`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC.
`Petitioner
`
`v.
`
`IXI IP, LLC
`Patent Owner
`____________
`
`Case IPR2019-00141
`Patent 7,039,033 B2
`____________
`
`PATENT OWNER IXI IP, LLC’S PRELIMINARY RESPONSE
`TO APPLE, INC.’S PETITION FOR INTER PARTES REVIEW
`OF UNITED STATES PATENT NO. 7,039,033
`PURSUANT TO 35 U.S.C. § 313, 37 C.F.R. § 42.107
`
`
`
`
`
`
`
`
`
`
`
`

`

`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II.
`
`THE PETITION IS TIME BARRED UNDER 35 U.S.C. § 315(b). .............. 7
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`The Office Lacks Jurisdiction Because The Petition Was Filed Over
`Three Years After The § 315(b) Bar Expired. ...................................... 8
`
`Issuance Of A Reexamination Certificate Does Not Nullify The
`One Year Filing Limitation Under 35 U.S.C. § 315(b). ....................... 9
`
`1.
`
`2.
`
`3.
`
`The Federal Circuit Has Held that New Claims In
`Reexamination Do Not Create A New Patent Under § 315(b).10
`
`The Director Agrees That Reexamination Does Not Reset
`§315(b). .................................................................................... 13
`
`The Board Also Agrees That Reexamination Does Not Reset
`§315(b). .................................................................................... 14
`
`Apple’s Arguments That The New Claims Are “Substantively
`Different” Contradicts Its Prior Statements That They Are Not. ........ 15
`
`Subsection 315(b) Would Preclude Institution Even Under
`Chevron. .............................................................................................. 18
`
`The Law Governing Reissued Patents And Infringement Damages
`Does Not Govern Reexamined Patents Under § 315(b). .................... 20
`
`F.
`
`Apple’s Joinder Request Cannot Nullify The § 315(b) Time Bar. ..... 23
`
`III. THE PETITION SHOULD ALSO BE DENIED UNDER § 325(d)
`BECAUSE SUBSTANTIALLY SIMILAR ARGUMENTS AND
`REFERENCES WERE JUST CONSIDERED BY THE OFFICE. ..............25
`
`A.
`
`The Central Reexamination Unit Recently Analyzed Substantially
`The Same Arguments And Subject Matter. ........................................ 27
`
`B.
`
`The § 325(d) Factors Collectively Support Denial Of Institution. ..... 30
`
` i
`
`

`

`
`
`1.
`
`2.
`
`3.
`
`4.
`
`Factors 1-3: (1) the similarity of the asserted art and the prior
`art involved during the examination; (2) the extent to which the
`asserted art was considered during examination, including
`whether the prior art was the basis for rejection; & (3) the
`cumulative nature of the asserted art and the prior art
`considered during examination. ............................................... 33
`
`Factor 4: the extent to which the arguments made during
`examination and the manner in which Petitioner relies on the
`prior art or the applicant’s arguments during examination
`overlap ...................................................................................... 38
`
`Factor 5: whether Petitioner has pointed out sufficiently how
`the Examiner erred in its consideration of the asserted prior art
` .................................................................................................. 39
`
`Factor 6: the extent to which additional evidence and facts
`presented in the Petition warrant reconsideration of the asserted
`prior art ..................................................................................... 43
`
`5.
`
`Additional Factor: the burden on the patent owner ................ 43
`
`IV. CONCLUSION ..............................................................................................44
`
`
`
`
`
` ii
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`

