`Date: October 1, 2018
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`Trials@uspto.gov
`571-272-7822
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`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC and APPLE INC.,
`Petitioners,
`
`v.
`
`CONTENTGUARD HOLDINGS, INC.,
`Patent Owner.
`____________
`
`Case CBM2015-000401
`(Patent 7,774,280 B2)
`____________
`
`Before MICHAEL R. ZECHER, BENJAMIN D. M. WOOD, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`
`ORDER
`Reinstitution Under SAS, Authorizing Joint Motion to Limit Petitions, and
`Outlining Briefing Schedule Post-Remand
`37 C.F.R. § 42.5(a)
`
`
`
`
`1 Case CBM2015-00160 has been joined with this proceeding.
`
`
`
`
`
`CBM2015-00040
`Patent 7,774,280 B2
`
`
`
`INTRODUCTION
`I.
`A conference call was held on September 26, 2018, between counsel for the
`
`respective parties and Judges Zecher, B. Wood, and Braden. We initiated the
`conference call to discuss the following: (1) implications of SAS Inst., Inc. v.
`Iancu, 138 S. Ct. 1348 (2018) (hereinafter “SAS”) on this proceeding; (2) whether
`additional briefing and evidence is necessary to address the previously non-
`instituted claims and grounds of unpatentability (“grounds”); (3) whether
`additional briefing and evidence is necessary to address whether U.S. Patent No.
`7,774,280 B2 (Ex. 1001, “the ’280 patent”) qualifies as a covered business method
`patent eligible for review, without relying on the “incidental to” or
`“complementary to” standard; and (4) if additional briefing and evidence is
`necessary for either items (1) or (2) identified above, a schedule going forward.
`
`
`PROCEDRUAL HISTORY
`II.
`On June 21, 2016, we issued a Final Written Decision in accordance with 35
`U.S.C. § 328(a) and 37 C.F.R. § 42.73, in which we determined that the ’280
`patent is a covered business method patent eligible for review, we determined that
`claims 1, 5, and 11 of the ’280 patent are unpatentable, and we granted Patent
`Owner’s Motion to Amend. Paper 34. Petitioners appealed our grant of Patent
`Owner’s Motion to Amend to the U.S. Court of Appeals for the Federal Circuit.
`Papers 35, 36. Patent Owner cross-appealed our determination that the ’280 patent
`is a covered business method patent eligible for review. Paper 37. On July 11,
`2018, the Federal Circuit remanded this case for us to determine whether the ’280
`patent qualifies a covered business method patent eligible for review, without
`relying on the “incidental to” or “complementary to” standard. Paper 39. The
`Federal Circuit’s mandate issued on September 4, 2018. Paper 40.
`
`2
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`
`
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`CBM2015-00040
`Patent 7,774,280 B2
`
`
`
`
`
`III. MODIFICATION OF THE DECISIONS ON INSTITUTION
`In SAS, the Supreme Court held that a decision to institute under 35 U.S.C.
`§ 314 may not institute on less than all challenged claims in the petition.
`According to the “Guidance on the impact of SAS on AIA trial proceedings”
`posted to the U.S. Patent and Trademark Office’s website on April 26, 2018,2 a
`decision granting institution will institute on all of the challenged claims in the
`petition and on all of the grounds set forth in the petition. The Federal Circuit has
`since endorsed this Office policy by explaining that “‘the petitioner’s petition, not
`the Director’s discretion, is supposed to guide the life of the litigation’ and ‘that the
`petitioner’s contentions, not the Director’s discretion define the scope of the
`litigation all the way from institution through to conclusion.’” Adidas AG v. Nike,
`Inc., 894, F.3d 1256, 1258 (Fed. Cir. 2018) (quoting SAS, 138 S. Ct. at 1356–
`1357). Although SAS specifically addressed the statutory provision for final
`written decisions in an inter partes review, the corresponding provision for a post-
`grant review (i.e., 35 U.S.C. § 328(a)) uses essentially the same language, so we
`interpret it the same way. See, e.g., Powerex Corp. v. Reliant Energy Servs., Inc.,
`127 S. Ct. 2411, 2417 (2007) (“A standard principle of statutory construction
`provides that identical words and phrases within the same statute should normally
`be given the same meaning.”). Consequently, the implications of SAS apply
`equally to a covered business method patent review.
`In this case and Case IPR2015-00160, we determined Petitioners
`demonstrated it was more likely than not that they would establish that at least one
`of the challenged claims of the ’280 patent is unpatentable under 35 U.S.C.
`
`
`2 https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-
`board/trials/guidance-impact-sas-aia-trial
`
`
`3
`
`
`
`
`CBM2015-00040
`Patent 7,774,280 B2
`
`
`§§ 102(b) and 103(a). Paper 9; Case CBM2015-00160, Paper 7. Pursuant to 35
`U.S.C. § 324 and § 18 of the AIA, we instituted a covered business method review
`only as to claims 1, 5, and 11 of the ’280 patent. In those Decisions on Institution,
`however, we did not institute on the following claims and grounds:
`Reference(s)
`Basis
`Challenged Claims
`§ 101
`1, 5, 11, 12, and 22
`
`
`
`
`
`Stefik3 (U.S. Patent No. 5,634,012, issued
`May 27, 1997 (Ex. 1002))
`
`Stefik and the knowledge of one of ordinary
`skill in the art
`
`
`
`§ 102(b)
`
`12 and 22
`
`§ 103(a)
`
`12 and 22
`
`
`
`
`With respect to this case and Case CBM2015-00160, we modify our
`Decisions on Institution to include all of the claims and grounds set forth in the
`Petitions. During the conference call, both parties expressed their understanding
`that the previously non-instituted claims and grounds are now involved in the trial
`and raised no objection.
