Filed on behalf of Petitioner by:
`
`Richard F. Giunta, Reg. No. 36,149
`
`Elisabeth H. Hunt, Reg. No. 67,336
`
`Randy J. Pritzker, Reg. No. 35,986
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`WOLF, GREENFIELD & SACKS, P.C.
`
`600 Atlantic Avenue
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`Boston, MA 02210
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`617.646.8000
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`Paper No. __
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`RPX CORPORATION,
`Petitioner,
`
`v.
`
`APPLICATIONS IN INTERNET TIME, LLC,
`Patent Owner.
`_____________
`
`IPR2015-01750
`Patent 8,484,111 B2
`
`IPR2015-01751
`IPR2015-01752
`Patent 7,356,482 B21
`_____________
`
`PETITIONER’S MOTION TO STAY REMAND PROCEEDINGS
`
`
`
`1 This identical paper is being filed in each proceeding identified in the above
`heading that the Board authorized the parties to use. Paper 116 at 3. Paper and
`Exhibit numbers used herein are from IPR2015-01750.
`
`
`
`
`
`
`Richard F. Giunta, Reg. No. 36,149
`
`Elisabeth H. Hunt, Reg. No. 67,336
`
`Randy J. Pritzker, Reg. No. 35,986
`
`WOLF, GREENFIELD & SACKS, P.C.
`
`600 Atlantic Avenue
`
`Boston, MA 02210
`
`617.646.8000
`
`Paper No. __
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`RPX CORPORATION,
`Petitioner,
`
`v.
`
`APPLICATIONS IN INTERNET TIME, LLC,
`Patent Owner.
`_____________
`
`IPR2015-01750
`Patent 8,484,111 B2
`
`IPR2015-01751
`IPR2015-01752
`Patent 7,356,482 B21
`_____________
`
`PETITIONER’S MOTION TO STAY REMAND PROCEEDINGS
`
`
`
`1 This identical paper is being filed in each proceeding identified in the above
`heading that the Board authorized the parties to use. Paper 116 at 3. Paper and
`Exhibit numbers used herein are from IPR2015-01750.
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`I.
`STATEMENT OF PRECISE RELIEF REQUESTED ..................................... 1
`II. GOOD CAUSE EXISTS TO GRANT A STAY .............................................. 1
`A. The Supreme Court Has Made Clear That These Cases Should Not
`Have Been Remanded ................................................................................. 1
`B. Staying These Proceedings Would Afford the Federal Circuit an
`Opportunity to Determine How These Cases Should Be Handled in
`View of Thryv .............................................................................................. 2
`C. The Supreme Court Made Clear That Congress Intended for the
`Board’s Work in Finding the Claims Unpatentable Not to Be
`Undone ......................................................................................................... 2
`D. RPX’s Recall Motion, If Granted, Will Obviate the Need for the
`Board to Render Decisions in These Proceedings ...................................... 4
`E. AIT’s Reasons for Opposing a Stay Are Meritless ..................................... 5
`III. CONCLUSION .................................................................................................. 5
`
`
`
`
`
`
`
`i
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`
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`TABLE OF AUTHORITIES
`
`
`CASES
`Applications in Internet Time v. RPX,
`897 F.3d 1336 (Fed. Cir. 2018) .............................................................................. 1
`Arthrex, Inc. v. Smith & Nephew, Inc.,
`941 F.3d 1320 (Fed. Cir. 2019) .............................................................................. 5
`Thryv, Inc. v. Click-to-Call Techs., LP,
`No. 18-916, 2020 WL 1906544 (U.S. Apr. 20, 2020) ................................. passim
`STATUTES
`35 U.S.C. § 314(d) ..................................................................................................... 1
`35 U.S.C. § 315(b) ............................................................................................ 1, 2, 3
`OTHER AUTHORITIES
`Standard Operating Procedure 9 ................................................................................ 4
`The Consolidated Trial Practice Guide ...................................................................... 4
`REGULATIONS
`37 C.F.R. § 42.20(a) ................................................................................................... 1
`
`
`
`
`
`
`ii
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`
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`I.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`Pursuant to 37 C.F.R. § 42.20(a) and the Board’s Order (Paper 116)
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`authorizing this motion, Petitioner respectfully requests that the Board stay these
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`remand proceedings pending a decision from the Federal Circuit on RPX’s Motion
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`to Recall the Mandate, Vacate the Court’s Judgment, and Reinstate the Appeal for
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`a Merits Decision in Light of the Supreme Court’s Decision in Thryv v. Click-To-
`
`Call. Ex. 1103 (“RPX’s Recall Motion”).