`

`
`
`
`
`CASES
`
`TABLE OF AUTHORITIES
`
`
`Page(s)
`
`Abbott Labs. v. United States,
`573 F.3d 1327 (Fed. Cir. 2009) ............................................................................14
`
`Aspex Eyewear, Inc. v. Marchon Eyewear, Inc.,
`672 F.3d 1335 (Fed. Cir. 2012) ......................................................... 11, 15, 21, 22
`
`Bloom Eng'g Co. v. N. Am. Mfg. Co.,
`129 F.3d 1247 (Fed. Cir. 1997) ............................................................................23
`
`Chevron, U.S.A., Inc. v. NRDC, Inc.,
`467 U.S. 837 (1984) ..........................................................................................3, 18
`
`Click-To-Call Techs., LP v. Ingenio, Inc.,
`899 F.3d 1321 (Fed. Cir. 2018), pet. for cert. filed sub nom. Dex Media, Inc. v.
`Click-To-Call Techs., LP (U.S. Jan. 11, 2019) (No. 18-916) ....................... passim
`
`Convolve, Inc. v. Compaq Computer Corp.,
`812 F.3d 1313 (Fed. Cir. 2016) ............................................................................23
`
`Senju Pharm. Co. v. Apotex Inc.,
`746 F.3d 1344 (Fed. Cir. 2014) ......................................................... 11, 15, 19, 20
`
`Splane v. West,
`216 F.3d 1058 (Fed. Cir. 2000) ............................................................................14
`
`VirnetX Inc. v. Mangrove Partners,
`No. 17-1383 (Fed. Cir.).........................................................................................25
`
`
`
`STATUTES
`
`35 U.S.C. § 252 ........................................................................................................22
`
`35 U.S.C. § 302 ........................................................................................................40
`
`35 U.S.C. § 305 ........................................................................................................40
`
`35 U.S.C. § 307 ........................................................................................................40
`
`35 U.S.C. § 307(b) ...................................................................................................22
`
`35 U.S.C. § 315(b) ........................................................................................... passim
`
`35 U.S.C. § 325(d) ........................................................................................... passim
`
` iii
`
`

`

`
`
`ADMINISTRATIVE DECISIONS
`
`Becton, Dickinson & Co. v. B. Braun Melsungen AG,
`IPR2017- 01586, Paper 8 (PTAB Dec. 15, 2017) ................................................32
`
`Biodelivery SI v. MonoSol Rx,
`IPR2013-00315, Paper 31 (PTAB Nov. 13, 2013) ...............................................14
`
`Blue Coat Sys., Inc. v. Finjan, Inc.,
`IPR2016-00498, Paper 10 (PTAB June 20, 2016) ...............................................24
`
`Edge Endo LLC v. Michael,
`IPR2018-01320, Paper 15 (PTAB Jan. 14, 2019) ......................................... 31, 42
`
`Fox Factory, Inc. v. SRAM, LLC,
`IPR2017-01439, Paper 7 (PTAB Dec. 9, 2017) ...............................................6, 32
`
`Fresenius Kabi USA, LLC v. Hospira, Inc.,
`IPR2017-01055, Paper 10 (PTAB Sept. 6, 2017) (concurrence) .........................24
`
`Google LLC v. Uniloc Luxembourg S.A.,
`IPR2017-01665, Paper 10 (PTAB Jan. 11, 2018) ................................................33
`
`Intel Corp. v. Godo Kaisha IP Bridge,
`IPR2018-00756, Paper 11 (PTAB Oct. 9, 2018) ........................................... 36, 43
`
`J. Reynolds Vapor Co. v. Fontem Holdings 1 B.V.,
`IPR2017-01642, Paper 12 (PTAB Jan. 16, 2018) ................................................37
`
`Juniper Networks, Inc. v. Mobile Telecomm'ns Techs., LLC,
`IPR2017-00642, Paper 24 (PTAB July 27, 2017) ................................................42
`
`Merial Inc. v. Intervet Int’l B.V.,
`IPR2018-00919, Paper 13 (PTAB Oct. 22, 2018) ................................................36
`
`Nora Lighting, Inc. v. Juno Mftg., LLC,
`IPR2015-00601, Paper 13 (PTAB Aug. 12, 2015) ...............................................31
`
`Novartis Pharms. Corp. v. Plexxicon, Inc.,
`IPR2018-01287, Paper 17 (PTAB Jan. 16, 2019) ......................................... 32, 44
`
`Nu Mark LLC v. Fontem Holdings 1, B.V.,
`IPR2016-01309, Paper 11 (PTAB Dec. 15, 2016) ...............................................37
`
`Polygroup Ltd. v. Willis Elec. Co., Ltd., No.
`IPR2016-00801, Paper 8 (PTAB Oct. 17, 2016) ..................................................32
`
`Proppant Express Investments, LLC v. Oren Techs., LLC,
`IPR2018-00914, Paper 21 (PTAB Nov. 8, 2018) .................................................25
`
` iv
`
`

