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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner,
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`v.
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`SMITH INTERFACE TECHNOLOGIES, LLC,
`Patent Owner.
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`Case IPR2024-01119
`Patent 10,656,754
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`PETITIONER’S BRIEF IN SUPPORT OF BOARD’S REQUEST FOR
`COMMENT REGARDING STAYING REEXAMINATION
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`Proceeding No.: IPR2024-01119
`Attorney Docket: 50095-0166IP7
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`TABLE OF CONTENTS
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`I.
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`Introduction ....................................................................................................... 1
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`II. There Are Overlapping Claims and Prior Art Between the Proceedings ......... 1
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`III. The Overlap Between Proceedings Will Likely Lead to Duplicate Efforts and
`Could Result in Inconsistent Results Between Proceedings...................................... 3
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`IV. The Respective Stages and Statutory Deadlines Between the EPRx and IPRs
`Favor a Stay ............................................................................................................... 4
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`V. Conclusion ........................................................................................................ 5
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`i
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`Proceeding No.: IPR2024-01119
`Attorney Docket: 50095-0166IP7
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`I.
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`Introduction
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`Apple submits this brief in response to the Panel’s invitation for comment
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`regarding a potential stay of the co-pending ex parte reexamination of U.S. Patent
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`No 10,656,754 designated Control No. 90/019,646 (hereinafter “the EPRx”). Apple
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`does not oppose a stay of the EPRx because a stay would benefit the efficient
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`administration of the Office and integrity of the patent system. There are
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`overlapping issues between the instituted IPRs (IPR2024-01115, IPR2024-01116
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`and IPR2024-01119) and the EPRx that likely will result in duplication of efforts
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`and could result in inconsistent findings of fact and law between the proceedings
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`absent a stay. Further, the EPRx is at an early stage such that a stay is likely to
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`reduce the risk of duplication or waste of resources in the EPRx—a risk that only
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`increases as the EPRx progresses. Based on these circumstances, it would be
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`prudent and efficient to stay the EPRx pending the conclusion of the instituted IPRs.
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`II. There Are Overlapping Claims and Prior Art Between the
`Proceedings
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`Independent claims 2 and 225, as well as dependent claims 186 and 208, are
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`at issue in both the instituted IPRs and the granted EPRx. Furthermore, all other
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`claims at issue in the granted EPRx depend from either independent claim 2 or 225.
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`Therefore, conclusions reached by the Board about the scope of independent claim
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`2 or 225 in the IPRs will directly or indirectly impact determinations related to all of
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`the claims at issue in the EPRx.
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`1
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`Proceeding No.: IPR2024-01119
`Attorney Docket: 50095-0166IP7
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`For example, each of independent claims 2 and 225 recite the term “blur.”
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`EX1001, cls. 2, 225. Each of dependent claims 124-127, 142, 152, 162, 165, 186,
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`195, 198, 206, 208, 218, and 221 at issue in the EPRx also recite the term “blur.”
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`The Petition explained that a POSITA would have understood the term “blur” to
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`mean “make or become unclear or less distinct.” Petition at 26-27. In its preliminary
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`response, Patent Owner explains that “Patent Owner does not agree with Petitioner’s
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`proposed interpretation of blurring,” and “reserves the right to address Petitioner’s
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`interpretation if IPR is instituted.” POPR at 22, n. 3. Accordingly, at least the
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`construction of the term “blur” is at issue in both the IPRs and the EPRx.
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`Similarly, a number of prior art references are shared between the IPRs and
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`the EPRx. For example, U.S. Pub. No. 2010/0095240 to Shiplacoff is a prior art
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`reference used in combinations that form grounds in each of IPR2024-01119 and the
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`granted EPRx. Additionally, overlapping teachings from each of the following
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`references is cited in both the IPRs and the EPRx:
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` U.S. Appl. Pub. No. 2008/0207188 to Hye Sang Ahn et al. (“Ahn”);
` U.S. Appl. Pub. No. 2007/0150842 to Imran Chaudhri et al. (“Chaudhri
`’842”);
` Robert Kosara et al., “Semantic Depth of Field,” IEEE Symposium on
`Information Visualization 2001, pp. 97-104 (2001);
` U.S. Appl. Pub. No. 2011/0209093 to Kenneth P. Hinckley and Koji
`Yatani (“Hinkley”); and
` Certified translation of JP Published Patent Application No. 2002-
`55750 (“Hisatomi”), published February 20, 2002.
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`2
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`Proceeding No.: IPR2024-01119
`Attorney Docket: 50095-0166IP7
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`The teachings from these references are utilized in both proceedings to establish the
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`knowledge of a POSITA and demonstrate how a POSITA would understand the
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`prior art references that form the basis of the grounds. Accordingly, interpretation
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`of at least these numerous overlapping references will be at issue in both the IPRs
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`and the EPRx.
