IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Haller, et al.
`In re Patent of:
`7,039,033 Attorney Docket No.: 39521-0020IP2
`U.S. Patent No.:
`May 2, 2006
`
`Issue Date:
`Appl. Serial No.: 09/850,399
`
`Filing Date:
`May 7, 2001
`
`Title:
`System, device and computer readable medium for providing
`a managed wireless network using short-range radio signals
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT
`NO. 7,039,033 PURSUANT TO 35 U.S.C. §§ 311–319, 37 C.F.R. § 42
`
`
`
`
`

`

`Attorney Docket No. 39521-0020IP2
`IPR of U.S. Patent No. 7,039,033
`
`TABLE OF CONTENTS
`
`INTRODUCTION ..................................................................................................... 1
`RELEVANT BACKGROUND ................................................................................. 3
`I.
`APPLE’S PETITION IS NOT BARRED BECAUSE IXI’S NEW
`CLAIMS ARE NOT PART OF THE SAME “PATENT” FOR TIME-
`BAR PURPOSES AND CERTAINLY NOT PART OF IXI’S PRIOR
`SERVICE ......................................................................................................... 6
`A. The Federal Circuit’s Click-to-Call Decision Leaves Institution Decisions
`On Ex Parte Reexaminations To the Discretion of the Board, Based On
`Whether New Claims Contain the Same Scope .............................................. 7
`B. Chevron Step One: The Time-Bar Statute is Ambiguous As to Whether a
`Petition Like Apple’s Should Be Barred ......................................................... 9
`C. Chevron Step Two: The Board Should Allow Petitions Challenging
`Substantively Different New Claims Obtained in Ex Parte
`Reexaminations .............................................................................................. 12
`D. IXI’s New Claims Are Not “Substantially Identical” To The Original
`Claims And, Thus, Created a New Patent ..................................................... 16
`IN THE ALTERNATIVE, THE BOARD SHOULD JOIN THE
`PRESENT IPR WITH APPLE’S PREVIOUS IPR ...................................... 18
`III. REQUIREMENTS FOR IPR ........................................................................ 19
`A. Grounds for Standing ..................................................................................... 19
`B. Challenge and Relief Requested .................................................................... 20
`IV. Estoppel ......................................................................................................... 21
`V.
`The ’033 Patent .............................................................................................. 22
`VI. Level of Ordinary Skill .................................................................................. 22
`VII. Claim Construction ........................................................................................ 23
`
`II.
`
`i
`
`

`

`Attorney Docket No. 39521-0020IP2
`IPR of U.S. Patent No. 7,039,033
`VIII. APPLICATION OF PRIOR ART TO CHALLENGED CLAIMS .............. 24
`A. [GROUND 1] – Claim 65 is obvious over Marchand, Nurmann,
`Vilander, and Williams .................................................................................. 24
`B. [GROUND 2] – Claims 75 and 76 are obvious over Marchand, Nurmann,
`Vilander, Williams, and Cannon ................................................................... 45
`C. [GROUND 3] – Claims 77, 78, and 80-82 are obvious over Marchand,
`Nurmann, Vilander, Williams, and JINI Spec. .............................................. 49
`IX. PAYMENT OF FEES ................................................................................... 62
`X.
`CONCLUSION .............................................................................................. 62
`XI. MANDATORY NOTICES UNDER 37 C.F.R § 42.8(a)(1) ......................... 62
`A. Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1) .................................... 62
`B. Related Matters Under 37 C.F.R. § 42.8(b)(2) .............................................. 62
`C. Lead And Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3) .......................... 63
`D. Service Information ....................................................................................... 63 
`
`
`
`ii
`
`