`

`
`
`Proppant Express Investments, LLC v. Oren Techs., LLC,
`IPR2018-00914, Paper 24 (PTAB POP Dec. 3, 2018) (per curiam) ....................25
`
`Samsung Elecs. Co., Ltd. v. Fujinomaki,
`IPR2017-01017, Paper 12 (PTAB May 16, 2017) ...............................................24
`
`SkyHawke Techs., LLC v. L&H Concepts, LLC,
`IPR2014-01485, Paper 13 (PTAB Mar. 20, 2015) ...............................................25
`
`Telebrands Corp. v. Tinnus Enters., LLC,
`PGR2017-00024, Paper 15 (PTAB Nov. 30, 2017) reh’g denied, Paper 18
`(PTAB Feb. 7, 2018) .............................................................................................38
`
`Vestas-Am. Wind Tech., Inc. et al. v. Gen. Elec. Co.,
`IPR2018-01029, Paper 9 (PTAB Oct. 19, 2018) ..................................................36
`
`W. Pharm. Servs., Inc. v. Sanofi-Aventis Deutschland GmbH,
`IPR2018-01162, Paper 7 (PTAB Dec. 6, 2018) ...................................................42
`
`Ziegman v. Stephens,
`IPR2015-01860, Paper 11 (PTAB Feb. 24, 2016) ................................................32
`
`
`
`OTHER AUTHORITIES
`
`154 Cong. Rec. S9988
`(daily ed. Sept. 27, 2008) (comments of Sen. Kyl) ..............................................24
`
`H. Rep. No. 112-98, pt. 1 (2011) .............................................................................32
`
`MPEP § 2244 ...........................................................................................................40
`
`MPEP § 2254 ...........................................................................................................40
`
`MPEP § 2256 ...........................................................................................................40
`
`
`
`
`
` v
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`

`

`
`
`EXHIBIT LIST
`
`2001
`
`Inter Partes Review Certificate, IPR2014-01444, Jan. 19, 2019
`
`2002
`
`IXI Mobile (R&D) Ltd. et al. v. Apple Inc., 1-14-cv-07954 (S.D.N.Y.),
`Dkt. 1 (Complaint) (filed Oct. 2, 2014)
`
`2003
`
`IXI Mobile (R&D) Ltd. et al. v. Apple Inc., 1-14-cv-07954 (S.D.N.Y.),
`Dkt. 8 (Affidavit of Service)
`
`2004
`
`Declaration of Nathan Lowenstein in Support of Motion for Pro Hac
`Vice Admission
`
`2005
`
`Apple’s 1.181 Petition To USPTO Director in re Reexamination of
`Patent No. 7,039,033, Serial No. 90/013,925
`
`2006
`
`Hearing Transcript, IXI Mobile (R&D) Ltd., et al. v. Samsung Elecs.
`Co., Ltd., et al., No. C-15-3752-HSG and IXI Mobile (R&D) Ltd., et al.
`v. Apple, Inc., No. C-15-3755-HSG (N.D. Cal. Feb. 21, 2019).
`
` vi
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`

`

`
`
`I.
`
`INTRODUCTION
`
`Disposition of this petition is straightforward. Apple’s petition is simply
`
`filed far too late. Apple’s rights under 35 U.S.C. § 315(b) to petition for inter
`
`partes review of U.S. Patent No. 7,039,033 (the “’033 Patent” or “Patent”) expired
`
`over three years ago. That stark fact is more than enough to doom the petition.
`
`Apple’s petition, one of six filed simultaneously on November 8, 2018,1
`
`came literally years after Apple filed its first petition challenging the Patent—
`
`IPR2015-01444 (the “01444 IPR”), on June 29, 2015—and more importantly,
`
`years after Apple was served with a complaint alleging infringement of the Patent,
`
`on October 2, 2014. See Exhibit 2003 [Affidavit of Service]. By operation of
`
`§ 315(b), because the Petition was filed more than one year after service of a
`
`complaint alleging infringement of the ’033 Patent, the Director and the Board do
`
`not have jurisdiction to institute review.
`
`Apple argues that because some claims of the ’033 Patent are “new,” in that
`
`they were properly issued in subsequent reexamination, Apple’s § 315(b) time bar
`
`attaching to the Patent simply does not apply to those claims. Apple is simply
`
`wrong. And it is not the first or even the second untimely challenger to advance
`
`
`1 Apple’s six new petitions against the Patent, including this one, are
`
`numbered IPR2019-00124, 00125, 00139, 00140, 00141, and 00181.
`
` 1
`
`

