Trials@uspto.gov
`571-272-7822
`
`
` Paper 8
`Entered: July 14, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00755
`Patent U.S. 8,191,091
`____________
`
`
`
`
`
`
`Before KARL D. EASTHOM, TRENTON A. WARD, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Authorization to File a Reply and Sur-Reply
`37 C.F.R. §§ 42.5(a), 108(c)
`
`
`571-272-7822
`
`
` Paper 8
`Entered: July 14, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00755
`Patent U.S. 8,191,091
`____________
`
`
`
`
`
`
`Before KARL D. EASTHOM, TRENTON A. WARD, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`EASTHOM, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Authorization to File a Reply and Sur-Reply
`37 C.F.R. §§ 42.5(a), 108(c)
`
`
`
`IPR2016-00755
`Patent 8,191,091
`
`
`On July 13, 2016, the panel and the parties’ counsels discussed
`
`Petitioner’s request (in an e-mail) to file a Preliminary Reply (i.e., prior to
`
`any decision to institute) to Patent Owner’s Preliminary Response to address
`
`Patent Owner’s assertions of priority to Nov. 3, 1981. Patent Owner asserts
`
`priority through a chain of applications, including a continuation-in-part
`
`(“CIP”) application for the patent claims under challenge, U.S. Pat. No.
`
`8,191,091 (“the challenged claims” of “the ’091 patent”). See Paper 7
`
`(“Prelim. Resp.”), 7–16.1 Patent Owner opposed Petitioner’s request to file
`
`a Preliminary Reply during the conference call (and in the e-mail).
`
`Petitioner provided a court reporter for the conference call and will file a
`
`transcript of the call as an Exhibit.
`
`The Petition (Paper 1, “Pet.”) “assumes” that the earliest effective
`
`priority date for the ’091 patent is September 11, 1987, based in part on the
`
`CIP status of the ’091 patent and on priority assertions “at least” to 1987 that
`
`Patent Owner made in related District Court litigation. See Ex. 1019, 6;
`
`Pet. 1–2 (citing Ex. 1019, 6); supra note 1. The Petition also contends that
`
`the originally filed 1981 application (07/096,096) contained 22 columns, and
`
`that the 1987 CIP application that culminated eventually into the ’091 patent
`
`“spanned over 300 columns.” Id. at 1; see supra note 1.
`
`The record shows and the parties agree that if the challenged claims of
`
`the ’091 patent garner priority status back to the earlier Nov. 3, 1981 date,
`
`
`1 According to the face of the ’091 patent, it claims priority to Sept. 11, 1987
`through a chain of continuation applications, and from that date, claims
`priority through a CIP application and then through a continuation
`application to Nov. 3, 1981. In other words, the ’091 patent on its face has
`effective continuation priority status to Sept. 11, 1987 and CIP priority status
`to Nov. 3, 1981.
`
`
`
`2
`
`
`
`IPR2016-00755
`Patent 8,191,091
`
`then the ’091 patent would antedate the asserted prior art with respect to all
`
`but one of the grounds (asserted against two of the challenged claims). See
`
`Pet. 2–3; Prelim. Resp. 33–34. Patent Owner contended during the
`
`conference call that Petitioner’s request to file a Preliminary Reply to the
`
`Preliminary Response to address Patent Owner’s priority assertions should
`
`be denied, because Petitioner had its chance to address priority in its Petition
`
`and should have contemplated that Patent Owner could have asserted
`
`priority to the 1981 date. According to Patent Owner’s arguments during the
`
`conference call and similar statements in its Preliminary Response, any
`
`statements it advanced at the District Court about priority to the 1987 date
`
`were not binding, and in any case, the assertion of priority of “at least” to the
`
`1987 date should have apprised Petitioner of the reasonable possibility of a
`
`priority claim to the earlier 1981 date. See Prelim. Resp. 8 & n. 2; Ex. 1019,
`
`6.
`
`In context, in the related District Court litigation, Patent Owner
`
`contended that two other related PMC patents, also filed as CIP patents with
`
`respect to the 1981 date, “are entitled to . . . the priority date” of November
`
`3, 1981, but “that the asserted claims of U.S. Patent Nos. 7,752,649 and
`
`8,191,091 are at least entitled to the priority date of United States Patent
`
`Application Serial No. 07/096,096, filed September 11, 1987, now U.S. Pat.
`
`No. 4,965,825, which was a continuation-in-part of U.S. Patent Application
`
`No. 06/829,531, filed February 14, 1986, now U.S. Patent No. 4,704,725,
`
`which was a continuation of U.S. Patent Application No. 06/317,510, filed
`
`November 3, 1981, now U.S. Pat. No. 4,694,490 [the ’490 patent].”
