`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`
`
`APPLE INC.
`Petitioner
`
`v.
`
`COREPHOTONICS, LTD.,
`Patent Owner
`____________
`
`Case IPR2018-01133
`U.S. Patent No. 9,538,152
`____________
`
`PATENT OWNER’S NOTICE OF APPEAL
`
`
`
`
`
`Office of the General Counsel
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Submitted Electronically via the PTAB E2E System
`
`
`
`
`
`
`
`Pursuant to 35 U.S.C. §§ 141, 142, and 319, and in accordance with 37 C.F.R.
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`§§ 90.2-90.3, Patent Owner Corephotonics, Ltd. (“Corephotonics”) hereby appeals
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`to the United States Court of Appeals for the Federal Circuit from the Final Written
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`Decision of the Patent Trial and Appeal Board (“Board”) entered on December 2,
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`2019, in IPR2018-01133 (Paper No. 34) (“Final Written Decision”) and the Order
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`denying Corephotonics’ request for Director Review entered on October 15, 2021,
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`in the same IPR (Paper No. 37) (the “Order”), which made the Final Written Deci-
`
`sion the final decision of the agency in this matter, and from all underlying findings,
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`determinations, rulings, opinions, orders, and decisions regarding the inter partes
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`review of U.S. Patent No. 9,538,152 (the “’152 patent”).
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`Corephotonics’ request for Director Review was made pursuant to a remand
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`by the Federal Circuit in Corephotonics, Ltd. v. Apple Inc., Case No. 2020-1425.
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Corephotonics states that the
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`issues on appeal may include, but are not limited to: the Board’s determination that
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`claims 1–4 of the ’152 patent have been shown to be unpatentable; whether the stat-
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`ute and regulations under which the Board and Mr. Hirshfeld made their determina-
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`tions violate the Appointments Clause or other provisions of the United States Con-
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`stitution or the Federal Vacancies Reform Act of 1998 or another Federal law, in-
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`cluding, but not limited to, the Administrative Procedures Act; the Board’s consid-
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`eration of the expert testimony, prior art, and other evidence in the record; the
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`
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`1
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`
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`Board’s factual findings, conclusions of law, or other determinations supporting or
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`related to those issues; any PTO processes, rules, or guidance related to Director
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`Review, including, but not limited to, how and when it was promulgated and how
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`and when it may be requested and conducted; the denial of Director Review here;
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`the process and procedure for addressing IPRs and appeals after the Supreme Court’s
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`opinion in Arthrex, as well as all other issues decided adversely to Corephotonics in
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`any orders, decisions, rulings, and opinions.
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`This Notice of Appeal is being filed with the Clerk’s Office for the United
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`States Court of Appeals for the Federal Circuit, along with payment of the required
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`docketing fees. In addition, a copy of this Notice of Appeal is being filed simultane-
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`ously with the Patent Trial and Appeal Board.
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`
`Respectfully submitted,
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`Dated: November 12, 2021
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`
`
`
`
`
`
`2
`
`
`
` / Neil A. Rubin /
`Neil A. Rubin
`Reg. No. 67,030
`Reza Mirzaie
`Reg. No. 69,138
`Marc Fenster
`Pro Hac Vice
`Russ August & Kabat
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`Phone: (310) 826-7474
`Fax: (310) 826-6991
`rmirzaie@raklaw.com
`nrubin@raklaw.com
`mfenster@raklaw.com
`
`
`
`
`
`
`
`
`
`corephotonics@raklaw.com
`
`3
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`
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`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e)(1))
`
`The undersigned hereby certifies that the above document was served on November
`12, 2021, by filing this document through the Patent Trial and Appeal Board End-
`to-End System as well as delivering a copy via electronic mail upon the following
`attorneys of record for the Petitioner:
`David W. O’Brien
`Hong Shi
`HAYNES AND BOONE, LLP
`600 Congress Ave. Suite 1300
`Austin, TX 78701
`Telephone: 512-867-8400
`Email: david.obrien.ipr@haynesboone.com
`Email: hong.shi.ipr@haynesboone.com
`
`Andrew S. Ehmke
`Michael S. Parsons
`Jamie H. McDole
`HAYNES AND BOONE, LLP
`2323 Victory Ave. Suite 700
`Dallas, TX 75219
`Telephone: 214-651-5000
`Email: andy.ehmke.ipr@haynesboone.com
`Email: michael.parsons.ipr@haynesboone.com
`Email: jamie.mcdole@haynesboone.com
`
`A copy of this Notice of Appeal was also sent on November 12, 2021 by Priority
`Mail Express to the United States Patent and Trademark Office at the following ad-
`dress:
`Office of the General Counsel
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
` / Neil A. Rubin /
`
`
`Neil A. Rubin (Reg. No. 67,030)
`
`4
`
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