UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`
`
`APPLE INC.
`Petitioner
`
`v.
`
`DSS TECHNOLOGY MANAGEMENT, INC.
`Patent Owner
`
`_____________________
`
`Case IPR2015-00373
`Patent 6,128,290
`_____________________
`
`
`
`PETITIONER’S REQUEST FOR REHEARING
`OF INSTITUTION DECISION UNDER 37 C.F.R. § 42.71(d)
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`

`
`
`
`Case IPPR2015-000373
`
`
`Paatent 6,1288,290
`
`.... ii 
`.... 1 
`.... 2 
`.... 2 
`.... 3 
`.... 5 
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`..... 5 
`
`..... 6 
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`... 10 
`.. 13 
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` 
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` 
`
`
`
`TABLE OOF CONTTENTS
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`..................................
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`
`
`
`
`TABLEE OF AUTHHORITIESS ................................................
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`..................................
`I. 
`
`
`Inntroductionn ...............
`
`..................................
`................
`
`..................................
`II. 
`
`
`RRelief Requuested .......
`
`..................................
`................
`
`..................................
`III. 
`
`
`SStandard off Review ...
`
`..................................
`................
`
`..................................
`
`
`IV.  SStatement oof Facts .....
`
`..................................
`................
`
`..................................
`V. 
`
`
`
`
`Rationale foor Rehearinng ..............................................
`The
`A.
`Board o
`Patent O
`
`concessionn of
`verlooked
`Owner’s
` 
`
`
`
`
`
`
`Barber’s publicc accessibillity and miisapprehennded the wweight
`
`
`
`
`of thee evidencee in the recoord. ...........................
`
`..................................
`The
`
`
`
`Board miisapprehennded the ppurpose o
`
`f 37 C.F..R. §
`
`
`
`
`
`
`42.644(b) and aacted conttrary to aan establishhed patterrn of
`
`
`
`
`conduuct by the Board. .......................................
`
`..................................
`
`Board impposed an
`The
`
`
`
`arbitrary rrequiremennt on Appple to
`
`provide aadditional
`arber
`
`preemmptively
`
`evidencee
`that B
`
`
`
`
`qualifies as prioor art. .........................................
`
`..................................
`
`
`VI.  CConclusionn ................
`
`..................................
`
`..................................
`................
`
`R A B C
`
`B.
`
`C.
`
`
`
`
`
`
`
`i
`
`

`
`TABLE OF AUTHORITIES
`
`Case IPR2015-00373
`Patent 6,128,290
`
`Cases 
`
`Alternative Legal Solutions v. Employment Law Compliance, Inc.,
`IPR2014-00562 (Paper 9, Oct. 7, 2014) ................................................................. 8
`
`In re Lister,
`583 F.3d 1307 (Fed. Cir. 2009) ............................................................................ 12
`
`Informatica Corporation v. Protegrity Corporation,
`CBM2015-00021 (Paper 14, Jun. 1, 2015) ............................................................ 6
`
`Palo Alto Networks, Inc. v. Juniper Networks, Inc.,
`IPR2013-00369 (Paper 16, Dec. 19, 2013) ............................................................ 7
`
`PPG Indus. Inc. v. Celanese Polymer Specialties Co. Inc.,
`840 F.2d 1565 (Fed. Cir. 1988) .............................................................................. 3
`
`SipNet EU S.R.O. v. Straight Path IP Group, Inc.,
`IPR2013-00246 (Paper 62, Oct. 9, 2014) ............................................................... 6
`
`Suffolk Techs., LLC v. AOL Inc.,
`752 F.3d 1358 (Fed. Cir. 2014) ............................................................................ 12
`
`Toyota Motor Corporation v. American Vehicular Sciences LLC.,
`IPR2013-00417 (Paper 14, Jan. 13, 2014) ............................................................. 7
`
`Statutes 
`
`35 U.S.C. § 102(b) ..................................................................................................... 3
`
`35 U.S.C. § 103(a) ..................................................................................................... 1
`
`35 U.S.C. § 312(a) ................................................................................................... 10
`
`35 U.S.C. § 314(a) ................................................................................................... 10
`
`Regulations 
`
`37 C.F.R. § 42.64(b) ........................................................................................ passim
`
`37 C.F.R. § 42.64(b)(1) ............................................................................................ 11
`
`ii
`
`

`
`Case IPR2015-00373
`Patent 6,128,290
`37 C.F.R. § 42.64(b)(2) ....................................................................................... 7, 11
`
`37 C.F.R. § 42.64(c) ................................................................................................. 12
`
`37 C.F.R. § 42.71(d) ......................................................................................... 1, 3, 5
`
`37 C.F.R. § 42.71(c) ...............................................................................................1, 2
`
`
`
`iii
`
`

`
`Case IPR2015-00373
`Patent 6,128,290
`
`I.
