UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`APPLE INC.
`Petitioner
`
`v.
`
`CONTENTGUARD HOLDINGS, INC.
`Patent Owner
`
`
`
`Patent No. 7,774,280
`Issued: August 10, 2010
`Filed: October 4, 2004
`Inventors: Nguyen, et al.
`Title: System and Method for Managing Transfer of Rights Using Shared
`State Variables
`
`
`
`Inter Partes Review No. IPR 2015-00354
`
`
`
`UNOPPOSED MOTION TO CORRECT FILING DATE OF
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`
`
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`APPLE INC.
`Petitioner
`
`v.
`
`CONTENTGUARD HOLDINGS, INC.
`Patent Owner
`
`
`
`Patent No. 7,774,280
`Issued: August 10, 2010
`Filed: October 4, 2004
`Inventors: Nguyen, et al.
`Title: System and Method for Managing Transfer of Rights Using Shared
`State Variables
`
`
`
`Inter Partes Review No. IPR 2015-00354
`
`
`
`UNOPPOSED MOTION TO CORRECT FILING DATE OF
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`
`
`
`
`Patent Owner ContentGuard Holdings, Inc. (“CG”) respectfully moves the
`
`Patent Trial and Appeal Board (“PTAB”) to correct the filing date of CG’s
`
`Preliminary Response to April 6, 2015, pursuant to 37 C.F.R. 42.20-22. CG
`
`completed its submission of its Preliminary Response to the Patent Review
`
`Processing System (“PRPS”) on April 6, 2015, but due to inherent delay in PRPS’s
`
`processing of the electronic submission, the Preliminary Response was assigned a
`
`filing date of April 7.
`
`The Motion is supported by the accompanying declarations of Timothy P.
`
`Maloney and Jackeline Torres.
`
`Petitioner Apple Inc. (“Apple”) does not oppose this motion.
`
`I.
`
`STATEMENT OF MATERIAL FACTS
`
`1.
`
`CG’s Preliminary Response in IPR2015-00354 was due on April 6,
`
`2015. (Paper 7.) CG’s Preliminary Response was one of six preliminary responses
`
`due for CG on April 6. (Ex. 2024, Maloney Decl., ¶2.)
`
`2.
`
`Electronic filing of CG’s Preliminary Response and supporting
`
`exhibits was made on CG’s behalf by Jackeline Torres at the direction of CG’s
`
`lead counsel, Timothy P. Maloney. (Id.)
`
`3. Ms. Torres is a legal assistant at Fitch, Even, Tabin & Flannery LLP.
`
`(Ex. 2029, Torres Decl., ¶1.) Ms. Torres has electronically filed several papers
`
`using PRPS and is well versed in uploading and submitting documents to PRPS.
`
`1
`
`
`
`(Id. ¶2.)
`
`4. Ms. Torres had already electronically submitted preliminary responses
`
`in five other PTAB proceedings on CG’s behalf on April 6 before beginning to file
`
`CG’s Preliminary Response in this proceeding. (Id. ¶¶3-4.) She completed the
`
`submission of the fifth filing at 11:55 p.m. Eastern Time on April 6. (Id. ¶4.)
`
`5.
`
`Immediately after completing the fifth filing, Ms. Torres began
`
`working on the sixth and final filing that evening, CG’s Preliminary Response and
`
`supporting exhibits for IPR2015-00354. (Id. ¶5.) At approximately 11:56 p.m.
`
`Eastern Time on April 6, Ms. Torres initiated the process of uploading CG’s
`
`Preliminary Response and Exhibits 2001-2008 (collectively, the “Response”) using
`
`PRPS. (Id.) At approximately 11:58 p.m. Eastern Time the upload was complete.
`
`(Id. ¶6.)
`
`6.
`
`By 11:58 p.m. Eastern Time, or no later than 11:59 p.m. Eastern
`
`Time, Ms. Torres clicked the “Submit” button on PRPS to complete the filing. (Id.
`
`¶6.)
`
`7.
`
`After Ms. Torres clicked the “Submit” button, PRPS displayed a
`
`progress wheel indicating that the submission of the already-uploaded Response
`
`was in progress. (Id. ¶7.) PRPS then displayed a Party Filing Notice. (Id.) The
`
`Party Filing Notice indicated that the Response had been accorded a filing date of
`
`April 7, 2015. (Id.)
`
`2
`
`
`
`8.
`
`Following submission of the Response to PRPS, at 12:01 a.m. Eastern
`
`Time on April 7, Mr. Maloney received a PRPS Notification Filing Courtesy
`
`Notice email indicating that the Response had been filed and was available on
`
`PRPS. (Ex. 2024, Maloney Decl., ¶3.) Apple’s counsel was copied on the same
`
`email. The PRPS Notification Filing Courtesy Notice email indicated that the
`
`Response had been given a filing date of April 7, 2015. (Id.)
`
`9.
