Filed: January 12, 2018
`
`Filed on behalf of:
`Patent Owner Voip-Pal.com Inc.
`By: Kevin N. Malek
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`MALEK MOSS PLLC
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`340 Madison Avenue, 19th Floor
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`New York, NY 10173
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`Tel.: +1-212-812-1491
`Tel.: +1-855-291-7407
`Fax: +1-561-910-4134
`Email: kevin.malek@malekmoss.com
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`
`
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
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`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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`VOIP-PAL.COM, INC.,
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`Patent Owner
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`Case No. IPR2016-01198
`U.S. Patent 9,179,005
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`PATENT OWNER’S OPPOSITION TO APPLE’S MOTION FOR
`SANCTIONS PURSUANT TO BOARD ORDER OF DECEMBER 20, 2017
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`

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`
`TABLE OF CONTENTS
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`Page No.
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`I.
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`INTRODUCTION ........................................................................................... 1
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`II.
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`ARGUMENT ................................................................................................... 2
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`A.
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`B.
`
`C.
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`The Sawyer Letters Are Authorized By The Rules of Practice and Do
`Not Qualify As Ex Parte Communications. .......................................... 2
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`Petitioner’s Argument That It Was Prejudiced Is Wrong Because
`Petitioner Lost Squarely On The Merits. .............................................. 9
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`Petitioner Motion for Sanctions and the Relief Requested Therein Is
`Untimely and Barred. ..........................................................................12
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`D.
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`Petitioner’s Due Process Rights Were Not Violated. .........................14
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`III. CONCLUSION ..............................................................................................16
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`-i-
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`

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`TABLE OF AUTHORITIES
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`Page No(s).
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`Cases
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`AIG Baker Shopping Ctr. Props., LLC v. Deptford Twp. Planning Bd., No. 04–
`CV–5849(FLW), 2006 WL 83107, at *12 (D.N.J. Jan. 10, 2006) ........................ 8
`
`
`Aiken Cnty. v. BSP Div. of Envirotech Corp., 866 F.2d 661, 679 (4th Cir.1989) ..... 8
`
`Arris Grp., Inc., Petitioner, IPR2015-00635, 2015 WL 12711783 .........................14
`
`In re Adbox, Inc., 234 Fed. Appx. 420, 421 (9th Cir. 2007) ..................................... 8
`
`Kaufman v. Am. Family Mut. Ins. Co., No. 05-CV-02311-WDM-MEH, 2009 WL
`924442, at *1 (D. Colo. Apr. 3, 2009) ................................................................... 9
`
`
`Knop v. Johnson, 977 F.2d 996, 1011 (6th Cir.1992) ............................................... 8
`
`RPX Corp. v. Applications in Internet Time, LLC, IPR2015-01750 .......................10
`
`Scherer v. Washburn Univ., No. CIV.A. 05-2288-CM, 2006 WL 2570274, at *2,
`FN 1 (D. Kan. Mar. 30, 2006)................................................................................ 8
`
`
`Stone v. FDIC, 179 F.3d 1368, 1377 (Fed. Cir. 1999) ............................................15
`
`Wells Fargo Bank Nw., N.A. v. Biotab Nutraceuticals, Inc., No. 1300435, 2013
`WL 12202754, at *2 (C.D. Cal. Mar. 11, 2013) .................................................... 8
`
`Statutes and Rules
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`37 C.F.R. § 42.5(d) .................................................................................................... 2
`
`Rules of Practice for Trials Before the Patent Trial and Appeal Board, 77 FR
`48612-01 ................................................................................................................ 2
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`
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`-ii-
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`

