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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`________________
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`APPLE INC., MOTOROLA MOBILITY LLC, and
`TOSHIBA AMERICA INFORMATION SYSTEMS, INC.,
`Petitioners
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`v.
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`GLOBAL TOUCH SOLUTIONS, LLC
`Patent Owner
`________________
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`Case IPR2015-01173
`Patent No. 7,329,970 B2
`________________
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`PATENT OWNER’S REQUEST FOR REHEARING
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`________________
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`APPLE INC., MOTOROLA MOBILITY LLC, and
`TOSHIBA AMERICA INFORMATION SYSTEMS, INC.,
`Petitioners
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`v.
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`GLOBAL TOUCH SOLUTIONS, LLC
`Patent Owner
`________________
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`Case IPR2015-01173
`Patent No. 7,329,970 B2
`________________
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`PATENT OWNER’S REQUEST FOR REHEARING
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`TABLE OF CONTENTS
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`TABLE OF CONTENTS
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`TABLE OF AUTHORITIES
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`I.
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`II.
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`STANDARD OF REVIEW
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`SPECIFIC ACTIONS COMPLAINED OF
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`III. RECITATION OF RELEVANT FACTS
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`IV. ARGUMENT
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`A. The Board’s Action is Contrary to Law
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`B. The Board’s Action is Unsupported by an Evidentiary
`Record
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`C. The APJ’s Action is Contrary to Case Law
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`D. The Action By the Board Works Extreme Prejudice
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`i
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`ii
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`3
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`4
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`6
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`12
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`13
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`V. CONCLUSION
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`TABLE OF AUTHORITIES
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`CASES
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`Abrutyn v. Giovanniello,
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`15 F.3d 1048 (Fed. Cir. 1994)
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`Array BioPharma, Inc. v. Takeda Pharmaceutical Corp.,
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`IPR2015-00754, Paper No. 20, 2015
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`Bilstad v. Wakalopulos,
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`386 F.3d 1116 (Fed. Cir. 2004)
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`Cavanagh v. McMahon,
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`1998 WL 1744670 fn. 25 (BPAI)
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`Coalition for Affordable Drugs IX, LLC,
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`2016 WL 1082935 fn. 5 (PTAB)
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`Conopco, Inc. v. The Procter and Gamble Company,
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`2014 WL 2738465*1 (PTAB)
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`Conmed Corp. v. Bonutti Skeletal Innovations, LLC,
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`2014 WL 1101709*3 (PTAB)
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`English v. Ausnit,
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`38 USPQ.2d 1625, 1993 WL 835293*13 (BPAI 1993)
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`In re Gartside,
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`203 F.3d 1305 (Fed. Cir. 2000)
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`Intelligent BioSystems, Inc. v. Illumina Cambridge, Ltd.,
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`821 F.3d 1359 (Fed. Cir. 2016)
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`Lowe’s Home Centers, LLC v. Reddy,
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`2016 WL 1275315*8 (PTAB)
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`Mexichem Amanco Holdings S.A. v. Honeywell International, Inc.,
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`2015 WL 1009198*20 (PTAB)
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`9
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`9,10
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`3
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`7
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`3
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`15
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`9
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`8,9
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`3
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`7
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`15
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`ii
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`10
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`10
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`4
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`3
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`4,5
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`4
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`4,7
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`Microsoft Corp. v. Enfish, LLC,
`IPR2013-00059, Paper No. 17, (2014)
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`Zhongshan Broad Ocean Motor Co., Ltd. v. Nidec Motor Corporation,
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`IPR2014-01123, Paper No. 20 (2015)
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`RULES
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`37 C.F.R. § 42.1
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`37 C.F.R. §42.5(b)
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`37 C.F.R. §42.71(b)
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`Bd. Rule 21
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`Bd. Rule 22
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`Bd. Rule 53
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`Bd. Rule 53(a)
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`Bd. Rule 64(a)(2)
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`Bd. Rule 64(b)(2)
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`Bd. Rule 71(d)
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`Bd. Rule 104(c )
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`4,7,13
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`7
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`13
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`4
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`iii
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`Patent Owner Global Touch Solutions, LLC (“PO” herein)
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`respectfully requests rehearing of the Interlocutory Decision of the Board
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`presented in a conference call dated June 30, 2016 (the transcript of that
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`conference call was submitted by Petitioners as Exhibit 1038) authorizing
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`Petitioners to make wholesale replacements of Exhibit 1003, a document
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`filed by Petitioners more than a year ago on May 11, 2015, and Exhibit
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`1035, a document filed by Petitioners on June 6, 2016. Neither exhibit was
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`a Declaration although both are styled that way. Neither Exhibit was
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`admissible evidence. Without evidence or basis, the Decision of the Board
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`permitted replacement of Exhibits 1003 and 1035 with “Corrected” Exhibits
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`1003 and 1035. PO seeks rehearing of that Decision.