`
`The “My Correspondence” section on Mr. Maloney’s PTAB Trials
`
`Portal account indicates that Response was given a 12:00 a.m. time stamp on April
`
`7, 2015. (Ex. 2029, Torres Decl. ¶8.)
`
`10. At approximately 12:42 a.m. Eastern Time on April 7, a service copy
`
`of the Response was sent by email to counsel for Apple. (Ex. 2024, Maloney Decl.
`
`¶5.)
`
`11. On the morning of April 9, 2015, Mr. Maloney contacted PTAB
`
`Paralegal Specialist, Amy Kattula, to explain that although the files had been
`
`uploaded in time and the “Submit” button selected on April 6, the PRPS
`
`Notification Filing Courtesy Notice email indicated that the Response had been
`
`given a filing date of April 7, 2015. (Id. ¶6.)
`
`12. At the recommendation of Ms. Kattula, Mr. Maloney contacted
`
`Apple’s lead counsel, Mr. Kushan, the same morning to inquire whether Apple
`
`would object to a motion to accept the Response. (Id.) Mr. Kushan responded by
`
`3
`
`
`
`email on April 13 indicating that Apple would not oppose such a motion. (Id. ¶¶7-
`
`8.) Mr. Maloney thereafter received authorization through Ms. Kattula on April 14
`
`to file a motion to correct the filing date of the Response.
`
`II.
`
`STATEMENT OF REASONS FOR RELIEF REQUESTED
`
`CG submits this Motion to request that the filing date accorded to its
`
`Preliminary Response (Paper 10) be corrected to April 6, 2015. For the reasons
`
`stated below, the preceding facts and supporting declarations show that the
`
`Preliminary Response was timely filed in accordance with 37 C.F.R. § 42.107(b).
`
`A. CG’s Response Met Statutory and Regulatory Requirements
`
`CG’s Response satisfied the statutory and regulatory requirements for
`
`consideration as of April 6, 2015. 35 U.S.C. § 313 (specifying that the patent
`
`owner may file a preliminary response within the time period set by the Director);
`
`37 C.F.R. § 42.107(b) (specifying that the preliminary response must be filed no
`
`later than three months after the date of a notice indicating that the request to
`
`institute a review has been granted a filing date).
`
`In particular, Ms. Torres began uploading the complete Response on April 6
`
`at 11:56 p.m. Eastern Time after having completed another PRPS submission at
`
`11:55 p.m. (Ex. 2029, Torres Decl. ¶¶4-5.) It took PRPS several minutes to upload
`
`the Response. (Id. ¶5.) After the Response was uploaded, and not later than 11:59
`
`p.m. and April 6, Ms. Torres clicked the “Submit” button on PRPS. (Id. ¶6.)
`
`4
`
`
`
`Because PRPS apparently took additional time to process the submission
`
`after Ms. Torres clicked “Submit,” PRPS automatically assigned the Response a
`
`filing date of April 7. This filing date was apparently based on when PRPS
`
`completed its processing of the submission, rather than when CG completed its
`
`submission. PTAB records confirm that the Response was given a filing date of
`
`April 7 at 12:00 a.m. (Id.) Notwithstanding that PRPS automatically assigned the
`
`Response a filing date and time of April 7, 12:00 a.m., based on when it completed
`
`processing the submission, Ms. Torres uploaded and submitted the complete
`
`Response to PRPS on April 6, in accordance with 37 C.F.R. § 42.107(b). Under
`
`these circumstances, the Response should be accorded a filing date of April 6,
`
`2015.
`
`B.
`
`The Board Has Authority to Determine the Circumstances Under
`Which a Petition May be Accorded a Filing Date
`
`The Board has the authority to correct CG’s filing date to April 6. The
`
`manner of filing of a patent owner’s preliminary response is covered by rule, not
`
`statute. Rule 42.6(b)(1) provides that “[u]nless otherwise authorized, submissions
`
`are to be made to the Board electronically via the Internet according to the
`
`parameters established by the Board and published on the Web site of the Office.”
`
`37 C.F.R. § 42.6(b)(1); see also Apple Inc. v. Whitserve, LLC, IPR2014-00268,
`
`Paper 16 at 6 (Feb. 5, 2014)(“The statute does not specify how to file a petition.”).
`
`Because the Board has the authority to determine how submissions may be made,
`5
`
`
`
`the Board also has the authority under § 42.6(b)(1) to accord a filing date of April
`
`6, 2015, to CG’s Response based on the particular facts in this case, namely that
`
`Ms. Torres uploaded the Response and clicked the “Submit” button on April 6.
`
`Therefore, even though PRPS automatically assigned the Response an April 7 date,
`
`the Board can specify under these facts that CG’s submission is deemed “filed” as
`
`of the date Ms. Torres clicked “Submit” and correct the filing date to April 6
`
`pursuant to its authority under § 42.6(b)(1).