`

`IPR2016-01198
`Apple Inc v. Voip-Pal
`
`Patent Owner Voip-Pal.com, Inc. (“Voip-Pal”) hereby opposes Petitioner
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`Apple’s Motion for Sanctions (Paper No. 55) and respectfully submits that denial of
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`the Motion for Sanctions is mandated.
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`I.
`
`INTRODUCTION
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`Petitioner’s Motion for Sanctions is an unwarranted attack on Patent Owner
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`and the Board and is driven by nothing more than speculation and unsupported
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`accusations of bias and misconduct. Petitioner requests that the Board ignore its
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`sound and final written decision and instead render judgment in Petitioner’s favor or
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`order re-trial on the merits. Petitioner’s request is absurd for numerous reasons:
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`First, the Code of Federal Regulations and the Rules of Practice make clear
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`that the Sawyer Letters are not impermissible ex parte communications;
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`Second, none of the Sawyer Letters addressed the merits of the pending
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`proceedings and there has been no prejudice here;
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`Third, Petitioner’s request for relief is untimely and barred as it comes after
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`an adverse judgment and also in light of the fact that Petitioner was in possession of
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`the first and the last of the Sawyer Letters and still chose to do nothing; and
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`Finally, even assuming the Sawyer Letters were improper ex parte
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`communications, the requested sanctions are completely unprecedented and
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`disproportionate to the alleged misconduct and actual harm.
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`-1-
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`

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`IPR2016-01198
`Apple Inc v. Voip-Pal
`
`II. ARGUMENT
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`A. The Sawyer Letters Are Authorized By The Rules of Practice and Do Not
`Qualify As Ex Parte Communications.
`
`The Sawyer Letters are not impermissible ex parte communications; they are
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`exempted and authorized by the C.F.R. and Rules of Practice. The heart of
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`Petitioner’s Motion rests upon 37 C.F.R. § 42.5(d), generally prohibiting
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`communications with the Board “unless both parties have an opportunity to be
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`involved.” See Motion at 9. But § 42.5(d) does not prohibit all ex parte
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`communications. Indeed, in explaining § 42.5(d), the Rules of Practice provide:
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`The prohibition on ex parte communications does not extend to: […]
`(4) reference to a pending case in support of a general proposition
`(for instance, citing a published opinion from a pending case or
`referring to a pending case to illustrate a systemic concern).
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`See, e.g., Rules of Practice for Trials Before the Patent Trial and Appeal Board, 77
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`FR 48612-01 (emphasis added). Therefore, communications that make “reference”
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`to a pending case in order to “illustrate a systemic concern” are permissible. Id.
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`1.
`
`The Sawyer Letters illustrate systemic issues in the IPR
`process as allowed under the Rules of Practice.
`All of the Sawyer Letters constitute the authorized illustration of systemic
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`concerns about the U.S.P.T.O. and PTAB process that are permitted under the Rules
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`of Practice and the C.F.R.1 Reference to this proceeding does not make the Sawyer
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`1 Much has been made about the involvement of Patent Owner in the Sawyer Letters.
`Patent Owner has been as concerned as Dr. Sawyer about systemic issues with
`Office practice. Patent Owner did have discussions with Dr. Sawyer about these
`systemic issues and did participate in the preparation of the Sawyer Letters, as was
`
`-2-
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`

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`IPR2016-01198
`Apple Inc v. Voip-Pal
`
`Letters impermissible ex parte communications. See supra. Petitioner tries to create
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`issues where none exist by misrepresenting the Sawyer Letters, some of which were
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`already in Petitioner’s possession. See Section II.C. A careful review reveals that the
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`letters are not impermissible ex parte communications under the Rules of Practice.
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`May 1, 2017 Letter (the “May Letter”): Foremost, the May 1, 2017 Letter
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`was admittedly received by Petitioner. See Section II.C. And Petitioner did nothing
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`about it. That fact alone removes the May Letter from the scope of § 42.5; it is not
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`an impermissible ex parte communication. Separately, the fact that the May Letter,
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`which was sent to the Honorable David P. Ruschke and copied to the U.S. President
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`and various members of Congress and officials, was transmitted in order to criticize
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`general USPTO policies that prevent participants in the Inter Partes Review process
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`from accessing information necessary to determine whether there is bias or
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`impartiality in any particular proceeding, also disqualifies the May Letter as an ex
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`parte communication under § 42.5. For example, the May Letter contrasts the
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`requirement that federal judges disclose financial conflicts of interests with evidence
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`showing that similar disclosures are not required in the PTAB setting due to
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`systemic policies. As the May Letter states:
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`The financial disclosures are withheld in full pursuant to Exemption
`(b)(6) of the FOIA, ... [as] a clearly unwarranted invasion of personal
`privacy [making it] impossible to get financial information about the
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`stated in the October Letter, publicly posted on Patent Owner’s website. But, as set
`forth here, Patent Owner did so within the requirements of § 42.5(d). See infra.
`
`
`-3-
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`

