Arein, James
`
`From:
`
`Sent:
`To:
`Cc:
`
`Subject:
`
`Please see below
`
`The nks
`Andrew
`
`Trials
`
`Tuesday, May 8. 2018 3:06 PM
`Arpin, James, McShane, Sheila; McNamara, Brian
`Trials
`
`FW: |PR2017~00319 — Patent Owner's Comments as Requested by the Panel during May
`4, 2018, Teleconference
`
`From: Bill Kennedy [mailto:bkennedy@bcpc-law.com]
`Sent: Tuesday, May 8, 2018 5:01 PM
`To: Trials <Trials@ USPTO.GOV>
`
`Cc: Michael Specht <MSPECHT@skgf.com>; Michelle Holoubek <holoubek@skgf.com>; rbemben@sternekessler.com;
`PTAB Account <PTAB@skgf.com>; Justin Kimble <jkimb|e@bcpc-law.com>; Jeffrey Bragaione <jbragalone@bcpc-
`law.com>; Bill Kennedy <bkennedy@bcpc—law.com>; Jon Rastegar <jrastegar@bcpc—law.com>; Brian Herrmann
`<bherrmann@bcpc-law.com>; Marcus Benavides <mbenavides@bcpc-law.com>; harper.batts@bakerbottscom;
`jeremy.taylor@ba kerbottscom; 'dlfitbit—valencell@bakerbotts.com' <dlfitbit-valencell@bakerbotts.com>; JKirnble-
`|PR@bcpc-law.com
`
`Subject: lPR2017-00319 - Patent Owner's Comments as Requested by the Panel during May 4, 2018, Teleconference
`
`Dear Board:
`
`Patent Owner and Petitioner conferred, but the parties were unable to reach agreement. Although Patent
`Owner is amenable to an agreed voluntary withdrawal of non-instituted claims 3-5 and associated
`grounds, Petitioner does not agree to this voluntary withdrawal.
`
`l'
`
`n5
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`SAS Institute does not require the Board to ignore statutory limits on the invalidity challenges that may be
`adjudicated in an IPR. For claims 4 and 5, the Petition presents an antecedent basis argument under 35
`U.S.C. § 112, which “is not proper subject matter for an inter partes review. See 35 U.S.C. § 311(b)."
`Institution Decision, Paper 10 at 13. Based on that finding, the Board determined it has no jurisdiction on
`claims 4 and 5. Patent Owner is not required to concede that there is an issue under § 112 for the Board
`to make a finding that it has no jurisdiction. Because Patent Owner does not intend to file a response
`regarding claims 4 and 5, Petitioner is not entitled to a reply regarding those claims. See 37 C.F.R.
`§42.23(b). Nor does SAS Institute require the Board to adopt Petitioner's proposed construction of claims
`4 and 5 and disregard its finding that it lacks jurisdiction. And the Board should reject Petitioner’s
`invitation to engage in what would surely be considered “shenanigans" to get around its lack ofjurisdiction
`to adjudicate validity challenges under section 112. Rather, the Board should merely incorporate into the
`Final Written Decision its finding that it lacks jurisdiction over Petitioner’s challenge to these claims. As
`such, no further briefing is appropriate on claims 4 and 5.
`
`glaim 3
`
`Similarly, for claim 3, SAS Institute does not compel the Board to afford Petitioner a “do over” for its
`defective claim construction. Petitioner argued at the hearing that “a claim construction wasn't presented
`in the IPR because we didn't have the opportunity." Hr’g Tr. at 19: 13-15. Petitioner is incorrect. The
`Petition posits that the term “application-specific interface (API)” is a typographical error, and Petitioner
`based its flawed construction on that assumption. See Petition, Paper 2 at 14. The Board rejected
`1
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`Petitioner's construction on numerous grounds, including that (1) there is no evidence of a typographical
`error, eSpecially in light of the consistent use of “application-specific” in the specification and file history in
`addition to claim 3; (2) the Petitioner did not offer an alternative construction that would give meaning to
`ali of the words of claim 3; and (3) the Petition argued for an incorrect claim construction standard that
`would prioritize extrinsic evidence over intrinsic evidence. See Institution Decision, Paper 10 at 8-12; see
`aiso Hr’g Tr. at 35:15-21.
`
`Petitioner’s argument that the Board's evaluation of its construction in light of the specification “could not
`have been anticipated at the time of filing the petition” (Hr’g Tr. at 34:15-19) is not credible, and does not
`justify permitting Petitioner to reframe its claim construction position under the guise of a reply brief. As
`the Board recognized, Rule 42.23 limits a petitioner’s reply to arguments submitted in a patent owner
`response. See Hr’g Tr. at 23:6-11; see also 37 C.F.R. §42.23(b) (“A reply may only respond to arguments
`raised in the corresponding
`patent owner response”). And Patent Owner’s decision to not file a
`response is based on its understanding that, absent a response, Petitioner may not file a reply. 37 C.F.R.
