`
`OFFICE BEFORE THE PATENT TRIAL AND
`
`APPEAL BOARD
`
`APPLE INC.,
`Petitioner
`v.
`UNILOC LUXEMBOURG S. A.,
`Patent Owner
`
`Case IPR2017-01993
`U.S. Patent 9,414,199
`
`PATENT OWNER’S OBJECTIONS TO
`EVIDENCE PURSUANT TO 37 C.F.R. § 42.64
`
`
`
`
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.64(b)(1), Patent Owner respectfully submits the
`following objections to footnote 3 of Petitioner’s Reply to Patent Owner’s Response
`and new Exhibit 1018 (U.S. Patent Publication No. 2013/0036165 (“Tseng”)) and
`Exhibit 1019 (Merriam Webster’s Collegiate Dictionary (10th Ed.1998)), which were
`submitted on September 4, 2018. See Paper 15 and exhibits filed therewith.
`1. Objections to footnote 3 and Exhibit 1018 (Tseng)
`Patent Owner objects to footnote 3 of Petitioner’s Reply and Exhibit 1018
`(Tseng). Grounds for this objection include: 37 C.F.R. § 42.23(b) (outside scope of
`response and petition); Trial Practice Guide Update (August 2018) (“new evidence . .
`. that could have been presented in a prior filing, for example newly cited prior art
`references intended to ‘gap-fill’”)1; and 37 C.F.R. § 42.104(b) (belated identification
`of challenge).
`Footnote 3 of Petitioner’s Reply argues that Tseng, a reference cited for the first
`time in Petitioner’s reply, “discloses both a current time window and a future time
`window.” See Paper 15 at 10 (citing Ex. 1018). This newly-cited reference, and
`Petitioner’s argument that it discloses claim limitations, could and should have been
`cited in the original petition. Failure to include this argument and reference violates
`at least 37 C.F.R. § 42.104(b) and is outside the permissible scope of Petitioner’s reply
`under 37 C.F.R. § 42.23(b) and the Trial Practice Guide Update.2
`2. Objections Exhibit 1019.
`Patent Owner objects to Exhibit 1019. Grounds for this objection include: 37
`
`1
`https://www.uspto.gov/sites/default/files/documents/2018_Revised_Trial_
`See
`Practice_Guide.pdf.
`2 Footnote 3 and Exhibit 1018 do nothing to further Petitioner’s prosecution disclaimer
`argument. That argument is based on Exhibit 1002. See Paper 15 at 8-9. Petitioner
`should not be allowed to use its prosecution disclaimer argument as a pretext to
`belatedly assert Exhibit 1018 and footnote 3.
`
`
`
`C.F.R. § 42.23(b) (outside scope of response and petition); Trial Practice Guide Update
`(August 2018) (“new evidence . . . that could have been presented in a prior filing, for
`example newly cited prior art references intended to ‘gap-fill’”); and 37 C.F.R. §
`42.104(b) (belated identification of challenge). Petitioner relies on Exhibit 1019 to
`support a claim construction argument that it could and should have included in the
`original Petition.
`
`
`Date: September 11, 2018
`
`/s/ Brett A. Mangrum
`Brett A. Mangrum; Reg. No. 64,783
`Ryan Loveless; Reg. No. 51,970
`Counsel for Patent Owner
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I certify that the foregoing UPDATED MANDATORY NOTICE OF PATENT
`
`OWNER UNDER 37 CFR § 42.8 was served on the Petitioner’s counselors of record
`
`by electronic notification, as agreed to by the parties:
`
`Xin-Yi (Vincent) Zhou, Reg. No. 63,366; vzhou@omm.com
`Sina S. Aria, Reg. No. 69,490; saria@omm.com
`Laura A. Bayne, Reg. No. 72,420; lbayne@omm.com
`AppleUnilocIPR@omm.com.
`
`
`
`
`
`Date: September 11, 2018
`
`/s/ Brett A. Mangrum
` Brett A. Mangrum
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
