`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_________________________
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`APPLE INC.,
`Petitioner
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`v.
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`IXI IP, LLC,
`Patent Owner
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`_________________________
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`Case IPR2019-00124
`Patent No. 7,039,033
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`_________________________
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`PETITIONER’S NOTICE OF APPEAL
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`Case IPR2019-00124
`Our Ref. 39521-0020IP1
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`Pursuant to 37 C.F.R. § 90.2(a), Petitioner Apple Inc. (“Apple”) hereby
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`respectfully gives notice that it appeals to the United States Court of Appeals for the
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`Federal Circuit from the Patent Trial and Appeal Board’s (“Board”) Institution
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`Decision entered on June 3, 2019 (Paper No. 13) (the “Institution Decision”), as well
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`as from all other underlying orders, decisions, rulings, and opinions that are adverse
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`to Petitioner.
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`For the limited purpose of providing the Director with the information
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`requested in 37 C.F.R. § 90.2(a)(3)(ii), the issues on appeal may include, but are not
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`limited to, the Board’s determination that Apple is time-barred from petitioning for
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`inter partes review under 35 U.S.C. § 315(b) (“An inter partes review may not be
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`instituted if the petition requesting the proceeding is filed more than 1 year after the
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`date on which the petitioner, real party in interest, or privy of the petitioner is served
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`with a complaint alleging infringement of the patent.”) As explained in Apple’s
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`petitions, though Apple was previously served with a complaint alleging
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`infringement of some claims of the ’033 patent, those claims were later cancelled as
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`a result of an earlier successful IPR petition brought by Apple. See IXI IP, LLC v.
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`Samsung Elecs. Co., 903 F.3d 1257 (Fed. Cir. 2018) (affirming Board’s
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`determination that asserted claims were unpatentable). The claims challenged in the
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`present petition did not exist at the time IXI’s complaint was served, nor did they
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`exist at the time Apple filed its earlier petition. The claims were issued as a part of
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`1
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`Case IPR2019-00124
`Our Ref. 39521-0020IP1
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`an ex parte reexamination initiated by IXI after the Board found the originally
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`asserted claims unpatentable and while appeal of that decision to the Federal Circuit
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`was pending. As such, Apple will argue to the Federal Circuit that it should not be
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`barred from seeking inter partes review of claims that did not exist at the time it was
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`served with IXI’s complaint.
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`Apple may additionally argue that the agency improperly promulgated policy
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`in a manner inconsistent with the Administrative Procedures Act.
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`The Board’s order denying institution is appealable pursuant to 28 U.S.C.
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`§ 1295(a)(4) and is not barred by 35 U.S.C. § 314(d). The Board’s order denying
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`institution is a final order “with respect to a[n] . . . inter partes review under title
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`35.” See 28 U.S.C. § 1295(a)(4); see also Bankers Tr. Co. v. Mallis, 435 U.S. 381,
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`387 (1978) (explaining that an agency determination is final and ready for appeal
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`when the determination “represents the final decision in the case”); Arthrex, Inc. v.
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`Smith & Nephew, Inc., 880 F.3d 1345, 1348 (Fed. Cir. 2018) (holding that section
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`1295(a)(4) allows for appeal of “adverse judgments” arising from decisions of the
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`PTAB, provided that the entered adverse “judgment terminate[s] the IPR
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`proceeding”). The Board’s order denying institution is a jurisdictional decision with
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`respect to the application of the time bar of 35 U.S.C. § 315(b), which the en banc
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`Federal Circuit determined to be a reviewable decision because it was not a decision
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`under 35 U.S.C. § 314 and the appeal exemption set forth by 35 U.S.C. § 314(d) is
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`2
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`Case IPR2019-00124
`Our Ref. 39521-0020IP1
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`limited to decisions “under this section.” See Wi-Fi One, LLC v. Broadcom Corp.,
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`878 F.3d 1364, 1375 (Fed. Cir. 2018) (“[W]e hold that the Director's time-bar
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`determinations under § 315(b) are not exempt from judicial review” under section
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`314(d)).1
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`Simultaneous with this submission, a copy of the Notice of Appeal is being
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`filed electronically with the Patent Trial and Appeal Board. In addition, a copy of
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`this Notice of Appeal, along with the required docketing fees, is being electronically
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`filed with the Clerk’s Office for the United States Court of Appeals for the Federal
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`Circuit.
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`Dated: August 5, 2019
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`Respectfully submitted,
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` /W. Karl Renner/
`W. Karl Renner, Reg. No. 41,265
`Jeremy J. Monaldo, Reg. No. 58,680
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
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`
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`Attorney for Petitioner
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`1 The preceding discussion of the jurisdiction of the Court of Appeals for the
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`Federal Circuit is provided for exemplary purposes only. Apple reserves the right
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`to supplement or amend arguments should the need so arise.
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`3
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`CERTIFICATE OF SERVICE
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`Case IPR2019-00124
`Our Ref. 39521-0020IP1
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`Pursuant to 37 CFR §§ 42.6(e)(4) and 42.205(b), the undersigned certifies
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`that on August 5, 2019, a complete and entire copy of this Petitioner’s Notice of
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`Appeal was provided via email to the Patent Owner by serving the correspondence
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`address of record as follows:
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`Kenneth J. Weatherwax
`Nathan Lowenstein (Pro hac vice)
`Edward Hsieh
`Parham Hendifar
`Patrick Maloney
`LOWENSTEIN & WEATHERWAX LLP
`1880 Century Park East, Suite 815
`Los Angeles, CA 90067
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`Russell D. Slifer
`SCHWEGMAN, LUNDBERG & WOESSNER
`1600 TCF Tower, 121 S. 8th St.
`Minneapolis, MN 55402
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`Sangeeta G. Shah
`David S. Bir
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075
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`E-mail: weatherwax@lowensteinweatherwax.com
`IXI_IPRs@lowensteinweatherwax.com
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`4
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`Case IPR2019-00124
`Our Ref. 39521-0020IP1
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`I hereby certify that, in addition to being filed electronically through the
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`Board’s E2E System, the original version of the foregoing Notice of Appeal was
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`filed by hand on August 5, 2019, with the Director of the United States Patent and
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`Trademark Office, at the following address:
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`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`Madison Building East, 1 OB20
`600 Dulany Street
`Alexandria, VA 22314-5793
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`I hereby certify that on August 5, 2019, a true and correct copy of the
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`foregoing Notice of Appeal, along with a copy of the Institution Decision, was
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`filed electronically with the Clerk’s Office of the United States Court of Appeals
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`for the Federal Circuit, at the following address:
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`United States Court of Appeals for the Federal Circuit
`717 Madison Place, N.W., Suite 401
`Washington, DC 20005
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`Dated: August 5, 2019
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`Respectfully submitted,
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` /W. Karl Renner/
`W. Karl Renner, Reg. No. 41,265
`Jeremy J. Monaldo, Reg. No. 58,680
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
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`Attorney for Petitioner
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`5
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