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`With respect, PO submits that the Decision, which replaces
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`inadmissible documents with purportedly admissible Declarations only after
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`PO’s objection to the same, was made without the consideration of any
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`evidence, and is contrary to the very clear Rules of the Patent Trial and
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`Appeal Board specifically crafted for the conduct of Inter Partes Review
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`proceedings. Accordingly, PO respectfully submits the Decision whose
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`rehearing is sought is an abuse of discretion.
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`2
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`I.
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`STANDARD OF REVIEW
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`Rehearing of non-panel interlocutory decisions is by a panel which
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`reviews the decision for an abuse of discretion. 37 C.F.R. §42.71(b). In the
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`current situation, PO seeks review of an Interlocutory Decision and Order
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`made by Administrative Patent Judge Shaw. Accordingly, PO requests
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`panel review. It may be appropriate to refer the Decision to a panel other
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`than that assigned to the above-captioned IPR, because the assigned panel
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`made no review or findings of any kind.
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` An abuse of discretion may arise where a decision is based on an
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`erroneous interpretation of law, if it is not supported by substantial evidence,
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`or if an unreasonable judgment is made in weighing relevant factors.
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`Conopco, Inc. v. The Procter and Gamble Company, 2014 WL 2738465*1
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`(PTAB). Our reviewing Court applies a similar standard, Intelligent Bio-
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`Systems, Inc. v. Illumina Cambridge, Ltd., 821 F.3d 1359, 1367 (Fed. Cir.
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`2016) specifically noting that an abuse of discretion may be found, when
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`reviewing actions in an IPR, when the “decision: (1) is clearly unreasonable,
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`arbitrary or fanciful; (2) is based on an erroneous conclusion of law; (3) rests
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`on clearly erroneous fact finding; or (4) involves a record that contains no
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`evidence on which the Board could rationally base its decision,” citing
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`Bilstad v. Wakalopulos, 386 F.3d 1116, 1121 (Fed. Cir. 2004).
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`3
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`As the Board’s action is contrary to Rule (Rule 53(a)), is not based on
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`any provisions of the Rules provided for at 37 C.F.R. §§42.1 et seq., and has
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`no authority cited in support of the action, it is respectfully submitted to be
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`an abuse of discretion. The action by the Board, or inaction, is
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`“unreasonable, arbitrary or fanciful” and “involves a record that contains no
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`evidence on which the Board could rationally base its decision.”
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`Accordingly, PO respectfully submits the determination permitting
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`Petitioners to make the changes to the record complained of herein without
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`basis or authority is an abuse of discretion.
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`II.
