UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
`
`PLAID TECHNOLOGIES INC.,
`Petitioner,
`
`v.
`
`YODLEE, INC. and YODLEE.COM, INC.,
`Patent Owner.
`_____________________
`
`IPR2016-00275
`U.S. Patent No. 6,199,077 B1
`_____________________
`
`PETITIONER’S REQUEST FOR REHEARING OF THE BOARD’S
`INSTITUTION DECISION
`
`
`
`Mail Stop Patent Trial and Appeal Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
`
`PLAID TECHNOLOGIES INC.,
`Petitioner,
`
`v.
`
`YODLEE, INC. and YODLEE.COM, INC.,
`Patent Owner.
`_____________________
`
`IPR2016-00275
`U.S. Patent No. 6,199,077 B1
`_____________________
`
`PETITIONER’S REQUEST FOR REHEARING OF THE BOARD’S
`INSTITUTION DECISION
`
`
`
`Mail Stop Patent Trial and Appeal Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`STATEMENT OF PRECISE RELIEF REQUESTED ................................... 1
`
`III. BACKGROUND ............................................................................................. 1
`
`IV. ARGUMENT ................................................................................................... 3
`
`(a)
`
`Service Is Not Required To Comply With The One-Year Time
`Limitation of 35 U.S.C. § 315(b). ......................................................... 3
`
`(b) A “Complete Petition” Is Not Required To Comply With The
`One-Year Time Limitation of 35 U.S.C. § 315(b). ............................... 7
`
`CONCLUSION ................................................................................................ 9
`
`V.
`
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`2Wire, Inc. v. TQ Delta LLC,
`IPR2015-00239, Paper 10 (Jan. 15, 2015) ............................................................ 8
`
`ABB Inc. v Roy-G-Biv,
`IPR2013-00063, Paper 21 (Jan. 16, 2013) ............................................................ 8
`
`Conmed Corp. v. Bonutti Skeletal Innov., LLC,
`IPR2013-00624, Paper 18 (Feb. 21, 2014) ........................................................... 8
`
`La. Pub. Serv. Comm’n v. FCC, 476 U.S. 355, 374–75 (1986) ............................... 5
`
`Samsung Electronics Co. Ltd et al. v. Elm 3DS Innovations LLC,
`
`IPR2016-00388, Paper 11 (July 1, 2016) ............................................................. 5
`
`Statutes
`35 U.S.C. § 312(a) ............................................................................................passim
`
`35 U.S.C. § 315(b) ............................................................................................passim
`
`
`
`
`
`ii
`
`
`
`
`
`
`
`Exhibit
`Number
`1001 U.S. Patent No. 6,199,077 (’077 Patent)
`Summons Returned as Executed , Yodlee, Inc. v. Plaid
`1002
`Technologies, Inc., Case No. 1:14-cv-01445-LPS-CJB (D. Del.
`filed December 1, 2014)
`1003 U.S. Patent No. 6,317,783 to Freishtat (the “’783 Patent” or
`“Freishtat”
`1004 Declaration of Dr. Todd Mowry
`1005
`Redline Comparison of U.S. Patent Appl. No. 09/323,598 and
`Application No. 09/208,740
`File History of U.S. Patent No. 6,199,077
`1006
`1007 U.S. Patent No. 6,278,449 (“Sugiarto”)
`1008 U.S. Patent No. 5,892,905 (“Brandt”)
`1009
`Zhao, “Technical Note, WebEntree: A Web Service Aggregator,”
`(1998) (“Zhao”)
`Claim Construction Briefing, Yodlee, Inc. v. Plaid Technologies,
`Inc., Case No. 1:14-cv-01445-LPS-CJB (D. Del. filed December
`1, 2014)
`Claim Construction Order, Yodlee, Inc. v. CashEdge, Inc., No. C
`05-01550 SI, slip op. (N.D. Cal., July 7, 2006)
`Provisional Appl. No. 60/105,917 (“the ’917 Application”)
`Redline Comparison of Provisional Appl. No. 60/105,917 and
`Freishtat.