`

`
`
`this unmeritorious argument. The Federal Circuit recently considered this very
`
`argument and squarely rejected it. In Click-To-Call Techs, LP v. Ingenio, Inc., 899
`
`F.3d 1321 (Fed. Cir. 2018), pet. for cert. filed sub nom. Dex Media, Inc. v. Click-
`
`To-Call Techs., LP (U.S. Jan. 11, 2019) (No. 18-916), the Court considered an
`
`argument by several IPR petitioners that the § 315(b) bar did not apply to their
`
`petition because the claims they challenged were “new” claims “materially
`
`changed during a subsequent ex parte reexamination” compared to the claims
`
`previously in the patent; the reexamined patent therefore “should be treated as a
`
`new patent for purposes of 315(b)”; and “neither they nor any other entity was
`
`served with a complaint alleging infringement of this patent more than one year
`
`before the IPR petition was filed.” Id., 1325, 1336 (emphasis in original). The
`
`Court rejected this attempt to fashion an atextual exception to the time bar, in no
`
`uncertain terms:
`
`Petitioners are mistaken. Unlike reissue, reexamination does not
`
`result in the surrender of the original patent and the issuance of a new
`
`patent. . . . . Petitioners’ emphasis on alleged differences in claim
`
`scope [as a result of the reexamination] misunderstands that § 315(b)
`
`does not speak in terms of claims. Instead, the provision asks on
`
`what date the petitioner, real party in interest, or privy of the petitioner
`
`“is served with a complaint alleging infringement of the patent,”
`
`making clear that the timeliness analysis is to be made with reference
`
`to “the patent.” The Director agrees with this conclusion.
`
` 2
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`

`

`
`
`Id., 1336-37 (emphases added; citations and paragraph break omitted); see also
`
`§ II.B., infra. As the quote above expressly notes, not only has the Federal Circuit
`
`already rejected the argument Apple is making here, so too has the Director—the
`
`very person responsible for deciding whether to deny Apple’s petition here.
`
`Faced with this unambiguous Federal Circuit ruling, Apple mischaracterizes
`
`it. Apple incorrectly suggests that the Federal Circuit, far from reaching the
`
`holding just set forth above, “did not resolve, or purport to resolve, this issue for all
`
`reexaminations.” Pet. 9. Instead, says Apple, the Court in Click-To-Call
`
`supposedly left it “to the discretion of the Board” to determine “on a case-by-case
`
`basis,” for all reexamined patents petitioned for IPR, whether “new claims”
`
`obtained during reexamination “should be considered part of the same ‘patent’” for
`
`§ 315(b) time-bar purposes, by “consider[ing] whether [the] reexamined claims are
`
`substantively different than [the] original claims.” Pet. 6-8. Apple argues that the
`
`Click-To-Call Court “did not hold that § 315(b) was unambiguous” as to
`
`reexamined patents with new claims, that the statute supposedly is ambiguous, and
`
`that the Board therefore has discretion to engage in a case-by-case analysis under
`
`Chevron, U.S.A., Inc. v. NRDC, Inc., 467 U.S. 837, 843 (1984), to determine
`
`whether a reexamination certificate issues claims that are sufficiently new so as to
`
`create a new, different patent. Pet. 8-9.
`
` 3
`
`