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`SPECIFIC ACTIONS COMPLAINED OF
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`The provisions of Bd. Rule 71(d) provide that the party seeking
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`rehearing must “specifically identify all matters the party believes the Board
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`misapprehended or overlooked, and the place where each matter was
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`previously addressed in a motion, opposition or reply.” Here, the
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`Administrative Patent Judge (“APJ” herein) gave authorization to Petitioners
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`to alter the evidentiary record in a profound fashion that may impact the
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`Final Decision. This was done, PO submits, in violation of Bd. Rule 53
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`without the proceeding specified in Bd. Rule 22 which provides for Motions
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`that may provide relief from the Rules. This was done without identifying a
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`basis for the relief granted, as provided for in Bd. Rule 21. The Decision of
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`the APJ did so without developing an evidentiary record, or making
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`appropriate findings of fact. Accordingly, PO is unable to identify what
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`evidence the Board may have “misapprehended or overlooked” and cannot
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`point to “the place where each matter was previously addressed in a motion,
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`opposition or reply.” As an alternative PO identifies the specific actions it
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`submits constitute an abuse of discretion in this proceeding.1
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`A.
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`The APJ’s Decision reflected in Exhibit 1038 gives Petitioners
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`permission to replace an inadmissible document, Exhibit 1003, with an
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`affidavit without explanation or basis for that replacement. The replacement
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`is being made more than a year after the initial filing and after PO’s
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`Objection to Evidence was filed.
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`B.
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`Exhibit 1038 gives Petitioners permission to replace an
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`inadmissible document, Exhibit 1035, with what purports to be an affidavit
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`without explanation or basis for that replacement. The replacement is being
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`made after PO objected to the document in question in accordance with the
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`current schedule.
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`1 The authorization provided in Exhibit 1038 applies to five (5) different
`IPRs. This Request is specific for this proceeding. A companion request is
`being simultaneously filed in IPR’s 2015-01172, 2015-01603 and 2015-
`01616. Undersigned counsel is not of record in the other proceedings
`addressed by Exhibit 1038, and accordingly makes no representations
`whatsoever with respect to those proceedings.
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`-
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`5
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`III. RECITATION OF RELEVANT FACTS
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`On May 11, 2015, Petitioners filed a petition seeking Inter Partes
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`Review of certain claims of U.S. Patent No. 7,329,970. That petition relied
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`heavily on Exhibit 1003, which is entitled “Declaration of Paul Beard” but is
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`in fact an unsworn document. In part relying on the knowledge that Exhibit
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`1003 was not admissible, and therefore could not support an adverse Final
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`Judgment, PO did not submit a Preliminary Response. The Board issued its
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`Decision to Institute on November 17, 2015, relying heavily on Exhibit
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`1003, see, e.g., pages 4–5 and 8.
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`PO filed its Response, and concluding the initial showing in Exhibit
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`1003 was inadequate, Petitioners filed a Reply, relying not only on Exhibit
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`1003, but another unsworn document, Exhibit 1035 filed June 6, 2016. PO
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`timely objected to Exhibit 1035 as inadmissible. Petitioner responded as
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`provided for in the Rules, by the service of supplemental evidence which
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`was also inadmissible. Then Petitioners acknowledged that both
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`“Declarations” were inadmissible and, in what Petitioners’ counsel referred
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`to “as a matter of administrative completeness”, Exhibit 1038, page 14,
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`sought permission to replace ALL of the Beard Declarations filed.
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`6
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`IV. ARGUMENT
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`A. The Board’s Action is Contrary to Law
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`There is no question that Exhibits 1003 and 1035, relied upon by
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`Petitioners, are inadmissible. Uncompelled testimony must be in the form of
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`an affidavit, Bd. Rule 53(a). Although PO did in fact challenge the
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`documents on this ground, no objection or challenge is necessary. This is a
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`Board Rule, not an evidentiary decision calling for weighing that testimony
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`or application of the Federal Rules of Evidence. It is a per se rule. Lowe’s
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`Home Centers, LLC v. Reddy, 2016 WL 1275315*8 (PTAB) and Coalition
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`for Affordable Drugs IX, LLC 2016 WL 1082935 fn. 5 (PTAB). The APJ’s
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`determination that it is acceptable for Petitioners, who clearly had no inkling
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`that the Exhibits were inadmissible until PO has objected to those
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`documents, to wait until the time for filing supplemental evidence has
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`passed, and then submit new Declarations when the Declarant is beyond the
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`reach of cross-examination, effectively eliminates the impact of Rule 53 –
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`making virtually any document admissible provided it is a “corrected”
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`version, without requirement that the party so relying on the document
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`demonstrates evidence of inadvertence or clerical error.
