Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 50
`Entered: January 19, 2023
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`APPLE INC.,
`Petitioner,
`v.
`MPH TECHNOLOGIES OY,
`Patent Owner.
`
`
`
`IPR2019-00819 (Patent 7,620,810 B2)
`IPR2019-00820 (Patent 7,937,581 B2)1
`__________________________
`
`
`Before KEVIN C. TROCK, JOHN D. HAMANN, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`HAMANN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of Proceedings on Remand
`37 C.F.R. § 42.5
`
`
`
`
`
`
`1 The parties are not permitted to use this style unless authorized by the
`Board.
`
`
`Tel: 571-272-7822
`
`Paper 50
`Entered: January 19, 2023
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`APPLE INC.,
`Petitioner,
`v.
`MPH TECHNOLOGIES OY,
`Patent Owner.
`
`
`
`IPR2019-00819 (Patent 7,620,810 B2)
`IPR2019-00820 (Patent 7,937,581 B2)1
`__________________________
`
`
`Before KEVIN C. TROCK, JOHN D. HAMANN, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`HAMANN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of Proceedings on Remand
`37 C.F.R. § 42.5
`
`
`
`
`
`
`1 The parties are not permitted to use this style unless authorized by the
`Board.
`
`
`
`IPR2019-00819 (Patent 7,620,810 B2)
`IPR2019-00820 (Patent 7,937,581 B2)
`BACKGROUND
`I.
`On September 24, 2020, we issued a Final Written Decision in each of
`
`the above identified cases. -819 case and -820 case, Papers 37. For the -819
`case, we found, inter alia, that Petitioner did not show that claims 1–6 of
`U.S. Patent No. 7,620,810 B2 (“the ’810 patent”) were unpatentable. -819
`case, Paper 37, 16–23, 53–54. In particular, we found that Petitioner did not
`show that the cited art teaches “the request message . . . being encrypted,” as
`recited in independent claim 1, and thus also did not show that claims 2–6,
`which depend from claim 1, were taught. Id.
`For the -820 case, we found, inter alia, that Petitioner did not show
`that claims 4 and 6–8 of U.S. Patent No. 7,937,581 B2 (“the ’581 patent”)
`were unpatentable. -820 case, Paper 37, 45–55, 66–67. First, claim 4 recites
`“the request message . . . is encrypted,” and like for the -819 case, we found
`that Petitioner did not show that the cited art teaches this limitation. Id. at
`45–49; -820 case, Ex. 1001, 11:9–10. Second, claims 6–8 depend from
`claim 5. -820 case, Ex. 1001, 11:11–23. The ground that Petitioner set forth
`challenging claim 5 included Ahonen as a reference in the asserted
`combination. -820 case, Paper 2, 4. However, the grounds that Petitioner
`set forth for claims 6–8 did not. Id. We found thus Petitioner’s showing for
`claims 6–8 did not include Ahonen’s alleged teachings directed to the
`limitations of intervening claim 5, and therefore the showing was
`insufficient. -820 case, Paper 37, 49–55, 66–67.
`Petitioner appealed the above findings in our Final Written Decisions
`to the United States Court of Appeals for the Federal Circuit. See -819 case
`and -820 case, Papers 38. On September 8, 2022, the Federal Circuit issued
`
`2
`
`
`
`IPR2019-00819 (Patent 7,620,810 B2)
`IPR2019-00820 (Patent 7,937,581 B2)
`a joint decision covering the -819 and -820 proceedings. -819 case, Paper
`51.
`
`First, the Federal Circuit found that we adopted an erroneous claim
`construction for “encrypted” messages in both of our Final Written
`Decisions, and vacated our patentability determinations for claims 1–6 of the
`’810 patent and claim 4 of the ’581 patent based on the erroneous claim
`construction. Id. at 11–13, 18.
`Second, the Federal Circuit stated that we “properly declined to
`consider Ahonen in Grounds 1 and 3 of the” -820 case, as these grounds did
`not include Ahonen. Id. at 16; see also id. at 14–18. More specifically, the
`Federal Circuit “h[e]ld that the Board properly found that [the Petition]
`failed to demonstrate the unpatentability of dependent claims 6–8 of the ’581
`patent,” and affirmed as to those claims. Id. at 2.
`In sum, the Federal Circuit vacated our patentability determinations
`for claims 1–6 of the ’810 patent and claim 4 of the ’581 patent, and
`remanded to the Board for further proceedings. Id. at 18.
`On October 13, 2022, Patent Owner filed with the Office a statutory
`disclaimer under 37 C.F.R. § 1.321 for each of the challenged patents. As to
`the ’810 patent, Patent Owner stated that it “hereby disclaims and dedicates
`to the public the entirety of claims 1–3 of the ’810 Patent.” -819 case,
`Ex. 3003, 1. As to the ’581 patent, Patent Owner stated that it “hereby
`disclaims and dedicates to the public the entirety of claim 4 of the ’581
`Patent.” -820 case, Ex. 3003, 1.
`On October 18, 2022, the Federal Circuit issued its mandate for these
`cases. -819 case, Paper 50 (Mandate, Apple Inc. v. MPH Technologies OY,
`No. 2021-1355, 2021-1356 (Fed. Cir. Oct. 18, 2022) (No. 46)).
