UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
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`Petitioner,
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`v.
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`PERSONALIZED MEDIA COMMUNICATIONS, LLC,
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`
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`Patent Owner.
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`
`
`Inter Partes Review No. IPR2016-00754
`U.S. Patent No. 8,559,635 B1
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`PATENT OWNER’S REQUEST FOR DIRECTOR REVIEW
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`
`
`
`Petitioner,
`
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS, LLC,
`
`
`
`Patent Owner.
`
`
`
`Inter Partes Review No. IPR2016-00754
`U.S. Patent No. 8,559,635 B1
`
`
`PATENT OWNER’S REQUEST FOR DIRECTOR REVIEW
`
`
`
`
`
`
`
`
`
`
`IPR2016-00754
`U.S. Patent No. 8,559,635 B1
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`TABLE OF CONTENTS
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`INTRODUCTION .................................................................................................... 1
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`BACKGROUND ...................................................................................................... 2
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`ARGUMENT ............................................................................................................ 4
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`I.
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`II.
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`Remand is necessary because the Federal Circuit in PMC ’091
`rejected the Board’s construction of materially identical terms
`in a related patent. ................................................................................ 4
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`Remand is also warranted because the Board repeatedly refused
`to consider statements made during prosecution that did not rise
`to the level of disclaimer, in conflict with PMC ’091. ......................... 9
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`III.
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`PMC’s request must be considered by a principal officer ................. 15
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`CONCLUSION ....................................................................................................... 15
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`i
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`TABLE OF AUTHORITIES
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` Page(s)
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`Cases
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`Arthrex, Inc. v. Smith & Nephew, Inc.,
`941 F.3d 1320 (Fed. Cir. 2019) ............................................................................ 3
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`Iancu v. Luoma,
`141 S. Ct. 2845 (2021) .......................................................................................... 4
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`Personalized Media Communications, LLC v. Apple Inc.,
`952 F.3d 1336 (Fed. Cir. 2020) ...................................................................passim
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`Proppant Express Invs., LLC v. Oren Techs., LLC,
`IPR2018-00733, Paper 95 (Nov. 18, 2021) ............................................ 2, 4, 5, 15
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`Teva Pharm. USA, Inc. v. Sandoz, Inc.,
`789 F.3d 1335 (Fed. Cir. 2015) .................................................................... 12, 13
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`United States v. Arthrex,
`141 S. Ct. 1970 (2021) .......................................................................................... 1
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`United States v. Eaton,
`169 U.S. 331 (1898) ............................................................................................ 15
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`ii
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`IPR2016-00754
`U.S. Patent No. 8,559,635 B1
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`INTRODUCTION
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`Patent Owner Personalized Media Communications, LLC (“PMC”)
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`respectfully requests the Director’s review of the Board’s final written decision in
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`this matter, which has been remanded from the Federal Circuit for further
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`proceedings in light of United States v. Arthrex, 141 S. Ct. 1970 (2021). Vacatur of
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`the Board’s decision is warranted based on intervening precedent from the Federal
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`Circuit that is irreconcilable with the Board’s determination.
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`In Personalized Media Communications, LLC v. Apple Inc., 952 F.3d 1336,
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`1339 (Fed. Cir. 2020) (“PMC ’091”), the Board had construed the terms “encrypted”
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`and “decrypted” in U.S. Patent Number 8,191,091 (the ’091 patent) to encompass
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`non-digital information. The Federal Circuit reversed the Board’s construction
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`because the Board erroneously failed to consider the applicant’s “repeated and
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`consistent remarks during prosecution,” which established that “encryption and
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`decryption require a digital process in the context of the ’091 patent.” Id. at 1345.