`

`EXHIBIT 1001
`
`EXHIBIT 1002
`EXHIBIT 1003
`EXHIBIT 1004
`EXHIBIT 1005
`
`EXHIBIT 1006
`
`EXHIBIT 1007
`
`EXHIBIT 1008
`EXHIBIT 1009
`
`EXHIBIT 1010
`EXHIBIT 1011
`EXHIBIT 1012
`
`EXHIBIT 1013
`
`EXHIBIT 1014
`EXHIBIT 1015
`
`EXHIBIT 1016
`
`Attorney Docket No. 39521-0020IP2
`IPR of U.S. Patent No. 7,039,033
`
`EXHIBITS
`
`U.S. Patent No. 7,039,033 to Haller et al. (“’033
`patent”)
`Prosecution History of the ’033 patent
`Declaration of Dr. Sayfe Kiaei
`Curriculum Vitae of Dr. Sayfe Kiaei
`International Publication No. WO 2001/76154 A2 to
`Marchand (“Marchand”)
`U.S. Patent Application No. 09/541,529 to Marchand
`(“Marchand Priority”)
`Handley et al., Request For Comments 2543 SIP:
`Session Initiation Protocol, The Internet Society, March,
`1999 (“RFC 2543”)
`U.S. Patent No. 6,836,474 to Larsson (“Larsson”)
`K. Arnold et al., The JINITM Specification, Addison-
`Wesley, June 1, 1999 (“JINI Spec.”)
`U.S. Patent No. 6,560,642 to Nurmann (“Nurmann”)
`U.S. Patent No. 6,771,635 to Vilander (“Vilander”)
`U.S. Patent Application Publication No. 2002/0068608
`to Souissi (“Souissi”)
`U.S. Patent No. 6,486,832 to Abramov, et al.
`(“Abramov”)
`U.S. Patent No. 7,193,965 to Nevo, et al. (“Nevo”)
`U.S. Patent No. 6,556,222 to Chandrasekhar
`Narayanaswami (“Narayanaswami”)
`International Publication No. WO 1999/22338 to
`Williams (“Williams”)
`
`iii
`
`

`

`EXHIBIT 1017
`EXHIBIT 1018
`
`EXHIBIT 1019
`
`EXHIBIT 1020
`
`EXHIBIT 1021
`EXHIBIT 1022
`
`EXHIBIT 1023
`EXHIBIT 1024
`EXHIBIT 1025
`EXHIBIT 1026
`
`EXHIBIT 1027
`EXHIBIT 1028
`
`Attorney Docket No. 39521-0020IP2
`IPR of U.S. Patent No. 7,039,033
`U.S. Patent No. 7,155,163 to Cannon (“Cannon”)
`802.11b, “Supplement to IEEE Standard for Information
`Technology – Telecommunications and In-formation
`Exchange Between Systems – Local and Metropolitan
`Area Networks – Specific Requirements. Part 11:
`Wireless LAN Medium Access Control (MAC) and
`Physical Layer (PHY) Specifications: Higher-Speed
`Physical Layer Extension in the 2.4 GHz Band,” Print
`ISBN 0738118117, published January 20, 2000
`(“802.11b”)
`IEEE 802.11, “IEEE Standard for Information
`Technology—Telecommunications and Information
`Exchange Between Systems—Local and Metropolitan
`Area Networks—Specific requirements. Part 11:
`Wireless LAN Medium Access Control (MAC) and
`Physical Layer (PHY) Specifications,” ISBN 0-7381-
`1658-0, published August 20, 1999 (“802.11”)
`A COLLECTION OF JINI TECHNOLOGY HELPER
`UTILITIES AND SERVICES SPECIFICATIONS
`(“JINI Collection”)
`U.S. Patent No. 5,465,401 to Thompson (“Thompson”)
`GSM Phase 2+ General Packet Radio Service GPRS:
`Architecture, Protocols, and Air Interface (“Bettstetter”)
`U.S. Patent No. 6,557,037 to Provino (“Provino”)
`U.S. Patent No. 6,028,848 to Bhatia (“Bhatia”)
`U.S. Patent No. 6,185,611 to Waldo, et al. (“Waldo”)
`Bluetooth Specification, Version 1.0B (“Bluetooth
`Spec.”)
`IPR2015-01443, Petition
`IPR2015-01444, Petition
`
`iv
`
`

