ArEin, James
`
`From:
`
`Sent:
`To:
`Cc:
`
`Subject:
`
`Please see beiow
`
`Thanks
`Andrew
`
`Trials
`
`Tuesday, May 8, 2018 3:06 PM
`Arpin, James; McShane, Sheila; McNamara, Brian
`Trials
`
`FW: lPR2017—00319: Petitioner's Comments per PTAB's Request for Briefing Position
`
`From: Michelle Holoubek [maiIto:hoIoubek@sternekessler.com]
`
`Sent: Tuesday, May 8, 2018 5:00 PM
`To: Trials <Tria|s@USPTO.GOV>
`
`Cc: 'JKimble-1PR@bcpc-Iaw.com' <J|<imble-lPR@bcpc—|aw.com>; 'jbragalone@bcpc-law.com' <jbraga|one@bcpc—
`law.com>; .'nkliewer@bcpc-law.com' <nk|iewer@bcpc—law.com>; 'bkennedy@bcpc-law.com' <bkennedy@bcpc—
`|aw.com>; 'jrastegar@bcpc—Iaw.com' sjrastega r@bcpc-|aw.com>; 'bherrmann@bcpc—iaw.com‘ <bherrmann@bcpc-
`|aw.com>; 'mbenavidestéflbcpc-law.comr <mbenavides®bcpc-iaw.com>,'
`'srhoades@wriplaw.com'
`
`<srhoades@wripiaw.com>; 'swarren@wriplaw.com' <swarren@wrip|aw.com>; Michael Specht
`<MSPECHT@5ternekessler.corn>; Richard M. Bemben <RBEMBEN@sternekessler.com>; Bill Flanigen
`<BFLAN|GEN@sternekessler.com>; Brett McCone <BMCCONE@sternekessler.com>; PTAB Account
`<PTAB@sternekessler.com>
`
`Subject: IPR2017-00319: Petitioner's Comments per PTAB‘s Request for Briefing Position
`
`Re:
`
`lPR2017-00319
`
`Dear PTAB—
`
`Further to the conference call between the parties and the Board on May 4, 2018, Petitioner Apple Inc. submits the
`below comments via email, by 5pm ET today as requested by the Board. The parties held a meet-and-confer on May 8,
`2018, but were unable to come to an agreement on either of the two points raised by the Board in the May 4
`conference call. As such, Petitioner separately provides a summary of its positions as instructed by the Board in the
`conference call.
`
`1. The parties were unable to reach agreement regarding withdrawal ofclaims 3-5 from the above-captioned
`proceeding. Petitioner does not agree to withdraw claims 3—5 from the proceeding.
`
`As discussed in a meet-a nd-confer between the parties that took place on May 8, 2018, we understand the
`Board’s reluctance to 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, and it is our
`
`understanding that Patent Owner has taken no position regarding Section 112.
`
`2. The parties were unable to reach agreement regarding a post-5A5 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 foil and fair opportunity to be
`heard on issues raised by the Institution Decision regarding Claim 3, because Claim 3 has only just now been
`brought into the trial, and discovery regarding Claim 3 was not previously allowed to occur. As the Board
`disagreed with Petitioner’s proffered ciaim construction, the Board did not consider Petitioner’s challenge to
`Claim 3 on the merits. Preventing Petitioner from now raising relevant evidence (testimony from IPR2017-
`I
`
`

`

`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 due process rights under the Constitution, because ofthe
`
`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:
`
`a. We propose that each party be given additional briefing, limited in scope to claims 3-5.
`
`It is unclear to
`
`Petitioner whether Patent Owner would avail itself ofthe 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
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`Petitioner to reply within the same page limit. 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, on a
`case by case basis, 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 pages or less, followed by one week for Petitioner to reply within the
`
`same page limit. Even if Patent Owner chooses to forego the opportunity for additional briefing,
`Petitioner believes that 37 C.F.R. £12.23 should be flexible enough for a Petitioner’s Reply to address a
`dispute regarding claim construction resulting from a determination made in the Institution Decision,
`even if not explicitly addressed by the Patent Owner. The change in claim construction from what was
`originally proposed in the Petition necessitates giving the Petitioner "the opportunity to present
`argument under the new theory.” See Belden Inc. v. Berk—Teak ttC, 805 F.3d 1064, 1080 (Fed. Cir.
`2015). To find otherwise would violate Petitioner’s rights under the APA and due process rights under
`the Constitution, because of the estoppel effects that trigger against the Petitioner ifthe Board issues a
`final written decision. See 35 U.S.C. 315(e).
`
`b.
`
`Should the Board disagree with Petitioner’s interpretation of Rule 42.23, Petitioner in the alternative
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`asks the Board to use its discretion in this unusual circumstance to suspend 37 C.F.R. 42.23 and allow a
`limited, 5-page reply briefing, to address issues raised for the first time by the institution decision and
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`provide the Board with evidence directly relevant to the preliminary claim construction analysis
`presented therein. See 37 C.F.R. 42.5(b).
`
`c.
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`Should the Board decline to exercise its 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 conference call to further discuss the post-5A5 briefing process, Petitioner will
`confer with Patent Owner to present ourjoint 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@slernekessler.com
`Direct: 202.772.8855
`
`

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