Trials@uspto.gov
`571-272-7822
`
`Paper 12
`Date: October 1, 2018
`
`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.
`
`
`571-272-7822
`
`Paper 12
`Date: October 1, 2018
`
`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
`
`
`
`
`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
`
`
`
`
`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.
`
`
`
`
`
`6
`
`
`
`
`
`
`
`
`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
`
`
`7
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