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`III. The Overlap Between Proceedings Will Likely Lead to Duplicate
`Efforts and Could Result in Inconsistent Results Between
`Proceedings
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`Because all claims at issue in the granted EPRx depend from independent
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`claims 2 and 225 and these independent claims are also at issue in the instituted IPRs,
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`there is a reasonable likelihood that concurrent conduct of the granted EPRx and the
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`instituted IPRs would lead to duplicate efforts and could result in inconsistent results
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`between proceedings. For example, as noted above in Section II, supra, “Patent
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`Owner does not agree with Petitioner’s proposed interpretation of blurring,” which
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`is recited in both independent claims and numerous dependent claims at issue in the
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`granted EPRx. POPR at 22, n. 3. Under the reasonable assumption that Patent
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`Owner will contest the meaning of this term in the granted EPRx and the instituted
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`IPRs, both the CRU Examiner and the Board will need to adjudicate the meaning of
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`the term “blurring,” which would not only duplicate the effort of construing the
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`claim language but could also lead to inconsistent results. Because Apple is no
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`longer able to participate in the EPRx and therefore cannot appeal conclusions
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`3
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`Proceeding No.: IPR2024-01119
`Attorney Docket: 50095-0166IP7
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`reached by the CRU Examiner, the Board may not have an opportunity to reverse an
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`inconsistent conclusion regarding the term “blurring.” For example, if the Board
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`maintains the preliminary construction of the term “blurring” it adopted in its
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`Institution Decision (see ID at 9) in finding that the claims at issue in the IPRs are
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`unpatentable but the CRU Examiner adopts Patent Owner’s contrary construction in
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`finding the claims at issue in the EPRx not unpatentable, Apple will not be able to
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`appeal the CRU Examiner’s decision and the Board will not have an opportunity to
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`align the CRU Examiner’s decision with the Board’s.
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`A similar possibility for duplication and inconsistency exists with respect to
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`the scope of the prior art shared between the granted EPRx and the instituted IPRs.
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`Both the CRU Examiner and the Board will be called upon to interpret the teachings
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`and scope of the Shiplacoff reference. Further, the overlapping teachings cited in
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`the various references listed in Section III, supra, are largely relied upon to
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`corroborate the understanding of a POSITA, which will be at issue in both the
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`granted EPRx and the instituted IPRs. Concurrent interpretation of these various
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`references by both the Board and the CRU Examiner is both inefficient and may lead
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`to inconsistent outcomes without a clear path for correction.
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`IV. The Respective Stages and Statutory Deadlines Between the EPRx
`and IPRs Favor a Stay
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`With institution of the IPRs on February 13, 2025, the Board is statutorily
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`required to issue a final determination within 1 year. 35 U.S.C. § 316(a)(11). At
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`4
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`Proceeding No.: IPR2024-01119
`Attorney Docket: 50095-0166IP7
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`most, this deadline may be extended by six months. Id. On the other hand, the only
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`statutory deadline imposed on the EPRx—the requirement under 35 U.S.C. § 303(a)
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`that the Director issue a determination whether the EPRx request raises a substantial
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`new question of patentability—has been satisfied. Accordingly, a stay would violate
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`no statutory deadlines.
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`Further, the EPRx is at an early enough stage to avoid the inefficiencies
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`described in Section III, supra. Specifically, the Examiner issued an order granting
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`the EPRx on November 14, 2024. However, the Examiner has not yet issued an
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`Office Action interpreting the claims or prior art, nor has Patent Owner filed a
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`response arguing against those interpretations. Now is the time, early in both
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`proceedings, at which a stay of the EPRx would best avoid any duplication of effort
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`or inconsistencies with respect to the IPR. Furthermore, the EPRx would be
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`simplified by the Board adjudicating the numerous overlapping issues between the
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`two proceedings.
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`V. Conclusion
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`Apple does not oppose a stay of the EPRx because a stay would benefit the
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`efficient administration of the Office and integrity of the patent system. Without a
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`stay, there is a reasonable likelihood of duplication of efforts between the EPRx and
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`the IPRs, and inconsistent outcomes between the two proceedings without a clear
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`path to address those inconsistencies.
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`5
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`Dated: March 7, 2025
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`Proceeding No.: IPR2024-01119
`Attorney Docket: 50095-0166IP7
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`Respectfully submitted,
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`/David L. Holt/
`W. Karl Renner, Reg. No. 41,265
`David L. Holt, Reg. No. 65,161
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`Tel: 202-783-5070
`Fax: 877-769-7945
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`Counsel for Petitioner
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`6
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`Proceeding No.: IPR2024-01119
`Attorney Docket: 50095-0166IP7
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e)(4), the undersigned certifies that on March 7,
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`2025, a complete and entire copy of this Petitioner’s Brief in Support of Staying
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`Reexamination was provided by email to Patent Owner by serving the email
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`correspondence addresses of record as follows:
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`Eagle H. Robinson, Reg. No. 61,361
`Chad Wallis, Reg. No. 78,733
`NORTON ROSE FULBRIGHT US LLP
`98 San Jacinto Blvd., Suite 1100
`Austin, TX 78701
`eagle.robinson@nortonrosefulbright.com
`chad.wallis@nortonrosefulbright.com
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`Daniel S. Leventhal, Reg. No. 59,576
`NORTON ROSE FULBRIGHT US LLP
`Fulbright Tower 1550 Lamar, Suite 2000
`Houston, TX 77010-3095
`daniel.leventhal@nortonrosefulbright.com
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`/Crena Pacheco/
`Crena Pacheco
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`pacheco@fr.com
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