`
`Introduction
`
`Petitioner Apple Inc. (“Apple”) respectfully requests rehearing under 37
`
`C.F.R. §§ 42.71(c) and (d) and that the Board reconsider and reverse its decision
`
`not to institute inter partes review based on Barber.
`
`On June 25, 2015, the Board instituted inter partes review of claims 6, 7, 9,
`
`and 10 of U.S. Patent No. 6,128,290 (“the ’290 patent”) under 35 U.S.C. § 103(a)
`
`over the combination of Natarajan and Neve, and claims 6 and 7 of the ’290 patent
`
`under 35 U.S.C. § 103(a) over Mahany. The Board declined to institute inter partes
`
`review of claims 9 and 10 under 35 U.S.C. § 103(a) based on Barber.
`
`As a matter of law, the Board misapprehended the statutes and the regula-
`
`tions governing these proceedings by creating an irrebuttable presumption that the
`
`date stamped on a printed publication is not what it purports to be. The Board over-
`
`looked that the asserted prior art–Barber–facially indicates that it was publicly ac-
`
`cessible on the date asserted by Apple. Moreover, the Board overlooked that Patent
`
`Owner has not provided any evidence or arguments to the contrary. Instead, the
`
`Board acted contrary to the procedural framework of inter partes review and the
`
`highly factual nature of the printed publication inquiry.
`
`In brief, the Board has imposed an arbitrary requirement on Apple to
`
`preemptively corroborate its prior art. This is not supported by the relevant statutes
`
`or regulations, and is capricious in view of an established pattern of conduct by the
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`- 1 -
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`

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`Case IPR2015-00373
`Patent 6,128,290
`
`Board to the contrary.
`
`The issue raised by the Board is an evidentiary matter suitable for resolution
`
`by the parties or in a motion to exclude. The presentation of definitive facts sup-
`
`porting the public accessibility of a printed publication is not a threshold require-
`
`ment for institution. Here, Apple met the threshold showing for printed publication
`
`status. If Patent Owner disagrees, which it has not, there are mechanisms available
`
`in the regulations for Patent Owner to do so.
`
`II. Relief Requested
`The Board should institute trial of claims 9 and 10 based on Barber, in addi-
`
`tion to the combination of Natarajan and Neve, and allow the parties to resolve any
`
`dispute as to whether Barber qualifies as a prior art printed publication using the
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`mechanisms in 37 C.F.R. § 42.64(b). When the record contains all the relevant
`
`facts, the Board can weigh all the evidence and decide whether or not Barber quali-
`
`fies as a printed publication. Apple therefore respectfully requests reconsideration
`
`of the Board’s decision not to institute inter partes review of claims 9 and 10 based
`
`on Barber.
`
`III. Standard of Review
`The Board’s decision on institution is reviewed for an abuse of discretion. 37
`
`C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision was based on an
`
`erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear er-
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`- 2 -
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`

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`Case IPR2015-00373
`Patent 6,128,290
`ror of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co. Inc., 840
`
`F.2d 1565, 1567 (Fed. Cir. 1988). Moreover, “[t]he request must specifically iden-
`
`tify all matters the party believes the Board misapprehended or overlooked.” 37
`
`C.F.R. § 42.71(d).
`
`Apple respectfully submits that the Board’s decision denying inter partes
`
`review based on Barber overlooks Patent Owner’s concession of public accessibil-
`
`ity and misapprehends the mechanisms in place under 37 C.F.R. § 42.64(b) for the
`
`parties to challenge and cure evidentiary issues.