`

`IPR2016-01198
`Apple Inc v. Voip-Pal
`
`three members of the panel in the current IRB [and] information
`concerning any potential bias in the administration of this judicial
`system. See Ex. 3003 (May Letter) at page 2.
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`That the May Letter refers to a pending case to illustrate a point is actually
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`authorized by the Rules of Practice. Petitioner falsely asserts, without evidence, that
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`the May Letter “demanded” the Board replace the original Panel (Paper 55 at 1); in
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`fact, no “demand” was ever made for the Board to change the panel. Petitioner’s
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`suggestion that the Board granted relief based on the May Letter is pure conjecture.
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`Id. at 1. Thus, the May Letter is not an impermissible ex parte communication.
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`July 27, 2017 Letter (the “July 27 Letter”): The July 27 Letter is not
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`impermissible under § 42.5; it, too, illustrates systemic concerns with the PTAB
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`process and policy of allowing special purpose entities to file petitions on behalf of
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`other undisclosed parties and failing “to provide constitutional protections to patent
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`holders.” See Ex. 3006 (July 27 Letter) at 1. The July 27 Letter does not reference
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`the instant proceedings specifically, only the fact that Patent Owner “has had eight
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`IPR petitions filed against it,” in order to illustrate these systemic concerns.
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`August 31, 2017 Letter (the “August Letter”): The August Letter is also
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`not an ex parte communication under § 42.5. The August Letter raises systemic
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`concerns about potential unfairness of the IPR system due to “gang tackling”, PTAB
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`panel stacking/manipulation, or conflicts of interest due to USPTO officers having
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`financial stakes in Silicon Valley. See Ex. 3007 (August Letter) at 1-4. While this
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`letter was copied to the Panel, all of the issues were systemic in nature and none of
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`-4-
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`

`

`IPR2016-01198
`Apple Inc v. Voip-Pal
`
`the issues raised were relevant to the substantive merits of the case before the new
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`Panel. Id.
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`October 23, 2017 Letter (“October Letter”): The October Letter is not an
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`impermissible ex parte communication under § 42.5, at least because it was received
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`by Petitioner, which failed to act. See Section II.C. Separately, the October Letter
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`reiterated the same criticisms about PTAB policies and systemic issues regarding
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`fundamental fairness. See Ex. 3008 (October Letter) at 3-6. Petitioner alleges that
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`the October Letter demands unwarranted relief. But the Rules of Practice authorize
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`complaints about systemic issues, all of which come with the inherent right to
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`request that those systemic concerns be remedied. Petitioner’s admitted awareness
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`of the October Letter and the timing of the Motion for Sanctions is suspicious at
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`best.
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`June 21 and July 11 Letters (the “Follow Up Letters”): The Follow Up
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`Letters, too, are permissible under § 42.5. Petitioner’s portrayal of the June 21 Letter
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`as seeking “a judgment in the patent owner’s favor or a dismissal of the action” is
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`misleading. See Paper 55 at 4. The June 21 and July 11 Letters follow up the May
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`Letter to seek transparency regarding the changes to the original Panel. That
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`transparency never came because the letters were either not received or ignored.
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`Petitioner’s argument that the June 21 and July 11 Letters sought “sanctions”
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`in the form of a judgment in the Patent Owner’s favor is misleading. See Paper 55
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`(Motion) at 4, 5. The June 21 Letter merely suggests that the process of substituting
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`-5-
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`

