Case IPR2019-00820
`Patent 7,937,581 B2
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`APPLE INC.,
`Petitioner,
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`v.
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`MPH TECHNOLOGIES OY,
`Patent Owner.
`____________
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`Case IPR2019-00820
`Patent 7,937,581 B2
`____________
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`PATENT OWNER MPH TECHNOLOGIES OY’S
`OPENING BRIEF REGARDING LEGAL EFFECT OF STATUTORY
`DISCLAIMER PURSUANT TO ORDER RE CONDUCT OF
`PROCEEDINGS ON REMAND (PAPER NO. 50)
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`Patent 7,937,581 B2
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`APPLE INC.,
`Petitioner,
`
`v.
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`MPH TECHNOLOGIES OY,
`Patent Owner.
`____________
`
`Case IPR2019-00820
`Patent 7,937,581 B2
`____________
`
`PATENT OWNER MPH TECHNOLOGIES OY’S
`OPENING BRIEF REGARDING LEGAL EFFECT OF STATUTORY
`DISCLAIMER PURSUANT TO ORDER RE CONDUCT OF
`PROCEEDINGS ON REMAND (PAPER NO. 50)
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`
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`Case IPR2019-00820
`Patent 7,937,581 B2
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`Pursuant to the Board’s January 19, 2023, Order, Paper 50, Patent Owner
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`MPH Technologies Oy respectfully submits this opening brief on remand addressing
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`the legal effect of its statutory disclaimer.
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`I.
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`Case Background and Procedural Posture
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`Apple filed the underlying petition in this proceeding in March 2019 after
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`MPH filed its district court complaint in September 20181. The Board conducted a
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`full trial and entered a Final Written Decision (FWD) in September 2020. Paper 37,
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`FWD. In the FWD, the Board found that Apple had shown by a preponderance of
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`the evidence that claims 1–3, 5, and 9 of the ’581 patent are unpatentable, and that
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`Apple had not shown by a preponderance of the evidence that claims 4 and 6–8 of
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`the ’581 patent are unpatentable. Id. Apple appealed the Board’s decision as to
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`claims 4 and 6–8 of the ’581 patent. Paper 38, Pet. Not. Of Appeal.
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`On September 8, 2022, the Federal Circuit provided a new claim construction
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`of one term, vacated the Board’s patentability determination for claim 4 of the ’581
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`patent based on that term, and affirmed the Board’s patentability determination that
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`1 The district court litigation has been stayed pending resolution of the IPR
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`proceedings since April 2019. MPH Techs. Oy v. Apple Inc., Case No. 18-cv-05935-
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`PJH (N.D. Cal.), Dkt. 49. MPH recently filed an unopposed motion to lift the stay,
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`which the district court granted on February 1, 2023. Id. at Dkt. 77.
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`1
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`Case IPR2019-00820
`Patent 7,937,581 B2
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`Apple failed to meet its burdens as to claims 6-8 of the ’581 patent due to a
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`deficiency in Apple’s petition that was not related to any claim construction
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`argument made by the parties before the Board or the Federal Circuit. Paper 39, Fed.
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`Cir. decision; Apple Inc. v. MPH Techs. Oy, 2022 WL 4103286 (Fed. Cir. Sept. 8,
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`2022).2
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`During the Federal Circuit appeal, MPH statutorily disclaimed claim 4 of the
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`’581 patent. This disclaimer took place on October 13, 2022, before the Federal
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`Circuit issued its mandate to the Board on October 18, 2022. Paper 48 (Mandate);
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`Ex. 3003 (Statutory Disclaimer); Ex. 2010 (complete ’581 patent USPTO disclaimer
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`filings dated October 13, 2022). Notably, MPH did not request judgment against
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`itself. Thus, the only remaining task for the Board in this proceeding is to issue a
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`certificate confirming claims 6-8 of the ’581 patent pursuant to the Federal Circuit’s
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`mandate.
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`II. MPH Did Not Request Adverse Judgment, and No Adverse Judgment
`Should be Entered on Claim 4 of the ’581 Patent
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`The Board should decline to enter an adverse judgment as to disclaimed claim
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`4 of the ’581 patent for the reasons set forth below.
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`2 The Federal Circuit consolidated the appeals from this case and IPR2019-
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`00819, so its decision addressed both the ’581 and ’810 patents.
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`2
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`Case IPR2019-00820
`Patent 7,937,581 B2
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`First, MPH’s statutory disclaimer of claim 4 of the ’581 patent cannot be
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`construed as a request for adverse judgment because it did not occur “during a
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`proceeding” at the Board as required by 37 C.F.R. § 42.73(b). Rather, it occurred
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`during the Federal Circuit appeal and before the Federal Circuit issued its mandate
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`and returned jurisdiction to the Board. See 37 C.F.R. § 42.2 (“Proceeding means a
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`trial or preliminary proceeding”). In particular, after the Federal Circuit’s September
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`8, 2022 decision, but before the Federal Circuit issued its mandate to the Board on
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`October 18, 2022, MPH statutorily disclaimed claim 4 of the ’581 patent on October
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`13, 2022. Paper 48 (Mandate); Ex. 3003 (Statutory Disclaimer); Ex. 2010 (’581
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`patent USPTO disclaimer filings). So, MPH’s disclaimer of claim 4 of the ’581
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`patent did not occur “during a proceeding” as required under 37 C.F.R. § 42.73(b).