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`The same Board panel in this case construed a closely-related patent: The
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`patent has the same inventors and the same specification, is part of the same patent
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`family, and includes many of the same claim terms, including “decrypt.” The
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`Board’s decision in this case is irreconcilable with the Federal Circuit’s decision in
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`PMC ’091 in two related ways. First, and most importantly, the Board’s construction
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`of “decrypt” in this proceeding was identical to its flawed construction of that same
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`1
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`term in PMC ’091. Second, the Board in this case failed to consider prosecution
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`history that is highly relevant to other claim terms, and is just as “decisive” as the
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`statements at issue in PMC ’091. Id. at 1346.
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`The Board’s decision is thus irreconcilable with the Federal Circuit’s decision
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`in PMC ’091. In Proppant Express Invs., LLC v. Oren Techs., LLC, IPR2018-00733,
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`Paper 95 (Nov. 18, 2021), Director review resulted in a remand to the Board where
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`the Board’s decision was “substantially similar” to one that the Federal Circuit had
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`reversed. Id. at 3. The decision in this case is at least as “similar” to the decision at
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`issue in PMC ’091, and vacatur and remand is similarly warranted.
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`BACKGROUND
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`The Board’s final written decision held unpatentable claims 4, 7, 13, 21, and
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`28-30 of PMC’s U.S. Patent No. 8,559,635 (’635 patent).1 Paper 41, at 72. A central
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`issue was whether the claim term “decrypt” is limited to all-digital processes. The
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`Board held that “decrypt” is not so limited, but can also encompass analog
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`information. Id. at 7-18. The Board’s decision rested on its conclusion that the
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`prosecution history was not relevant because it did not “reveal a clear disavowal of
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`claim scope.” Id. at 18. The Board then held that the challenged claims are
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`unpatentable on anticipation or obviousness grounds.
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`1 The Board initially denied institution on claims 3, 18, 20, 32, and 33 in this
`proceeding, but instituted review of those claims after Apple filed a second petition
`in IPR2016-01520. PMC is also seeking Director review in IPR2016-01520.
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`2
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`After the Board denied rehearing, the Federal Circuit decided Arthrex, Inc. v.
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`Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), which held that the Board’s
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`structure violated the Constitution’s Appointments Clause. Id. at 1335, 1338-40.
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`PMC appealed the final written decision. While PMC’s appeal was pending,
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`the Federal Circuit decided PMC ’091. That case arose from another of Apple’s IPR
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`petitions, which was directed to PMC’s ’091 patent. That patent is related to, and
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`shares the same specification as, the ’635 patent at issue here. The Board issued a
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`final written decision invalidating the reviewed claims of the ’091 patent. The
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`Federal Circuit reversed, holding that the Board misconstrued the claim term “an
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`encrypted digital information transmission including encrypted information”
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`because PMC’s statements during prosecution made clear that “encryption and
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`decryption require a digital process in the context of the ’091 patent.” PMC ’091,
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`952 F.3d at 1345-46.
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`The court addressed—and rejected—the Board’s conclusion that the
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`applicant’s prosecution statements are not relevant if they do not “rise to the level of
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`disclaimer.” Id. at 1345. An applicant’s statement during prosecution “provides
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`persuasive evidence that informs the meaning of the disputed claim phrase.” Id. The
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`’091 applicant’s statements were sufficiently clear that they were “decisive” as to
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`the meaning of encryption and decryption. Id. at 1346. The court reversed the
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`Board’s decision as to all claims containing that term. Id.
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`3
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`On PMC’s motion, the Federal Circuit vacated the Board’s decision, ordered
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`a new hearing, and added that, “[o]n remand, the Board may also consider this
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`court’s decision in [PMC ’091].” Fed Cir. No. 20-1197, ECF No. 33 (May 21, 2020).
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`The Supreme Court then granted the government’s consolidated petition for
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`certiorari in this case and many others, vacated the Federal Circuit’s decision, and
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`remanded to the Federal Circuit. Iancu v. Luoma, 141 S. Ct. 2845, 2847 (mem.)
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`(2021). The Federal Circuit then remanded this case for PMC “to request Director
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`rehearing of the final written decision[], including arguments concerning [PMC
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`’091].” Fed Cir. No. 20-1197, ECF No. 40 (Nov. 8, 2021).