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`IPR2016-01198
`Apple Inc v. Voip-Pal
`
`a panel, if done to remedy a conflict, would not address any predicate decision of
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`the substituted panel. See June 21 Letter at 2. These comments are hardly earth
`
`shattering and had no effect on the proceeding. Dr. Sawyer’s suggestion to “allow
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`the new panel to reconsider the institution decision” was never acted upon. Id.
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`Even if it had been acted upon, reconsideration of institution would not necessarily
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`have led to judgment for the Patent Owner. Similarly, the July 11 Letter criticizes
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`the PTAB’s procedure of substituting a panel without revisiting the substituted
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`panel’s decisions. The July 11 Letter concludes with an explanation about sanctions
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`that, ironically, are not even applicable to judges. See Ex. 3005 (July 11 Letter) at 3.
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`2.
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`Patent Owner’s conduct with respect to the Sawyer Letters
`was entirely proper under the Rules of Practice.
`Both Voip-Pal and its shareholder shared the foregoing systemic concerns. As
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`noted above, the Rules of Practice authorize ex parte communications regarding
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`systemic issues and reference to current proceedings to provide context and
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`illustration. Had any of the Sawyer Letters addressed the merits of these
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`proceedings, refuted prior art references, or discussed the patent’s claims, that would
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`have been improper. But that is not the case here.
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`All of the Sawyer Letters illustrated systemic concerns about potential
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`unfairness and bias of the Inter Partes Review system, citing various public sources
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`of commentary by patent practitioners, industry experts, and even Federal Circuit
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`judges echoing those systemic concerns. See Exhibits 2058-2096. The Sawyer
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`Letters scrupulously avoid discussion of all “substantive issues” (prior art, non-
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`-6-
`
`

`

`IPR2016-01198
`Apple Inc v. Voip-Pal
`
`obviousness or antedating). No attempt was made to communicate clandestinely
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`with the Panel; the letters provided an open list of “cc’d” recipients, including the
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`Board and federal court judges through which Petitioner received what it
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`characterizes as the most egregious ex parte communications. Nor did Patent Owner
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`hide these letters, but rather, posted them on its public website and issued a press
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`release.2
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`3.
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`The relief requested by Petitioner would be unprecedented
`under these circumstances.
`Even if deemed impermissible ex parte communications, the Sawyer Letters
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`do not come close to being egregious conduct that is worthy of the unprecedented
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`sanctions requested by Petitioner – reversal of the Board’s sound decision or re-trial.
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`Where a party has engaged in ex parte communications with a judge, courts have
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`declined to impose sanctions, and instead, have opted to warn parties against further
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`communications, invoking the possibility of sanctions only if the warnings were
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`violated. See, e.g., Scherer v. Washburn Univ., No. CIV.A. 05-2288-CM, 2006 WL
`
`2570274, at *2, FN 1 (D. Kan. Mar. 30, 2006) (declining to impose sanctions after
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`“numerous [ex parte] contacts, via email and telephone, with the court regarding this
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`case and various other topics”); see also Wells Fargo Bank Nw., N.A. v. Biotab
`
`
`2 The press release states that the letters were independently written by Dr. Sawyer.
`As made clear in the Sawyer Letters and this brief, the Patent Owner contributed to
`Dr. Sawyer’s letters about their mutual concerns, shared by the commentators cited
`in the letters, regarding systemic issues in the Office as authorized by the Rules.
`Patent Owner’s participation ensured that the technical merits were not discussed.
`See FN 1. A revised version of the press release was issued on January 11, 2018.
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`-7-
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`