`

`
`
`Apple’s view of the law is demonstrably wrong for multiple reasons. First,
`
`contrary to Apple’s mischaracterization, the Federal Circuit determined in Click-
`
`To-Call that Congress’s language is not ambiguous, and that a reexamination
`
`certificate does not affect the § 315(b) bar. Click-To-Call, 899 F.3d, 1337
`
`(“Congress could have included in any of 35 U.S.C. §§ 252, 307(b), or 315(b)
`
`language regarding the effect of reexamination on the deadline to file an IPR—it
`
`chose not to do so.”) (emphasis added). See § II.B, infra. And even if Click-To-
`
`Call had held that “material” differences in the reexamined claims could nullify the
`
`time bar, Apple previously told the Director these differences were “trivial,” not
`
`“material.” See § II.C, infra. Even if, counterfactually, the Federal Circuit had
`
`found that § 315(b) were ambiguous, the Federal Circuit has repeatedly held that
`
`notwithstanding any such ambiguity, a reexamined patent, unlike a reissued patent,
`
`does not create a new patent because, inter alia, claims issued under reexamination
`
`are by statute required to be narrower than the original claims. See § II.D, infra.
`
`For the same reason, Apple’s reliance on statutes and cases governing reissued (as
`
`opposed to reexamined) patents is misplaced, and such reliance has already been
`
`rejected by the Federal Circuit. See § II.E, infra.
`
`Recognizing the shaky ground—to say the least—on which it is standing,
`
`Apple also resorts to six accompanying motions for “joinder and/or consolidation,”
`
`seeking to “join” or somehow attach its six late petitions to Apple’s own long-ago,
`
` 4
`
`

`

`
`
`entirely completed 01444 IPR. As explained in Patent Owner’s oppositions to
`
`these motions, however, Apple’s request for “joinder and/or consolidation” is
`
`nonsensical: the 01444 IPR ended literally years ago, has been affirmed on appeal,
`
`and already has an issued inter partes review certificate—there is literally no
`
`longer any pending case with which to “join” or “consolidate” these petitions.
`
`Paper 9, 3-9. And even if there were, the fact that Apple has filed an
`
`accompanying motion for “joinder and/or consolidation” cannot exempt the
`
`petition from the § 315(b) time bar. See § II.F, infra. Apple’s resort to these
`
`unprecedented “joinder” requests speaks volumes about the utter implausibility of
`
`Apple’s entire attempt to push the square pegs of its untimely petitions into the
`
`round holes of the IPR rules.
`
`Even if the Director, or the Board as his delegate, did have jurisdiction to
`
`consider whether to institute the Petition, he should still decline institution under
`
`§ 325(d). See § III, infra. All of Apple’s primary references, and references
`
`cumulative of Apple’s secondary references, have already been considered by the
`
`Office during the reexamination of the Patent, and the challenged claims were
`
`allowed over those references just months before the filing of the instant Petition.
`
`For example, the sole independent claim under review, claim 101, recites a
`
`“network management component including a disconnect terminal function that
`
`forces a disconnection from a specific terminal.” In the Petition Apple relies on
`
` 5
`
`

`

`
`
`the Marchand and JINI references for this limitation. In the recent reexamination,
`
`however, the CRU examiners expressly determined that Marchand, Nurmann,
`
`Vilander and JINI do not disclose “a network management component including a
`
`disconnect terminal function that forces a disconnection from a specific terminal.”
`
`Apple’s Petition essentially seeks a reexamination of a reexamination that was just
`
`conducted—to reconsider the decision of the Office with regard to the same
`
`limitation and all but the same art. The Director should decline to do so under
`
`§ 325(d). See, e.g., Fox Factory, Inc. v. SRAM, LLC, IPR2017-01439, Paper 7, 8
`
`(PTAB Dec. 9, 2017) (“The similarity of the grounds in this proceeding and the
`
`’831 Reexamination, coupled with the fact that JP-Shimano has already been
`
`considered in the ’744 Reexamination, indicates that it would be an inefficient use
`
`the Office’s resources to consider essentially the same ground again.”).
`
`The reason Apple brought these IPRs so late is simple: it was part of a
`
`fruitless attempt to prolong a stay, already years in duration, of the collateral
`
`infringement litigation between Patent Owner and Apple involving the ’033 Patent.
`
`Significantly, the district court has already rejected Apple’s improper tactics, and
`
`recently announced that he was lifting the stay of the infringement case
`
`notwithstanding these late IPR petitions. As Judge Gilliam put it when he made
`
`this announcement a few days ago:
`
` 6
`
`

