Trials@uspto.gov Paper 39
`571-272-7822
`
`Entered: May 23, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VALENCELL, INC.,
`Patent Owner.
`_______________
`
`Case IPR2017-00319
`Patent 8,923,941 B2
`_______________
`
`
`Before BRIAN J. McNAMARA, JAMES B. ARPIN, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`Entered: May 23, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VALENCELL, INC.,
`Patent Owner.
`_______________
`
`Case IPR2017-00319
`Patent 8,923,941 B2
`_______________
`
`
`Before BRIAN J. McNAMARA, JAMES B. ARPIN, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`
`IPR2017-00319
`Patent 8,923,941 B2
`
`
`I. BACKGROUND
`
`
`
`Apple Inc. (“Petitioner”) filed a Petition requesting inter partes
`review of claims 1–13 of U.S. Patent No. 8,923,941 B2 (Ex. 1001, “the ’941
`patent”) under 35 U.S.C. §§ 311–319. Paper 2 (“Pet.”). Valencell, Inc.
`(“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
`On June 6, 2017, we issued a Decision instituting inter partes review of
`claims 1, 2, and 6–13 on eight (8) of eleven (11) asserted grounds for
`unpatentability. Paper 10 (“Inst. Dec.”), 6–7, 56. Nevertheless, we did not
`institute inter partes review of claims 3–5 on three (3) asserted grounds.
`With respect to claims 3 and 4, Petitioner alleges that each of these
`claims contains a typographical error. Pet. 14–15. Because claim 5 depends
`from claim 4, claim 5 is affected at least by the alleged typographical error
`in claim 4. Id. at 15.
`With respect to claim 3, Petitioner alleges that there is a typographical
`error in the term “application-specific interface (API)” because the
`abbreviation “API” is associated with the term “application programming
`interface.” Id. at 14. Further, Petitioner argues that this alleged
`typographical error extends to the Specification of the ’941 patent where the
`term “application-specific interface (API)” also appears. Id. In view of this
`alleged typographical error, Petitioner proposes to construe the term
`“application-specific interface (API)” as “application programming interface
`(API)” and argues that the applied references teach or suggest this limitation,
`according to the proposed construction. Id. at 27, 55–59.
`In addition, Petitioner argues that, because claim 1 does not recite “an
`application,” the term “the application” in claim 4 lacks antecedent basis.
`Id. at 15. Petitioner asserts that there are two possible typographical errors
`2
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`IPR2017-00319
`Patent 8,923,941 B2
`
`with respect to claim 4. Initially, Petitioner suggests that the term “the
`application” in claim 4 should read “an application.” Id. Alternatively,
`Petitioner suggests that claim 4 should depend from claim 3, which recites
`“an application,” rather than from claim 1. Id. If claim 4 depends from
`claim 3, claim 4 also is subject to the deficiencies in Petitioner’s proposed
`construction of the term “application-specific interface (API)” with respect
`to claim 3. For purposes of its Petition only, Petitioner argues that the first
`of these two possible errors occurred. Petitioner, however, provides no
`explanation for this choice, but argues the applied references consistent with
`this choice. Id. at 15, 29–32, 59–61.
`With respect to claim 3, Patent Owner contends that Petitioner’s
`construction is improper under the broadest reasonable interpretation
`standard, but, Patent Owner does not state why or propose an alternative
`construction. Prelim. Resp. 13. Patent Owner does not address the alleged
`typographical error in claim 4 in its Preliminary Response. Inst. Dec. 12;
`see id. at 13 n.4.
`With respect to claim 3, in the Institution Decision, we indicated that
`we were not persuaded that there is a typographical error in the term
`“application-specific interface (API)” in claim 3 or in the Specification of
`the ’941 patent. Id. at 9–10. Further, we found that Petitioner’s proposed
`construction was not consistent with the description of the term in the
`Specification. Id. at 10–12. Although we did not construe the term
`“application-specific interface (API)” in our Institution Decision, we
`rejected Petitioner’s argument that there is a typographical error in this term
`and Petitioner’s proposed construction of this term, as insufficiently
`supported. Id. at 12; see Ex. 1072, 26:20–27:5.
`3
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`IPR2017-00319
`Patent 8,923,941 B2
`
`With respect to claims 4 and 5, we agreed with Petitioner that there is
`
`an error in claim 4. Id. at 13. Nevertheless, because Petitioner provided no
`argument and/or evidence by which one could choose between the two
`possible errors, we declined to speculate as to the error in claim 4. Inst. Dec.
`13–14. Consequently, we denied institution of inter partes review of claim
`4 and 5 on any asserted ground.
`Petitioner filed a Request for Rehearing (Paper 13, “Req.”) of our
`Institution Decision, in which Petitioner alleged that we overlooked or
`misapprehended arguments and evidence presented in its Petition with
`respect only to claim 3. Req. 1. In its Request for Rehearing, Petitioner
`acknowledged that “the Board did not provide an actual definition for
`‘application-specific interface (API)’ in the Institution Decision.” Id. at 2.