`

`IPR2016-01198
`Apple Inc v. Voip-Pal
`
`Nutraceuticals, Inc., No. 1300435, 2013 WL 12202754, at *2 (C.D. Cal. Mar. 11,
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`2013) (declining sanctions, instead ordering that “ex parte communications” cease).
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`And in analogous settings where recusals were sought following ex parte
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`communications with judges or their staff, courts have declined to grant relief
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`especially where the communications did not affect the merits of the decision. See,
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`e.g., In re Adbox, Inc., 234 Fed. Appx. 420, 421 (9th Cir. 2007) (denying motion for
`
`recusal despite “several ex parte contacts,” as there was “no evidence that those
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`communications affected the bankruptcy judge’s rulings”).3
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`Here, none of the Sawyer Letters affected the rulings. Given that the Sawyer
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`Letters are entirely non-substantive, Petitioner has no choice but to conjure up a
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`nebulous argument about alleged “reciprocal bias”, misleadingly suggesting that the
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`“Substitute Panel” was “implicitly pushed” by Dr. Sawyer’s “additional ex parte
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`letters” (i.e., “the remainder of the letters”) onto some kind of biased, erroneous and
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`prejudiced “path,” as “every additional letter from Voip-Pal fostered and nurtured
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`that bias, compounding the error, the prejudice, and the due process violation.” See
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`Paper 55 at 13-14 (emphasis added). Such a proposed chain of prejudicial influence
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`3 See also Knop v. Johnson, 977 F.2d 996, 1011 (6th Cir.1992) (no relief granted
`despite ex parte contacts because “lapses appear[ed] relatively harmless,” as the
`court did not rely on the contacts in writing its opinion); Aiken Cnty. v. BSP Div. of
`Envirotech Corp., 866 F.2d 661, 679 (4th Cir.1989) (no “reasonabl[e] ... belief that
`the judge was not impartial,” where ex parte contacts didn’t touch “substantive
`issues”); AIG Baker Shopping Ctr. Props., LLC v. Deptford Twp. Planning Bd., No.
`04–CV–5849(FLW), 2006 WL 83107, at *12 (D.N.J. Jan. 10, 2006) (explains that
`proscription against ex parte communications concerns those communications that
`affect the merits of a proceeding; no recusal is necessary if they do not).
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`-8-
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`

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`IPR2016-01198
`Apple Inc v. Voip-Pal
`
`is absurd because there is no evidence that members of the “Substitute Panel”
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`received or read, let alone acted upon, the Sawyer Letters.
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`Petitioner doesn’t identify what, exactly, gives the “appearance” of bias.
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`Petitioner assumes that the mere fact of the Sawyer Letters creates an appearance of
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`bias—an unsupported and patronizing view that denigrates the competence and
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`independence of the Board. Courts have rejected this very view, refusing to infer
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`bias solely due to the fact of ex parte communication. See, e.g., Kaufman v. Am.
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`Family Mut. Ins. Co., No. 05-CV-02311-WDM-MEH, 2009 WL 924442, at *1 (D.
`
`Colo. Apr. 3, 2009).4 In Kaufman, the plaintiff said that an ex parte communication
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`created an “appearance of partiality” and “somehow cast[] doubt on the reliability of
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`orders” issued. Id. (finding the argument to be “unavailing” and indicating that
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`“there is nothing to indicate partiality or even the appearance of partiality”). Thus,
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`there is no basis for the draconian sanctions that Petitioner requests.
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`B.
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`Petitioner’s Argument That It Was Prejudiced Is Wrong Because
`Petitioner Lost Squarely On The Merits.
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`Board Decisions hold that a showing of harm is required in a motion for
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`sanctions. See, e.g., RPX Corp. v. Applications in Internet Time, LLC, IPR2015-
`
`
`4 Petitioner’s theory that the Panel “responded” to the Sawyer Letters (id. at 14) is
`contradicted by the fact that the Board did not answer Dr. Sawyer’s letters, nor did it
`revisit the institution decision. Rather, the Board followed standard operating
`procedures to assess both Petitioner’s and Patent Owner’s positions on the merits.
`Petitioner assumes that substitution of the Original Panel is proof of a response, but
`Petitioner admits it was aware of this change and also aware of the May Letter but
`did nothing, having “no reason to believe” that there was an effect. See Section II.C.
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`
`-9-
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`