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`ARGUMENT
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`The Board’s decision is irreconcilable with PMC ’091, and vacatur and
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`remand are thus necessary. Proppant, IPR2018-00733, Paper 95, at 3. That is true
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`for two independent reasons. First, the Board’s construction of “decrypt” is
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`materially identical to the same Board panel’s construction of “decryption” that the
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`Federal Circuit rejected. And, second, the Federal Circuit’s holding that prosecution
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`statements need not rise to the level of disclaimer to be relevant to claim construction
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`fatally undermines the Board’s construction of other key terms.
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`I.
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`Remand is necessary because the Federal Circuit in PMC ’091 rejected
`the Board’s construction of materially identical terms in a related patent.
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`The patent in PMC ’091 was closely related to the patent in this proceeding.
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`The claim terms at issue in PMC ’091—“encrypt” and “decrypt”—are the same ones
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`4
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`at issue in this proceeding. See Paper 41, at 7-18. The same Board panel construed
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`those terms in a materially identical way in PMC ’091 and this proceeding,
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`concluding that those terms could cover both digital and analog information. Id. at
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`27; PMC ’091, 952 F.3d at 1339. The panel’s reasoning was also identical in PMC
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`’091 and this proceeding, including its rejection of prosecution statements that did
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`not “rise to the level of disclaimer.” PMC ’091, 952 F.3d at 1345; see Paper 41, at
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`17-18. The Federal Circuit reversed the Board’s decision in PMC ’091, concluding
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`that “encrypt” and “decrypt” are limited to digital information based on the
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`“decisive” nature of statements during the prosecution of the ’091 patent—
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`statements materially identical to statements made during prosecution of the ’635
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`patent. PMC ’091, 952 F.3d at 1345-46; see also Ex. 2016, at 1018, 1090, 1156,
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`1158-59, 1231, 1294, 1330. PMC ’091 thus requires vacatur of the Board decision
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`here, and a remand for reconsideration. Proppant, IPR2018-00733, Paper 95, at 3.
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`In PMC ’091, the Board construed the phrase “an encrypted digital
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`information transmission including encrypted information” in a related PMC patent.
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`952 F.3d at 1340. In concluding that “encryption” could apply to both digital and
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`analog information, the Board relied heavily on the fact that encryption could be
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`applied to “programming,” which can consist of either analog or digital information
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`(or both). Id. at 1341-42. The Board then refused to meaningfully consider the
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`applicants’ statements, during prosecution, that encryption was limited to digital
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`5
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`information. Id. at 1345. According to the Board, these statements were too
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`“murky” to rise to the level of disclaimer, and so could be disregarded. Id.
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`The Federal Circuit reversed. It first rejected the Board’s reliance on the
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`application of encryption to “programming.” The fact that “‘programming’ can
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`encompass” both digital and analog transmissions, the court explained, “does not
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`mean
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`that ‘decrypting’ or ‘encrypted
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`information’ encompasses” analog
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`transmissions. Id. at 1341-42. A reference to encrypted programming can refer to
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`the type of programming that is, in fact, transmitted digitally.
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`The Federal Circuit then held that the Board erred in dismissing the
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`applicant’s statements during prosecution. The court held that “[a]n applicant’s
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`repeated and consistent remarks during prosecution can define a claim term,” even
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`if they “were inadequate to give rise to a disclaimer.” Id. at 1346. The ’091 applicant
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`had “repeatedly and consistently voiced its position that encryption and decryption
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`require a digital process in the context of the ’091 patent.” Id. at 1345-46. These
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`statements, the court held, “are decisive” in establishing that “encryption” and
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`“decryption” require digital, not analog, information in that patent. Id. The court
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`therefore reversed the Board’s claim construction and related invalidity rulings.