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`The Rules clearly provide for an appropriate time for Petitioners to
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`“cure” defects in their evidence. Bd. Rule 64(a)(2). Petitioners did not
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`properly avail themselves of this provision. Under certain circumstances,
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`discussed below in the section addressing case law, a Petitioner may correct
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`typographical errors in a Petition. Bd. Rule 104(c). Petitioners did not avail
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`themselves of this Rule.
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`The action by the APJ reflected in Exhibit 1038, allowing replacement
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`of inadmissible documents with documents that purport to be sworn
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`declarations2, the error which was discovered not by Petitioners but by PO
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`following the provisions of the Rules, undercuts and is therefore contrary to
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`the express provisions of those Rules as well as their spirit and intent. It
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`constitutes an abuse of discretion on this basis. Reversal is requested.
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`B. The Board’s Action Is Unsupported by an Evidentiary Record
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`Decisions in an IPR are to be made on an evidentiary record. The
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`Board has discretion to make many adjustments to the procedures set forth
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`in an IPR. The Board clearly has the discretion to make determinations of
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`admissibility of evidence. Without question, the Board has discretion to
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`waive or amend any provision of the Rules. 37 C.F.R. 42.5(b). However,
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`with respect, that discretion is not unbounded, and such changes and
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`determinations must be made on the basis of evidence. Failure to provide an
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`2 The “Corrected” Exhibits are not admissible either – as explained in PO’s
`Motion to Exclude.
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`8
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`evidentiary record is an abuse of discretion. In re Gartside, 203 F.3d 1305
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`(Fed. Cir. 2000). In this particular case, there is NO evidence of any type to
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`support the APJs conclusion that the failure to provide sworn testimony by
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`Petitioners was “inadvertent.” Exhibit 1038, 18:22. Necessarily, the record
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`“contains no evidence upon which the APJ rationally could have based the
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`decision.” Cavanagh v. McMahon, 1998 WL 1744670 fn.25 (BPAI)
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`(reviewing the standards for finding an abuse of discretion). See also,
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`Abrutyn v. Giovanniello, 15 F.3d 1048, 1050-51 (Fed. Cir. 1994).
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`As discussed below, the APJ’s unsupported decision to permit
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`wholesale changes to the record at the 11th hour works enormous prejudice
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`to PO. But even if it did not, some basis in the record for the Board’s
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`exercise of discretion should be shown. An absence of prejudice alone does
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`not support the waiver of the rules made in this case. English v. Ausnit, 38
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`USPQ 2d 1625, 1993 WL 835293*13 (BPAI 1993). In the absence of a
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`record, the unsupported exercise of that discretion is an abuse of discretion,
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`and PO respectfully requests the permission granted be vacated or the
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`Decision of the Board reversed.
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`C. The APJ’s Action is Contrary to Case Law
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`The problem of the presentation of uncompelled testimony in unsworn
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`documents in an IPR is not confined to this matter. The Board has looked at
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`9
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`this issue in Array BioPharma, Inc. v. Takeda Pharmaceutical Corp., IPR
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`2015-00754, Paper No. 20, 2015. Therein, Petitioner sought permission, as
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`here, to replace an unsworn document submitted in support of a Petition for
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`Review with an affidavit. As here, PO opposed. The Board set up a Motion
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`period to resolve that issue. Petitioner submitted evidence in the form of
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`sworn testimony that its failure to append the necessary jurats was an
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`oversight and that it had intended to do so. Relying heavily on the submitted
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`evidence, the Board found correction proper, expressly noting that “We
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`consider whether to grant motions to correct exhibits on a case-by-case
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`basis.” Id. Slip op. at 4.