`

`IPR2016-01198
`Apple Inc v. Voip-Pal
`
`01750, Paper No. 58, at 2 (noting that a motion for sanctions must address the
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`following factors: (1) whether a party has engaged in conduct that warrants
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`sanctions; (2) whether the moving party has suffered harm from that conduct; and
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`(3) whether the sanctions requested are proportionate to the harm suffered by the
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`moving party). But these factors do not support Petitioner’s request for sanctions.
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`In arguing
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`that
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`it was harmed by
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`the Sawyer Letters, Petitioner
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`mischaracterizes the record in order to discredit the Final Written Decision
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`(“FWD”) as tainted by bias. Petitioner states that “the replacement panel reversed
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`the [Original Panel’s] decision,” and that Patent Owner “repeated the same rejected
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`arguments from the POPR and rehearing request.” Paper 55 at 1, 3. Both allegations
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`are false and misleading. In fact, Patent Owner presented new arguments and new
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`evidence (e.g., testimony from Dr. Mangione-Smith and Petitioner’s expert, Dr.
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`Houh) that the Original Panel didn’t have. The new Panel analyzed “the entirety of
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`the record,” e.g., “the record... developed during trial.” Paper 53 (FWD) at 20, 27.
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`Petitioner also mischaracterizes the Board’s factual findings, stating that the
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`“FWD analyzed only the ordering of steps and motivation to combine arguments—
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`both of which the Original Panel had previously rejected…” Paper 53 (FWD) at 7.
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`Contrary to the Petitioner, the Board analyzed “the entirety of the record” (id. at 27)
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`to find, inter alia, that: (1) the Petitioner’s reasons to combine Chu ‘684 were
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`“conclusory and insufficient” and lacked “underlying evidentiary support” (id. at
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`18-21); (2) Chu ‘684 classified calls based simply on the “dialed digits” and did not
`
`-10-
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`

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`IPR2016-01198
`Apple Inc v. Voip-Pal
`
`require “knowledge of the attributes of a caller” (id. at 22); (3) Chu ‘684’s teaching
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`does not apply to reformatted numbers (id. at 22-23); (4) the record didn’t support
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`Petitioner’s claim that a skilled person would program Chu ‘684 to “analyze the
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`dialed digits and reformat as necessary” for classification (id. at 23); and (5)
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`Petitioner didn’t account for the order of steps required by the claims (id. at 23-24).
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`Moreover, these factual findings were based on the entirety of the record
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`developed during trial, including new evidence from both Dr. Mangione-Smith and
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`Dr. Houh. Paper 53 (FWD) at 20. For example, the Panel expressly relied on Dr.
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`Mangione-Smith’s evidence to identify deficiencies in Dr. Houh’s testimony (id. at
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`19, citing Dr. Mangione-Smith’s testimony in Ex. 2016 ¶¶ 65–67) and also to
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`confirm it’s view that Chu ‘684 relied on the “dialed digits”, and not on any
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`attributes of a caller, to process a call (id. at 22, citing Ex. 2016 ¶ 71). For example,
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`the Board found:
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`Indeed, we credit Dr. Mangione-Smith’s view that Dr. Houh does not
`explain adequately the nature of the deficiency in Chu ’684 that is
`intended to be addressed.” Id. at 19 (citing Dr. Mangione-Smith’s
`testimony in Ex. 2016 ¶¶ 65–67).
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`Thus, Petitioner’s characterization of the FWD as merely a reversal of earlier
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`decisions by the Original Panel or as merely rehashing rejected arguments is
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`disingenuous and inaccurate. Petitioner dismisses the detailed analysis the Board
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`performed in weighing all of the new evidence, to blame the decision on “bias”.
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`While Petitioner complains that it did not have an opportunity to respond to the
`
`-11-
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`

`

`IPR2016-01198
`Apple Inc v. Voip-Pal
`
`Sawyer Letters, it fails to provide any explanation for how the Sawyer Letters
`
`impacted the factual findings in the FWD. They did not because they could not: the
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`Sawyer Letters did not even touch any of the “substantive issues” before the Panel.
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`Petitioner’s overwhelming reliance on accusations of bias and prejudice in
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`this Motion belie its claims that Petitioner’s loss on the merits is due to the Sawyer
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`Letters. But the content of the Sawyer Letters was irrelevant to the substantive
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`issues before the Panel, and even if Petitioner had made a timely protest (which it
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`deliberately chose not to do), that would not explain how Petitioner’s technical
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`submissions would have been any different. The same flawed arguments and
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`evidence could not have led to a different decision on the merits. Thus, Petitioner
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`cannot substantiate any of its allegations of unfairness or of an improper result.
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`C.
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`Petitioner Motion for Sanctions and the Relief Requested Therein Is
`Untimely and Barred.
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`Petitioner’s Motion for Sanctions is separately barred because Petitioner was
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`aware of the alleged ex parte communications, chose to do nothing, and waited until
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`after final judgment. It is axiomatic that a request for sanctions must be made
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`promptly after the alleged misconduct in order to be actionable. See, e.g., Square
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`Inc. v. REM Holdings 3, LLC, IPR2014-00312, Paper 59 (Petitioner’s request found
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`untimely because it waited more than four months after the misconduct and two
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`weeks after the final decision); see also IPR2015-00516, Paper 12 at 2 (finding
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`request “untimely because Patent Owner waited until this late stage..., after our
`
`-12-
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`