`
`IV. Statement of Facts
`On its face, the cover page of the Barber reference (APL 1002) includes a
`
`stamp reading “ARCHIVES MASSACHUSETTS INSTITUTE OF TECHNOLO-
`
`GY APR 11 1996 LIBRARIES.” Thus, Apple asserted in its Petition that Barber
`
`qualifies as a prior art printed publication under 35 U.S.C. § 102(b) “at least as ear-
`
`ly as April 11, 1996.” (Petition, Paper 2, p. 9.) Moreover, Apple’s expert, Dr.
`
`Grimes–a former University professor and author of dozens of publications–
`
`reviewed Barber and also declared that it was “submitted January 30, 1996, [and]
`
`archived in Massachusetts Institute of Technology Libraries April 11, 1996.” (APL
`
`1008, ¶ 8.) Dr. Grimes further points out that “the entirety of Barber’s disclosure is
`
`strikingly similar to that of the ’290 patent. The earlier-published Barber thesis ac-
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`- 3 -
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`

`
`Case IPR2015-00373
`Patent 6,128,290
`tually describes many of the features of the ’290 patent in greater detail than the
`
`’290 patent itself.” (Id. at 32.)
`
`In its Preliminary Response, Patent Owner avoided addressing the substance
`
`of Barber altogether. Patent Owner only argued that the ’290 patent is entitled to a
`
`priority date earlier than the publication date of Barber. (Preliminary Response,
`
`Paper 7, p. 20.) Patent Owner did not argue that Barber fails to qualify as prior art
`
`for lack of public accessibility or that the stamped date on Barber’s cover does not
`
`establish a publication date. Indeed, Patent Owner appears to have conceded the
`
`public accessibility of Barber, stating that “Barber did not become publicly availa-
`
`ble at least until April 11, 1996.” (Id.)
`
`The Board’s Institution Decision sua sponte raised the issue of whether Bar-
`
`ber qualifies as prior art based on the stamped date on its cover page. (Institution
`
`Decision, Paper 8, pp. 10-11.) The Board asserted that the stamped date “would
`
`appear to be a hearsay statement.” (Id. at 10.) Yet the Board acknowledged that
`
`Apple may establish that the statement is excluded from hearsay or that an excep-
`
`tion applies. (Id. at 10-11.) But the Board supposed that “the stamp does not estab-
`
`lish when, if ever, the thesis became publicly accessible.” (Id. at 11.) Without
`
`providing the parties the opportunity to employ the mechanisms under 37 C.F.R. §
`
`42.64(b), the Board concluded that Barber does not qualify as prior art and elected
`
`not to institute inter partes review based on Barber.
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`- 4 -
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`

`
`
`
`V. RRationale ffor Rehearring
`
`
`
`
`
`
`
`
`
`AA request ffor rehearinng “must sspecificallyy identify
`
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`Case IPPR2015-000373
`
`
`Paatent 6,1288,290
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`all matter
`
`
`
`s the partyy be-
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`
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`place wheere each mmatter
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`
`
`
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`or a replly.” 37 C..F.R.
`
`
`
`
`
`lieves thhe Board mmisappreh
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`
`
`
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`was preeviously aaddressed
`
`
`
`
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`ended or ooverlookedd, and the
`
`
`
`
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`in a motiion, an oppposition,
`
`
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`identifies
`§ 42.71(d). Apple
`
`
`
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`and explaiins all suchh matters bbelow.
`
`
`
`
`
`
`
`AA.
`
` The
`
`Board ovverlooked
`
`
`
`
`Patent OOwner’s cconcessionn of Barbber’s
`evi-
`
`
`
`
`public accessibbility andd misapprrehended
`
`the weighht of the
`
`
`dence in the reecord.
`
`
`
`PPatent Ownner did nott argue in
`
`
`
`
`
`
`
`its Prelimiinary Respponse that
`
`
`
`
`
`Barber faiils to
`
`qualify
`
`
`
`as prior arrt for lack
`
`of public
`
`
`
`accessibiliity. And P
`
`
`
`atent Ownner did nott dis-
`
`
`
`
`
`pute thaat the stampped date suufficiently
`
`
`
`
`
`
`
`establishees a publicaation date.
