Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 65
`Entered: April 2, 2014
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.
`Petitioner
`
`v.
`
`SIGHTSOUND TECHNOLOGIES, LLC
`Patent Owner
`____________
`
`Case CBM2013-00020 (Patent 5,191,573)
`Case CBM2013-00023 (Patent 5,966,440)1
`
`
`
`
`
`
`Before MICHAEL P. TIERNEY, JUSTIN T. ARBES, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`1 This Order addresses issues pertaining to both cases. Therefore, we
`exercise our discretion to issue one Order to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 65
`Entered: April 2, 2014
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.
`Petitioner
`
`v.
`
`SIGHTSOUND TECHNOLOGIES, LLC
`Patent Owner
`____________
`
`Case CBM2013-00020 (Patent 5,191,573)
`Case CBM2013-00023 (Patent 5,966,440)1
`
`
`
`
`
`
`Before MICHAEL P. TIERNEY, JUSTIN T. ARBES, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`1 This Order addresses issues pertaining to both cases. Therefore, we
`exercise our discretion to issue one Order to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`
`
`
`Case CBM2013-00020 (Patent 5,191,573)
`Case CBM2013-00023 (Patent 5,966,440)
`
`
`
`
`March 31, 2014 Conference Call
`
`A conference call in the above proceedings was held on March 31,
`
`2014, among respective counsel for Petitioner and Patent Owner, and Judges
`
`Tierney, Arbes, and Braden.2 The following issues were discussed.
`
`First, we advised the parties that their March 24, 2014 email request to
`
`modify DUE DATES 4-6 in the Scheduling Orders in the instant
`
`proceedings was granted, and a Revised Scheduling Order in each
`
`proceeding would be entered. DUE DATE 7 (oral argument, scheduled for
`
`May 6, 2014) will not be changed in the Revised Scheduling Orders.
`
`Second, Patent Owner sought authorization to file a motion to strike
`
`Petitioner’s reply and evidence filed in support of the reply in each
`
`proceeding. Patent Owner argued that Petitioner’s replies contain improper
`
`new argument that is not responsive to the arguments made in Patent
`
`Owner’s responses. See 37 C.F.R. § 42.23(b) (a reply “may only respond to
`
`arguments raised in the corresponding . . . patent owner response”); Rules of
`
`Practice for Trials Before the Patent Trial and Appeal Board and Judicial
`
`Review of Patent Trial and Appeal Board Decisions; Final Rule, 77 Fed.
`
`Reg. 48,612, 48,620 (Aug. 14, 2012) (“Oppositions and replies may rely
`
`upon appropriate evidence to support the positions asserted. Reply
`
`evidence, however, must be responsive and not merely new evidence that
`
`could have been presented earlier to support the movant’s motion.”). As an
`
`example, Patent Owner cited page 9 of Petitioner’s reply in Case
`
`CBM2013-00020 (Paper 51), where Petitioner argued that “[d]uring
`
`reexamination, a cited 1986 reference predicted the ability to purchase and
`
`
`2 A court reporter, retained by Patent Owner, was present on the call. Patent
`Owner shall file the transcript of the call as an exhibit in each proceeding.
`
`
`
`2
`
`
`
`Case CBM2013-00020 (Patent 5,191,573)
`Case CBM2013-00023 (Patent 5,966,440)
`
`receive a digital album at home over phone lines.” Petitioner argued that its
`
`
`
`statements on pages 8-9 of the reply properly respond to Patent Owner’s
`
`assertions regarding digital media and electronic sales, and a person of
`
`ordinary skill in the art’s alleged knowledge of those features. We took the
`
`matter under advisement.
`
`After reviewing Patent Owner’s response and Petitioner’s reply in
`
`each proceeding, we are not persuaded that a motion to strike is warranted
`
`under the circumstances. As explained during the call, in the absence of
`
`special circumstance, the Board will determine whether a reply and
`
`supporting evidence contain material exceeding the proper scope when the
`
`Board reviews all of the pertinent papers and prepares the final written
`
`decision. The Board may exclude all or portions of Petitioner’s replies and
`
`newly submitted evidence, or decline to consider any improper argument
`
`and related evidence, at that time. Additional briefing on the issue is not
`
`necessary.