`

`EXHIBIT 1029
`EXHIBIT 1030
`EXHIBIT 1031
`
`EXHIBIT 1032
`
`EXHIBIT 1033
`
`EXHIBIT 1034
`EXHIBIT 1035
`
`EXHIBIT 1036
`EXHIBIT 1037
`EXHIBIT 1038
`
`EXHIBIT 1039
`EXHIBIT 1040
`
`EXHIBIT 1041
`EXHIBIT 1042
`EXHIBIT 1043
`
`EXHIBIT 1044
`EXHIBIT 1045
`
`Attorney Docket No. 39521-0020IP2
`IPR of U.S. Patent No. 7,039,033
`IPR2015-01443, Final Written Decision
`IPR2015-01444, Final Written Decision
`Declaration of Dr. Sayfe Kiaei submitted in IPR2015-
`01444
`Prosecution History of Reexamination Control No.
`90/013,925
`U.S. Patent No. 6,073,036 to Heikkinen et al.
`(“Heikkinen”)
`U.S. Patent No. 5,422,656 to Allard et al. (“Allard”)
`U.S. Patent No. 6,801,778 to Koorapaty et al.
`(“Koorapaty”)
`U.S. Patent No. 5,786,789 to Janky (“Janky”)
`U.S. Patent No. 6,404,761 to Snelling et al. (“Snelling”)
`“Router Plugins: A Software Architecture for Next
`Generation Routers,” Computer Communication
`Review (1998), vol. 28, No. 4, p. 229-240 (“Router
`Plugins”)
`U.S. Patent No. 6,891,820 to Pham, et al. (“Pham”)
`U.S. Patent No. 6,775,258 to van Valkenburg, et al.
`(“van Valkenburg”)
`U.S. Patent No. 6,463,304 to Smethers (“Smethers”)
`U.S. Patent No. 6,983,310 to Rouse et al. (“Rouse”)
`U.S. Patent No. 6,138,022 to Strawczynski et al.
`(“Strawczynski”)
`U.S. Patent No. 6,754,833 to Black et al. (“Black”)
`U.S. Patent No. 6,580,916 to Weisshaar et al.
`(“Weisshaar”)
`
`v
`
`

`

`Attorney Docket No. 39521-0020IP2
`IPR of U.S. Patent No. 7,039,033
`J. Newmarch, A Programmer’s Guide to Jini
`Technology, Apress, 2000 (“Newmarch”)
`U.S. Patent No. 6,728,323 to Chen et al. (“Chen”)
`HIGHLY INTEGRATED SINGLE-CHIP
`BASEBAND PROCESSOR FOR GSM HANDSETS
`(“Shohara”)
`U.S. Patent No. 6,970,940 to Vogel et al. (“Vogel”)
`U.S. Patent No. 6,622,017 to Hoffman (“Hoffman”)
`
`EXHIBIT 1046
`
`EXHIBIT 1047
`EXHIBIT 1048
`
`EXHIBIT 1049
`EXHIBIT 1050
`
`
`vi
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`

`

`Attorney Docket No. 39521-0020IP2
`IPR of U.S. Patent No. 7,039,033
`
`INTRODUCTION
`Apple petitions for Inter Partes Review (“IPR”) of new claims of U.S.
`
`Patent No. 7,039,033 (“the ’033 patent”). The USPTO issued these new claims in
`
`an ex parte reexamination that was initiated by IXI—the owner of the ’033 patent.
`
`By pursuing reexamination, IXI circumvented the effect of an earlier-filed IPR on
`
`the ’033 patent, in which this Board found unpatentable all challenged claims. In
`
`essence, IXI used an ex parte procedure to make an end-run around of this Board’s
`
`earlier findings of unpatentability and obtained new claims that would not have
`
`issued had IXI properly sought to add them in the adversarial IPR proceeding.
`
`IXI’s gamesmanship should not be rewarded, and IPR should be instituted.
`
`Although the scope of claims challenged in this petition is different than the scope
`
`of the original claims, the claims should not have issued as they add subject matter
`
`that was well-known at the time of the ’033 patent. Specifically, new claim 65
`
`adds (1) router software; (2) a speaker, a microphone, and a touchscreen; and (3)
`
`software applications including a telephony application, a personal information
`
`manager application including emails, and a location application. As explained by
`
`Dr. Kiaei, each of these limitations—which were cited as the basis for allowance—
`
`was taught by prior art and would have been trivial for a skilled artisan to
`
`implement. Accordingly, Apple’s petition shows a reasonable likelihood that the
`
`challenged claims would have been obvious.
`
`1
`
`