`We were not persuaded by Petitioner that we had overlooked or
`misapprehended any arguments or evidence presented in the Petition, and,
`consequently, we denied Petitioner’s Request for Rehearing regarding
`claim 3.
`On April 24, 2018, the U.S. Supreme Court held that a final written
`decision under 35 U.S.C. § 318(a) shall be with respect to the patentability
`of all of the claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S.
`Ct. 1348, 1358 (2018). As noted above, although Petitioner challenged
`claims 1–13, we did not institute review of (1) claim 3 as allegedly rendered
`obvious over the combined teachings of Luo and Craw (Ground 1) or Mault,
`Al-Ali, and Lee (Ground 7); and (2) claims 4 and 5 as allegedly rendered
`obvious over the combined teachings of Luo, Craw, and Wolf (Ground 2) or
`Mault, Al-Ali, and Behar (Ground 8). Pursuant to the holding in SAS
`
`4
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`IPR2017-00319
`Patent 8,923,941 B2
`
`Institute, we modify our Decision on Institution to institute on all of the
`challenged claims and on all of the grounds asserted in the Petition.
`
`
`
`II. PROCEDURES
`
`In the wake of the U.S. Supreme Court’s SAS Institute decision, we
`
`held a conference call with the parties on May 4, 2018, to discuss how to
`proceed in this case, and we asked the parties to confer regarding two
`questions: (1) whether the parties would be mutually agreeable to
`withdrawing the then-uninstituted claims and the associated grounds from
`this proceeding and (2) if the parties did not agree to withdraw the then-
`uninstituted claims, whether the parties would be proposing a briefing
`schedule. Ex. 1072, 38:4–14. On May 8, 2018, the parties responded
`indicating that they could not agree on withdrawal of the then-uninstituted
`claims. Ex. 3001, 1 (Petitioner’s e-mail); Ex. 3002, 1 (Patent Owner’s e-
`mail). Patent Owner further indicated that it would not avail itself of the
`opportunity to supplement its Patent Owner Response to address the
`challenges to claims 3–5 (see Ex. 1072, 31:16–22; Ex. 3001, 2) and that,
`under the circumstances, it did not believe that additional Petitioner briefing
`is warranted.
`
`Petitioner proposes three possible avenues whereby we may grant it
`additional briefing in the absence of briefing from Patent Owner. Ex. 3001,
`2. Although we do not grant additional briefing by the avenues proposed by
`Petitioner, we, nevertheless, grant additional briefing to Petitioner. In view
`of the introduction of claims 3–5 into the proceeding as a result of the
`decision in SAS Institute, we authorize the filing of additional briefing
`addressing the patentability of claims 3–5. The additional briefing may
`
`5
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`IPR2017-00319
`Patent 8,923,941 B2
`
`address only the claims and grounds on which we had previously denied
`institution, and the briefing is limited to evidence in the existing record in
`the proceeding. The parties may not raise new arguments or submit new
`evidence without our authorization.1 Further, any briefing shall address the
`threshold questions of (1) whether there is a typographical error in claim 3?
`and (2) what the precise typographical error is in claim 4? We view the
`answers to these questions as fundamental to the merits of Petitioner’s
`challenges to claims 3–5. See Pet. 14–15. Therefore, Petitioner may file a
`brief of no more than seven (7) pages within five (5) business days of the
`date of this order, and Patent Owner may file a response to Petitioner’s brief
`(see 37 C.F.R. § 42.23) of no more than seven (7) pages within five (5)
`business days of the date of Petitioner’s brief. Petitioner may not file a reply
`to any responsive briefing filed by Patent Owner.
`
`III. ORDER
`Accordingly, it is hereby:
`ORDERED that, pursuant to 35 U.S.C. § 314(a), we modify our
`Decision on Institution to include review of all of challenged claims and all
`of the grounds asserted in the Petition; and
`FURTHER ORDERED that Petitioner may file a brief limited to
`seven (7) pages within five (5) business days of the date of this order, and
`
`
`1 No additional discovery is appropriate at this time. See 37 C.F.R.
`§ 42.51(b)(1); Office Trial Practice Guide, 77 Fed. Reg. 48756, 48757 (Aug.
`14, 2012) (“Once the patent owner’s response and motion to amend have
`been filed, the Scheduling Order might provide the petitioner with three
`months for discovery and for filing a petitioner’s reply to the response and
`the petitioner’s opposition to the amendment.”).
`6
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`IPR2017-00319
`Patent 8,923,941 B2
`
`Patent Owner may file a response to Petitioner’s brief limited to seven (7)
`pages within five (5) business days of the filing date of Petitioner’s brief.
`
`For PETITIONER
`
`Michelle K. Holoubek
`Michael D. Specht
`Richard Bemben
`STERNE, KESSLER, GOLDSTEIN & FOX
`holoubek-ptab@skgf.com
`mspecht-ptab@skgf.com
`rbemben-ptab@skgf.com
`
`
`For PATENT OWNER
`
`Justin B. Kimble
`Nicholas C Kliewer
`Jonathan H. Rastegar
`BRAGALONE CONROY PC
`jkimble-ipr@bcpc-law.com
`nkliewer@bcpc-law.com
`
`
`
`7
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