`
`
`
`
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`To the conntra-
`
`
`
`ry, Pateent Owner
`
`conceded
`
`
`
`the publicc accessibi
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`
`
`lity of Barrber, statinng that “Baarber
`
`
`
`
`
`
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`1996.” (Prreliminaryy Re-
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`did not
`
`
`
`become publicly available at lleast until
`
`
`
`
`
`April 11,
`
`
`
`sponse,
`
`
`
`p. 20.) AApple respeectfully assserts that tthe Board
`
`
`
`
`
`
`
`
`
`overlookeed this connces-
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`
`
`
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`sion. Foor this reasson alone,
`
`
`
`the Board
`
`
`
`should havave addresssed the meerits of the
`
`
`
`
`
`pro-
`
`
`
`posed gground of innvalidity bbased on Barber.
`
`
`
`
`
`
`
`
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`MMoreover,
`
`
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`particularlly in vieww of Patennt Owner’ss concessiion, the BBoard
`
`
`
`
`
`
`
`
`
`
`
`
`
`misapprrehended tthe weight
`
`
`
`
`
`of the eviddence in thhe record.
`
`
`
`
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`First, on iits face, Baarber
`
`
`
`
`
`includess a stampeed date of AApril 11, 11996 from
`
`
`
`
`
`
`
`
`
`
`
`
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`the MIT LLibrary. Thhis alone lleads
`
`
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`to the llogical connclusion thhat Barberr was publlicly accesssible as oof the stammped
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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`date. Seecond, botth Apple aand Dr. Grrimes asseert that Appril 11, 19
`
`
`
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`
`
`
`
`
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`
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`96 is Barbber’s
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`- 5 -
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`

`
`
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`publicattion date. AAnd third,
`
`
`
`
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`Case IPPR2015-000373
`
`
`Paatent 6,1288,290
`
`
`Patent Owwner does nnot disputee–and, in ffact, conce
`des–
`
`
`
`
`
`6 is Barbe
`that Aprril 11, 199
`
`
`r’s publicaation date.
`
`
`
`So, all of
`
`
`
`the evidennce presenttly in
`
`
`
`
`
`the recoord suggessts that Barrber’s publlication daate is Apri
`
`
`
`
`
`
`
`
`
`
`
`l 11, 19966. Accordinngly,
`
`
`
`
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`Apple rrespectfullyy asserts tthat the Booard misappprehendedd the weigght of the
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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`NNumerous BBoard deciisions estaablish a patttern of lettting prior
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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`dence inn finding thhat Barberr does not qqualify as pprior art.
`
`
`
`
`
`BB.
`
`
`
`
`.R. § 42.664(b)
`Board miisapprehennded the
`
`The
`
`
`purpose oof 37 C.F
`
`
`
`
`an establiished patttern of coonduct byy the
`and
`
`acted conntrary to
`
`Boarrd.
`
`
`
`out betwween the
`
`
`
`parties.1 TTo effectivvely imposse a preemmptive corrroborationn re-
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`1
`See, e.g.,
`
`
`
`
`Informaticca Corporration v. PProtegrity CCorporatioon, CBM2
`
`
`
`
`
`
`
`015-
`
`00021,
`
`
`
`
`
`
`
`Institutionn Decisionn, pp. 29-330 (Paper
`
`
`
`14, Jun. 11, 2015) (iinstituting
`
`
`
`trial
`
`evi-
`
`art issues
`
`play
`
`
`
`based oon paper wwith date inn heading
`
`
`
`
`
`
`
`and notingg that “[a]llthough a
`
`
`
`
`
`printed daate is
`
`
`
`not an aabsolute shhowing of f public avvailability,
`
`
`
`
`
`
`
`
`
`we are peersuaded it
`
`
`
`is a sufficcient
`
`
`
`thresholld showingg at this sttage of thee proceedinng”); SipNNet EU S.RR.O. v. Straaight
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Path IPP Group, IInc., IPR20013-002466, Final WWritten Deccision (Papper 62, Occt. 9,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`2014) (iinstituting
`
`
`
`trial basedd on a Winndows NTT TCP/IP UUser Guidee based onn dis-
`
`
`
`
`
`
`
`
`
`
`
`
`
`seminattion with sooftware paackages andd weighingg the evideence in the
`
`
`
`
`
`
`
`
`
`
`
`
`
`record reggard-
`
`
`
`ing prinnted publiccation statuus in the
`
`
`
`
`
`
`
`final writtten decisioon); Palo AAlto Netwoorks,
`
`
`
`
`
`
`
`
`
`Juniper NNetworks, IInc., IPR22013-003699, Institutiion Decisiion, pp. 1
`
`
`
`
`
`
`
`
`
`
`
`4-16
`
`Inc. v.