`

`
`
`I think the plaintiffs [i.e., Patent Owner] summed it up very well when
`
`they said enough is enough.
`
`Exhibit 2006 [Feb. 21, 2019 hearing transcript], 4:1-4.
`
`To sum up again: Apple’s Petition is years late, is barred as a matter of law
`
`(law that it badly misstates), is inconsistent with Apple’s prior representations, and
`
`retreads subject matter the Office recently carefully considered. Enough is enough.
`
`II.
`
`THE PETITION IS TIME BARRED UNDER 35 U.S.C. § 315(b).
`
`To start with, the Petition must be denied as a matter of law because it was
`
`“filed more than 1 year after the date on which the petitioner, real party in interest,
`
`or privy of the petitioner [wa]s served with a complaint alleging infringement of
`
`the patent.” 35 U.S.C. § 315(b). Apple does not dispute that its Petition was filed
`
`more than one year after the service of the Complaint alleging infringement of the
`
`’033 Patent; nor could it, for the Petition was filed more than four years after that
`
`date. See § II.A, infra. Apple argues that the reexamination created a “new
`
`patent” because “[t]he issuance of these new, materially-different claims [in that
`
`reexamination] transforms the ’033 Patent into an entirely new and different patent
`
`for [§ 315(b)] time-bar purposes, thus making Apple’s petition timely.” Pet. 6-9,
`
`17-18. However, the Federal Circuit has unambiguously held that a reexamination
`
`certificate, unlike a reissued Patent, does not create a new patent and cannot affect
`
`the § 315(b) time-bar. See § II.B, infra. And Apple’s assertion that these claim
`
` 7
`
`

`

`
`
`differences are “material” is flatly inconsistent with its previous representations to
`
`the Director in the same reexamination of the same patent that the same differences
`
`between the same claims are “trivial.” See § II.C, infra. And even if § 315(b)
`
`were ambiguous, institution should be denied under the Chevron analysis Apple
`
`proposes. See §§ II.D-E, infra. Finally, Apple’s alternative argument that the
`
`petition is timely by virtue of its “concurrently filed [motion] for joinder”—an
`
`unprecedented attempt to extend an alleged time bar exception that may soon be
`
`repudiated—amounts to nothing more than a tacit admission that the petition is
`
`untimely under existing precedent. See § II.F, infra.
`
`A. The Office Lacks Jurisdiction Because The Petition Was Filed
`Over Three Years After The § 315(b) Bar Expired.
`
`Section 315(b) bars the institution of petitions brought more than 1 year after
`
`the petitioner is served with a complaint alleging infringement of “the patent”:
`
`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, real party in interest, or privy of the petitioner is served
`
`with a complaint alleging infringement of the patent.
`
`35 U.S.C. § 315(b) (emphases added). Here, Apple was served with the complaint
`
`alleging infringement of the Patent on October 2, 2014. Exhibit 2003 [Affidavit of
`
`Service]; Pet. 3 (“IXI initiated suit against Apple in October 2014”). Apple filed
`
`the instant Petition for inter partes review of the Patent on November 8, 2018,
`
` 8
`
`

