`571-272-7822
`
`Paper 28
`Date: July 25, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`QUALCOMM INCORPORATED,
`Patent Owner.
`
`Case IPR2018-01315
`Case IPR2018-01316
`Patent 8,063,674 B21
`
`
`
`
`
`
`
`
`
`
`Before TREVOR M. JEFFERSON, DANIEL J. GALLIGAN, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`HOWARD, Administrative Patent Judge.
`ORDER
`Conduct of Proceedings on Remand
`37 C.F.R. § 42.5
`
`
`1 This Order addresses issues that are identical in each of the above-
`identified cases. Accordingly, we exercise our discretion to issue one order
`to be filed in each case. The parties, however, are not authorized to use this
`style heading in any subsequent papers without prior authorization.
`
`
`
`IPR2018-01315, IPR2018-01316
`Patent 8,063,674 B2
`
`
`On January 3, 2020, we issued a Final Written Decision in these
`proceedings finding, inter alia, that Petitioner had shown by a
`preponderance of the evidence that the challenged claims of United States
`Patent 8,063,674 B2 were unpatentable over Applicant Admitted Prior Art
`(“AAPA”) and Majcherczak or AAPA, Majcherczak, and Matthews. Paper
`26.2 Patent Owner appealed to the United States Court of Appeals for the
`Federal Circuit. Paper 27. On February 1, 2022, the Federal Circuit issued
`an opinion determining that we incorrectly interpreted § 311(b)’s “prior art
`consisting of patents or printed publications” to encompass AAPA contained
`in the challenged patent. Qualcomm Inc. v. Apple Inc., 24 F.4th 1367 (Fed.
`Cir. 2022). The Federal Circuit remanded for us to determine whether
`Majcherczak forms the basis of Apple’s challenge, or whether the validity
`challenge impermissibly violated the statutory limit in section 311. Id. at
`1376–77. On June 24, 2022, the Federal Circuit issued its mandate.
`Mandate, Qualcomm Inc. v. Apple Inc., No. 20-1558 (Fed. Cir. June 24,
`2022) (No. 96). On July 11, 2022, in accordance with Standard Operating
`Procedure 9, the parties contacted the Board requesting a call with the panel
`to discuss the remand proceedings.
`On July 20, 2022, Judges Jefferson, Galligan, and Howard held a call
`with the parties. Although the parties agreed to the length of remand
`briefing, they differed on the schedule and whether an additional oral
`hearing should be held. Petitioner requested that the parties file two rounds
`of simultaneous briefs and that no oral hearing was necessary. Patent Owner
`
`
`2 Unless otherwise noted, all citations are to IPR2018-01315.
`
`2
`
`
`
`IPR2018-01315, IPR2018-01316
`Patent 8,063,674 B2
`
`requested four rounds of responsive briefing and that we conduct an
`additional oral hearing.
`After a discussion, the panel decided to allow two rounds of
`simultaneous briefing. The parties are authorized to file opening briefs
`limited to 10 pages. The opening briefs are to be filed by August 31, 2022.
`Each party is also authorized to file a responsive brief to respond to the
`opposing party’s opening brief. The responsive briefs are limited to 5 pages
`and are to be filed by September 28, 2022.
`Without seeing the briefing, the Panel is unable to determine at this
`time whether an additional oral hearing would assist the panel. If a new oral
`hearing is warranted, the Panel will contact the parties after briefing is
`completed.
`
`
`ORDER
`
`It is
`ORDERED that the parties may submit 10-page opening briefs on
`remand due no later than August 31, 2022; and
`FURTHER ORDERED that the parties may submit 5-page responsive
`briefs on remand due no later than September 28, 2022.
`
`
`
`3
`
`
`
`IPR2018-01315, IPR2018-01316
`Patent 8,063,674 B2
`
`PETITIONER:
`
`W. Karl Renner
`Thomas A. Rozylowicz
`Timothy W. Riffe
`David L. Holt
`Whitney A. Reichel
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`tar@fr.com
`riffe@fr.com
`holt2@fr.com
`wreichel@fr.com
`
`
`PATENT OWNER:
`
`Joseph M. Sauer
`Matthew W. Johnson
`David B. Cochran
`Joshua R. Nightingale
`Richard A. Graham
`David M. Maiorana
`JONES DAY
`jmsauer@jonesday.com
`mwjohnson@jonesday.com
`dcochran@jonesday.com
`jrnightingale@jonesday.com
`ragraham@jonesday.com
`dmaiorana@jonesday.com
`
`4
`
`
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