`

`Attorney Docket No. 39521-0020IP2
`IPR of U.S. Patent No. 7,039,033
`Apple’s previous success at challenging claims of the ’033 patent should not
`
`prevent Apple from challenging these newly-issued claims. For one, the Board
`
`should treat IXI’s ex parte reexamination certificate as creating a new, materially-
`
`different “patent” for which Apple has not been served with a complaint. Indeed,
`
`none of these new claims even existed at the time of IXI’s prior complaint and
`
`could not have been part of the prior service. Moreover, none of the newly-issued
`
`claims has the same scope as any original claim. Thus, what IXI obtained through
`
`its end-run around Apple’s earlier IPR was an entirely new patent which claims an
`
`invention of different scope. Institution also accords with the Patent Act’s
`
`instruction that reissued patents and reexamination certificates be given the same
`
`effect in the real world—because a reissued patent with new claims of different
`
`scope is a new patent for time-bar purposes, the Office should treat IXI’s
`
`reexamination certificate in the same way. A finding otherwise amounts to a
`
`decision on form over substance.
`
`In the alternative, the Board should join this IPR with Apple’s previous IPR.
`
`By circumventing this Board’s earlier IPR proceeding through reexamination, IXI
`
`seeks to have the patentability of the ’033 patent adjudicated in three different
`
`proceedings: (1) Apple’s earlier IPR; (2) during reexamination; and (3) during
`
`district court litigation. Joining this proceeding to Apple’s earlier IPR avoids this
`
`inefficient and convoluted result. As previously found, joining claims issued in ex
`
`2
`
`

`

`Attorney Docket No. 39521-0020IP2
`IPR of U.S. Patent No. 7,039,033
`parte reexamination to pending IPRs is consistent with the purpose of IPR, which
`
`is to provide an alternative to litigation and to secure the “just, speedy, and
`
`inexpensive resolution” of every proceeding before the Office.
`
`RELEVANT BACKGROUND
`
`This is Apple’s second petition seeking review of claims of IXI’s ’033
`
`patent. On June 19, 2015, Apple (together with two Samsung entities) petitioned
`
`the Board to review the ’033 patent. IPR2015-01444, Paper 2. Apple’s first
`
`petition was filed well before Apple’s statutory bar deadline: IXI initiated suit
`
`against Apple in October 2014, and Apple’s petition was filed eight months later.
`
`Id., 3; IXI Mobile (R&D) and IXI IP, LLC v. Apple Inc., Case 4:15-cv-03755, D.I.
`
`1 (N.D. Cal. October 2, 2014). Notably, Apple’s petition sought review of every
`
`claim that IXI asserted against it in litigation. The Board instituted as to every
`
`claim challenged (IPR2015-01444, Paper 8), and after briefing and a hearing,
`
`found unpatentable every challenged claim over WO01/76154 (“Marchand”) in
`
`combination with various other references (id., Paper 27). IXI appealed the
`
`Board’s decision, contending it was not supported by substantial evidence. IXI IP,
`
`LLC v. Samsung Elecs. Co. et al., Case No. 17-1665, D.I. 16 (Fed. Cir. June 2,
`
`2017). The appeal was heard on April 4, 2018, and the Federal Circuit affirmed on
`
`September 10, 2018. IXI IP, LLC v. Samsung Elecs. Co. Ltd., et al., No. 17-1665
`
`(Fed. Cir. Sept. 10, 2018).
`
`3
`
`

`

`Attorney Docket No. 39521-0020IP2
`IPR of U.S. Patent No. 7,039,033
`During the pendency of these proceedings, and specifically after the Board
`
`found all challenged claims unpatentable, IXI sought ex parte reexamination.
`
`IXI’s reexamination request was based on the same prior art cited by Apple in its
`
`IPR, asserting that Marchand-based combinations raised a substantial new question
`
`of patentability as to claims 48 and 56, but did not render them obvious. Ex. 1032,
`
`543-609. Additionally, IXI sought to amend claims 48 and 56, and add new claims
`
`57–129.
`
`Reexamination was granted on May 17, 2017. Id., 180-197. Although the
`
`examiner initially rejected several of the claims as lacking support in the
`
`specification, the examiner never searched the prior art to determine whether the
`
`added features were new and non-obvious. Id., 203 (showing “CPC –
`
`SEARCHED”, “CPC COMBINATION SETS – SEARCHED,” and “US
`
`CLASSIFICATION SEARCHED” completely blank). According to the
`
`examiner’s statements of patentability, the alleged novelty of the new claims was
`
`based on the addition of: (1) a “802.11 signal transmitter/receiver”; (2) a
`
`“telephony application” used to place phone calls; (3) a “personal information
`
`manager application” for emails; and (4) a “location application for providing a
`
`current location of the handheld device.” Id., 13–19. Not only are these features
`
`unquestionably disclosed by the prior art, as discussed below, they were well-
`
`known features of handheld devices long before the filing date of the ’033 patent.
`
`4
`
`