`
`Third, Patent Owner sought authorization to file a motion to strike
`
`certain portions of the declarations of Lawrence Kenswil filed by Petitioner
`
`with its reply in each proceeding. See CBM2013-00020, Ex. 4256;
`
`CBM2013-00023, Ex. 4414. Patent Owner argued that the declarations
`
`contain improper attorney argument. We advised the parties that their
`
`papers (petition, response, and reply) must set forth fully the parties’
`
`positions, and may not incorporate by reference any arguments made in
`
`other papers. See 37 C.F.R. § 42.6(a)(3). The Board will determine what
`
`arguments are made or not made when it reviews the entire record at the end
`
`of the proceedings, and no additional briefing on the matter is necessary.
`
`
`
`3
`
`
`
`Case CBM2013-00020 (Patent 5,191,573)
`Case CBM2013-00023 (Patent 5,966,440)
`
`
`
`
`Fourth, we addressed an issue regarding the parties’ pending joint
`
`motion to seal in each proceeding. See CBM2013-00020, Paper 54;
`
`CBM2013-00023, Paper 48. Specifically, the parties were reminded that
`
`there is a strong public policy in favor of making information filed in a
`
`covered business method patent review open to the public, especially
`
`because the proceeding determines the patentability of claims in an issued
`
`patent and, therefore, affects the rights of the public. See Office Patent Trial
`
`Practice Guide, 77 Fed. Reg. 48,756, 48,760 (Aug. 14, 2012). The default
`
`rule is that all papers filed in a covered business method patent review are
`
`open and available for access by the public; only “confidential information”
`
`may be protected from disclosure upon a showing of good cause. See
`
`35 U.S.C. §§ 326(a)(1), 326(a)(7); 37 C.F.R. §§ 42.14, 42.54(a). In these
`
`proceedings, for example, the public has a strong interest in knowing what
`
`evidence Patent Owner is relying on to prove secondary considerations of
`
`nonobviousness, and what evidence Petitioner is relying on to counter those
`
`assertions. The parties are referred to Garmin Int’l, Inc. v. Cuozzo Speed
`
`Techs. LLC, IPR2012-00001, Paper 37 (Apr. 5, 2013), and St. Jude Med.,
`
`Cardiology Div., Inc. v. Volcano Corp., IPR2013-00258, Paper 28 (Aug. 12,
`
`2013), for guidance on motions to seal in similar circumstances.
`
`During the call, we encouraged the parties to submit redacted
`
`documents that contain the information necessary for the parties to make
`
`their arguments, such that the Board could refer to those materials in its final
`
`written decisions if necessary, rather than making the documents available to
`
`the public in their entirety. Should the parties determine that they are able to
`
`do so, the parties should notify the Board as soon as possible. The joint
`
`motions to seal will be decided in a forthcoming decision.
`
`
`
`4
`
`
`
`Case CBM2013-00020 (Patent 5,191,573)
`Case CBM2013-00023 (Patent 5,966,440)
`
`
`
`
`Fifth, Patent Owner argued that Petitioner should be required to
`
`produce the infringement expert report of J. Douglas Tygar from the related
`
`litigation between the parties as routine discovery because the report
`
`contains “relevant information that is inconsistent with a position advanced
`
`by” Petitioner pursuant to 37 C.F.R. § 42.51(b)(1)(iii). According to Patent
`
`Owner, the report asserts that Petitioner practices the claimed inventions,
`
`which is contrary to Petitioner’s argument in its replies that Petitioner’s
`
`system is not coextensive with the claims. Petitioner responded that the
`
`report is not inconsistent because the issue of infringement is different from
`
`the issue of whether the system and claims are coextensive, and producing
`
`the report would create confidentiality issues due to the highly confidential
`
`source code cited in the report. See CBM2013-00020, Paper 40;
`
`CBM2013-00023, Paper 36 (denying Patent Owner’s motion for additional
`
`discovery of the report).
`
`As explained during the call, the parties should continue their
`
`discussions on the issue and attempt to reach a resolution. For instance, the
`
`parties should determine whether it would be feasible to produce a redacted
`
`version of the report, containing only the portions directed to the claim
`
`limitations argued by Petitioner in its replies. If the parties are unable to
`
`resolve the issue, they may request another conference call. Further, to the
`
`extent the parties believe additional protections are necessary beyond those
`
`provided for in the default protective order, the parties may file another
`
`motion to seal with a proposed protective order.
