`
`From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Christopher Bovenkamp <cbovenkamp@McKoolSmith.com>
`Wednesday, September 19, 2018 4:15 PM
`Trials
`Micallef, Joseph; Dillon, Samuel; Wolff, Jason (NON-SIDLEY @FR.COM); Andrew Heinz;
`Kevin McNish; Kevin Hess; Hatcher, Michael D.
`IPR2015-00483, 484, 485, 486, 1729, 1731, 1732, 1734
`
`Follow Up Flag:
`Flag Status:
`
`Follow up
`Flagged
`
`Your Honors—
`
`
`On September 14, the Board directed the parties to meet and confer about a procedure for briefing the outstanding
`issues. The parties met and conferred, but did not reach agreement. The parties’ respective positions are set forth
`below.
`
`
`
`Petitioners
`
`
`Petitioners believe that, because Petitioners bear the burden on the issues to be decided, they should file an opening
`brief and be given a chance to reply to any response to that brief. Petitioners also do not believe bifurcation of issues as
`requested by Patent Owner below is warranted or efficient as the Board should address and resolve all issues before any
`appeal. Petitioners therefore propose a briefing procedure as follows:
`
`‐ Three weeks after the Board sets the schedule/procedure, Petitioners will file a joint opening brief of 15 pages
`addressing all live issues;
`‐ Two weeks after the opening brief deadline, Patent Owner will file a response brief of 15 pages;
`‐ One week after the response brief deadline, Petitioners will file a joint reply brief of 5 pages.
`
`If the Panel does bifurcate the bar issues and have them briefed separately first, Petitioners request three rounds of
`briefing as set forth above, but with 7 page opening and response briefs and a 3 page reply brief.
`
`Regardless of the Panel’s decision on bifurcation, no new evidence should be permitted, except evidence relating to the
`applicability and effects of Section 315(e) estoppel on Petitioners in the parallel district court litigation. Since that
`estoppel arose only after the issuance of the Final Written Decisions in these proceedings, Petitioners could not have
`submitted such evidence earlier. Petitioners believe that no oral hearing is necessary, but are available for one at the
`Panel’s convenience.
`
`
`Petitioners believe that the live issues are: (1) anticipation based on the SWEB disclosure regarding modifying the UNIX
`sockets (including waiver and enablement issues related thereto), (2) obviousness based upon request forwarding, (3)
`whether Section 315(b) may bar Microsoft from continuing these IPRs under the Click‐to‐Call decision (including the
`mandate rule and due process issues related thereto), and (4) whether, if Microsoft is barred, IBM can continue these
`IPRs as a previously joined party.
`
`Patent Owner
`
`
`Patent Owner believes the briefing should be bifurcated because without the requisite statutory authority the Board
`does not have the authority to address the other, substantive issues. Thus, Patent Owner proposes that the parties first
`submit briefing on whether the Board has statutory authority to act given the alleged time‐bar issues. If the Board finds
`
`1
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`
`Regards,
`
`Chris Bovenkamp
`
`it has the requisite statutory authority, then (and only then) the parties would submit briefing on the substantive issues
`on which the Federal Circuit remanded the case. If the Board finds that it does not have the requisite statutory
`authority, then it would dismiss the case, and petitioner(s) would be free to appeal that decision. If the Patent Owner’s
`proposal is adopted, then Patent Owner proposes that each party submit simultaneous 7‐page briefs on the time‐bar
`issue three weeks following the Board’s order resolving the procedural dispute between the parties followed two weeks
`later by 7‐page responsive briefs. If, instead, Petitioner’s time‐bar briefing proposal is adopted, then Patent Owner
`would request the good faith disclosure of Petitioner’s “defenses” to the time bar such that Patent Owner may address
`the substance of Petitioner’s arguments in its initial brief. If substantive briefing occurs, the procedure outlined below
`would take place:
`
`‐ Two weeks after the Board’s decision concluding it has authority to act in view of the time bar, Petitioners will
`file a joint opening brief of 15 pages addressing all live issues;
`‐ Two weeks after the opening brief deadline, Patent Owner will file a response brief of 15 pages;
`‐ One week after the response brief deadline, Petitioners will file a joint reply brief of 5 pages.
`
`
`Patent Owner believes that no new evidence should be permitted. To the extent Petitioners want to introduce evidence
`outside the current record, Petitioners should file a motion with the Board setting forth the grounds and basis for its
`request (including what theories such evidence may arguably be relevant to). Patent Owner also believes that no oral
`hearing is necessary, but is available for one at the Panel’s convenience.
`
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