`

`Attorney Docket No. 39521-0020IP2
`IPR of U.S. Patent No. 7,039,033
`The reexamination certificate issued on February 1, 2018, cancelling original
`
`claims 48–55, amending claim 56, and adding claims 57–124.
`
`New claim 65 is emblematic of the subject matter added to the claims in
`
`reexamination. Claim 65 is identical to original claim 1, but for the addition of the
`
`following limitations:
`
`wherein the first wireless device comprises router software to
`establish the short distance wireless network, wherein the
`router software comprises a routing component for
`exchange of IP packets;
`
`wherein the first wireless device includes a speaker, a
`microphone, and a touchscreen,
`
`wherein the first wireless device includes software applications
`including a telephony application, a personal information
`manager application including emails, and a location
`application for providing a current location of the first
`wireless device; and
`
`With these additions, new claim 65 certainly has a different scope than
`
`original claim 1—new, distinct limitations added to make the claim significantly
`
`narrower. The same is true for all added claims. For example, none of the original
`
`claims recited a “touchscreen,” “telephony application,” “personal information
`
`manager application,” “location application,” “802.11 communications,”
`
`“broadcasting of IP packets,” or “a disconnect terminal function”–yet every single
`
`5
`
`

`

`Attorney Docket No. 39521-0020IP2
`IPR of U.S. Patent No. 7,039,033
`one of the added claims contain at least two of these requirements. These added
`
`limitations, which were not present in the original claim set, change the scope of
`
`the claimed subject matter, and create a materially-different patent. Ex. 1003,
`
`[271]-[283].
`
`ARGUMENT
`
`I.
`
`APPLE’S PETITION IS NOT BARRED BECAUSE IXI’S NEW
`CLAIMS ARE NOT PART OF THE SAME “PATENT” FOR TIME-
`BAR PURPOSES AND CERTAINLY NOT PART OF IXI’S PRIOR
`SERVICE
`Apple should not be barred from seeking IPR of the newly-issued claims of
`
`the ’033 patent. These claims were obtained by IXI only by initiating an ex parte
`
`proceeding in a transparent attempt to circumvent the Board’s earlier finding of
`
`unpatentability and to avoid having the claims properly tested by Apple in an
`
`adversarial setting before the Office (e.g., via motion to amend during the earlier
`
`IPR). In the ex parte reexamination, IXI abandoned the original scope of the
`
`invention by seeking new claims with materially-different scope. Thus, for
`
`purposes of determining whether Apple is barred from seeking IPR of these claims,
`
`the Board should treat this reexamination certificate as creating a new, materially-
`
`different patent in accord with what it actually does, which is claim an invention of
`
`a different scope than originally claimed by the ’033 patent.
`
`
`
`6
`
`