`§42.23(b). Nothing in the Supreme Court’s SAS Institute decision, or the guidance that the Board has
`since issued, subverts the limitations of Rule 42.23 or forces a Patent Owner to provide new arguments in
`order that a Petitioner may reply to them. Thus, Patent Owner cannot be compelled to respond and,
`absent a Patent Owner response, there is no authority for Petitioner to file an additional reply brief.
`
`Petitioner also argues that it has “a right to respond to a new claim construction that we were never given
`the opportunity to address.” Hr’g Tr. at 24:8-10. As the Board noted, the Board did not provide “a new
`claim construction” as Petitioner mistakenly contends. See Hr’g Tr. at 26:20—23. But even if the Board’s
`rejection of Petitioner’s construction could somehow be considered a competing construction, Petitioner
`already had ample opportunity to address the Board’s position in detail, and did so in its twelve-page
`Request for Rehearing. See Request, Paper 13. The very arguments it makes now were refuted in the
`Board's twelve—page Decision Denying Rehearing; See Decision Denying Rehearing, Paper 15. Further,
`during the trial, Petitioner again made arguments regarding the construction of the term “application-
`specific interface (API).” See Paper 34 at 18: 11—19:6. Thus, Petitioner has had a full and fair opportunity
`to present its position about the claim construction issue, and no further briefing is warranted.
`
`During the meet and confer, Petitioner raised, for the first time, a suggestion that it should be permitted
`to file a motion to submit supplemental information under 37 C.F.R. §42.123. Notwithstanding the
`impropriety of Petitioner’s untimely suggestion, and the fact that it has never before sought leave to
`submit such a motion, the information Petitioner claims it now seeks to suppiement is already part pf the
`record. See Exhibit 1069. Petitioner cannot use Section 42.123 as a pretext to submit additional reply
`briefing when the testimony is already in the record and Petitioner does not choose to file a response.
`
`Nor should the Board permit additional briefing based merely on extrinsic evidence that is already in the
`record. In analyzing Petitioner’s construction of the term “application—specific interface (API)," the Board
`rightly relied upon the intrinsic record, and rejected Petitioner’s invitation to rely instead upon extrinsic
`evidence. See Institution Decision, Paper 10 at 11 (“We decline to deviate from our claim construction
`standards based on Petitioner’s presumed error in the claim language and to rely on extrinsic evidence
`over intrinsic evidence as to the claim term’s meaning”) Indeed, the Board found that “contrary to
`Petitioner’s arguments, the Specification explains that the ‘application-specific interface (API)' is directed
`to a ‘particular application,’ rather than broadly to different applications.” See Institution Decision, Paper
`10 at 11; see afso Decision Denying Reconsideration, Paper 15 at 10. Patent Owner rejects Petitioner’s
`suggestion that Patent Owner’s expert made an admission about the construction of claim 3. Patent
`Owner’s expert did not opine about the construction of “application-specific interface (API)” or claim 3 in
`his declaration. See Ex. 2006 at 111i 2, 66-72. Regardless, Petitioner has already filed the deposition
`transcript with the Board, and at oral argument Petitioner made the very same argument it now ciaims
`warrants additional briefing. See Paper 34 at 18:11-19:6. Thus, submission of yet further argument about
`extrinsic evidence is not appropriate or warranted. At best, this is just more extrinsic evidence, and as
`such cannot be elevated over the intrinsic evidence in the specification, evidence that Petitioner’s faulty
`construction improperly ignores.
`
`The twelve month statutory deadline is less than a month away. Adherence to the deadline is especially
`important here, as district court litigation is stayed pending the Board’s final written decision. Patent
`Owner opposes Petitioner's request for a two-month extended period of new expert depositions and
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`additional briefing. See Hr'g Tr. at 11:23-12:4. Presumabiy, the Board would also require additional time
`to evaluate any new briefing or evidence. The Board’s recent guidance on the effect of SAS Institute states
`that “cases 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.” Here, Petitioner has already had
`twelve pages of briefing on its defective claim construction, and even referred to the testimony during oral
`argument, and thus has certainly been afforded “a full and fair opportunity to be heard.” Additional
`briefing and more discovery will add further expense and delay, and is contrary to the goal of providing a
`just, speedy, and inexpensive procedure.
`
`For the foregoing reasons, and those discussed during the conference call of May 4, Patent Owner opposes
`Petitioner’s request to submit additional briefing, opposes additional discovery, does not agree that a new
`briefing schedule is required, and requests that the Board proceed to render a final written decision on all
`claims and grounds by the statutory deadline of June 6, 2018.
`
`Respectfully submitted on behalf of,
`Jeff Bragalone and Justin Kimble
`Back-up and Lead Counsel for Patent Owner
`
`BRAGALONE CONROY PC
`
`T. William Kennedy
`
`2200 Ross Ave. Suite 4500W
`Chase Tower
`Dallas, TX 75201—7924
`Main:
`214-785-6670
`Direct: 214—785—6674
`Email: bkennedy@bcp_o—iaw.com
`Web: wwwbcpc—lawcom
`
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