Trials@uspto.gov
`571-272-7822
`
` Paper No. 42
` Entered: December 15, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`____________
`
`Cases IPR2017-00210 and IPR2017-00219 (Patent 7,116,710 B1);
` Cases IPR2017-00700, IPR2017-00701, and
`IPR2017-00728 (Patent 7,421,032 B2)1
`
`____________
`
`Before KEN B. BARRETT, TREVOR M. JEFFERSON, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`DECISION
`Denying Patent Owner’s Requests for Reconsideration
`37 C.F.R. § 42.71
`
`1 This Decision will be entered in each case. The parties are not authorized
`to use this caption style.
`
`
`571-272-7822
`
` Paper No. 42
` Entered: December 15, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`____________
`
`Cases IPR2017-00210 and IPR2017-00219 (Patent 7,116,710 B1);
` Cases IPR2017-00700, IPR2017-00701, and
`IPR2017-00728 (Patent 7,421,032 B2)1
`
`____________
`
`Before KEN B. BARRETT, TREVOR M. JEFFERSON, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`DECISION
`Denying Patent Owner’s Requests for Reconsideration
`37 C.F.R. § 42.71
`
`1 This Decision will be entered in each case. The parties are not authorized
`to use this caption style.
`
`
`
`IPR2017-00210, IPR2017-00219 (Patent 7,116,710 B1)
`IPR2017-00700, IPR2017-00701, IPR2017-00728 (Patent 7,421,032 B2)
`
`
`I.
`
`Introduction
`
`
`
`Patent Owner California Institute of Technology filed, in each of the
`
`above-captioned cases, a Request for Rehearing. E.g., IPR2017-00210,
`
`Paper 36. Patent Owner requests that we reconsider and withdraw our
`
`orders in each case granting Petitioner’s Motion to Submit Supplemental
`
`Information. E.g., IPR2017-00210, Paper 32 (“Order”). The Requests for
`
`Rehearing (collectively, “Request” or “Req. Reh’g”) are similar in each of
`
`the cases captioned above. Unless otherwise indicated, citations herein are
`
`to the papers filed in IPR2017-00210.
`
`
`
`Patent Owner’s Request alleges that “[t]he decision is inconsistent
`
`with Board decisions on similar motions and is deeply prejudicial to Caltech
`
`in both its timing and its scope . . . [and] the Board misapprehended or
`
`overlooked these issues in granting Petitioner’s motion.” Req. Reh’g 1.
`
`
`
`
`
`For the reasons set forth below, each Request for Rehearing is denied.
`
`II. Legal Standard
`
`Under the rules governing requests for rehearing on a decision on a
`
`motion, the decision is reviewed for an abuse of discretion. 37 C.F.R.
`
`§ 42.71(b). “The burden of showing a decision should be modified lies with
`
`the party challenging the decision.” 37 C.F.R. § 42.71(d). Further, “[t]he
`
`request must specifically identify all matters the party believes the Board
`
`misapprehended or overlooked, and the place where each matter was
`
`previously addressed in a motion, an opposition, or a reply.” Id.
`
`
`
`2
`
`
`
`IPR2017-00210, IPR2017-00219 (Patent 7,116,710 B1)
`IPR2017-00700, IPR2017-00701, IPR2017-00728 (Patent 7,421,032 B2)
`
`
`III. Analysis
`
`
`
`In light of Patent Owner’s arguments, it is important to note that
`
`Petitioner’s Motion to Submit Supplemental Information (Paper 22) pertains
`
`to the filing of exhibits, not the filing of substantive briefs containing
`
`arguments. Petitioner moved to submit supplemental information regarding
`
`the prior art status of two references, stating that Patent Owner challenged,
`
`in its Preliminary Response, the prior art status of those references. Id. at 1.
`
`Patent Owner filed an Opposition to Petitioner’s Motion to Submit
`
`Supplemental Information (Paper 23, “Patent Owner’s Opposition”).
`
`
`
`Patent Owner argues that we “misapprehended the improper nature of
`
`the supplementation.” Req. Reh’g 4; see id. at 1–2 (argument under the
`
`heading “Improper purpose misapprehended”). Specifically, Patent Owner
`
`contends that “Petitioner has been permitted to shift its theory of
`
`unpatentability long after the institution decision.” Id. at 2. Patent Owner
`
`speculates that “[i]nevitably, Petitioner will raise arguments in its reply that
`
`it will insist Caltech should have anticipated from the supplemental
`
`evidence.” Id.; see id. at 1–2 (Patent Owner asserting that it had to file its
`
`Response to the Petition “without the benefit of knowing what, if any,
`
`publication dates were being asserted beyond those specifically identified in
`
`the petition.”). First, it is unclear to us where such an alleged shift in
`
`Petitioner’s theory of unpatentability has occurred as Petitioner has not filed
`
`its Reply Brief, yet. Second, Patent Owner’s argument, in effect, is that
`
`Petitioner may take a particular position or may make certain arguments in
`
`the yet-to-be-filed Reply Brief. We decline to join Patent Owner in
`
`speculating as to what Petitioner may do in the future. We will address
`
`
`
`3
`
`
`
`IPR2017-00210, IPR2017-00219 (Patent 7,116,710 B1)
`IPR2017-00700, IPR2017-00701, IPR2017-00728 (Patent 7,421,032 B2)
`
`
`those matters when and if they are raised, and are not persuaded that we
`
`misapprehended any argument regarding “improper nature.”