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`In this case, the Board construed the same terms in the ’635 patent against the
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`background of a materially identical intrinsic record. And the Board’s decision
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`rested on exactly the same flawed reasoning that the Federal Circuit rejected in PMC
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`6
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`’091. First, the Board relied heavily on the fact that encryption is applied to
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`“programming,” which can include (but is not limited to) “analog” signals. Paper
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`41, at 7-8. The Federal Circuit rejected this exact reasoning: Just because
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`programming can be analog does not mean that the programming being “decrypted”
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`is analog (as opposed to digital). PMC ’091, 952 F.3d at 1341-42. In addition, the
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`Board refused to consider the applicant’s prosecution statements. Just as the Board
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`had dismissed the statements in PMC ’091 as too “murky” to support disclaimer,
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`952 F.3d at 1345, the Board here dismissed the statements as insufficiently “clear”
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`to support disclaimer, Paper 41, at 18. This is precisely the “legal analysis and
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`conclusion” the Federal Circuit rejected in PMC ’091. 952 F.3d at 1345-46.
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`In fact, the applicant’s statements during prosecution in this case are
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`materially identical to—and equally “decisive” as—the statements at issue in PMC
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`’091. 952 F.3d at 1346. In both cases, the statements concerned the applicants’
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`efforts to avoid or traverse rejections based on prior art that involved hybrid digital
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`and analog information (as opposed to pure digital information). And in both cases,
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`the applicants, citing an earlier Board reexamination decision involving a different
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`PMC patent (the “’536 reexamination”), explained that the reference to encryption
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`and decryption avoided the prior art by limiting the claims to purely digital
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`information. See Paper 41, at 15 (discussing PMC’s statements and its reliance on
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`the ’536 reexamination).
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`7
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`Specifically, the applicant in the ’635 prosecution at issue here repeatedly
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`emphasized that each of the relevant claims “involves the use of digital signals either
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`through reference to ‘digital’ signals or through reference to ‘encryption’ and
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`‘decryption,’” terms that “are not broad enough to read on [analog] scrambling and
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`unscrambling.” Ex. 2016, at 1018 (emphasis added); compare PMC ’091, 952 F.3d
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`at 1344 (relying on nearly identical statements). After the examiner rejected these
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`claims based on prior art concerning scrambled analog information, the applicant
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`again made clear that “encryption requires a digital signal” and “each of the claims
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`involves the use of digital signals … through reference to ‘decryption’ and
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`‘encryption.’” Ex. 2016, at 1090; compare PMC ’091, 952 F.3d at 1344 (relying on
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`nearly identical statements). When the examiner remained unconvinced, the
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`applicant again distinguished the prior art, which involved analog scrambling,
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`because it did not involve “encryption,” and “encryption and decryption require a
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`digital signal.” Ex. 2016, at 1156, 1159. And applicants proposed amendments
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`intended to “clarify that the information transmission received is an encrypted digital
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`information transmission”—in contrast to the prior art, which does not “teach the
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`encryption of an entire digital signal transmission.” Id. at 1158-59; compare PMC
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`’091, 952 F.3d at 1344-45 (relying on a nearly identical amendment and
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`accompanying statements). The applicant continued to make similar statements
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`until the claims were ultimately issued. E.g., Ex. 2016, at 1231 (“encryption and
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`8
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`decryption require a digital signal”), 1294 (same), 1330 (same). Thus, just as the
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`applicant in PMC ’091 “repeatedly and consistently voiced its position that
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`encryption and decryption require a digital process in the context of the ’091 patent,”
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`952 F.3d at 1345, the applicant here “repeatedly and consistently” made clear that
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`encryption and decryption require a digital process in the context of the ’635 patent.
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`This conflict alone requires remand to the Board. This construction of
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`“decrypt” was crucial to the Board’s ruling, as is evidenced by the fact that the Board
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`dedicated a significant portion of its final written decision to this claim construction
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`issue. Paper 41, at 7-18. For instance, the Board relied heavily on the Aminetzah
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`reference, which only disclosed analog descrambling, to find claims obvious that
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`required the encryption or decryption of information. E.g., Id. at 55-62. That was
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`only possible because the Board “d[id] not construe the claim term ‘decrypting’ in
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`the ’635 patent to exclude descrambling.” Id. at 55. Remand to the Board is thus
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`necessary to reevaluate its decision under a proper construction of “decrypt.”
