UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`APPLE INC.,
`Petitioner
`
`v.
`
`IMMERSION CORPORATION
`Patent Owner
`
`U.S. Patent No. 8,659,571
`Filing Date: February 21, 2013
`Issue Date: February 25, 2014
`Title: Interactivity Model for Shared Feedback on Mobile Devices
`
`
`Inter Partes Review No.: IPR2017-00896
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`
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`BRIEF ON SERVICE ISSUES
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`WEST\276229694.1
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner
`
`v.
`
`IMMERSION CORPORATION
`Patent Owner
`
`U.S. Patent No. 8,659,571
`Filing Date: February 21, 2013
`Issue Date: February 25, 2014
`Title: Interactivity Model for Shared Feedback on Mobile Devices
`
`
`Inter Partes Review No.: IPR2017-00896
`
`
`
`BRIEF ON SERVICE ISSUES
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`
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`WEST\276229694.1
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`IPR2017-00896
`U.S. Patent No. 8659571
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`I. STATEMENT OF FACTS
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`
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`The Petition and exhibits in this IPR were filed on Sunday, February 12,
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`2017. Ex. 1020 at 1. Payment for that Petition was accepted by the USPTO on
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`February 12, 2017. Ex. 1021 at 2. Copies of the Petition, exhibits and power of
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`attorney (collectively, the “Service Documents”) were served in two ways. Hard
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`copies of Service Documents were placed into a cardboard box having a size of
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`approximately 12”x11”x6”, and a UPS shipping label addressed to “Immersion
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`Corporation, 50 Rio Robles, San Jose, CA 95134-1806” was attached to that box,
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`on February 12, 2017. Ex. 1022 at 1; Ex. 1023 ¶ 9. The USPTO’s PAIR system
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`indicates that this is the address of record for the ’571 patent. Ex. 1024 at 1. The
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`cardboard box with that UPS shipping label was irretrievably placed through a
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`slot/door into (not on the top/side of, or next to) a metal UPS drop box in the lobby
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`of the building in which DLA Piper’s Austin, Texas office is located on February
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`12, 2017. Ex. 1023 ¶ 9. The box with that UPS shipping label was picked up from
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`that drop box by UPS the next day on Monday, February 13, 2017 and delivered to
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`the address on the label on Tuesday, February 14, 2017. Ex. 1025 at 1. These
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`dates are undisputed. Ex. 2001 at 7.
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`An electronic copy of the Petition was served via email, and copies of the
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`Petition, accompanying exhibits, and power of attorney were served via email
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`using DLA’s FTP file transfer utility, on both lead and backup counsel of record
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`IPR2017-00896
`U.S. Patent No. 8659571
`for this IPR on February 12, 2017. Ex. 1026 at 1; Ex. 1027 at 1. A zip file of
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`those documents was accessed via this FTP utility by someone using the creden-
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`tials supplied to Michael Fleming on Monday, February 13, 2017. Ex. 1028 at 1.
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`II. SERVICE WAS PROPERLY EFFECTED ON FEBRUARY 12, 2017
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`Service of a petition is governed by 37 C.F.R. §§ 42.6(e) and 42.105. The
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`only relevant part of § 42.6(e) is a requirement that the service be simultaneous
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`with filing. Service on the day of filing satisfied that requirement. Sub-section (a)
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`of § 42.105 states that “[t]he petition and supporting evidence must be served on
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`the patent owner at the correspondence address of record for the subject patent.
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`The petitioner may additionally serve the petition and supporting evidence on the
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`patent owner at any other address known to the petitioner as likely to effect
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`service.” That regulation was complied with here. Hard copies of the Petition and
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`accompanying exhibits were served on the patent owner at the correspondence
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`address of record at the USPTO on February 12, 2007 via UPS. Ex. 1023 ¶¶ 3- 9.
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`37 C.F.R. § 42.105(b) provides that “Upon agreement of the parties, service
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`may be made electronically. Service may be by Priority Mail Express® or by means
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`at least as fast and reliable as Priority Mail Express®. Personal service is not
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`required.” Again, that regulation was complied with here. The regulation
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`expressly allows service by means at least as fast and reliable as Priority Mail
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`Express. UPS fits that description, and hard copies of the service documents were
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`IPR2017-00896
`U.S. Patent No. 8659571
`placed into a UPS drop box on the same day on which the Petition was filed,
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`February 12, 2017. Ex. 1023 ¶ 9. § 42.105 requires nothing more. In particular,
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`there is no requirement in 37 C.F.R. § 42.105(b) that a package must be placed into
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`the hands of a U.S. Postal Service (“USPS”) employee in order effect service. To
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`the contrary, the Board found that placing service copies of an IPR petition into a
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`USPS mail slot on the day the Petition was filed was sufficient in Yamaha Corp. of
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`Am. v. Black Hills Media, LLC, IPR2013-00593, Paper 22. In Yamaha, the service
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`copies were placed into a USPS mail slot on 9/18/13 (the same day the petition was
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`filed), first processed by the USPS the next day on 9/19/13, and delivered two days
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`after the petition was filed on 9/20/13 (id. at 4). The Board found that the 9/18/13
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`filing date of the petition in that case was correct in light of this service (id. at 6).
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`The facts are nearly identical here: the Petition was placed through a slot/ door into
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`the UPS drop box on Sunday, processed/picked up by UPS on Monday, and
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`delivered on Tuesday. Moreover, it is undisputed that UPS performed as fast and
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`reliably as Priority Mail Express in this case. Given that US Post Offices are
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`closed on Sundays, hard copies of the service documents in this case would not
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`have been processed any earlier than Monday or delivered any earlier than
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`Tuesday if they had been placed into an express mail slot on Sunday.