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`Only after review of the evidence did the Board conclude that the case
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`more closely resembled a prior Board decision where permission to correct
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`was granted after submission of evidence, than one where it was not, after
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`submission of evidence. Contrasting Microsoft Corp. v. Enfish, LLC.,
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`IPR2013-00059, Paper No. 17, (permission granted) with Zhongshan Broad
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`Ocean Motor Co., Ltd. v. Nidec Motor Corporation, IPR2014-01123, Paper
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`No. 20 (permission denied) the Board in each case carefully developed the
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`evidentiary record it required to make a determination as to whether to
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`provide the waiver requested. This is a process the Board has established,
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`which the APJ elected not to follow, without even giving PO’s counsel an
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`10
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`opportunity to be heard. (PO indicated its opposition to the proposal, but the
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`APJ determined, without express finding, that no further discussion or
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`explanation of basis was appropriate). Exhibit 1038, pp. 18–20.
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`Respectfully, the APJ made the finding that the very experienced
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`counsel representing Petitioners, and the witness retained by Petitioners’
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`counsel, “inadvertently” omitted a critical aspect of the witness’s multiple
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`Declarations, Exhibit 1038, page 18. Experienced counsel are generally held
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`to know the provisions of the Rules. PO respectfully submits it requires an
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`evidentiary showing of some persuasiveness to demonstrate that each and
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`every one of counsel retained by Petitioners inadvertently omitted the
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`singular provision of a document that makes it sworn testimony not once,
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`but on ten (10) different occasions. At some point, with respect, evidence
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`distinguishing inadvertence from negligence should be advanced.
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`Accordingly, PO respectfully submits that proceeding without a
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`requirement for an evidentiary record, where the party seeking relief is
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`already aware of the very Rules involved and the penalties that arise from
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`failure to abide by those rules, is an abuse of discretion. Reversal of the
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`Board’s authorization is respectfully requested.
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`D. The Action By the Board Works Extreme Prejudice
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`-
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`11
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`The case law discussed above takes into consideration the prejudice to
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`both parties. In Petitioners’ counsel’s remarks to the Board that resulted in
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`issuance of Exhibit 1038, the representation was made that the correction
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`sought worked no prejudice to PO. Exhibit 1038, p. 14:6– 9. It is unclear
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`whether the APJ relied on this representation made by Petitioners, but it is in
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`any event, respectfully, nonsense.
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`PO relied on the inadmissible nature of Exhibit 1003 in making the
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`decision to not respond to the Petition with a Preliminary Response,
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`expecting Petitioner would correct the record, and knowing in the absence of
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`correction, Petitioner would fail for lack of evidence. When Petitioner
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`failed to, but made the same mistake again with Exhibit 1035, PO objected.
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`Petitioners then served yet another attempt at sworn testimony. That
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`“supplemental evidence” failed so badly to meet the requirements of the
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`Rules that Petitioners’ counsel was compelled to seek yet another
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`opportunity to “fix it” by providing a “Replacement Declaration.”
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`Had Petitioners proceeded with the provisions set out in the Rules to
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`address this sort of thing, it is possible that some or all of Exhibits 1003 and
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`1035- or their belatedly submitted counterparts, might have been excluded.
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`At the very least, PO would have been given the opportunity to argue the
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`case. Instead, through administrative fiat not reflecting any fact finding or
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`-
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`12
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`process consideration, the Board wiped away Petitioners’ repeated failure,
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`and the expense and trouble taken by PO to follow the Rules precisely. With
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`great respect, PO submits this is an abuse of discretion.
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`There was a course set forth in the Rules for Petitioner to follow.
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`Where inadmissible evidence is submitted and then objected to, Petitioner
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`can, and in fact did, serve supplemental evidence in an attempt to cure the
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`defect. The course to follow is set forth in Bd. Rule 64(b)(2). PO followed
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`the Rules again, filing a Motion to Exclude as provided for.
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`The proper course would have been to oppose that Motion. Instead,
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`with time fast running out, Petitioners elected to seek a route not provided
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`for. Respectfully, the Board’s action in accepting that alternate is contrary
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`to the Rules, and unsupported. As it works substantial prejudice to PO, it
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`constitutes an abuse of discretion, and respectfully, the Board’s authorization
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`set forth in Exhibit 1038 should be reversed or rescinded.