`
`
`
`
`
`5
`
`
`
`Case CBM2013-00020 (Patent 5,191,573)
`Case CBM2013-00023 (Patent 5,966,440)
`
`
`
`
`Motions to File Corrected Exhibits
`
`In Case CBM2013-00020, Patent Owner filed a motion (Paper 50)
`
`seeking authorization to file corrected versions of Exhibits 2110, 2117,
`
`2125, 2147, and 2153, the original versions of which contain “small portions
`
`of illegible and omitted text.” In Case CBM2013-00023, Patent Owner filed
`
`a similar motion (Paper 47) regarding Exhibits 2310, 2317, and 2347.
`
`Petitioner does not oppose the motions. Patent Owner’s motions will be
`
`granted and Patent Owner may file the corrected versions.
`
`In Case CBM2013-00020, Petitioner filed a motion (Paper 62)
`
`seeking authorization to file corrected versions of Exhibits 4255 and 4258,
`
`which were numbered incorrectly. Petitioner filed replacement versions of
`
`the exhibits with its motion, and Patent Owner does not oppose the motion.
`
`Petitioner’s motion will be granted as well.
`
`
`
`Supplemental Evidence
`
`Patent Owner filed, in addition to serving, the following exhibits as
`
`supplemental evidence in the instant proceedings:
`
`Case
`
`Date Filed
`
`Exhibits
`
`CBM2013-00020
`
`January 24, 2014
`
`2154-2162
`
`CBM2013-00020
`
`February 18, 2014
`
`2163-2169
`
`CBM2013-00023
`
`January 24, 2014
`
`2354-2363
`
`CBM2013-00023
`
`February 18, 2014
`
`2364-2370
`
`Pursuant to 37 C.F.R. § 42.64(b)(2), “[t]he party relying on evidence to
`
`which an objection is timely served may respond to the objection by serving
`
`supplemental evidence within ten business days of service of the objection”
`
`(emphasis added). The exhibits filed as supplemental evidence will be
`
`
`
`6
`
`
`
`Case CBM2013-00020 (Patent 5,191,573)
`Case CBM2013-00023 (Patent 5,966,440)
`
`expunged. To the extent the parties are unable to resolve their objections to
`
`
`
`evidence in this proceeding, either party may file a motion to exclude by
`
`DUE DATE 4 in the Scheduling Order, and the opposing party may cite in
`
`its opposition any supplemental evidence it served in response to the
`
`objection. See 37 C.F.R. § 42.64(c).
`
`
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that Patent Owner’s motion to file corrected exhibits in
`
`Case CBM2013-00020 (Paper 50) is granted. Patent Owner shall file
`
`corrected versions of Exhibits 2110, 2117, 2125, 2147, and 2153 by April 7,
`
`2014, after which the original versions will be expunged;
`
`FURTHER ORDERED that Patent Owner’s motion to file corrected
`
`exhibits in Case CBM2013-00023 (Paper 47) is granted. Patent Owner shall
`
`file corrected versions of Exhibits 2310, 2317, and 2347 by April 7, 2014,
`
`after which the original versions will be expunged;
`
`FURTHER ORDERED that Petitioner’s motion to file corrected
`
`exhibits in Case CBM2013-00020 (Paper 62) is granted. The versions of
`
`Exhibits 4255 and 4258 in Case CBM2013-00020 filed on April 1, 2014 are
`
`entered, and the versions filed on March 21, 2014 are expunged from the
`
`record of the proceeding; and
`
`FURTHERED ORDERED that Exhibits 2154-2169 in Case
`
`CBM2013-00020, and Exhibits 2354-2370 in Case CBM2013-00023, are
`
`expunged from the record of the respective proceeding.
`
`
`
`7
`
`
`
`
`
`Case CBM2013-00020 (Patent 5,191,573)
`Case CBM2013-00023 (Patent 5,966,440)
`
`PETITIONER:
`
`J. Steven Baughman
`Ching-Lee Fukuda
`ROPES & GRAY LLP
`steven.baughman@ropesgray.com
`ching-lee.fukuda@ropesgray.com
`
`
`
`PATENT OWNER:
`
`David R. Marsh
`Kristan L. Lansbery
`ARNOLD & PORTER LLP
`david.marsh@aporter.com
`kristan.lansbery@aporter.com
`
`
`
`8
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