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`Filed: October 9, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
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`GOOGLE LLC and APPLE INC.,
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`Petitioner,
`
`v.
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`CONTENTGUARD HOLDINGS, INC.,
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`Patent Owner.
`_________________
`
`Case CBM2015-000401
`Patent No. 7,774,280 B2
`_________________
`
`JOINT MOTION TO LIMIT PETITION UNDER 37 C.F.R. §42.71
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`1 Case CBM2015-00160 has been joined with this proceeding.
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`I.
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`STATEMENT OF RELIEF REQUESTED
`Pursuant to 37 C.F.R. § 42.71, Petitioners Google LLC (“Google”) and
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`Apple Inc. (“Apple”), and Patent Owner ContentGuard Holdings, Inc.
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`(“ContentGuard”), jointly request limiting the petition in covered business method
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`review case CBM2015-00040 and case CBM2015-00160 of U.S. Patent No.
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`7,774,280 B2 (“the ’280 Patent”) to claims 1, 5, and 11 of the ’280 patent. The
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`parties respectfully request that the Board remove the following claims and
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`grounds from this proceeding:
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`Reference(s)
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`
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`Stefik2 (U.S. Patent No. 5,634,012,
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`issued May 27, 1997 (Ex.1002))
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`Stefik and the knowledge of one of
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`ordinary skill in the art
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`Basis
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`§ 101
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`Challenged Claims
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`1, 5, 11, 12, and 22
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`§ 102(b)
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`12 and 22
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`§ 103(a)
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`12 and 22
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`II.
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`STATEMENT OF FACTS
`On June 21, 2016, the Board issued a Final Written Decision in accordance
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`with 35 U.S.C. § 328(a) and 37 C.F.R. § 42.73, in which the Board determined that
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`2 For clarity and ease of reference, the parties only list the first named inventor.
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`1
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`the ’280 patent is a covered business method patent eligible for review. Paper 34.
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`Google and Apple appealed the Board’s grant of ContentGuard’s Motion to
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`Amend to the U.S. Court of Appeals for the Federal Circuit. Papers 35, 36.
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`ContentGuard cross-appealed the Board’s determination that the ’280 patent is a
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`covered business method patent eligible for review. Paper 37. On July 11, 2018,
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`the Federal Circuit remanded this case. Paper 39. The Federal Circuit’s mandate
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`issued on September 4, 2018. Paper 40. On October 1, 2018, the Board issued an
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`order entitled Reinstitution Under SAS, Authorizing Joint Motion to Limit
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`Petitions, and Outlining Briefing Schedule Post-Remand. Paper 41.
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`III. ARGUMENT
`A. Limiting the Petition in CBM2015-00040 and CBM2015-
`00160 Is Appropriate
`The Board should limit the petition in CBM2015-00040 and CBM2015-
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`00160 for at least the following reasons.
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`First, the Board has authorized that “the parties may file a Joint Motion to
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`Limit the Petitions by removing the previously non-instituted claims and grounds
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`from the trial.” Paper 41.
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`Second, the parties have agreed to limit this proceeding.
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`Third, because this proceeding as litigated through final written decision and
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`Federal Circuit appeal has been limited to a subset of the originally requested
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`2
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`claims and grounds, reducing the number of claims and grounds at issue promotes
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`efficient use of the resources of the Board and saves expense for the parties.
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`B.
`Summary
`For the foregoing reasons, Google and Apple and ContentGuard respectfully
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`request that the Board remove the following claims and grounds:
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`Reference(s)
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`Basis
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`§ 101
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`Challenged Claims
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`1, 5, 11, 12, and 22
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`Stefik (U.S. Patent No. 5,634,012, issued
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`§ 102(b) 12 and 22
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`May 27, 1997 (Ex. 1002))
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`Stefik and the knowledge of one of
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`ordinary skill in the art
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`§ 103(a) 12 and 22
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`from this covered business method review proceeding, and limit the petition in the
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`present covered business method review of the ’280 patent to claims 1, 5, and 11
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`on § 102(b) and § 103(a) grounds.
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`3
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`Date: October 9, 2018
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`Date: October 9, 2018
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`Date: October 9, 2018
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`Respectfully submitted,
`FITCH EVEN TABIN & FLANNERY LLP
`/Timothy P. Maloney/
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`
`Timothy P. Maloney
`Registration No. 38,233
`tim@fitcheven.com
`120 S. LaSalle Street, Suite 2100
`Chicago, Illinois 60603-3406
`(312) 577-7000
`(312) 577-7007 (fax)
`On behalf of Patent Owner
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`
`
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`SIDLEY AUSTIN LLP
`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`jkushan@sidley.com
`1501 K Street
`Suite 600
`Washington, DC 20006
`On behalf of Petitioner Apple
`
`
`PAUL HASTINGS LLP
`/Robert R. Laurenzi/
`Robert R. Laurenzi
`robertlaurenzi@paulhastings.com
`875 15th St. NW
`#10
`Washington, DC 20005
`On behalf of Petitioner Google
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`4
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 9th day of October 2018, a copy of this JOINT
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`MOTION TO LIMIT PETITION UNDER 37 C.F.R. §42.71, has been served
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`via electronic mail on the following counsel of record for Patent Owner and
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`Petitioner Google:
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`Timothy P. Maloney (tim@fitcheven.com)
`Nicholas T. Peters (ntpete@fitcheven.com)
`Robert R. Laurenzi (robertlaurenzi@paulhastings.com)
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`
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`Dated: October 9, 2018
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`Respectfully Submitted,
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`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Registration No. 43,401
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
`jkushan@sidley.com
`(202) 736-8000
`Counsel for Petitioner Apple
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`5
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