`Screenshot of ACM Digital Library Page
`1014
`1015 U.S. Patent No. 6,029,175 (“Chow”)
`1016 U.S. Patent No. 6,401,118 (“Thomas”)
`1017 U.S. Patent No. 6,006,333 (“Nielsen”)
`1018
`Screenshots of ESPN Pages
`1019 U.S. Patent No. 6,041,362 (“Mears”)
`1020 U.S. Patent 6,243,816 (“Fang”)
`1021 Declaration of Omar Amin
`1022 Declaration of Jill McCormack
`1023
`’077 Petition Filing Receipt
`1024
`Screenshot of Federal Express Tracking Data
`
`1010
`
`1011
`
`1012
`1013
`
`
`
`PETITIONER’S EXHIBIT LIST
`
`Description
`
`iii
`
`
`
`
`
`
`
`’077 Petition Payment Receipt
`1025
`1026 United States Postal Service, Service Commitments
`
`iv
`
`
`
`GLOSSARY OF ABBREVIATIONS
`
`Shorthand
`Decision
`
`’077 Petition
`PO
`Motion/Mot.
`
`Opp.
`
`Filing Receipt
`PRPS
`
`Description
`Decision Denying Institution of Inter Partes Review,
`Paper 15 (June 9, 2016).
`Petition for Inter Partes Review, Paper 1.
`Patent Owner
`Motion to Correct Electronic Filing Date, Paper 9
`(Feb. 8, 2016).
`Opposition to Motion to Correct Filing Date, Paper
`10 (Feb. 16, 2016).
`’077 Petition Filing Receipt, Ex. 1023
`Patent Review Processing System.
`
`
`
`
`
`
`
`v
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`Pursuant to 37 C.F.R. §42.71, Plaid Technologies, Inc. (“Petitioner”) hereby
`
`respectfully requests rehearing of the Board’s decision denying institution of the
`
`Petition for Inter Partes Review of U.S. Patent 6,199,077 (“the ’077 patent”)
`
`(Paper 1) (hereinafter “the ’077 Petition”). The Board’s decision misapprehends
`
`the law regarding 35 U.S.C. § 315(b) by reading regulatory requirements into that
`
`statute and creating inconsistency with other Board opinions.
`
`II.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Petitioner requests that the Board reverse its decision denying institution and
`
`institute Inter Partes Review proceedings on all of the challenged claims of the
`
`’077 patent on all of the grounds set forth in the ’077 Petition.
`
`III. BACKGROUND
`Petitioner’s counsel started filing two petitions for Inter Partes Review on
`
`December 2, 2015, one of U.S. Patent No. 6,317,783 (“the ’783 Petition”) and the
`
`other the ’077 Petition. See IPR2015-00273, Paper 1 (Dec. 2, 2015). As explained
`
`in Petitioner’s Motion to Correct Electronic Filing Date, Paper 9 (Feb. 8, 2016)
`
`(hereinafter “Mot.” or “Motion”), Petitioner filed the petitions sequentially,
`
`beginning with the ’783 Petition at around 10:30 p.m. See Paper 9 (Mot.) at 1–2.
`
`Due to delays between the PRPS server and Petitioner’s browser in uploading
`
`exhibits, Petitioner did not click “Submit” for the ’783 Petition until around 11:40
`
`1
`
`
`
`
`
`p.m. See id. at 2; see also Amin Decl., Ex. 1021, ¶ 7; McCormack Decl., Ex. 1022,
`
`¶ 5.
`
`Despite their best efforts to finish the filing as soon as possible, Petitioner’s
`
`counsel experienced additional browser delays with the ’077 Petition filing. See
`
`Paper 9 (Mot.) at 2–3. After Petitioner’s original attempt at filing the ’077 Petition
`
`caused the Internet browser to freeze, Petitioner was forced to begin a new filing.
`
`See id. at 3 (citing IPR2016-00274, the PRPS case number assigned to Petitioner’s
`
`attempted filing). After logging in via a different computer, Petitioner was able to
`
`enter the identifying information for the ’077 patent, upload the ’077 Petition and
`
`several exhibits, and pay the fee before midnight. See id. at 3–4 (citing Amin
`
`Decl., Ex. 1021, ¶ 8; McCormack Decl., Ex. 1022, ¶ 12). Although several
`
`exhibits did not finish uploading before midnight, Petitioner’s counsel believed
`
`that the uploading of the ’077 Petition and payment of the fee by midnight may
`
`still generate an electronic filing date of December 2, 2015. As a result, counsel
`
`continued with the uploading process and hit the submit button at 12:29 a.m. EST.
