in question, in an attempt to cure deficiencies of this same reference.
`Furthermore, Apple alleges it merely seeks to submit a declaration similar to
`what it had previously submitted as Exhibit 1008 in IPR2019-1337, filed on July 16,
`2019. Mot. 3. Apple fails to explain how the same supplemental information
`reasonably could not have been obtained earlier when in fact it was obtained earlier
`and indeed deemed ready for filing as early as July 16, 2019.
`Apple spills much ink (about a third of its Motion) challenging Uniloc’s
`characterization of its preliminary response filed in that matter, which is dated Oct.
`16, 2018, and hence before Apple filed the instant Petition. In doing so, Apple seems
`to suggest that its obligation to “adhere to the requirement that the initial petition
`identify with particularity the evidence that supports the grounds for the challenge to
`each claim” only arises if Uniloc had previously included certain magical language
`in responding to a different matter relying on the same reference. See Wasica
`Finance, 853 F.3d 1272, 1286-87 (Fed. Cir. 2017) (citations omitted). Not so.
`In the preliminary response in question, and citing its expert’s testimony,
`Uniloc at least brought to the attention of both the Board and Apple, before Apple
`
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`Paper No. 10
`IPR2019-00251
`filed the instant Petition, that (1) “it disputes [Apple]’s allegation that a person of
`ordinary skill in the art as of January 2002 would ‘readily be familiar with the
`Bluetooth
`[] communication
`standards and
`implementation of wireless
`communication using such standards”; and that (2) “[t]he Bluetooth specification
`wasn’t ratified by the IEEE until 2002.” IPR2018-01092, Pap. 8 at 2-3. This should
`have at least triggered Apple to consider including within the instant Petition (filed a
`month later) the supplemental information it now seeks to add nearly a year later.
`Apple’s Motion fails to offer any argument to the contrary.
`Regarding the second issue the Board ordered Apple to address, the Motion
`fails to address or even include the phrase “interests-of-justice.” The burden does not
`lie with Uniloc on this issue; and indeed, the Motion fails to articulate any argument
`for Uniloc to rebut. Nevertheless, given the demonstrable facts above, which Apple
`ignores, the interests of justice would not be served by rewarding Apple for its
`clearly intentional delay, as this would unjustifiably complicate the issue with
`additional testimony to consider, of a new declarant, and at this late stage.
`Uniloc further notes that Apple has already impermissibly filed as an exhibit
`the supplemental information that is the subject of its Motion, without prior
`authorization for it to do so. Uniloc hereby objects and expressly requests (1) that
`the Board disregard Exhibit 1020, and (2) that the exhibit be expunged from the
`record. To the extent Uniloc’s request to expunge must be effected through a
`motion, Uniloc hereby expressly requests authority to file such a motion.
`
`Date: September 6, 2019
`
`
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`
`
`Respectfully submitted,
`By: /s/ Brett A. Mangrum
`
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`3
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`Paper No. 10
`IPR2019-00251
`
`Brett A. Mangrum; Reg. No. 64,783
`Attorney for Patent Owner
`
`4
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`CERTIFICATE OF SERVICE
`
`Paper No. 10
`IPR2019-00251
`
`Pursuant to 37 C.F.R. §§ 42.6(e), the undersigned certifies that an
`
`electronic copy of the foregoing was served via the Patent Review Processing
`
`System (PRPS) and/or email to Petitioner’s counsel at the following addresses
`
`identified in the Petition’s consent to electronic service:
`
`Lead Counsel: W. Karl Renner, Reg. No. 41,265
`IPR39521-0056IP1@fr.com
`
`
`Backup Counsel: Jeremy J. Monaldo, Reg. No. 58,680
`Roberto J. Devoto, Reg. No. 55,108
`PTABInbound@fr.com
`axfptab@fr.com
`renner@fr.com
`monaldo@fr.com
`
`
`Date: September 6, 2019
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`Respectfully submitted,
`
`By: /s/ Brett A. Mangrum
`
`
`
`Brett A. Mangrum; Reg. No. 64,783
`Attorney for Patent Owner
`
`i
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`
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