`

`
`
`more than four years after service of the complaint. Because this Petition was filed
`
`more than one year after the service of the complaint alleging infringement of the
`
`Patent, § 315(b) dictates that the Petition at hand cannot be instituted.
`
`Notably, this limit on the Office’s authority to institute the instant Petition is
`
`jurisdictional. Thus, even if the Director were to institute review, and even if the
`
`Board did issue a final written decision adverse to Patent Owner, the final written
`
`decision would be nullified by the Federal Circuit because the Office would have
`
`acted outside of its jurisdictional limits. See Click-To-Call, 899 F.3d, 1325
`
`(“Because the subject petition was time-barred [under 35 U.S.C. § 315 (b)], the
`
`Board lacked jurisdiction to institute the IPR proceedings. Accordingly, we
`
`vacate the Board’s Final Written Decision … and remand with instructions to
`
`dismiss IPR2013-00312.”) (emphasis added).
`
`Apple’s arguments that it is exempt from this jurisdictional limit are contrary
`
`to settled law, and have already been rejected by the Federal Circuit, the Director,
`
`and the Board acting on the Director’s behalf, as the following sections explain.
`
`B.
`
`Issuance Of A Reexamination Certificate Does Not Nullify The
`One Year Filing Limitation Under 35 U.S.C. § 315(b).
`
`Apple contends that the § 315(b) bar date does not apply here because, “for
`
`purposes of determining whether Apple is barred from seeking IPR of these claims,
`
`the Board should treat th[e] [’033 Patent’s] reexamination certificate as creating a
`
`new, materially-different patent.” Pet. 6. The statute and rules set forth no such
`
` 9
`
`