`
`II. GOOD CAUSE EXISTS TO GRANT A STAY
`A. The Supreme Court Has Made Clear That These Cases
`Should Not Have Been Remanded
`The Federal Circuit vacated the Board’s Final Written Decisions (“FWDs”)
`
`that found the challenged claims unpatentable, and remanded solely for
`
`reconsideration of the Board’s determination that the Petitions were not time
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`barred under 35 U.S.C. § 315(b). Applications in Internet Time v. RPX, 897 F.3d
`
`1336 (Fed. Cir. 2018) (“AIT”); Paper 84. In Thryv v. Click-to-Call, No. 18-916,
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`slip op. (Apr. 20, 2020) (“Thryv”), the Supreme Court held that under 35 U.S.C.
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`§ 314(d), a Board determination of no time bar under § 315(b) is nonappealable
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`and unreviewable by the Federal Circuit. Id., 2, 6-14. Contrary to AIT’s counsel’s
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`representation (Ex. 1102 at 9), Thryv is explicit that its holding of nonappealability
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`applies to no-time-bar determinations addressed in FWDs. Id., 14.
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`In view of Thryv, RPX filed its Recall Motion requesting that the Federal
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`1
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`
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`Circuit recall its mandate, vacate its judgment vacating the Board’s FWDs, and
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`reinstate AIT’s appeal to address the merits of the Board’s findings that the
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`challenged claims are unpatentable. The Supreme Court has made clear that the
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`Federal Circuit had no authority to review the Board’s determination that RPX’s
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`petitions were not time-barred, and thus that these cases should not have been
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`remanded for further analysis on the time bar issue.
`
`B.
`
`Staying These Proceedings Would Afford the Federal
`Circuit an Opportunity to Determine How These Cases
`Should Be Handled in View of Thryv
`The Federal Circuit did not have the benefit of the Supreme Court’s
`
`guidance in Thryv when it remanded these cases. It does now. Staying these
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`proceedings now would afford the Federal Circuit the opportunity to consider the
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`parties’ briefing on RPX’s Recall Motion and determine whether the Court
`
`believes it to be appropriate to recall its mandate.
`
`C. The Supreme Court Made Clear That Congress Intended
`for the Board’s Work in Finding the Claims Unpatentable
`Not to Be Undone
`Thryv noted that an important reason Congress made no-time bar
`
`determinations nonappealable is the AIA’s emphasis on “weed[ing] out bad patent
`
`claims efficiently.” Id., 8. The Board’s § 315(b) findings are nonappealable to
`
`ensure that the Board's “adjudication of the merits” is preserved, and to ensure that
`
`the Board’s work not be “undone” and “the cancelled claims resurrected” by
`
`2
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`
`
`
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`subsequent reconsideration of a § 315(b) time bar issue. Id., 9.
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`If the Federal Circuit grants RPX’s Recall Motion, that will remove
`
`jurisdiction from the Board and put back before the Federal Circuit the Board's
`
`findings of unpatentability of the challenged claims. Under the Federal Circuit’s
`
`mandate, the Board can issue a decision in these remand proceedings reinstating
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`those unpatentability findings, but only after it first reconsiders its earlier no-time-
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`bar determination, and only if the Board once again finds in favor of RPX. While
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`RPX is confident that the record developed during these proceedings would
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`support no other determination, Thryv makes clear that because the Board has
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`already done the work of finding the claims unpatentable, the Board’s time bar
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`determination should not be reconsidered at all. Thryv, 8-9.