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`- 6 -
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`
`Case IPR2015-00373
`Patent 6,128,290
`quirement on Apple in this proceeding, but not on other petitioners, is arbitrary and
`
`capricious. Apple understands that achieving uniformity between panels can be
`
`challenging, and that each case rests on its own facts. But that is precisely why the
`
`Board should allow the factual record to develop, rather than deciding not to insti-
`
`tute inter partes review based on a particular ground.
`
`Alternative Legal Solutions, Inc. v. Employment Law Compliance, Inc.,
`
`IPR2014-00562, is particularly analogous to the present proceeding. In that case,
`
`the petitioner’s proposed grounds of invalidity were also based on an MIT Mas-
`
`ter’s dissertation. IPR2014-00562, Petition, pp. vi, 3, 4; Exhibit 1004, Susan Ellen
`
`Prytherch, Software Package Evaluation: Application to a Personnel System for
`
`the City of Boston, (M.S. Dissertation, MIT June 1977) (“City of Boston”). The pe-
`
`
`(Paper 16, Dec. 19, 2013) (instituting trial based on a report issued by a university
`
`computer science department dated “April, 1997” as making a “threshold showing”
`
`of a printed publication); Toyota Motor Corporation v. American Vehicular Sci-
`
`ences LLC, IPR2013-00417, Institution Decision, p. 33 FN6 (Paper 14, Jan. 13,
`
`2014) (finding that “an added notation from a third party source that it was pub-
`
`lished in January 1995 . . . is sufficient evidence to institute a review on the basis
`
`of the January 1995 date. Objection to evidence filed with the Petition is governed
`
`by 37 C.F.R. § 42.64(b)(2) to cure any deficiency.”).
`
`- 7 -
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`Case IPR2015-00373
`Patent 6,128,290
`tition simply listed the publication date as “June 1977,” the date on the cover page
`
`of the dissertation, without any further explanation or evidence. Id. at 3. Like the
`
`present case, the petitioner’s expert also listed the “June 1977” date. IPR2014-
`
`00562, Exhibit 1007, ¶¶ 9, 26. And as is the case here, the patent owner did not ad-
`
`dress the public accessibility of the prior art reference in its preliminary response.
`
`See IPR2014-00562, Paper 8. So, based on the evidence before it, the Board insti-
`
`tuted trial based on the dissertation. Alternative Legal Solutions, IPR2014-00562,
`
`Institution Decision (Paper 9, Oct. 7, 2014).
`
`The Board’s decision here not to institute trial based on Barber is incon-
`
`sistent with the factually similar Alternative Legal Solutions case. The comparison
`
`below of the cover pages of the two Exhibits reveals striking similarities. The
`
`“February 1996” date on Barber is actually more akin to the “June, 1977” date on
`
`“City of Boston.” The stamped date asserted by Apple as Barber’s publication date
`
`is, in fact, even more evidence of public accessibility than is provided on the face
`
`of “City of Boston.”
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`- 8 -
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`Case IPR2015-00373
`Patent 6,128,290
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`
`
`
`
`Accordingly, Apple respectfully asserts that, as in Alternative Legal Solu-
`
`tions, at a minimum, a threshold showing has been made that Barber qualifies as
`
`prior art. To the extent Patent Owner disagrees, the Board should allow Patent
`
`Owner the opportunity to object to the evidence and for Apple to subsequently
`
`provide supplementary evidence, as provided by the framework under 37 C.F.R.