`
`IV. BRIEFING FOR THE PREVIOUSLY NON-INSTITUTED CLAIMS
`AND GROUNDS
`After we explained that the previously non-instituted claims and grounds are
`now involved in the trial, we inquired as to whether additional briefing and
`evidence for those claims and grounds was necessary. The parties represented that,
`prior to the conference call, they had met and conferred to discuss this issue.
`According to the parties, they agreed that the previously non-instituted claims and
`grounds should not be the focus of the trial going forward. The parties inquired as
`
`3 For clarity and ease of reference, we only list the first named inventor.
`4
`
`
`
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`CBM2015-00040
`Patent 7,774,280 B2
`
`
`
`to whether we could remove the previously non-instituted claims and grounds from
`the trial. We explained that SAS, Office policy, and Federal Circuit precedent
`dictate that the previously non-instituted claims and grounds must be involved in
`the trial. We, however, noted that the parties may file a Joint Motion to Limit the
`Petitions by removing the previously non-instituted claims and grounds from the
`trial. See, e.g., Apotex, Inc. v. OSI Pharms., Inc., Case IPR2016-01284 (PTAB
`Apr. 3, 2017) (Paper 19) (granting, after institution, a joint motion to limit the
`petition by removing a patent claim that initially was included for trial in the
`decision on institution). We explained that, if the parties did, indeed, file a Join
`Motion to Limit the Petitions, we would act promptly on such motion and remove
`the previously non-instituted claims and grounds from the trial.
`
`V. BRIEFING AS TO WHETHER THE ’280 PATENT IS A COVERED
`BUSINESS METHOD PATENT ELIGIBLE FOR REVIEW
`Next, we inquired as to whether additional briefing and evidence was
`necessary to address whether the ’280 patent qualifies as a covered business
`method patent eligible for review, without relying on the “incidental to” or
`“complementary to” standard. See Paper 39, 7 (“On remand, the Board must
`determine whether the ’280 patent qualifies as a [covered business method] patent
`in the first instance without relying on the ‘incidental to’ or ‘complementary to’
`standard.”) The parties represented that, prior to the conference call, they had also
`met and conferred to discuss this issue. The parties proposed the following
`briefing schedule: (1) each party be permitted to file a ten (10) page opening brief
`narrowly tailored to address whether the ’280 patent qualifies as a covered
`business method patent eligible for review, without relying on the “incidental to”
`or “complementary to” standard, no later than Friday, October 19, 2018; and
`(2) each party be permitted to file a five (5) page responsive brief no later than
`5
`
`
`
`
`CBM2015-00040
`Patent 7,774,280 B2
`
`
`Friday, November 9, 2018. The parties also proposed that no new evidence of any
`kind would be permitted to be filed with either the opening brief or the responsive
`brief. After a brief deliberation, we accepted the parties’ proposed briefing
`schedule because it was consistent with the guidance provided in the Federal
`Circuit’s remand decision.
`
`
`
`
`VI. ORDER
`It consideration of the foregoing, it is
`ORDERED that the Decisions on Institution in Cases CBM2015-00040 and
`CBM2015-00160 are modified to include review of all challenged claims and all
`grounds set forth in the respective Petitions; and
`FURTHER ORDERED that the parties are authorized to file a Joint Motion
`to Limit the Petitions by removing the previously non-instituted claims and
`grounds; and
`FURTHER ORDRED that each party is authorized to file a ten (10) page
`opening brief narrowly tailored to address whether the ’280 patent qualifies as a
`covered business method patent eligible for review, without relying on the
`“incidental to” or “complementary to” standard, no later than Friday, October 19,
`2018. No new evidence of any kind is permitted; and
`FURTHER ORDRED that each party be permitted to file a five (5) page
`responsive brief no later than Friday, November 9, 2018. No new evidence of any
`kind is permitted.
`
`
`
`
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`6
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`CBM2015-00040
`Patent 7,774,280 B2
`
`For PETITIONERS:
`
`Robert R. Laurenzi
`Kaye Scholer LLP
`robert.laurenzi@kayescholer.com
`
`Jeffrey P. Kushan
`Michael R. Franzinger
`Thomas A. Broughan
`Sidley Austin LLP
`iprnotices@sidley.com
`mfranzinger@sidley.com
`tbroughan@sidley.com
`
`
`For PATENT OWNER:
`
`Timothy P. Maloney
`Nicholas T. Peters
`Fitch Even Tabin & Flannery LLP
`tpmalo@fitcheven.com
`ntpete@fitcheven.com
`
`Robert A. Cote
`McKool Smith, P.C.
`rcote@mckoolsmith.com
`
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`7
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