`571-272-7822
`
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` Paper 13
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` Entered: March 17, 2017
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`v.
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`____________
`
`Case IPR2016-01839
`Patent 6,470,399 B1
`____________
`
`
`
`Before JONI Y. CHANG, JAMES B. ARPIN, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`Case IPR2016-01839
`Patent 6,470,399 B1
`
`
`Petitioner filed a Petition requesting an inter partes review of
`claims 1, 3, 5, 11, and 14 of U.S. Patent No. 6,470,399 B1 (Ex. 1001, “the
`’399 patent”). Paper 2 (“Pet.”). Patent Owner filed a Preliminary Response.
`Paper 12 (“Prelim. Resp.”).
`Claims of an expired patent are given their ordinary and customary
`meaning in accordance with Phillips v. AWH Corporation, 415 F.3d 1303
`(Fed. Cir. 2005) (en banc). In re Rambus Inc., 694 F.3d 42, 46 (Fed. Cir.
`2012); see also Black & Decker, Inc. v. Positec USA, Inc., 646 F. App’x.
`1019, 1024 (non-precedential) (applying the Phillips standard to construe the
`claims of an expired patent in an inter partes review). In contrast, claim
`terms in an unexpired patent are interpreted according to their broadest
`reasonable construction in light of the specification of the patent in which
`they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136
`S. Ct. 2131, 2142 (2016) (upholding the Office regulation requiring the use
`of the broadest reasonable interpretation standard in the context of inter
`partes review).
`Although Petitioner indicates that the U.S. Court of Appeals for the
`Federal Circuit has construed certain terms under the Phillips standard in
`connection with a related district court proceeding involving the ’399 patent,
`neither party indicates whether the ’399 patent will expire within 18 months
`of the entry of the Notice of Filing Date Accorded to Petition, pursuant to 37
`C.F.R. § 42.100(b). Pet. 9–11 (citing In re Papst Licensing GmbH & Co.
`KG Litig. v. Fujifilm corp., 778 F.3d 1255 (Fed. Cir. 2015); Ex. 1016);
`Prelim. Resp. 7–9. Nevertheless, the ’399 patent, on its face, appears to
`expire on March 3, 2018—20 years from its March 3, 1998, filing date
`2
`
`
`
`Case IPR2016-01839
`Patent 6,470,399 B1
`
`(Ex. 1001 at [22])—within 1 year from the date of this Order. At this
`juncture, the instant proceeding is in its preliminary phase, and we have not
`yet decide whether to institute a trial. In order to determine the applicable
`claim construction standard for this proceeding, it is necessary for us to
`ascertain the expiration date of the ’399 patent. We hereby seek additional
`information from Patent Owner regarding the expiration date of the ’399
`patent, pursuant to 37 C.F.R. § 42.5.
`In light of the foregoing, it is:
`ORDERED that, within three business days of the entry date of this
`Order, Patent Owner shall file a notice that sets forth the expiration date of
`the ’399 patent; the notice may include a brief explanation of Patent
`Owner’s determination of the expiration date, not exceeding two pages, but
`no argument is permitted.
`
`
`3
`
`
`
`Case IPR2016-01839
`Patent 6,470,399 B1
`
`For PETITIONER:
`
`Lori A. Gordon
`Steven W. Peters
`Yasser Mourtada
`lgordon-ptab@skgf.com
`speters-ptab@skgf.com
`ymourtad-ptab@skgf.com
`STERNE, KESSLER, GOLDSTEIN & FOX
`
`
`
`For PATENT OWNER:
`
`Gregory s. Donahue
`Minghui Yang
`gdonahue@dpelaw.com
`myang@dpelaw.com
`docketing@dpelaw.com
`DiNOVO PRICE ELLWANGER & HARDY LLP
`
`Michael R. Fleming
`mfleming@irell.com
`IRELL & MANELLA LLP
`
`Anthony Meola
`Jason. A. Murphy
`Victor J. Baranowshi
`Arlen L. Olsen
`ameola@iplawusa.com
`jmurphy@iplawsa.com
`vbaranowski@iplawusa.com
`aolsen@iplawusa.com
`SCHMEISER, OLSEN & WATTS, LLP
`
`4
`
`
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