`
`§ 42.64(b).
`
`Apple does not mean to imply that the Board cannot ever decide whether an
`
`asserted reference qualifies as prior art at the institution stage. No doubt, some ref-
`
`erences will warrant disqualification as a matter of law based on the undisputed
`
`facts. But here, where there is presently no dispute between the parties as to
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`- 9 -
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`
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`whetherr Barber quualifies as
`
`
`
`
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`prior art, iit is unfair
`
`to cut the
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`0373 Case IPPR2015-00
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`Paatent 6,1288,290
`
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`inquiry shhort and preema-
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`
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`turely ddecide the mmerits.
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`
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`CC.
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`
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`Board immposed aan arbitrrary requuirement
`The
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`on Applee to
`
`
`
`
`
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`preemmptively pprovide addditional eevidence tthat Barbeer qualifiees as
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`priorr art.
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`35 U.S.C. §§ 312(a) pprovides thhe requiremments goveerning petiitions for iinter
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`partes rreview. Appple satisfiied these sstatutory reequirementts by clearrly identifyying,
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`in writinng and witth particulaarity, eachh challengeed claim, thhe ground
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`s on whichh the
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`the groundds. (Petitioon, pp. 8-9
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`24.) Annd, as requuired, Applle includedd a copy off the print
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`on–Barbber–and also a declarration suppporting thee proposed
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`ed publicaation reliedd up-
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`MMoreover, AApple’s Peetition specifically adddressed hhow each aand every llimi-
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`either discclosed by BBarber or wwould havee been obvvious
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`tation of claims 9
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`and 10 is
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`to a perrson of orddinary skilll in the artt in view oof Barber. ((Id. at 11-224.) Indeedd, as
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`Apple ppointed ouut in the PPetition, sstrikingly
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`similar deescriptions
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`and “coinned”
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`terms aare found iin both Baarber and tthe ’290 ppatent. (Id.. at 12.) BBarber’s auuthor
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`even thhanks Phil
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`Carvey, thhe named
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`inventor oon the ’2990 patent.
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`(Id.) The
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`stance oof Barber
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`analyzed iin the Petiition show
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`view off Barber. TThus, “the information presentted in the
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`petition .
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`. . shows
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`a reasonabble likelihood that thhe petitionner would pprevail witth respect
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`to at
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`least 1 oof the claimms challengged in the petition.” 335 U.S.C.
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`§ 314(a).
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`Case IPR2015-00373
`Patent 6,128,290
`Neither the statutes nor the regulations require preemptive corroborating ev-
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`idence or absolute proof of public accessibility of a printed publication. Yet the
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`Board arbitrarily imposes this higher burden on Apple by finding that “Apple has
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`not identified sufficient evidence on the record before us to qualify Barber as prior
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`art” even though Patent Owner did not argue this issue. (Institution Decision, p.
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`11.) Moreover, the Board elected not to institute trial based on a perceived defi-
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`ciency that is contemplated by the regulations and for which the regulations pro-
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`vide a remedy.
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`Indeed, the regulations governing inter partes review specifically provide
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`the parties with a mechanism for objecting to evidence submitted during the “pre-
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`liminary proceeding.” 37 C.F.R. § 42.64(b)(1). If a party wishes to object to any
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`evidence submitted prior to institution, e.g., that a printed publication was not pub-
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`licly accessible as of the asserted date, then such an objection “must be served
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`within ten business days of the institution of the trial.” Id. Importantly, the objec-
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`tions are served on the proponent of the evidence so that “[t]he party relying on ev-
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`idence to which an objection is timely served may respond to the objection by
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`serving supplemental evidence within ten business days of service of the objec-
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`tion.” 37 C.F.R. § 42.64(b)(2) (emphasis added). Apple respectfully asserts that the
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`Board overlooked that the regulations provide a framework for addressing eviden-
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`tiary issues, encouraging the parties to resolve disputes by serving supplemental
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`Case IPR2015-00373
`Patent 6,128,290
`evidence. And unresolved disputes can be accommodated by another mechanism,
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`filing a motion to exclude the evidence. 37 C.F.R. § 42.64(c).