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`AIT’s patents include “bad claims” the Board’s FWDs “weed[ed] out” based
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`on multiple distinct prior art grounds. Thryv makes clear that Congress
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`“prioritized” such unpatentability findings “over § 315(b)’s timeliness
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`requirements.” Id., 9. The AIT decision prioritized the issues the other way and
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`did not address the Board’s unpatentability findings. Staying these proceedings
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`would afford the Federal Circuit an opportunity to consider Thryv’s guidance on
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`Congress’ prioritization of unpatentability determinations versus § 315(b)’s
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`requirements in determining whether to recall its mandate and reinstate the appeal
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`to review the Board’s unpatentability findings.
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`3
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`
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`
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`D. RPX’s Recall Motion, If Granted, Will Obviate the Need for
`the Board to Render Decisions in These Proceedings
`The Consolidated Trial Practice Guide (“TPG”) at 89-90 and Standard
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`Operating Procedure 9 (“SOP 9”) at 16-17 both make clear that the Board may stay
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`a remanded case. Stays are most often considered because of a pending Supreme
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`Court decision, and “the Board’s primary consideration is whether the Supreme
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`Court’s judgment would impact the Board’s decision on remand.” SOP 9 at 17
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`(citing Shaw Industries as stayed because a “Supreme Court decision could impact
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`the Board’s assessment of the remanded issue” and distinguishing SAS where no
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`stay was granted because “the issue on remand was separable from, and not
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`influenced by, the question presented in the petition for a writ of certiorari.”).
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`The procedural posture of these cases is unusual and not specifically
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`addressed in the TPG or SOP 9. But it is difficult to imagine a circumstance where
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`a decision from a reviewing court could have a bigger “impact [on] the Board’s
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`decision on remand” than if the Federal Circuit were to grant RPX’s Recall Motion
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`and recall its mandate; it would result in the Board not issuing a “decision on
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`remand” at all. SOP 9 at 17. That the impending decision from a reviewing court
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`is from the Federal Circuit rather than the Supreme Court does not make a stay any
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`less appropriate, particularly given that it is the Supreme Court’s Thryv decision
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`which makes clear that the remands should not have been ordered in the first place.
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`4
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`
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`A stay may also preserve Board resources and avoid the Board unnecessarily
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`issuing a decision in remand proceedings that the Federal Circuit ultimately may
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`recall. The Board’s recent “General Order” stays and holds in “administrative
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`abeyance” cases remanded under Arthrex for similar reasons. See Ex. 1104.
`
`E. AIT’s Reasons for Opposing a Stay Are Meritless
`AIT’s assertion that a stay would be an “unfair” denial of due process is
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`baseless. Ex. 1102 at 8-9. The Board granted AIT’s request for discovery and
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`provided AIT a full and fair opportunity to make its case before issuing the FWDs.
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`Paper 11. The Board then found against AIT, determining that the Petitions were
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`not time barred. Under Thryv, AIT was not entitled to appellate review of that
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`determination. AIT was given all the process to which it was entitled.
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`AIT’s assertion that due process cannot abide any additional time in
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`resolving these proceedings is also belied by AIT’s own actions at the Federal
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`Circuit, where AIT requested an extra 14 days to oppose RPX’s Recall Motion.
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`Ex. 1102 at 8-9; Ex. 1105.
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`III. CONCLUSION
`For the foregoing reasons, RPX respectfully requests that the Board stay
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`these proceedings pending the Federal Circuit ruling on the Recall Motion.
`
`
`Date: May 12, 2020
`
`
`Respectfully submitted,
`/ Richard Giunta/
`Richard F. Giunta, Reg. No. 36,149
`
`5
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6 (E)(4)
`I certify that on May 12, 2020, I will cause a copy of the foregoing
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`document, including any exhibits filed therewith, to be served via electronic mail,
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`as previously consented to by Patent Owner, upon the following:
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`Date: May 12, 2020
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`
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`Steven C. Sereboff
`Jonathan Pearce
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`ssereboff@socalip.com
`jpearce@socalip.com
`uspto@socalip.com
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`
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`
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`/MacAulay S. Rush /
`MacAulay S. Rush
`Paralegal
`WOLF, GREENFIELD & SACKS, P.C.
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