`
`Ex. 1019, 6. All of the claims challenged in the instant IPR proceeding are
`
`asserted in the District Court litigation. Compare Ex. 1019, 2, with Pet. 3.
`
`
`
`3
`
`
`
`IPR2016-00755
`Patent 8,191,091
`
`
`During the conference call, Patent Owner stated that it added the
`
`challenged claims by amendment in 2011 after cancelling or amending
`
`original claims. These newly filed claims were labeled as part of a “DECR
`
`87 group” during prosecution. See Ex. 1035, 10–11. Petitioner argued that
`
`the designation “DECR 87 group” reasonably signifies 1987 priority status.
`
`Patent Owner did not refute Petitioner’s characterization regarding what
`
`“DECR 87 group” signifies.
`
`In any event, Patent Owner also contended during the call that its
`
`Preliminary Response expends considerable effort and resources to show
`
`that the’490 patent specification, filed in 1981, supports the challenged
`
`claims. To wit, Patent Owner provides an “element-by-element analysis” to
`
`show support for the challenged claims in the ’490 patent specification. See
`
`Prelim. Resp. 9 (citing Ex. 2001 ¶ 44; Ex. 1009).
`
`
`
`As Patent Owner also argued during the conference call, Petitioner
`
`bears the ultimate burden of showing unpatentability. Nevertheless, under
`
`the circumstances outlined above, which include priority through a CIP
`
`application, prior assertions of priority to the later 1987 CIP application date,
`
`a large expansion of material in the later-filed 1987 CIP application (300
`
`columns) relative to the original 1981 application (22 columns), and then,
`
`after the Petition, Patent Owner’s new assertions of priority pre-dating the
`
`1987 CIP filing date, Patent Owner bears the burden of going forward to
`
`show that the earlier-filed 1981 application supports the challenged claims
`
`of its later-filed “DECR 87” claims. During the conference call, Petitioner
`
`also asserted that the prosecution history shows that Patent Owner should be
`
`estopped from asserting a 1981 priority date based on alleged statements
`
`disavowing priority to the 1981 date.
`
`
`
`4
`
`
`
`IPR2016-00755
`Patent 8,191,091
`
`
`A fair reading of the litigation and prosecution history documents
`
`currently of record (see Ex. 1019, 1035), considering the relevant CIP status
`
`at issue, and taking into account the positions taken during the conference
`
`call, all indicate that at least for purposes of the Petition, Petitioner
`
`reasonably could have relied on Patent Owner’s various statements asserting
`
`priority to the 1987 date instead of the 1981 date. Assuming for the sake of
`
`argument that Patent Owner met its burden of going forward in its
`
`Preliminary Response to show priority to the 1981 date such that its
`
`effective CIP application antedates some of the prior art references asserted
`
`against the challenged claims, good cause exists (i.e., due process, fairness,
`
`and efficiency considerations) to afford Petitioner an opportunity to respond
`
`to the Preliminary Response in a Preliminary Reply. See 37 C.F.R. § 42.108
`
`(c) (“A petitioner may seek leave to file a reply to the preliminary response”
`
`that may be granted upon a “showing of good cause.”). Good cause also
`
`exists to afford Patent Owner an opportunity to respond to Petitioner’s
`
`Preliminary Reply in a Preliminary Sur-Reply.
`
`
`
`In an effort to expedite the proceeding and allow the parties a fair
`
`opportunity to inform the panel regarding what may be a dispositive issue
`
`for challenges to most of the claims, we hereby grant Petitioner’s request to
`
`submit a Preliminary Reply not to exceed seven (7) pages to address Patent
`
`Owner’s assertions of priority to the 1981 date. In response, Patent Owner
`
`may submit a Preliminary Sur-Reply not to exceed seven (7) pages.
`
`
`
`
`
`Accordingly, it is hereby ORDERED that
`
`1) Petitioner may file a Preliminary Reply as outlined above due on or
`
`before July 20, 2016; and
`
`
`
`5
`
`
`
`IPR2016-00755
`Patent 8,191,091
`
`
`
`2) Patent Owner may file a Preliminary Sur-Reply as outlined above
`
`due on or before July 27, 2016.
`
`
`
`
`
`PETITIONER:
`
`Marcus E. Sernel
`Joel R. Merkin
`marc.sernel@kirkland.com
`joel.merkin@kirkland.com
`
`
`PATENT OWNER:
`
`Douglas Kline
`Jennifer Albert
`Stephen Schneiner
`GOODWIN PROCTER LLP
`dkline@goodwinprocter.com
`jalbert@goodwinprocter.com
`sschreiner@goodwinprocter.com
`
`Thomas J. Scott
`PERSONALIZED MEDIA COMMUNICATIONS, LLC
`tscott@pmcip.com
`
`
`
`6
`
`
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