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`The non-precedential case cited by Apple during the November 18, 2022
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`panel conference is not to the contrary. Ex. 1024, Tr. of 2022-11-18 Hearing, p. 22;
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`Apple Inc. v. Corephotonics Ltd., No. IPR2018-01146, 2022 WL 440984, at *1-2
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`(PTAB Feb. 11, 2022). In Corephotonics, the claims at issue were disclaimed three
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`months after the Federal Circuit issued its mandate and passed jurisdiction back to
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`the Board, 2022 WL 440984, at *1-2, unlike in the present case where disclaimer
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`occurred before the Federal Circuit issued its mandate and passed jurisdiction back
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`to the Board.
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`Second, MPH’s disclaimer of claim 4 of the ’581 patent did not result in “no
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`3
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`Case IPR2019-00820
`Patent 7,937,581 B2
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`remaining claim in the trial” as required for adverse judgment under § 42.73(b)(2).
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`In particular, ’581 patent claims 6-8 remain in the remanded proceeding until the
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`Director issues an IPR certificate confirming their patentability under 35 U.S.C. §
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`318(b). See also 37 CFR § 42.80. So, 37 C.F.R. § 42.73(b)(2) does not apply.
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`Third, during the November 18, 2022 panel conference, Apple erroneously
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`suggested that an adverse judgment could be entered even when only some of the
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`remaining claims are disclaimed, because that would somehow be a “concession of
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`unpatentability [] of the contested subject matter” under § 42.73(b)(3). Ex. 1024, Tr.
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`of 2022-11-18 Hearing, pp. 8, 10, 14-15. However, “the contested subject matter”
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`refers to the entirety of the contested subject matter, not just part, and MPH
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`indisputably did not disclaim all of the contested claims of the ’581 patent.
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`More importantly, a disclaimer of a claim is not a “concession” of
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`unpatentability. Gilead Sciences Inc. v. U.S., 2020 WL 582380, at *21 n.31 (PTAB
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`Feb. 5, 2020) (supporting patent owner’s position that “statutorily dismissed claims
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`are not admissions of unpatentability”). Instead, such claims should be treated as
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`though they never existed as the Federal Circuit has long held. Vectra Fitness, Inc.
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`v. TNWK Corp., 162 F.3d 1379, 1383 (Fed. Cir. 1998); Guinn v. Kopf, 96 F.3d 1419,
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`1422 (Fed. Cir. 1996) (“the patent is viewed as though the disclaimed claims had
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`never existed in the patent.”). Indeed, in notifying the Board of the statutory
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`disclaimer, MPH expressly stated
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`that “Patent Owner
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`is not admitting
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`4
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`Case IPR2019-00820
`Patent 7,937,581 B2
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`unpatentability or requesting adverse judgment.” Paper 43, PO 4th Updated
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`Mandatory Notices at p.1, n.1. Thus, 37 C.F.R. § 42.73(b)(3) is inapplicable.
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` Fourth, even if the requirements of 37 C.F.R. § 42.73(b) were somehow met
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`due to MPH’s disclaimer of claim 4 of the ’581 patent (which they were not), the
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`Board should still decline to enter an adverse judgment. The rule is permissive, not
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`mandatory. Cisco Sys., Inc. v. SecurityProfiling, LLC, IPR2021-01428, Paper No.
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`13 at 7. Entering adverse judgment here would frustrate the policy of 37 C.F.R.
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`42.1(b) and the Federal Circuit’s mandate. Further, the rule is ultra vires, Arthrex,
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`Inc. v. Smith & Nephew, Inc., 880 F.3d 1345, 1351 (Fed. Cir. 2018) (O’Malley,
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`concurring), and contrary to Vectra and Guinn. It would make no sense to enter an
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`“adverse” judgment when claims 6-8 are clearly patentable and should be confirmed.
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`III. Conclusion
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`For the foregoing reasons, the Board should decline to enter an adverse
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`judgment on claim 4 of the ’581 patent, and should proceed to issue a certificate
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`confirming claims 6-8 that were affirmed by the Federal Circuit.
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`Date: February 3, 2023
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`Respectfully submitted,
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`/James t. Carmichael/
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`James T. Carmichael, Reg. No. 45,306
`CARMICHAEL IP, PLLC
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`5
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`Case IPR2019-00820
`Patent 7,937,581 B2
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that the following documents were served
`by electronic service on the date signed below:
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`PATENT OWNER MPH TECHNOLOGIES OY’S
`OPENING BRIEF REGARDING LEGAL EFFECT OF STATUTORY
`DISCLAIMER PURSUANT TO ORDER RE CONDUCT OF
`PROCEEDINGS ON REMAND (PAPER NO. 50)
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`The names and address of the parties being served are as follows:
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`David W. O’Brien
`Andrew S. Ehmke
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`Dated: February 3, 2023
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`david.obrien.ipr@haynesboone.com
`andy.ehmke.ipr@haynesboone.com
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`Respectfully submitted,
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`/James T. Carmichael/
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