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`II. Remand is also warranted because the Board repeatedly refused to
`consider statements made during prosecution that did not rise to the
`level of disclaimer, in conflict with PMC ’091.
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`The Board’s key legal error in PMC ’091 was to disregard statements made
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`during prosecution that “did not constitute a clear and unmistakable surrender
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`sufficient to rise to the level of disclaimer.” 952 F.3d at 1345. In this case, the same
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`Board panel failed to account for crucial statements in prosecution not just in
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`9
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`construing “decrypt,” but in construing multiple other terms as well. For this reason,
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`too, remand to the Board for a decision consistent with PMC ’091 is necessary.
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`“Executable instructions.” A key dispute before the Board was the meaning
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`of “executable instructions” in claim 13, which recites “decrypting a second of said
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`plurality of signals on the basis of said changed decryption technique, wherein said
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`decrypted second of said plurality of signals is embedded with executable
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`instructions.” Paper 41, at 32-35 (emphasis added). The Board read “executable
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`instructions” to include data that, when processed, leads the machine to act in a
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`certain way; it thus concluded that Guillou disclosed “executable instructions” by
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`describing “data octets” that, when read by a “character generator,” lead to certain
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`characters and colors being displayed. Id. at 34-35. PMC, by contrast, had argued
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`that the data “octets do not control the character generator to carry out operations”
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`in Guillou. Id. at 34. “[T]he data octets represent information constituting the
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`service being broadcast,” but fail to constitute “executable instructions” because data
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`fails to “control[] said controllable device” as required by the claim. Id.
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`As in PMC ’091, the Board’s construction is irreconcilable with the
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`prosecution history. The italicized language above was not initially included in
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`application claim 34, which became claim 13. Ex. 2016, at 1318. The examiner
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`rejected the claim without that language, based on prior art that disclosed the
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`transmission of a digital audio signal that would, when received, be played on a
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`10
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`speaker. Id. at 1273-74. In response, the applicant added the italicized language.
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`Id. at 1318. The applicant explained that the new language traversed the prior art
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`because, in the prior art, “the program audio is an element to be processed, it is not
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`operable in the controlling of a controllable device.” Id. at 1340. Thus, “[e]ven
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`though the analog conversion means and the inverse encryption means audio process
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`the audio signal for its output to a speaker,” that does not make the signal “executable
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`instructions” as required by the claim. Id. The digital audio signal discussed in the
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`prosecution history is exactly the same as the “data” at issue in Guillou—it is data
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`to be read, not instructions for how to execute it. The Board’s construction thus
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`conflicts with the applicant’s statements during prosecution. Those statements are
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`as “decisive” as to the meaning of “executable instructions” as the statements at issue
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`in PMC ’091. 952 F.3d at 1346. Remand is thus warranted for the Board to consider
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`these statements absent its legally erroneous belief that only statements that rise to
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`the level of disclaimer are relevant.
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`“Decryption technique.” Another crucial dispute regarding claim 13
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`involved the term “decryption technique”—specifically, whether changing a
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`decryption key qualifies as “changing a decryption technique.” Petitioner argued
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`that changing the key alone does qualify, and hence that Guillou’s disclosure of
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`decryption using “a new operating key” discloses the claim limitation. Paper 1, at
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`11
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`23-24. The Board’s decision finding claim 13 obvious over Guillou implicitly
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`accepted Petitioner’s argument. Paper 41, at 32-33.