`
`See id. (citing Amin Decl., Ex. 1021, ¶ 13; McCormack Decl., Ex. 1022, ¶ 8).
`
`After clicking the submit button, Petitioner’s counsel deposited the ’077
`
`Petition and accompanying exhibits in a Federal Express box to be delivered to the
`
`correspondence address for Patent Owner on December 4, 2015—the same date on
`
`which the documents would have been delivered had they been placed in the box at
`
`
`
`2
`
`
`
`
`
`11:59 p.m. See id. at 10. In addition, seeing that the filing receipt listed a date of
`
`December 3, 2015, Petitioner immediately took steps to try to correct the filing
`
`date. Later that morning, Petitioner’s counsel not only telephoned the Board, but
`
`also visited the Patent Office to request correction of the filing date of the ’077
`
`Petition. See id. at 5. At the direction of the Board, Petitioner requested leave to
`
`file the Motion after Patent Owner’s notice of appearance on December 22, 2015
`
`and the meet and confer process. See id. The Board’s Decision on institution
`
`denied Petitioner’s Motion and found that the ’077 Petition was not timely filed.
`
`See Decision Denying Institution of Inter Partes Review, Paper 15 (June 9, 2016)
`
`(hereinafter “Decision”).
`
`IV. ARGUMENT
`(a)
`Service Is Not Required To Comply With The One-Year Time
`Limitation of 35 U.S.C. § 315(b).
`Petitioner’s Motion demonstrated that § 315(b) requires only filing the ’077
`
`
`
`Petition within one year of service of a complaint: “An inter partes review may not
`
`be instituted if the petition . . . is filed more than 1 year after the date on which the
`
`petitioner . . . is served with a complaint . . .” (emphases added). See Paper 9
`
`(Mot.) at 9–10; see also Petitioner’s Reply in Support of Motion to Correct
`
`Electronic Filing Date, Paper 13 at 1–2 (March 25, 2016) (hereinafter “Reply”).
`
`The Board’s decision to the contrary misreads the statute. Congress could have
`
`included the phrase “filed and served more than one year,” but chose not to do so.
`
`
`
`3
`
`
`
`
`
`And, the word “served” is clearly the starting point for the one year clock, so it is
`
`abundantly clear that Congress knew the difference between the words “filed” and
`
`“served.” See 35 U.S.C. § 315(b). It is undisputed by the Patent Owner and the
`
`Board that the ’077 Petition was uploaded and the filing fee was paid within one
`
`year of the district court complaint being served. See Paper 9 (Mot.) at 9–10;
`
`Paper 13 (Reply) at 1–2. That is all that section § 315(b) requires.
`
`The Board’s denial of a December 2, 2015 filing date in this IPR depends
`
`heavily on Petitioner’s having deposited the ’077 Petition into a Federal Express
`
`box after December 2, 2015—a fact that the Board finds to be “late service.”
`
`Specifically, the Decision relies on a “require[ment] [of] service within the one-
`
`year statutory period set forth in 35 U.S.C. § 315(b).” Paper 15 (Decision) at 9.
`
`That determination led the Board to find that it “may not institute an inter partes
`
`review because the Petition is time-barred under 35 U.S.C. § 315(b).” Id. at 6.
`
`That decision is simply not supported by the statutory language, which expressly
`
`chose the words “filed” without any mention of service.
`
`Instead, the service requirements of 35 U.S.C. §32(a) and 37 C.F.R.