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`Mr. Fleming has attempted to distinguish the facts here from Yamaha on the
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`basis that Yamaha involved a USPS mail slot in a USPS building. Ex. 2001 at 8.
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`IPR2017-00896
`U.S. Patent No. 8659571
`However, this argument fails because 37 C.F.R. § 42.105(b) expressly provides
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`that a delivery service other than the USPS may be used to effect service.
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`Mr. Fleming also argued that the package containing the Service Documents
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`is “larger than the maximum size allowed by UPS for packages to be deposited in a
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`UPS drop box,” which creates a presumption that the packages were not placed
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`into the drop box. Ex. 2001at 9. Any such presumption is clearly rebutted by Ex.
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`1023 ¶¶ 10-11, which establishes through photographs including a ruler that were
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`previously provided to Mr. Fleming that the UPS drop box in question could
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`accept packages of the size containing the Service Documents in this case, and that
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`the box containing the Service Copies was placed in that UPS drop box on 2/12/17.
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`III. SERVICE WOULD HAVE BEEN TIMELY ON FEBRUARY 13, 2017
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`There is no statutory requirement for, or governing timing of, service of an
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`IPR petition. Yamaha, IPR2013-00593, Paper 22 at 6; Telemark N.A. LLC v. Joao
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`Control & Monitoring Sys., LLC., IPR2015-01466, Paper 10 at 5. The only
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`statutory requirement is that copies of the Petition and supporting papers be
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`“provided” to the patent owner. Id. That has been done here. Thus, according the
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`Petition its actual February 12, 2017 filing date does not implicate any statutory
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`concern. A regulation, 37 CFR § 42.106(a) provides in relevant part that “[a]
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`petition to institute inter partes review will not be accorded a filing date until the
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`petition satisfies all of the following requirements . . . [e]ffects service of the
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`IPR2017-00896
`U.S. Patent No. 8659571
`petition on the correspondence address of record as provided in § 42.105(a).”
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`Notably, this regulation does not dictate what filing date can or will be accorded
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`once all requirements are satisfied, and in particular does not require that the filing
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`date be set to the date on which the last requirement is satisfied. Moreover,
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`another regulation, 37 C.F.R. § 1.7, states in relevant part that “[w]hen the day, or
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`the last day fixed by statute or by or under this part for taking any action or paying
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`any fee in the United States Patent and Trademark Office falls on Saturday,
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`Sunday, or on a Federal holiday within the District of Columbia, the action may be
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`taken, or the fee paid, on the next succeeding business day which is not a Saturday,
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`Sunday, or a Federal holiday.” Thus, to the extent any USPTO regulation required
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`any action concerning service to be taken on February 12th, § 1.7 provides that
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`such action would have been timely if performed on February 13th, and nothing in
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`§ 42.106(a) precludes according the Petition its February 12, 2017 filing date.
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`For all of the reasons above, the 2/12/17 filing date accorded to the Petition
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`is correct. Moreover, the Service Documents were served electronically on Mr.
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`Fleming on 2/12/17 (Ex. 1026 at 1; Ex. 1027 at 1), and accessed by him on 2/13/17
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`(Ex. 1028 at 1). Thus, if the Board finds a failure to comply with any regulation
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`governing service, Petitioner requests that the Board exercise its discretion under
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`37 C.F.R. § 42.5(b) to waive compliance with such regulation in the interest of
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`justice as such failure has not prejudiced Immersion. Telemark, Paper 10, at 5.
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`IPR2017-00896
`U.S. Patent No. 8659571
`Dated: April 18, 2017
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`Respectfully Submitted,
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` /James M. Heintz/
`James M. Heintz
`Reg. No. 41,828
`DLA Piper LLP (US)
`11911 Freedom Drive, Suite 300
`Reston, VA 20190
`jim.heintz@dlapiper.com
`Phone: 703-773-4148
`Fax: 703-773-5200
`
`Robert Buergi
`Reg. No. 58,125
`DLA Piper LLP (US)
`2000 University Ave
`East Palo Alto, CA 94303
`robert.buergi@dlapiper.com
`Phone: 650-833-2407
`Fax: 650-687-1144
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`Attorneys for Petitioner Apple Inc.
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`WEST\276229694.1
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`IPR2017-00896
`U.S. Patent No. 8659571
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing BRIEF ON
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`SERVICE ISSUES was served on April 18, 2017, a United Parcel Service, to
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`counsel for the following addresses:
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`Michael R. Fleming
`Irell & Manella LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, CA 90067-4276
`310-277-1010 (telephone)
`310-203-7199 (fax)
`
`
`Babak Redjaian
`Irell & Manella LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, CA 90067-4276
`949-760-5260 (telephone)
`949-760-5200 (fax)
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`WEST\276229694.1
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` /James M. Heintz/
`James M. Heintz
`Reg. No. 41,828
`DLA Piper LLP (US)
`11911 Freedom Drive, Suite 300
`Reston, VA 20190
`Jim.heintz@dlapiper.com
`Phone: 703-773-4148
`Fax: 703-773-5200
`
`Robert Buergi
`Reg. No. 58,125
`DLA Piper LLP (US)
`2000 University Ave
`East Palo Alto, CA 94303
`robert.buergi@dlapiper.com
`Phone: 650-833-2407
`Fax: 650-687-1144
`
`
`Attorneys for Petitioner Apple Inc.
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