`
`3
`
`
`
`IPR2019-00819 (Patent 7,620,810 B2)
`IPR2019-00820 (Patent 7,937,581 B2)
`
`In accordance with Standard Operating Procedure (“SOP”) 9, the
`parties contacted the Board requesting a call with the panel to discuss the
`remand proceedings. On November 18, 2022, Judges Trock, Hamann, and
`Margolies held this call with the parties. A copy of the transcript of the call
`was filed by Petitioner. -819 case, Ex. 1022. After hearing arguments, we
`directed the parties to file simultaneously their proposals for what
`procedures on remand should govern these cases, including addressing the
`eleven items provided in Appendix 2 of SOP 9. Id. at 25:13–19.
`
`II. ANALYSIS
`Petitioner proposes that we authorize additional briefing that
`addresses the following: (1) “application of the grounds in trial [of the -819
`case] to properly-construed claims 4–6, including the limitations of claims 1
`and 3 from which they depend” and (2) the legal effect of the statutory
`disclaimers. -819 case, Paper 47, 2–3 (footnote omitted); -820 case, Paper
`47, 3. Petitioner argues that it should be allowed to brief and argue the
`implications of the Federal Circuit’s claim construction for an encrypted
`message because otherwise the -819 case could return to the Federal Circuit
`and again be remanded to the Board to address this construction issue. See
`Ex. 1022, 11:16–13:5, 19:10–20:13. In addition, Petitioner argues that the
`statutory disclaimers should be construed as requests for adverse judgment.
`E.g., id. at 6:19–7:1, 9:7–13. Petitioner also proposes that no additional
`evidence should be allowed. -819 case, Paper 47, 3.
`Patent Owner proposes that we authorize no additional briefing or
`evidence. E.g., -819 case, Paper 46, 1; -820 case, Paper 46, 3–4. As to
`construction briefing for the -819 case, Patent Owner argues that as directed
`by the Federal Circuit that we should consider whether Petitioner’s showing
`
`4
`
`
`
`IPR2019-00819 (Patent 7,620,810 B2)
`IPR2019-00820 (Patent 7,937,581 B2)
`for dependent claims 4–6 of the ’810 patent is insufficient because it fails to
`account for the intervening claim limitations of claim 3—Petitioner did not
`include Ahonen for the grounds challenging claims 4–6. See Ex. 1022,
`13:12–24; see also id. at 15:23–16:20 (arguing further that no additional
`briefing as to claim construction issues is needed). Patent Owner adds that
`in light of the statutory disclaimers that we need not consider anything
`further. Id. at 13:12–24, 17:1–7; -819 case, Paper 46, 1–3; -820 case, Paper
`46, 1–3. In addition, Patent Owner disputes that the effect of the statutory
`disclaimers are adverse judgments, and argues that no briefing or evidence is
`appropriate for this issue. -819 case, Paper 46, 3; -820 case, Paper 46, 3–4.
`Having consider the parties’ written proposals and the arguments
`made during our call with the parties, we determine that no additional
`briefing as to issues related to claim construction is warranted at this time.
`As Petitioner acknowledges, the asserted grounds collectively challenging
`dependent claims 4–6 (which depend from claim 3) do not include Ahonen
`despite Petitioner relying on Ahonen’s teachings for the ground challenging
`claim 3. -819 case, Paper 46, 2 n.2; Paper 2, 4. As suggested by the Federal
`Circuit, we have decided to consider this issue on remand because it may be
`dispositive for the remaining challenged claims for the -819 proceeding.
`-819 case, Paper 51, 14 n.4. Authorizing claim construction briefing at this
`time, which may be unnecessary, does not promote efficiency or economy of
`resources. To the extent that the Ahonen-related issue is found to not be
`dispositive, we can reconsider at that time whether additional briefing for
`issues related to claim construction is warranted.
`
`We authorize additional briefing as to the legal effect of the statutory
`disclaimers that Patent Owner filed for the patents challenged in these cases.
`
`5
`
`
`
`IPR2019-00819 (Patent 7,620,810 B2)
`IPR2019-00820 (Patent 7,937,581 B2)
`The disclaimers were filed after the previous briefing cycle, and thus, this
`issue has not been briefed fully by the parties. We find that additional
`evidence or oral argument is not warranted for this issue.
`
`III. ORDER
`In consideration of the foregoing, it is hereby:
`
`ORDERED that the parties may submit 5-page opening briefs on
`
`remand in each case addressing the legal effect of the statutory disclaimers
`no later than fifteen days from the date of this Order; and
`
`FURTHER ORDERED that the parties may submit 5-page responsive
`briefs on remand in each case due no later than thirty days from the date of
`this Order.
`
`
`
`
`
`
`6
`
`
`
`IPR2019-00819 (Patent 7,620,810 B2)
`IPR2019-00820 (Patent 7,937,581 B2)
`PETITIONER:
`
`David W. O’Brien
`Andrew S. Ehmke
`HAYNES AND BOONE, LLP
`david.obrien.ipr@haynesboone.com
`andy.ehmke.ipr@haynesboone.com
`
`
`PATENT OWNER:
`
`James T. Carmichael
`Stephen Schreiner
`CARMICHAEL IP LAW, PLLC
`jim@carmichaelip.com
`schreiner@carmichaelip.com
`
`Rich Megley
`Christopher J. Lee
`Brian E. Haan
`Ashley E. LaValley
`LEE SHEIKH MEGLEY & HAAN LLC
`megley@leesheikh.com
`clee@leesheikh.com
`bhaan@leesheikh.com
`alavalley@leesheikh.com
`
`Kenneth J. Weatherwax
`Patrick Maloney
`Jason C. Linger
`LOWENSTEIN & WEATHERWAX LLP
`weatherwax@lowensteinweatherwax.com
`maloney@lowensteinweatherwax.com
`linger@lowensteinweatherwax.com
`
`
`7
`
`
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