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`V. CONCLUSION
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`Where the Board takes action that favors one party over another – and
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`particularly where that action works a prejudice, there should be an
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`evidentiary record to support it. Where the Board or an APJ takes action
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`contrary to the Rules of Practice, such as Bd. Rule 53(a), respectfully, either
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`an explanation or authority should be cited and should be provided. Where
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`there is no evidence of record to support an action different than that
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`required by the Rules and different than that set forth in case law addressing
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`indistinguishable circumstances, with respect, the action constitutes an abuse
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`of discretion.
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`PO respectfully submits that the Decision to permit replacement of
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`Exhibits 1003 and1035, only after objection to the same and attempted
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`cross-examination3 of the asserted author of those papers, is an abuse of
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`discretion. Reversal of that Decision is respectfully requested.
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`If, on rehearing, the Board feels Petitioners should be given an
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`opportunity to create the evidentiary record that is a prerequisite to the
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`unprecedented action reflected in Exhibit 1038, PO suggests case law be
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`followed. Petitioners should be given an opportunity to present evidence,
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`admissible evidence, which tends to demonstrate the failure to provide
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`sworn testimony was “inadvertent.” If that evidence is in the form of sworn
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`testimony, PO would promptly take cross-examination of the affiants. The
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`Board could then make a reasoned decision on whether such evidence
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`should be considered.
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`3 PO twice noticed the Deposition of Beard after its Objection to Evidence
`was filed in order, in part, to question Mr. Beard on his understanding of the
`requirements of testimony, but was precluded from doing so by the action
`reflected in Exhibit 1038.
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`Scrutiny of that record is an essential element in determining that
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`Petitioners should be permitted to once again resubmit their evidence.
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`Waivers of the Rules in an IPR are premised on such scrutiny. Mexichem
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`Amanco Holdings S.A v. Honeywell International, Inc., 2015 WL
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`1009198*20 (PTAB) (“Based on the record before us….”); Conmed Corp.v.
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`Bonutti Skeletal Innovations, LLC, 2014 WL 1101709 *3 (PTAB) (“Based
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`on the specific circumstances of this case, we exercise our discretion”).
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`With respect, the formation of such a record, and its review, is required here.
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`Respectfully submitted,
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`/s/ Steven B. Kelber
`Steven B. Kelber
`Reg. No: 30,073
`The Kelber Law Group
`1875 Eye Street, N.W., Fifth Floor
`Washington, D.C. 20006
`E-Mail: steve@kelberlawgroup.com
`Tel: (240) 506-6702
`Nathan Cristler
`Reg. No: 61,736
`Cristler IP, PLLC
`1801 21st Road North
`Arlington, Virginia 22209
`E-Mail: ncristler@cristlerip.com
`Tel: (512) 576-5166
`Counsel for Patent Owner
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`Date: July 13, 2016
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`15
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`CERTIFICATE OF SERVICE
`
`Robert Steinberg (Via E-Mail)
`Bob.steinberg@lw.com
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`Matthew J. Moore
`Matthew.moore@lw.com
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`Gabriel S. Gross
`Gabe.gross@lw.com
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`Phillip E. Morton
`pmorton@cooley.com
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`DeAnna Allen
`dallen@cooley.com
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`Joseph M. Drayton
`(jdrayton@cooley.com
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`Doris Johnson Hines
`dori.hines@finnegan.com
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`Luke McCammon
`Luke.mccammon@finnegan.com
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`/s/ Steven B. Kelber
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`Steven B. Kelber
`Registration No: 30,073
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`Date: July 13, 2016
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`Pursuant to 37 C.F.R. §§ 42.6 and 42.105, I hereby certify that on this
`13th day of July, 2016, the foregoing PATENT OWNER’S REQUEST
`FOR REHEARING was served by e-mail on counsel for Petitioner:
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