`

`Attorney Docket No. 39521-0020IP2
`IPR of U.S. Patent No. 7,039,033
`A. The Federal Circuit’s Click-to-Call Decision Leaves Institution
`Decisions On Ex Parte Reexaminations To the Discretion of the
`Board, Based On Whether New Claims Contain the Same Scope
`
`The Federal Circuit recently addressed whether new claims obtained during
`
`reexamination would constitute the same “patent” for time-bar purposes. Click-to-
`
`Call Technologies, L.p. v. Ingenio, Inc., No. 2015-1242, 2018 WL 3893119 (Fed.
`
`Cir. Aug. 16, 2018). Although the Federal Circuit found that an ex-parte
`
`reexamination certificate did not reset the time-bar in that case, the Court’s opinion
`
`provided an analytical framework for the Board to follow in making such
`
`determinations—namely that the Board has discretion under Chevron to decide, on
`
`a case-by-case basis, whether new claims should be considered part of the same
`
`“patent” as that term is used in the statute.
`
`Notably, the primary issue in Click-to-Call addressed whether a dismissal
`
`without prejudice of a complaint resets the IPR time-bar. Id., *4. Ancillary to this
`
`primary issue, the Federal Circuit also addressed “alternative” arguments related to
`
`reexamination. In three pages of its response brief (the only place where this
`
`argument was made), appellee argued that the Court could affirm the Board’s
`
`opinion even if it disagreed as to dismissal without prejudice because, between
`
`filing of the original, dismissed complaint in 2001 and the subsequent complaint in
`
`2012, patent owner obtained a reexamination certificate amending the claims in the
`
`patent-at-issue. Response Brief, D.I. 37, Click-to-Call Technologies, L.p. v.
`
`7
`
`

`

`Attorney Docket No. 39521-0020IP2
`IPR of U.S. Patent No. 7,039,033
`Ingenio, Inc., No. 2015-1242 (May 26, 2015), 19–22. This argument was not
`
`made before the Board. Id.; Click-to-Call Technologies, 2018 WL 3893119, *11.
`
`The Federal Circuit nonetheless addressed this argument as it was made, and
`
`found that the ex parte reexamination did not reset the time-bar for the Click-to-
`
`Call petitioners. The Federal Circuit first found that, because the time-bar
`
`provision speaks of “patents” and not “claims,” the analysis should focus on
`
`whether a new patent was issued. Click-To-Call Techs., 2018 WL 3893119, *10.
`
`To make that assessment, the Court considers whether reexamined claims are
`
`substantively different than original claims. Id., *10-11. The Click-to-Call
`
`petitioners, however, made no showing on substantive differences and, thus, could
`
`not prevail. Id. The Court explained that, “[e]ven if we were to hold that § 315(b)
`
`is ambiguous with respect to whether the term ‘the patent’ includes reexamined
`
`patents having amended or new claims of ‘substantively differ[ent]’ scope than the
`
`original claims, we would still reject Petitioners' argument that the time-bar does
`
`not apply here” because petitioners made no showing below on substantive
`
`differences. Id. As the Federal Circuit has long held, “in the absence of a clear
`
`showing that such a material difference in fact exists in a disputed patentable
`
`reexamination claim, it can be assumed that the reexamined claims will be a subset
`
`of the original claims.” Id. Thus, based on the limited arguments made on appeal
`
`and below in Click-to-Call, the Federal Circuit found that reexamination did not
`
`8
`
`

`

`Attorney Docket No. 39521-0020IP2
`IPR of U.S. Patent No. 7,039,033
`
`make that IPR timely.
`
`Thus, although Click-to-Call addressed the effect of ex-parte reexaminations
`
`on the IPR time-bar, it did not resolve, or purport to resolve, this issue for all
`
`reexaminations. As discussed above, the Federal Circuit’s opinion did not hold
`
`that 315(b) was unambiguous as to reexamined patents with new claims—it rested
`
`on petitioner’s failure to adequately argue material differences. Rather, the Court’s
`
`opinion laid out an analytical framework for how this question should be decided
`
`in future cases. The first question is whether the statute is ambiguous as to
`
`whether a reexamined patent with new claims can count as a new “patent” under
`
`the language of the statute. Id., *10. If the statute is ambiguous, then the Board
`
`has discretion to assess whether substantive differences between the original and
`
`new claims has created a new patent for which no service has occurred. Id. As
`
`discussed below, 315(b) is ambiguous and IXI’s substantively-changed, new
`
`claims created a new, materially-different patent.
`
`B.
`
`Chevron Step One: The Time-Bar Statute is Ambiguous As to
`Whether a Petition Like Apple’s Should Be Barred
`
`The first step in determining whether the Board has discretion to allow
`
`Apple’s petition is to determine whether the statute unambiguously speaks to the
`
`“precise question at issue.” Chevron, 467 U.S., 843. Specifically, Chevron step
`
`one asks “whether the language at issue has a plain and unambiguous meaning
`
`with regard to the particular dispute in the case.” Barnhart v. Sigmon Coal Co.,
`
`9
`
`