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`The applicant’s statements regarding the meaning of “decryption technique”
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`in related prosecutions decisively refutes the Board’s decision here. See Teva
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`Pharm. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 1343 (Fed. Cir. 2015) (statement
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`during “prosecution of related patents” is relevant even if it “post-dates the issuance
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`of the particular patent at issue”). In explaining why the same Guillou reference
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`does not disclose a “plurality of decryption techniques,” the applicant explained that
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`“Guillou may change the electronically transmitted ‘key K’ and the physically
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`delivered key ‘Ci’; however, the steps taken to use these keys never changes.” PAIR,
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`Application No. 90/014,196 (Aug. 31, 2018, RXOSUB.40, at 36 of 39) (emphasis
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`added). The examiner relied on that statement to find the claims patentable over
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`Guillou—and identical or similar statements in four other prosecutions produced the
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`same result.2 Those statements cannot be reconciled with the Board’s construction,
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`and remand is warranted on this issue as well.
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`“Video.” Another key dispute before the Board was whether the term
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`“encrypted video” in claim 4 encompassed teletext, which, in the context of the
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`2 See Application Nos. 90/014,188 (Patent No. 8,713,624 C1) (Aug. 27, 2018,
`REM, at 2-3 of 6); 90/014,189 (Patent No. 8,587,720 C1) (Aug. 28, 2018,
`RXOSUB.40, at 30, 34 of 38); 90/014,223 (Patent No.8,566,868 C1) (Feb. 22,
`2019, REM, at 3-15 of 59); and 90/014,191 (Patent No. 8,558,950 C1) (Aug. 29,
`2018, RXOSUB.R.40, at 23 of 28).
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`12
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`relevant prior art, includes text that may flash and simple, non-moving shapes. Paper
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`41, at 28-30. That dispute was crucial because the only art that disclosed the
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`“encrypted video”
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`limitation—the Guillou
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`reference—disclosed only
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`the
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`transmission of encrypted teletext. Id. The Board ultimately agreed with Petitioner
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`that, despite lacking any “moving visuals,” teletext constituted “video” based on
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`Guillou’s characterization of teletext as “Text Video” and Petitioner’s expert’s
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`statement that teletext is “non-static.” Id. at 29.
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`The Board’s analysis suffered from the same flaw that doomed its
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`construction of “decryption”—it prioritized the extrinsic record while failing to
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`account for the prosecution of the patent at issue. Claim 4 was added as application
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`claim 25 on April 5, 2011. Ex. 2016, at 1009. That amendment made clear that the
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`claim was copied, almost verbatim, from a prior application—No. 08/449,263 (the
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`’263 Application). Id., at 1020, 1022. And that prior application, in turn, makes
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`crystal clear that the word “video” in the phrase “encrypted video,” in the context of
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`this patent, requires “full motion video,” not simply changing text. Specifically, the
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`claim originally required “a portion of a television program.” PAIR, ’263
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`Application, (Nov. 3, 1995, CLM, at 2 of 17). Then, to traverse the very Guillou
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`reference at issue here, it was amended to require “full motion video.” PAIR, ’263
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`Application, (Sept. 22, 1997, CLM, at 4 of 20). And then, when the examiner held
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`that further amendment was necessary to overcome Guillou, the claim was further
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`13
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`amended to require “encrypted video.” PAIR, ’263 Application, (Oct. 2, 2000,
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`CLM, at 7 of 82). Nothing in the history suggests that the change from “full motion
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`video” to “encrypted video” was intended to broaden the nature of the “video” at
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`issue. Indeed, such a broadening would have been absurd: The whole point of the
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`amendments was to overcome a rejection based on Guillou, yet broadening the claim
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`to encompass teletext would have created the very problem the amendment sought
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`to overcome. The proceeding should be remanded for the Board to consider this
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`prosecution history absent its legally erroneous disclaimer requirement.
`
`“Processor.” Another claim construction dispute concerned the word
`
`“processor” in claims 18 and 21—specifically, whether it means any “device that
`
`operates on data,” as the Board concluded, or only a “device that performs operations
`
`according to instructions,” as PMC argued. Paper 41, at 18. Here, too, the Board’s
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`construction conflicts with the applicant’s statements during prosecution.