`
`Moreover, 37 C.F.R. § 42.5(a) states that “[t]he Board may determine a
`
`proper course of conduct in a proceeding for any situation not specifically covered
`
`by this part and may enter non-final orders to administer the proceeding.” As stated
`
`in the Office Patent Trial Practice Guide, “the rules are to be construed so as to
`
`ensure the just, speedy, and inexpensive resolution of a proceeding and, where
`
`appropriate, the rules may be modified to accomplish these goals. § 42.1(b);
`
`§ 42.5(a) and (b).” 77 Fed. Reg. 48,756 at 48,758 (Aug. 14, 2012). To the extent
`
`the rules do not clearly articulate that a patent owner’s preliminary response is
`
`considered “filed” at the time when the “Submit” button is clicked on PRPS, § 42.5
`
`gives the Board the authority to make that determination under these particular
`
`facts.
`
`6
`
`
`
`C. An April 6, 2015 Filing Date Should Be Granted in the Present
`Case
`
`CG respectfully requests that the Board, pursuant to its authority, correct the
`
`filing date currently reflected on PRPS for CG’s Response to April 6, 2015. CG
`
`made a good faith effort to file its Response by April 6. Indeed, the complete
`
`Response was uploaded and the “Submit” button was clicked on April 6. (Ex.
`
`2029, Torres Decl. ¶6.) The PRPS timestamp of 12:00 a.m. confirms that the
`
`system completed its processing of the submission within 60 seconds of midnight.
`
`The time that PRPS takes to process the submission after the files are uploaded and
`
`the “Submit” button is clicked should not impact the filing date that is accorded to
`
`the submission, regardless of whether PRPS automatically assigns a later date. This
`
`is particularly appropriate in this case where even if the time that PRPS took to
`
`process the submission is tolled to CG (which it should not be), it is nevertheless
`
`appropriate, in in the interest of justice, to consider the filing to have been made on
`
`April 6.
`
`Apple has indicated that it does not oppose CG’s motion. (Ex. 2024,
`
`Maloney Decl. ¶¶7-8.) Furthermore, Apple has not been prejudiced. Apple does
`
`not have the right to file a reply to CG’s Response. Therefore, Apple has not been
`
`prejudiced in its ability to prosecute its petition. Moreover, Apple could have
`
`accessed CG’s response minutes after it was submitted using PRPS and was
`
`provided a service copy of CG’s Response within an hour after filing.
`7
`
`
`
`III. CONCLUSION
`
`For the foregoing reasons, CG respectfully moves to correct the filing date
`
`accorded its Preliminary Response in IPR2015-00354 (Paper 10) to April 6, 2015.
`
`Respectfully submitted,
`FITCH EVEN TABIN & FLANNERY, LLP
`By: /Timothy P. Maloney/
`
`Timothy P. Maloney
`Registration No. 38,233
`tim@fitcheven.com
`
`
`
`
`Dated: April 16, 2015
`
`
`
`120 South LaSalle Street
`Suite 1600
`Chicago, Illinois 60603
`(312) 577-7000
`(312) 577-7007 (fax)
`
`8
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §42.6(e), the undersigned hereby certifies that a true
`
`copy of the foregoing UNOPPOSED MOTION TO CORRECT FILING DATE
`
`OF PATENT OWNER’S PRELIMINARY RESPONSE is being served this 16th
`
`day of April, 2015, by e-mail upon the following:
`
`Jeffrey P. Kushan
`SIDLEY AUSTIN LLP
`1501 K Street NW
`Washington, DC 20005
`jkushan@sidley.com
`
`Apple has consented to service by electronic means.
`
`By:
`
`Respectfully submitted,
`FITCH EVEN TABIN & FLANNERY, LLP
`/Timothy P. Maloney/
`
`Timothy P. Maloney
`Registration No. 38,233
`tim@fitcheven.com
`
`
`
`
`Dated: April 16, 2015
`
`
`
`
`120 South LaSalle Street
`Suite 1600
`Chicago, Illinois 60603
`(312) 577-7000
`(312) 577-7007 (fax)
`
`9
`
`
`
`Attachment A
`
`EXHIBIT LIST
`
`2030
`2031
`
`
`
`Exhibit Document
`2001-
`RESERVED
`2023
`2024
`Declaration of Timothy P. Maloney In Support of ContentGuard
`Holdings, Inc.’s Unopposed Motion to Correct Filing Date of Patent
`Owner’s Preliminary Response
`PRPS Notification Filing Courtesy Notice
`Service email
`April 13, 2015, email from J. Kushan to T. Maloney
`Email exchange between A. Kattula and T. Maloney
`Declaration of Jackeline Torres In Support of ContentGuard Holdings,
`Inc.’s Unopposed Motion to Correct Filing Date of Patent Owner’s
`Preliminary Response
`PTAB Portal My Correspondence webpage screen capture
`Party Filing Notice screen capture
`
`2025
`2026
`2027
`2028
`2029
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