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`IPR2016-01198
`Apple Inc v. Voip-Pal
`
`Decision Denying Institution, to request relief”); and IPR2015-00165, Paper 19
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`(denying relief because “Patent Owner allowed nearly seven weeks to pass”).
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`Petitioner became aware of the May 1, 2017 Letter and the October 23, 2017
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`Letter on May 8, 2017 and November 1, 2017, respectively, yet chose to do
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`nothing.5 Notwithstanding that fact and Petitioner’s awareness of the panel change
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`in June of 2017, Petitioner took no action to mitigate any alleged prejudice for seven
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`months and six weeks, respectively, waiting until after it lost on the merits by final
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`judgment. In a hearing with the present panel of judges, Petitioner’s counsel
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`admitted Petitioner’s awareness of the May 1 Letter and their own dilatory conduct:
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`The only reason we knew about that letter is a copy was sent to the
`District Court in Nevada, where the clerk entered it into the record in
`the litigation there. No actions were taken by Apple or the board with
`respect to that letter. We didn’t take any action in response to that
`letter because we had no reason to believe that it had any impact.
`
`[See Ex. 1021(Hearing Transcript 12/19/2017) at
`3:22-4:4 (emphasis added); see also Paper 55 at 10]
`
`Yet, now, Petitioner asserts the contrary—that the May Letter did have an impact.
`
`Separately, Petitioner’s Motion for Sanctions is statutorily barred under 37
`
`C.F.R. 42.73(a), which provides, in relevant part, that “a judgment, except in the
`
`case of a termination, disposes of all issues that were, or by motion reasonably could
`
`have been, raised and decided.” Here, Petitioner received notice of the first and the
`
`
`5 As set forth in the Declaration of Adam Knecht (Ex. 2057), the CM/ECF system in
`co-pending federal court proceedings in the District of Nevada served Petitioner
`with both the May and October Letters. And Petitioner’s counsel admitted that they
`were received. (See Ex. 1021 (Hearing Transcript 12/19/2017) at 3-4)).
`
`-13-
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`

`

`IPR2016-01198
`Apple Inc v. Voip-Pal
`
`last letters and “could have” raised its complaint as far back as May 2017 but chose
`
`not to do anything until after judgment. Under § 42.73(a), Petitioner’s claim must be
`
`denied. The fact that Petitioner did not receive the other Sawyer Letters is no excuse
`
`because they are cumulative. See Section II.A.1.
`
`The dilatory nature of Petitioner’s conduct belies the sincerity of Petitioner’s
`
`allegation that any of the Sawyer Letters were prejudicial. See Section II.B and II.D.
`
`If Petitioner truly believed the Sawyer Letters had impacted this proceeding, it could
`
`have (and would have) done something. Now, under § 42.73(a), Petitioner is barred
`
`from lodging any complaint at all. See also Arris Grp., Inc., Petitioner, IPR2015-
`
`00635, 2015 WL 12711783, at *2 (May 1, 2015) (citing § 42.73 to explain that all
`
`issues that could have been raised by motion are disposed of upon final judgment).
`
`That the late procedural posture of this case leaves only certain remedies
`
`available to Petitioner, such as judgment in its favor or a re-trial (see Paper 55 at
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`15), is a circumstance caused by Petitioner’s own failures. To grant Petitioner a
`
`remedy now would reward Petitioner for waiting and doing nothing.
`
`D.
`
`Petitioner’s Due Process Rights Were Not Violated.
`
`Petitioner also claims that its “due process” rights were violated. Paper 55 at
`
`10-12. Assuming arguendo that the Sawyer Letters constitute impermissible ex
`
`parte communications, Petitioner’s claim of a due process violation fails. Petitioner
`
`cites Stone v. FDIC, 179 F.3d 1368, 1377 (Fed. Cir. 1999), but the Stone decision is
`
`inapposite and only proves that there was no due process violation. First, Stone deals
`
`-14-
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`

