Arpin, James
`
`From:
`Sent:
`To:
`Ce:
`Subject:
`
`Please see below
`
`Thanks
`Andrew
`
`Trials
`Tuesday, May 8, 2018 3:06 PM
`Arpin, James; McShane, Sheila; McNamara, Brian
`Trials
`FW: IPR2017-00319: Petitioner's Comments per PTAB's Requestfor Briefing Position
`
`From: Michelle Holoubek [mailto:holoubek@sternekessler.com]
`Sent: Tuesday, May 8, 2018 5:00 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: 'JKimble-IPR@bcpc-law.com' <JKimble-IPR@bcpc-law.com>; 'jbragalone@bcpc-law.com' <jbragalone@bcpc-
`law.com>; ‘nkliewer@bcpc-law.com' <nkliewer@bcpc-law.com>; 'bkennedy@bcpc-law.com' <bkennedy @bcpc-
`law.com>; 'jrastegar@bcpc-law.com' <jrastegar@bcpc-law.com>; 'bherrmann@bcpc-law.com' <bherrmann@bcpc-
`law.com>; 'mbenavides@bcpc-law.com' <mbenavides@bcpc-law.com>; 'srhoades@wriplaw.com'
`<srhoades@wriplaw.com>; 'swarren@wriplaw.com' <swarren@wriplaw.com>; Michael Specht
`<MSPECHT@sternekessler.com>; Richard M. Bemben <RBEMBEN@sternekessler.com>; Bill Flanigen
`<BFLANIGEN @sternekessler.com>; Brett McCone <BMCCONE@sternekessler.com>; PTAB Account
`<PTAB @sternekessler.com>
`Subject: |PR2017-00319: Petitioner's Comments per PTAB's Requestfor Briefing Position
`
`Re: IPR2017-00319
`
`Dear PTAB—
`
`Further to the conferencecall between the parties and the Board on May4, 2018,Petitioner Apple Inc. submits the
`below commentsvia email, by 5pm ET today as requested by the Board. The parties held a meet-and-confer on May8,
`2018, but were unable to cometo an agreementon either of the two points raised by the Board in the May 4
`conferencecall. As such, Petitioner separately provides a summaryofits positions as instructed by the Board in the
`conferencecall.
`
`1. The parties were unable to reach agreement regarding withdrawal of claims 3-5 from the above-captioned
`proceeding. Petitioner does not agree to withdraw claims 3-5 from the proceeding.
`
`As discussed in a meet-and-confer betweenthe parties that took place on May 8, 2018, we understand the
`Board’s reluctanceto issue a final written decision that has the potential to implicate an analysis under 35 U.S.C.
`112. However, Petitioner presented a challenge to the claims under Section 103, not Section 112, andit is our
`understanding that Patent Owner has taken no position regarding Section 112.
`
`2. The parties were unable to reach agreementregarding a post-SAS briefing schedule to address the recent
`inclusion of claims 3-5 into the proceeding. Petitioner understands Patent Owner's position to be that no
`additional briefing is necessary. Petitioner believes that Petitioner has not had a full and fair opportunity to be
`heard onissuesraised by the Institution Decision regarding Claim 3, because Claim 3 has only just now been
`broughtinto thetrial, and discovery regarding Claim 3 was not previously allowed to occur. As the Board
`disagreed with Petitioner's proffered claim construction, the Board did not consider Petitioner’s challenge to
`Claim 3 on the merits. Preventing Petitioner from nowraising relevant evidence (testimony from IPR2017-
`1
`
`

`

`00321) that would have been identified during discovery in this IPR had trial originally been instituted on Claim 3
`would violate Petitioner’s rights under the APA and dueprocess rights under the Constitution, because of the
`estoppel effects that trigger against the Petitioner if the Board issues a final written decision on Claim 3. See 35
`U.S.C. 315(e). Accordingly, and as discussed in the meet-and-confer between the parties that took place on May
`8, 2018, Petitioner proposes the following briefing process:
`
`It is unclear to
`a. Weproposethat each party be given additional briefing, limited in scope to claims 3-5.
`Petitioner whether Patent Owner would avail itself of the opportunity to submit briefing if indeed the
`Board granted additional briefing.
`
`Should Patent Owner wish to take the deposition of Petitioner’s expert regarding claims 3-5 and/or
`submit additional expert testimony, then Petitioner suggests that Patent Owner be given the option to,
`within one month, present supplemental briefing in 10 pages or less, followed by one month for
`Petitioner to reply within the same pagelimit. See, April 26, 2018 “Guidance on the Impact of SAS on
`AIA Trial Proceedings”: “[C]ases near the end of the 12 month statutory deadline may be extended, ona
`case by casebasis, if required to afford all parties a full and fair opportunity to be heard.”
`
`Should Patent Owner not wish to take the deposition of Petitioner’s expert and/or submit additional
`expert testimony, then Petitioner suggests that Patent Owner be given the option to, within one week,
`present supplemental briefing in 5 pagesorless, followed by one week for Petitioner to reply within the
`same pagelimit. Even if Patent Owner choosesto forego the opportunity for additional briefing,
`Petitioner believes that 37 C.F.R. 42.23 should beflexible enough for a Petitioner’s Reply to address a
`dispute regarding claim construction resulting from a determination madein the Institution Decision,
`even if not explicitly addressed by the Patent Owner. The changein claim construction from what was
`originally proposedin the Petition necessitates giving the Petitioner “the opportunity to present
`argument under the new theory.” See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir.
`2015). To find otherwise would violate Petitioner’s rights under the APA and due processrights under
`the Constitution, because of the estoppel effects that trigger against the Petitionerif the Board issues a
`final written decision. See 35 U.S.C. 315(e).
`
`b.
`
`c.
`
`Should the Board disagree with Petitioner’s interpretation of Rule 42.23, Petitioner in the alternative
`asks the Board to useits discretion in this unusual circumstance to suspend 37 C.F.R. 42.23 and allowa
`limited, 5-page reply briefing, to addressissues raised for thefirst time by the institution decision and
`provide the Board with evidence directly relevant to the preliminary claim construction analysis
`presented therein. See 37 C.F.R. 42.5(b).
`
`Should the Board decline to exerciseits discretion to allow limited Reply briefing by the Petitioner,
`Petitioner in the second alternative asks the Board for a call to request authorization to file a Motion to
`Submit Supplemental Information under 37 C.F.R. 42.123.
`
`Should the Board wish for a second conferencecall to further discuss the post-SAS briefing process, Petitioner will
`confer with Patent Owner to present our joint availability to the Board.
`
`Best regards,
`Michelle K. Holoubek
`Counsel for Petitioner Apple Inc.
`
`Michelle Holoubek
`Director
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`Email: holoubek@sternekessler.com
`Direct: 202.772.8855
`
`

`

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