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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
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`PETITIONER’S OPENING BRIEF POST-REMAND
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`4886-6210-3374 v.2
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`Petitioner’s Opening Brief Post-Remand
`IPR2019-00820 (Patent No. 7,937,581)
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`TABLE OF CONTENTS
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`Introduction ...................................................................................................... 1
`I.
`Discussion ........................................................................................................ 1
`II.
`III. Conclusion ....................................................................................................... 2
`CERTIFICATE OF SERVICE .............................................................................. 4
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`4886-6210-3374 v.2
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`- i -
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`Petitioner’s Opening Brief Post-Remand
`IPR2019-00820 (Patent No. 7,937,581)
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`I.
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`INTRODUCTION
`This proceeding returns to the Board after appeal, vacatur, and remand based
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`on a claim construction error. The reviewing court vacated the prior “patentability
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`determination” as to claim 4 and remanded to the Board for further proceedings.
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`Apple Inc. v. MPH Techs. Oy, Appeal 2021-1355, slip op., 13, 18 (Sept. 8, 2022).
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`After remand, but before the Board issued its Order of Conduct for this
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`remand proceeding, Patent Owner filed a statutory disclaimer “disclaim[ing] and
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`dedicat[ing] to the public the entirety of claim 4 of the ’581 Patent.” See
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`Exh. 3003. Claim 4 is the sole remaining claim in trial. Entry of adverse
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`judgement is respectfully requested.
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`II. DISCUSSION
`Trial Rules provide specifically that “[c]ancellation or disclaimer of a claim
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`such that the party has no remaining claim in the trial” is an action that is
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`“construed to be a request for adverse judgment.” 37 C.F.R. 42.73(b)(2). Claim 4
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`is the sole remaining claim in trial, and entry of adverse judgement is therefore
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`appropriate.
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`Section 42.73(b) provides that “[a] party may request judgment against itself
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`at any time during a proceeding. Actions construed to be a request for adverse
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`judgment include:
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`4886-6210-3374 v.2
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`- 1 -
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`Petitioner’s Opening Brief Post-Remand
`IPR2019-00820 (Patent No. 7,937,581)
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`(1) Disclaimer of the involved application or patent;
`(2) Cancellation or disclaimer of a claim such that the party has no
`remaining claim in the trial;
`(3) Concession of unpatentability or derivation of the contested subject
`matter; and
`(4) Abandonment of the contest.”
`37 C.F.R. § 42.73(b) (emphasis added).
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`On remand, the sole remaining claim in the trial is claim 4. Patent Owner
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`has disclaimed claim 4. In an analogous procedural and factual posture, the Board
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`entered adverse judgement. Apple Inc. v. Corephotonics Ltd., IPR2018-01146,
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`paper 45 at 4 (PTAB Feb. 11, 2022) (judgment on remand and in view of statutory
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`disclaimer was not precluded by claims whose unpatentability had been decided
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`and for which the Office still needed to issue a trial certificate); see also Unified
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`Patents, LLC v. Arsus, LLC, IPR2020-00948, Paper 18, at 2 (PTAB 2021)
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`(construing statutory disclaimer of all challenged claims as request for adverse
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`judgment), aff’d, Case No. 20211648, 2021 WL 5315423 (Fed. Cir. 2021).
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`III. CONCLUSION
`Petitioner respectfully requests that the Board treat Patent Owner’s statutory
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`disclaimer of the sole remaining claim in trial as request for adverse judgement and
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`enter same.
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`4886-6210-3374 v.2
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`Dated: February 3, 2023
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`Petitioner’s Opening Brief Post-Remand
`IPR2019-00820 (Patent No. 7,937,581)
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`Respectfully submitted,
`/David W. OBrien/
`David W. O’Brien
`Reg. No. 40,107
`Lead Counsel for Petitioner
`HAYNES AND BOONE, LLP
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`4886-6210-3374 v.2
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`Petitioner’s Opening Brief Post-Remand
`IPR2019-00820 (Patent No. 7,937,581)
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`CERTIFICATE OF SERVICE
`The undersigned certifies, in accordance with 37 C.F.R. § 42.6(e), that
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`service was made on the Patent Owner as detailed below.
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`Date of service: February 3, 2023
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`Manner of service: Electronic Service by E-Mail
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`Documents served: Petitioner’s Opening Brief Post-Remand
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`Persons served: James T. Carmichael
`CARMICHAEL IP, PLLC
`8000 Towers Crescent Drive, 13th Floor
`Tysons, VA 22182
`Email: jim@carmichaelip.com
`Email: MPH-IPRs@carmichaelip.com
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`/David W. OBrien/
`David W. O’Brien
`Reg. No. 40,107
`Lead Counsel for Petitioner
`HAYNES AND BOONE, LLP
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`4886-6210-3374 v.2
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