`

`Attorney Docket No. 39521-0020IP2
`IPR of U.S. Patent No. 7,039,033
`Inc., 534 U.S. 438, 450 (2002). Here, the question is whether new claims obtained
`
`in an ex parte reexamination should be barred where the claims were obtained after
`
`petitioner had been sued and where the reexamination was initiated by the patent
`
`owner to circumvent an earlier adverse IPR decision.
`
`Section 315(b) reads:
`
`An inter partes review may not be instituted if the
`petition requesting the proceeding is filed more than 1
`year after the date on which the petitioner … is served
`with a complaint alleging infringement of the patent.
`
`The phrase “complaint alleging infringement of the patent” is ambiguous as to
`
`whether “the patent” would encompass amended patents with claims that did not
`
`exist at the time of the complaint. As is well-known and understood in patent law,
`
`a party does not infringe a patent—it is only the claims of a patent that may be
`
`infringed. Hoechst-Roussel Pharmaceuticals, Inc. v. Lehman, 109 F.3d 756, 759
`
`(Fed. Cir. 1997). Thus, a complaint does not allege infringement of a patent, but
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`rather alleges infringement of one or more claims of that patent. Given this
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`requirement, and given the language Congress chose to use in 315(b), Congress
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`was unclear as to whether it intended to bar petitions challenging new claims in
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`amended patents that did not exist at the time of a complaint—claims that could
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`not have been the basis for the prior allegation of infringement. In fact, the statute
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`never explicitly addresses reexamination or reissue proceedings or the possibility
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`Attorney Docket No. 39521-0020IP2
`IPR of U.S. Patent No. 7,039,033
`of new claims being added to the patent, leaving the impact of such new claims on
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`the time-bar unclear. This is not to say that every ex parte reexamination will reset
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`the time-bar. As the Federal Circuit found in Click-to-Call, the statute prevents a
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`party from seeking IPR on claims obtained in reexamination where there was no
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`showing that the reexamined patent changed the scope of the claims.
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`
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`As is clear from the statute, the purpose of the time-bar is to encourage
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`parties to timely seek IPR, and a party who waits might not have the ability to
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`pursue IPR. However, that is not the case here.
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`
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`Apple challenged all claims that IXI asserted well before the statutory
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`deadline. Apple has expeditiously sought IPR of the new claims, filing the present
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`petition shortly after the Federal Circuit affirmed the Board’s decision in the first
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`IPR and just after the nine-month window in 35 USC § 311(c)(1). In short,
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`Apple’s actions have aligned with the Congressional purpose of the IPR statute,
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`having brought its petitions as timely as practicable and always under one year.
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`
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`In contrast, IXI’s actions are misaligned with Congressional intent. IXI
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`sought reexamination only after Apple’s first IPR was successful, and well after
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`the statutory deadline. By failing to move to amend during the first IPR and
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`waiting to pursue substitute claims only after losing the first IPR, IXI’s actions
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`frustrate the purpose of IPR and are not unambiguously endorsed by the statute.
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`Attorney Docket No. 39521-0020IP2
`IPR of U.S. Patent No. 7,039,033
`C. Chevron Step Two: The Board Should Allow Petitions
`Challenging Substantively Different New Claims Obtained in Ex
`Parte Reexaminations
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`As noted above, nothing in the statute prevents the Board from using its
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`interpretive authority to construe 315(b) in a manner that allows review. The
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`Board should exercise that authority, and treat IXI new claims in the same manner
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`the Board has treated claims emerging from reissue.
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`Although the statute does not explicitly address reissue, the Board has found
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`that new claims in a reissued patent are not the same “patent” under 315(b) where
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`the claims are not substantially identical to the original claims. Eizo Corp. v.
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`Barco N.V., IPR2014–00358, Paper 21, 8 (PTAB July 14, 2015). In Eizo, the
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`Board allowed a petition where the claims in the reissued patent were not present
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`in the original patent, and where the petition was filed within one year of the patent
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`owner amending its complaint to assert the new claims. Id. As the Board noted,
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`the new claims were not “substantially identical” to claims of the original patent,
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`and thus an earlier complaint did not start the clock—rather the time-bar clock
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`started upon assertion of the new claims. Id.
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`The Board should apply the same approach here. Section 307 states that
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`“[a]ny proposed amended or new claim determined to be patentable and
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`incorporated into a patent following a reexamination proceeding will have the