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`By deciding sua sponte that Barber does not qualify as prior art, the Board
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`misapprehended the purpose of the regulations, which allow the parties to object to
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`and subsequently supplement evidence. For example, were Patent Owner to object
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`to Barber, which it has not, Apple would be afforded the opportunity to provide
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`supplemental evidence to further establish the public accessibility of Barber. For
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`example, Apple might submit a declaration from a librarian at MIT explaining that
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`the stamped date on Barber means that it was indexed, cataloged, and shelved in
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`the library on April 11, 1996. Instead, the Board’s decision foreclosed any oppor-
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`tunity to develop the record. This unfairly prejudices Apple, eliminating the oppor-
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`tunity to provide supplemental evidence.
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`Denying institution based on Barber is particularly prejudicial in the context
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`of the factually intensive inquiry for the public accessibility of a prior art reference.
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`Suffolk Techs., LLC v. AOL Inc., 752 F.3d 1358 (Fed. Cir. 2014). Apple agrees
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`with the Board’s assertion that “[w]hether a reference is publicly accessible is de-
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`termined on a case-by-case basis, based on the ‘facts and circumstances sur-
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`rounding the reference’s disclosure to members of the public.’” (Institution Deci-
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`sion, p. 10 (quoting In re Lister, 583 F.3d 1307, 1311 (Fed. Cir. 2009)) (emphasis
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`added).) But the Board did not permit the parties here to develop those facts and
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`Case IPR2015-00373
`Patent 6,128,290
`circumstances. Respectfully, the Board misapprehended that Apple was preemp-
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`tively required to provide additional evidence beyond the stamped date on Barber’s
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`cover. Whether a printed publication qualifies as prior art is a factually intensive
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`inquiry. So the Board should allow the parties to further develop the record, if they
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`find it necessary to do so.
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`VI. Conclusion
`The stamped date on Barber’s cover page meets a threshold showing for
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`printed publication status. Patent Owner has not refuted this. The Board over-
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`looked this fact and misapprehended the law by imposing a burden that is not sup-
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`ported by either the statutes or the regulations governing inter partes review.
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`Should the Board decide to institute trial based on Barber, Patent Owner can object
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`to the evidence and, if necessary, file a motion to exclude at the appropriate time.
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`Thus, there is no prejudice to Patent Owner. The Board should therefore also insti-
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`tute trial based on Barber and allow the parties to resolve any dispute, or supple-
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`ment the record, using the mechanisms in 37 C.F.R. § 42.64(b). When the record
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`contains all the facts, the Board can weigh the evidence and decide whether Barber
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`qualifies as a printed publication.
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`Case IPR2015-00373
`Patent 6,128,290
`Apple therefore respectfully requests reconsideration of the Board’s decision
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`not to institute inter partes review of claims 9 and 10 of the ’290 patent based on
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`Respectfully submitted,
` STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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`/DAVID K.S. CORNWELL/
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`David K.S. Cornwell, Registration No. 31,944
`Mark W. Rygiel, Registration No. 45,871
`Attorneys for Petitioner Apple
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`Barber.
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`Date: July 9, 2015
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`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
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`Case IPR2015-00373
`Patent 6,128,290
`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(e), 42.105(a))
`The undersigned hereby certifies that the above-captioned PETITIONER’S
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`REQUEST FOR REHEARING OF INSTITUTION DECISION UNDER 37
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`C.F.R. § 42.71(d) was served electronically via e-mail in its entirety on July 9,
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`2015, on the following parties:
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`Andriy Lytvyn (Lead Counsel)
`Anton J. Hopen (Back-up Counsel)
`Nicholas Pfeifer (Back-up Counsel)
`SMITH & HOPEN, P.A.
`180 Pine Avenue North
`Oldsmar, FL 34677
`andriy.lytvyn@smithhopen.com
`anton.hopen@smithhopen.com
`nicholas.pfeifer@smithhopen.com
`
` STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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`Date: July 9, 2015
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`/DAVID K.S. CORNWELL/
`
` David K.S. Cornwell
`Attorney for Petitioner Apple
`Registration No. 31,944
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`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600