Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 7
`Entered: April 11, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`IMMERSION CORPORATION,
`Patent Owner.
`
`Case IPR2017-00896 (Patent 8,659,571 B2)
`Case IPR2017-00897 (Patent 8,773,356 B2)1
`
`Before MICHAEL R. ZECHER, BRYAN F. MOORE,
`NEIL T. POWELL, and MINN CHUNG, Administrative Patent Judges.
`
`PER CURIAM.
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42(a)
`
`
`
`
`
`
`
`
`
`
`1 This Order applies to both cases. The parties are not authorized to use this
`style heading for any subsequent papers.
`
`
`571-272-7822
`
`
`
`
`Paper 7
`Entered: April 11, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`IMMERSION CORPORATION,
`Patent Owner.
`
`Case IPR2017-00896 (Patent 8,659,571 B2)
`Case IPR2017-00897 (Patent 8,773,356 B2)1
`
`Before MICHAEL R. ZECHER, BRYAN F. MOORE,
`NEIL T. POWELL, and MINN CHUNG, Administrative Patent Judges.
`
`PER CURIAM.
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42(a)
`
`
`
`
`
`
`
`
`
`
`1 This Order applies to both cases. The parties are not authorized to use this
`style heading for any subsequent papers.
`
`
`
`Case IPR2017-00896 (Patent 8,659,571 B2)
`Case IPR2017-00897 (Patent 8,773,356 B2)
`
`
`In IPR2017-00896 and IPR2017-00897, Apple, Inc. (“Petitioner”) has
`
`filed Petitions requesting inter partes reviews of U.S. Patent No. 8,659,571
`
`B2 (“the ’571 patent”) and U.S. Patent No. 8,773,356 B2 (“the ’356
`
`patent”), respectively. See IPR2016-00896, Paper 1; IPR2017-00897, Paper
`
`1. Both Petitions have been accorded a filing date of February 12, 2017.
`
`See IPR2017-00896, Paper 3; IPR2017-00897, Paper 3.
`
`On April 6, 2017, a telephone conference was held with the parties at
`
`the request of Immersion Corporation (“Patent Owner”). During the
`
`conference, Patent Owner alleged certain problems with Petitioner’s service
`
`of the Petitions on Patent Owner. Based on this, Patent Owner contended
`
`that the Petitions are not entitled to the February 12, 2017, filing date that
`
`they have been accorded. Additionally, Patent Owner contended that
`
`Petitioner was served with a complaint asserting the ’571 patent and the ’356
`
`patent in the District Court of Delaware on February 12, 2016. Based on
`
`these assertions, Patent Owner indicated that inter partes review is barred by
`
`35 U.S.C. § 315(b), which states, in relevant part, “[a]n inter partes review
`
`may not be instituted if the petition requesting the proceeding is filed more
`
`than 1 year after the date on which the petitioner, real party in interest, or
`
`privy of the petitioner is served with a complaint alleging infringement of
`
`the patent.” Additionally, Patent Owner sought leave to file a motion for
`
`additional discovery regarding the service of the Petitions.
`
`In response, Petitioner disputed Patent Owner’s contention that
`
`service of the Petitions was insufficient to support the February 12, 2017,
`
`filing dates the Petitions have been accorded. Additionally, given that
`
`February 12, 2017, was a Sunday, Petitioner asserted that, even if service did
`
`
`
`
`
`Case IPR2017-00896 (Patent 8,659,571 B2)
`Case IPR2017-00897 (Patent 8,773,356 B2)
`
`not occur until Monday, February 13, 2017, service was timely under the
`
`Board’s rules.
`
`The parties’ contentions warrant briefing. Petitioner shall file, by
`
`Tuesday, April 18, 2017, a brief supporting its contentions. Petitioner’s
`
`brief shall address its contention that service of the Petitions was effected
`
`properly on February 12, 2017. Petitioner’s brief shall also address its
`
`contention that, even if service did not occur until Monday, February 13,
`
`2017, service was timely, such that the Petitions are properly accorded the
`
`filing date of February 12, 2017, under the Board’s rules and no time bar is
`
`triggered under 35 U.S.C. § 315(b). Patent Owner may file, by Tuesday,
`
`April 25, 2017, a brief responding to Petitioner’s brief. Each party’s brief
`
`shall not exceed 5 pages. Each party may submit evidence with its brief in
`
`support of its position regarding whether service of the Petitions was
`
`effected properly on February 12, 2017.
`
`At this time, a motion by Patent Owner for additional discovery is not
`
`warranted.
`
`
`
`In consideration of the foregoing, it is hereby:
`
`Order
`
`ORDERED that Petitioner shall file, by Tuesday, April 18, 2017, a
`
`brief addressing (1) Petitioner’s contention that service of the Petitions was
`
`effected properly on February 12, 2017, and (2) Petitioner’s contention that,
`
`even if service did not occur until Monday, February 13, 2017, service was
`
`timely, such that the Petitions are properly accorded the filing date of
`
`February 12, 2017, under the Board’s rules and no time bar is triggered
`
`under 35 U.S.C. § 315(b);
`
`
`
`
`
`Case IPR2017-00896 (Patent 8,659,571 B2)
`Case IPR2017-00897 (Patent 8,773,356 B2)
`
`
`FURTHER ORDERED that Patent Owner may file, by Tuesday,
`
`April 25, 2017, a brief responding to Petitioner’s brief;
`
`FURTHER ORDERED that each party’s brief shall not exceed 5
`
`pages;
`
`FURTHER ORDERED that each party may submit evidence with its
`
`brief in support of its position regarding whether service of the Petitions was
`
`effected properly on February 12, 2017; and
`
`FURTHER ORDERED that, at this time, Patent Owner is not
`
`authorized to file a motion seeking additional discovery.
`
`
`
`
`
`Case IPR2017-00896 (Patent 8,659,571 B2)
`Case IPR2017-00897 (Patent 8,773,356 B2)
`
`PETITIONER:
`
`James Heintz
`jim.heintz@dlapiper.com
`
`Robert Buergi
`robert.buergi@dlapiper.com
`
`
`
`PATENT OWNER:
`
`Michael Fleming
`mfleming@irell.com
`
`Babak Redjaian
`bredjaian@irell.com
`
`
`
`
`
`
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