`
`§§ 42.105(a), 42.106(a) are not incorporated into § 315(b). Tellingly, the Board’s
`
`determination that service on the same day as filing is a statutory requirement is
`
`not reflected in the Rules. See 37 C.F.R. §§ 42.105(a), 42.106(a); see also Paper 9
`
`(Mot.) at 9-10. Further, that determination cannot be correct in light of the Board’s
`
`
`
`4
`
`
`
`
`
`own actions. In the past, the Board has made a determination that it can excuse
`
`late service on a showing of good cause. See Paper 15 (Decision) at 7; see also
`
`Samsung Electronics Co. Ltd et al. v. Elm 3DS Innovations LLC, IPR2016-00388,
`
`Paper 11 (July 1, 2016) (instituting IPR where the petition was both filed and
`
`served after the one-year deadline). Yet a statutory requirement cannot be waived
`
`by an agency without express authority in the statute. La. Pub. Serv. Comm’n v.
`
`FCC, 476 U.S. 355, 374–75 (1986) (“[a]n agency may not confer power upon
`
`itself. To permit an agency to expand its power in the face of a congressional
`
`limitation on its jurisdiction would be to grant to the agency power to override
`
`Congress.”). The Board’s determination that service is a statutory requirement
`
`would render its prior actions ultra vires and contrary to its mandate.
`
`Therefore, the Board’s determination misapprehends the law in two respects.
`
`It misreads the plain wording of the statute that requires only filing and not service
`
`to be completed within one year. See Paper 9 (Mot.) at 9–10; Paper 13 (Reply) at
`
`1–2. And, by finding that service on the same day as filing is a statutory
`
`requirement, it then eliminates any discretion to excuse “late service,” a finding
`
`that is contrary to many of the Board’s past decisions. The Board should not
`
`eliminate discretion to excuse service that occurs after midnight. As the Board
`
`noted in the Samsung decision, its filing system presents numerous technical
`
`challenges that sometimes render filing and service difficult. Samsung, IPR2016-
`
`
`
`5
`
`
`
`
`
`00388, Paper 11 at 4–5. The Board therefore has an interest in reserving for itself
`
`the right to determine when service that occurs after the one year deadline is
`
`acceptable.
`
`To the extent the Board’s Decision holds that service on the same day as
`
`filing is a regulatory requirement, the Board should exercise its discretion to waive
`
`that requirement in this case. There is no reasonable prejudice to the Patent Owner
`
`here. Prejudice should be evaluated by comparing whether the slight delay in
`
`depositing the materials for service harmed the Patent Owner. The Decision
`
`focuses on comparing whether the ’077 Petition was instituted versus not instituted
`
`in evaluating whether there is prejudice, (see Paper 15 (Decision) at 9–10), but that
`
`would be true in every petition related to a filing data issue. If that were the proper
`
`focus for the prejudice inquiry, then the prior decisions by this Board permitting
`
`materials to be filed late would all have been improper.
`
`If the prejudice inquiry is instead focused on comparing the position the
`
`Patent Owner had been in assuming the filing was timely to the actual filing, then,
`
`the Patent Owner in this case has not been prejudiced. The ’077 Petition was
`
`deposited with Federal Express in the early hours on December 3, 2015 and Patent
`
`
`
`6
`
`
`
`
`
`Owner received them on December 4, 2015.1 If that had occurred at 11:59 p.m. or
`
`before on December 2, 2015, Patent Owner still would have received the materials
`
`on December 4, 2015, as it did. See Paper 9 (Mot.) at 10; Paper 13 (Reply) at 5.
`
`So, the delay in service did not prejudice the Patent Owner. See id. Again, the
`
`’077 Petition was indisputably served and received by the Patent Owner on the
`
`same date that it would have been received had it been served 29 minutes earlier.
`
`(b) A “Complete Petition” Is Not Required To Comply With The One-Year
`Time Limitation of 35 U.S.C. § 315(b).
`
`The Board’s Decision also found that Petitioner failed “to file a complete
`
`
` 1 The Board expressed concern that Petitioner did not amend its certificate of
`
`service to state that service was completed on December 3, 2015. The
`
`certificate of service is always filled out prior to filing and the intent in this case
`
`was to complete and file the ’077 Petition on December 2, 2015. So, at the time
`
`it was signed, the certificate of service was correct in that it reflected the
`
`intention of the undersigned. In the conference call with the Board requesting
`
`leave to file the Motion, the undersigned was not aware that the Board was
`
`expecting a corrected certificate of service and did not think to ask for leave to
`
`file a corrected certificate of service. Therefore, the undersigned hereby
`
`requests leave to file a corrected certificate of service.