`

`
`
`exception to § 315(b), and the Federal Circuit has unambiguously held that a
`
`reexamination certificate does not nullify the § 315(b) bar. What is more, the
`
`Director of the Office expressly agrees. See Click-To-Call, 899 F.3d, 1336-37.
`
`1.
`
`The Federal Circuit Has Held that New Claims In
`Reexamination Do Not Create A New Patent Under § 315(b).
`
`In Click-To-Call, the very same argument Apple raises here was considered
`
`and rejected by the Federal Circuit. The Court held “that the Board committed
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`legal error in rendering its § 315(b) determination” in finding that § 315(b) did not
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`bar IPR of the “new” claims added in reexamination of the challenged patent. 899
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`F.3d, 1325.
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`The Court considered the following argument that a reexamination exception
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`to § 315(b) should be found to apply:
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`Petitioners first contend that, because the claims of the ’836 patent
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`were materially changed during a subsequent ex parte reexamination,
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`neither they nor any other entity was served with a complaint alleging
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`infringement of this patent more than one year before the IPR petition
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`was filed. In particular, they claim that, “[b]ecause each claim of the
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`reexamined patent substantively differs from the claims of the original
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`patent, the reexamined ’836 patent should be treated as a new patent
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`for purposes of § 315(b).”
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`Click-To-Call, 899 F.3d, 1336.
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`The Court addressed this argument and squarely rejected it. “Petitioners are
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`mistaken.” Id. “Unlike reissue, reexamination does not result in the surrender of
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`the original patent and the issuance of a new patent.” Id. (citing Aspex Eyewear,
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`Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1341-42 (Fed. Cir. 2012)); cf. Senju
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`Pharm. Co. v. Apotex Inc., 746 F.3d 1344, 1352 (Fed. Cir. 2014) (“[A] so-called
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`‘reexamined patent’ is the original patent; it has just been examined another time
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`as indicated in its reexamination certificate.”). The Court went on that the § 315(b)
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`bar applies with respect to a reexamined patent irrespective of whether there may
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`be individual “new claims” with “alleged differences in claim scope” from the pre-
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`reexamination claims:
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`Petitioners’ emphasis on alleged differences
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`in claim scope
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`misunderstands that § 315(b) does not speak in terms of claims.
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`Instead, the provision asks on what date the petitioner, real party in
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`interest, or privy of the petitioner “is served with a complaint alleging
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`infringement of the patent,” making clear that the timeliness analysis
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`is to be made with reference to “the patent.” The Director agrees
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`with this conclusion.
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`Id., 1337 (emphases added). “For these reasons,” the Court said, “we reject
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`Petitioners’ effort to deem the reexamined ’836 patent a ‘new patent’ for § 315(b)
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`purposes.” Id.2
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`2 When Apple recently raised the same argument in district court, arguing
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`that the reexam somehow created a new patent, Judge Gilliam disagreed, noting:
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`Apple tries to reframe the Click-To-Call Court’s consideration of the issues
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`here as “ancillary,” based on inadequate briefing, and “not resolv[ing], or
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`purport[ing] to resolve,” them except for the facts of that case alone. Pet. 7-9.
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`Contrary to Apple’s suggestions, Click-To-Call’s holdings were not only
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`unambiguous, they were the product of long and careful consideration. After the
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`initial decision by the Click-To-Call three-judge panel, a petition for rehearing en
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`banc was filed, supplemental briefing and authorities were submitted, and the
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`petition for rehearing was then “granted” and “construed as a petition for panel
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`rehearing.” 899 F.3d, 1327-28. The Court then authorized and received still more
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`“supplemental briefing regarding the merits of the Board’s compliance with
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`§ 315(b)” from all parties “and the Director, as Intervenor.” Id., 1328. And on
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`rehearing, the Court’s § 315(b) rulings were not just the work of the three-judge
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`panel. The en banc Court took a hand in the § 315(b) issues and held, overruling
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`several prior panel decisions to the contrary, that the § 315(b) bar is not affected by
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`the voluntary dismissal without prejudice of the barring complaint. 899 F.3d, 1328
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`n.3. The en banc Court left the § 315(b) issues that did not require the overruling
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`THE COURT: That wasn’t inappropriate, was it? They [(i.e., Patent
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`Owner)] took advantage of the system that is available to them.
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`Exhibit 2006, 6:21-22.
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`of pre-existing panel precedents for the three-judge panel to decide—including its
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`ruling that the § 315(b) bar is not changed by reexamination. 899 F.3d, 1336-37.
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`In sum, the Court’s careful and extended consideration of the time bar, and the
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`involvement of the en banc Court, belie Apple’s insinuation that Click-To-Call’s
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`holding on reexamination and the time bar was “ancillary,” the subject of
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`inadequate briefing, or given short shrift by the Court.
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`2.
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`The Director Agrees That Reexamination Does Not Reset
`§315(b).
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`The Click-To-Call Court’s observation that “the Director agrees” with its
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`holding, 899 F.3d, 1336, likewise belies Apple’s insinuations.
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`As the Court noted, the Director intervened in Click-To-Call specifically to
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`address § 315(b) bar issues, and on this issue the Director made clear that the
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`Office did not “believ[e] an intervening reexamination tolls the § 315(b) time bar”
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`as the petitioners in the case argued. 2nd Supp. Br. of Intervenor—Director of
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`USPTO, 10 n.3, Click-To-Call, No. 15-2242 (Mar. 5, 2018) (internal quotation
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`marks omitted). “Nor does the USPTO agree . . . that a reexamined patent is a
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`different patent.” Id. Thus, the Director “agrees with” the Court that adding new
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`claims in reexamination does not change the § 315(b) date. Click-To-Call, 899
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`F.3d, 1336.
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`To institute the present Petition would therefore contravene not only Federal
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`Circuit law, but the considered view on the subject of the Director. Generally,
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`“any directive by an agency head must be followed by agency employees.” Splane
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`v. West, 216 F.3d 1058, 1064 (Fed. Cir. 2000). And here the Board is acting not
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`just on behalf of the agency, but as a delegate of the power granted to the Director
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`by Congress. The Board can hardly rule here in direct contravention of the
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`Director’s considered views on the same subject, proffered less than a year ago.
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`Indeed, even if the Federal Circuit had not yet enshrined it into law, the Director’s
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`“considered position” would be “entitled to deference” in court. Abbott Labs. v.
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`United States, 573 F.3d 1327, 1333 (Fed. Cir. 2009).
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`3.
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`The Board Also Agrees That Reexamination Does Not Reset
`§315(b).
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`Not only does the Director agree with the Federal Circuit, so does the Board.
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`In Biodelivery SI v. MonoSol Rx, IPR2013-00315, Paper 31 (PTAB Nov. 13,
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`2013), the Board, on behalf of the Director, considered the argument now being
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`raised by Apple here, and, just like the Director and Federal Circuit in Click-To-
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`Call, rejected it. The Board explained:
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`We must decide whether 35 U.S.C. § 315(b) bars a petition filed more
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`than one year after a complaint alleging infringement was served on
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`the petitioner, even when the petition challenges claims amended by a
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`reexamination certificate issued after service of the compl