`

`IPR2016-01198
`Apple Inc v. Voip-Pal
`
`with deprivation of a property right by a federal employee, which gave rise to a due
`
`process claim. Id. at 1374, 1375. Here, there is no property right at stake on the part
`
`of Petitioner. Even if Stone did apply here, the Federal Circuit has made clear that:
`
`…not every ex parte communication is a procedural defect so
`substantial and so likely to cause prejudice that it undermines the due
`process guarantee and entitles the claimant to an entirely new
`administrative proceeding. Only ex parte communications that
`introduce new and material information to the deciding official will
`violate the due process guarantee of notice.
`
`
`Id. at 1376-77 (emphasis added) (“...the inquiry of the Board is whether the ex parte
`
`communication is so substantial and so likely to cause prejudice...”)
`
`As discussed above, Petitioner has pointed to no actual harm and no
`
`prejudice. And for the reasons discussed in this brief, Stone’s requirement that the
`
`Sawyer Letters introduce new and material information can’t be met. Stone at
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`1377 (“If the Board finds that an ex parte communication has not introduced new
`
`and material information, then there is no due process violation.”). See Section
`
`II.A.1 (explaining why the Sawyer Letters had no material information). Moreover,
`
`as explained in Section II.C, Petitioner knew of some of the Sawyer Letters and did
`
`nothing. Id. at 1377 (knowledge of and opportunity to respond to a communication
`
`is relevant to whether the communication is new and material information).
`
`Petitioner’s complaint about due process violations should be rejected.
`
`-15-
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`

`

`IPR2016-01198
`Apple Inc v. Voip-Pal
`
`
`
`For the foregoing reasons, Patent Owner respectfully requests that the Board deny
`
`III. CONCLUSION
`
`Petitioner’s Motion for Sanctions.
`
`
`
`
`
`
`Dated: January 12, 2018
`
`Respectfully submitted,
`
`MALEK MOSS PLLC
`
`
`
`By: /Kevin N. Malek/
`Kevin Malek, Reg. No. 53,938
`340 Madison Avenue, FL 19
`New York, New York 10173
`Attorney for Patent Owner
`Voip-Pal.com, Inc.
`Phone: +1-212-812-1491
`Email: kevin.malek@malekmoss.com
`
`Attorneys for Voip-Pal.com Inc.
`
`-16-
`
`

`

`IPR2016-01198
`Apple Inc v. Voip-Pal
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that true and correct copy of PATENT OWNER’S OPPOSITION
`TO APPLE’S MOTION FOR SANCTIONS PURSUANT TO BOARD ORDER OF
`DECEMBER 20, 2017 is being served on January 12, 2018, via electronic mail, for
`Petitioners as addressed below:
`
`
`Adam P. Seitz
`Eric A. Buresh
`ERISE IPA, P.A.
`6201 College Blvd., Suite 300
`Overland Park, KS 66211
`Telephone: (913) 777-5600
`Adam.seitz@eriseip.com
`eric.buresh@eriseip.com
`
`
`
`
`
`
`Dated: January 12, 2018
`
`
`
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`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Paul R. Hart
`ERISE IPA, P.A.
`5600 Greenwood Plaza Blvd., Suite 200
`Greenwood Village, CO 80111
`Telephone: (913) 777-5600
`Paul.Hart@EriseIP.com
`
`
`
`
`
`
` /Kevin N. Malek/
`Kevin Malek, Reg. No. 53,938
`MALEK MOSS PLLC
`340 Madison Avenue, FL 19
`New York, New York 10173
`Phone: +1-212-812-1491
`Fax: +1-561-910-4134
`kevin.malek@malekmoss.com
`
`Attorneys for Voip-Pal.com Inc.
`
`-17-
`
`