`
`
`
`7
`
`
`
`
`
`petition that complies with [the Boards’] regulations by the one-year statutory
`
`deadline under 35 U.S.C. § 315(b).” Paper 15 (Decision) at 11. Again, however,
`
`the requirements of 37 C.F.R. §§ 42.104, 42.106(a) are not incorporated into
`
`§ 315(b) and do not prevent the Board from finding that Petitioner “filed” the ’077
`
`Petition within one-year of being served with a complaint when the ’077 Petition
`
`was uploaded and the fee was paid. See Paper 9 (Mot.) at 5–6; Paper 13 (Reply) at
`
`1–4. As noted above, if those regulations were set forth as statutory requirements
`
`under § 315(b), they could not be waived by the Board. This is again antithetical
`
`to the Board’s actions in the case law laid out in Petitioner’s Motion wherein the
`
`Board granted the petitioners’ requests to correct a filing date. See Motion at 7-9
`
`(citing Conmed Corp. v. Bonutti Skeletal Innovations, LLC, IPR2013-00624, Paper
`
`18 at 7 (Feb. 21, 2014); 2Wire, Inc. v. TQ Delta LLC, IPR2015-00239, Paper 10 at
`
`2 (Jan. 15, 2015); ABB Inc. v Roy-G-Biv Corp, IPR2013-00063, Paper 21 at 11
`
`(Jan. 16,2013)).
`
`Furthermore, the Board found that “Plaid’s filing of a fronting document,
`
`standing alone, is inadequate to garner a filing date for a complete petition.” Paper
`
`15 (Decision) at 12. But Petitioner did not file a “fronting document, standing
`
`alone.” Petitioner filed the ’077 Petition and multiple accompanying exhibits, and
`
`paid the filing fee, before midnight on December 2, 2015. See Paper 9 (Mot.) at 1–
`
`4. Nor is the ’077 Petition a mere “fronting document.” The ’077 Petition
`
`
`
`8
`
`
`
`
`
`provides sufficient notice as to the grounds of patentability—for example, by
`
`listing all of the relied-upon prior references, all of which were publicly available.
`
`While Petitioner admits that several exhibits were not uploaded until after
`
`midnight, with the final one being uploaded so that Petitioner could hit the
`
`“Submit” button at 12:29 a.m., Petitioner did not prevent “adequate notice to the
`
`Patent Owner of the basis for relief.” Paper 15 (Decision) at 12. Indeed, the Patent
`
`Owner received notice of the ’077 Petition and all accompanying exhibits at the
`
`same time that it would have if the complete set of materials had been filed by
`
`11:59 p.m. See Paper 9 (Mot.) at 9–10.
`
`In simple terms, § 315(b) only requires that a petition be uploaded within
`
`one year and it is undisputed that the ’077 Petition in this case was uploaded before
`
`midnight on December 2, 2015. That fact alone is sufficient to avoid the time bar
`
`of § 315(b) and demonstrates that the Decision misapprehended the law.
`
`V. CONCLUSION
`In light of the foregoing, Petitioner requests that the Board reverse its
`
`Decision and institute Inter Partes Review proceedings on all challenged grounds
`
`against all of the challenged claims of the ’077 patent.
`
`Dated: July 11, 2016
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`By: /Brian M. Buroker/
`
`
`
`Brian M. Buroker (Reg. No. 39,125) (lead)
`
`9
`
`
`
`
`
`CERFITICATE OF SERVICE
`
`
`
`The undersigned certifies service pursuant to 37 C.F.R. § 42.6(e) of a copy
`
`of Petitioner’s Request For Rehearing Of The Board’s Institution Decision by
`
`electronic mail on July 11, 2016 on the counsel of record of the Patent Owner:
`
`David M. Hoffman, IPR12233-0046IP1@fr.com
`
`Dated: July 11, 2016
`
`
`
`
`
`
`
`
`
`
`
`By: /Brian M. Buroker/
`
`
`
`Brian M. Buroker (Reg. No. 39,125)
`Attorney for Plaid Technologies, Inc.
`
`10
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