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`same effect as that specified in section 252 for reissued patents.” 35 U.S.C. ¶ 307.
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`Attorney Docket No. 39521-0020IP2
`IPR of U.S. Patent No. 7,039,033
`As this section lays out, a reexamination certificate shall have the same effect on
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`an accused infringer as a reissued patent. Plainly, allowing an accused infringer to
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`seek IPR after a patent is reissued with new claims, but not allowing an accused
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`infringer to seek IPR after a reexamination certificate adds new claims, is giving a
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`different effect to analogous proceedings.
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`What the statute sets out is a framework that looks not to the form of
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`amendment, but the substance of the amendment. Section 252, which governs
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`reissued patents and (because of section 307) also applies to reexaminations, states
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`that the effect of reissue or reexamination is determined by whether “the claims …
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`are substantially identical.” 35 U.S.C.A. § 252. If the claims are substantially
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`identical—i.e. the new claims have the same scope as the original claims—then the
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`reissued or reexamined patent “shall have the same effect and operation in law, …
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`as if the same had been originally granted in such amended form.” Id. “If, on the
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`other hand, a substantive change has been made to the original claims during
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`reexamination [or reissue], the patentee is entitled to infringement damages only
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`for the time period following issuance of the reexamination certificate” or reissued
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`patent. R+L Carriers, Inc. v. Qualcomm, Inc., 801 F.3d 1346, 1349 (Fed. Cir.
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`2015).
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`Such an approach also is consistent with Federal Circuit precedent. Any
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`formalistic distinction between a patentee surrendering a patent in reissue and
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`Attorney Docket No. 39521-0020IP2
`IPR of U.S. Patent No. 7,039,033
`seeking a reexamination certificate has long since been abandoned. In Fresenius,
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`the Federal Circuit explained that, prior to 1928, courts focused on the fact that a
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`patent owner had to surrender its patent and obtained an entirely new patent in that
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`“reissuance of a patent extinguished all pending claims based on that patent,
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`because the original patent was ‘thereby canceled in law.’” Fresenius, 721 F.3d,
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`1336. However, in 1928, Congress adopted the predecessor to now section 252,
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`which “authorize[d] actions for infringement of the original claims to continue
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`after reissue, but only ‘to the extent that [the reissued] claims are substantially
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`identical with the original patent.’” Id. Thus, since 1928, a patent owner may
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`assert claims that emerge from reissue or reexamination against past behavior to
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`the extent those claims are substantively identical to the original claims. “In sum,
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`under either the reissue or reexamination statute, if the PTO confirms the original
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`claim in identical form, a suit based on that claim may continue, but if the original
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`claim is cancelled or amended to cure invalidity, the patentee’s cause of action is
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`extinguished.” Id., 1340.
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`Thus, although reissue and reexamination are distinct proceedings that differ
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`in procedure, the effect of both is the same. No longer must a patent owner
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`seeking reissuance entirely surrender her original patent to obtain an entirely new
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`patent—a patent owner may assert reissued claims against past behavior to the
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`extent they are the same. Similarly, a reexamination is not simply just an
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`Attorney Docket No. 39521-0020IP2
`IPR of U.S. Patent No. 7,039,033
`addendum to a patent—again, the effect is determined by the substance of the
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`amendments made.
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`Two points drive home the conclusion that the reexamination certificate
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`obtained by IXI should be considered a new “patent” for time-bar purposes. First,
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`in effect, what IXI has obtained is an entirely new set of claims that have a
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`different scope than the claims that originally issued. Every claim previously
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`challenged by Apple was cancelled as unpatentable. As the Federal Circuit has
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`made clear, “when a claim is cancelled, the patentee loses any cause of action
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`based on that claim, and any pending litigation in which the claims are asserted
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`becomes moot.” Id.; SHFL Entertainment, Inc. v. Digideal Corp., No. 2016-2705,
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`2018 WL 2049238, *1 (Fed. Cir. May 2, 2018) (“Suits based on cancelled claims
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`must be dismissed”). Thus, IXI’s allegation that Apple infringes the ’033 patent,
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`which was based on claims that have since been