`
`
`
`Patent Owner also argues in some, but not all, of the above-captioned
`
`cases, that we “overlooked how prejudicial the extremely late addition of
`
`this evidence to the record would be to Caltech.” E.g., IPR2017-00210,
`
`Req. Reh’g 4 (citing Paper 23 (Patent Owner’s Opposition), 11). Patent
`
`Owner does not indicate clearly where all of the arguments it now makes
`
`were made previously. Much of that section of the Request cites directly to
`
`Petitioner’s Motion (Paper 22), rather than Patent Owner’s Opposition,
`
`which suggests that these arguments were not raised before. We could not
`
`have overlooked arguments not made. Moreover, the pertinent section of the
`
`Request contains a single citation to Patent Owner’s Opposition. See Req.
`
`Reh’g 4 (citing “See, e.g., Paper 23, 11.”). The cited page of Patent Owner’s
`
`Opposition has only a passing reference to the issue of prejudice, and that is
`
`in the context of the speculative argument that allowing Petitioner to “alter
`
`. . . the petition case long after the petition filing” would be prejudicial.
`
`Patent Owner’s Opposition (Paper 23), 11. As above, these assertions of
`
`prejudice are rooted primarily in speculation as to what arguments Petitioner
`
`may make in the future. We fail to see how Patent Owner has been unduly
`
`prejudiced by events that have yet to occur, and are not persuaded that we
`
`overlooked such arguments.
`
`
`
`As mentioned above, Patent Owner argues that “[t]he decision is
`
`inconsistent with Board decisions on similar motions.” Req. Reh’g 1.
`
`Patent Owner does not describe how the decisions in the present cases
`
`purportedly are inconsistent with other panels’ decisions. For example,
`
`
`
`4
`
`
`
`IPR2017-00210, IPR2017-00219 (Patent 7,116,710 B1)
`IPR2017-00700, IPR2017-00701, IPR2017-00728 (Patent 7,421,032 B2)
`
`
`Patent Owner does not describe the facts of those other decisions, does not
`
`compare such factual underpinnings to those of the cases before us now, and
`
`does not address the dissimilarities.
`
`
`
`In its Request, Patent Owner cites, at page 1 of the Request,
`
`Medtronic, Inc. v. Endotach LLC, IPR2014-00100, Paper 18. In that case,
`
`“Petitioner filed a paper requesting authorization to file a motion to submit
`
`supplemental information ‘to present additional grounds of
`
`unpatentability.’” Id. at 3 (quoting Paper 17, the petitioner’s request).
`
`Specifically, Petitioner sought to file infringement contentions from a related
`
`district court litigation and three additional prior art references. Id. at 3–4.
`
`
`
`Patent Owner also cites, at page 3 of the Request, Laboratoire
`
`Francais du Fractionnement v. Novo Nordisk Healthcare, IPR2017-00028,
`
`Paper 22 (2017). In that case, the petitioner sought to file a new reference
`
`and the panel stated “[i]n essence, Petitioner seeks to bolster its Petition by
`
`introducing new prior art teachings in response to arguments presented in
`
`Patent Owner’s Preliminary Response.” Id. at 2, 4.
`
`
`
`We are not persuaded that the facts underlying the cited decisions of
`
`other panels are so similar to those facts before us to yield inconsistent
`
`outcomes. Notwithstanding Patent Owner’s speculation as to what
`
`Petitioner may argue, we do not understand Petitioner to be introducing new
`
`proposed grounds of patentability or new prior art teachings. Thus, we do
`
`not agree that our decisions to grant Petitioner’s motions are inconsistent
`
`with these other Board decisions.2
`
`
`2 We additionally observe that the Board decisions cited by Patent Owner
`are routine opinions. They are not binding authorities.
`
`
`
`5
`
`
`
`IPR2017-00210, IPR2017-00219 (Patent 7,116,710 B1)
`IPR2017-00700, IPR2017-00701, IPR2017-00728 (Patent 7,421,032 B2)
`
`
`For the reasons given, it is
`
`IV. Order
`
`ORDERED that Patent Owner’s Requests for Reconsideration are
`
`
`
`
`
`denied.
`
`
`
`
`
`PETITIONER:
`
`Richard Goldenberg
`Dominic Massa
`Michael Smith
`WILMER, CUTLER, PICKERING, HALE AND DORR, LLP
`richard.goldenberg@wilmerhale.com
`dominic.massa@wilmerhale.com
`michaelh.smith@wilmerhale.com
`
`
`
`PATENT OWNER:
`
`Michael T. Rosato
`Matthew A. Argenti
`Richard Torczon
`Kevin Johnson
`Todd Briggs
`WILSON SONSINI GOODRICH & ROSATI
`mrosato@wsgr.com
`margenti@wsgr.com
`rtorczon@wsgr.com
`kevinjohnson@quinnemanuel.com
`toddbriggs@quinnemanuel.com
`
`
`
`6
`
`
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