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`Claim 21 was added as application claim 43. Ex. 2016, at 1014. That
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`amendment showed that the claim was copied from application claim 111 in the ’263
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`Application. Id. at 1020, 1026. Statements in the ’263 Application conflict with the
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`Board’s construction of a “processor.” In response to the examiner’s rejection of
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`claim 111 as lacking written description support, the applicant provided a chart
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`“reciting specification support for each claim limitation.” See PAIR, ’263
`
`Application, (Oct. 2, 2000, REM, Appendix A at 129 of 1358). In that chart, the
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`14
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`IPR2016-00754
`U.S. Patent No. 8,559,635 B1
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`applicant did not suggest that there was support for an interpretation of “processor”
`
`that swept in any device that operates on data—which would sweep in essentially
`
`all electronic circuits that operate in a computer network. Instead, the applicant
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`disclosed a device, like a signal processor and decrypter, that performs operations
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`according to instructions. See Id. at 805-809 and 809-816 of 1358.
`
`*
`
`*
`
`*
`
`In sum, given that the Board’s errors in this case—both direct and
`
`methodological—were “substantially similar” to the errors the Federal Circuit
`
`reversed in PMC ’091, the Board’s decision should be vacated and the proceeding
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`should be remanded. Proppant, IPR2018-00733, Paper 95, at 3.
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`III. PMC’s request must be considered by a principal officer
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`The final decision in this IPR must be made by a “principal officer”—a
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`Senate-confirmed Director. The official currently “performing the functions and
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`duties” of Director, Mr. Hirshfeld, can begin the Director review process and order
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`reconsideration by a Board panel. But a denial of relief by Mr. Hirshfeld would not
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`be a final decision by a principal officer. See United States v. Eaton, 169 U.S. 331,
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`343 (1898). Mr. Hirshfeld was not named by the President or confirmed by the
`
`Senate to his permanent job or even his temporary leadership role.
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`CONCLUSION
`
`The Board’s decision should be vacated and remanded for reconsideration.
`
`15
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`December 8, 2021
`
`
`IPR2016-00754
`U.S. Patent No. 8,559,635 B1
`
`
`Respectfully submitted.
`
`/Douglas J. Kline/
`Douglas J. Kline (Reg. No. 35,574)
`GOODWIN PROCTER LLP
`100 Northern Avenue
`Boston, MA 02210-1980
`Tel.: (617) 570-1000
`Fax: (617) 523-1231
`dkline@goodwinlaw.com
`
`Counsel for Patent Owner
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`16
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`
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`IPR2017-01256
`U.S. Patent No. 9,249,149
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`CERTIFICATE OF COMPLIANCE WITH PAGE LIMITS
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`I hereby certify that Patent Owner’s Request for Director Review complies
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`with the page-count limitation of Arthrex Q&As No. A8, because it does not exceed
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`fifteen pages, excluding the cover page, signature block, and the parts of the
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`document exempted by 37 C.F.R. § 42.24(a)(1).
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`
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`December 8, 2021
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`
`
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`Respectfully submitted.
`
`/Douglas J. Kline/
`Douglas J. Kline (Reg. No. 35,574)
`GOODWIN PROCTER LLP
`
`
`
`
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`
`
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`
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`IPR2017-01256
`U.S. Patent No. 9,249,149
`
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that the foregoing document was served
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`electronically via e-mail on this December 8, 2021, as follows:
`
`Marcus Sernel
`Joel Merkin
`Eugene Goryunov
`Gregory Arovas
`Alan Rabinowitz
`KIRKLAND & ELLIS LLP
`msernel@kirkland.com
`jmerkin@kirkland.com
`egoryunov@kirkland.com
`garovas@kirkland.com
`arabinowitz@kirkland.com
`Apple-PMC-PTAB@kirkland.com
`
`Counsel for Petitioner
`
`
`
`
`
`/Douglas J. Kline/
`Douglas J. Kline (Reg. No. 35,574)
`GOODWIN PROCTER LLP
`
`
`
`
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