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 RESPONSIVE 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.
`
`MPH TECHNOLOGIES OY,
`Patent Owner.
`____________
`
`Case IPR2019-00820
`Patent 7,937,581 B2
`____________
`
`PATENT OWNER MPH TECHNOLOGIES OY’S RESPONSIVE 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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`I.
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`INTRODUCTION
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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 responsive brief on remand
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`addressing the legal effect of its statutory disclaimer of claim 4 of the ’581 patent.
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`II. DISCUSSION
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`Apple’s opening brief argues that MPH’s statutory disclaimer should be
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`construed as a request for adverse judgment under 37 C.F.R. § 42.73(b), but fails to
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`address the regulation’s express requirement that the disclaimer must occur “during
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`a proceeding” at the Board. See, generally, Paper 51, Apple’s Brief. For purposes of
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`Section 42.73(b), “[p]roceeding means a trial or preliminary proceeding.” See 37
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`C.F.R. § 42.2. MPH’s disclaimer of claim 4 of the ’581 patent admittedly did not
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`occur “during a proceeding”—i.e. during a trial or preliminary proceeding—at the
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`Board. Instead, it occurred during the Federal Circuit appeal, that is, after the Board
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`was divested of jurisdiction and before the Federal Circuit released jurisdiction of
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`the remanded case back to the Board.
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`Specifically, the Board was divested of jurisdiction in the proceeding on
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`November 23, 2020, when Apple filed its Notice of Appeal. Paper 38, Pet. Not. of
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`Appeal; See 37 C.F.R. § 41.35(b)(2) (“The jurisdiction of the Board ends when …
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`[t]he Board enters a final decision (see § 41.2) and judicial review is sought…”);
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`Smart Microwave Sensor Gmbh v. Wavetronix LLC, No. IPR2016-00488, Paper No.
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`1
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`Case IPR2019-00820
`Patent 7,937,581 B2
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`59 at 3. (PTAB Aug. 24, 2017) (“The general rule is that the Board is divested of
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`jurisdiction when either party files a notice of appeal to the Federal Circuit.”).
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`Events that occur after the Board is divested of jurisdiction, including during
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`pendency of an appeal to the Federal Circuit, are not “during a proceeding.” Emerson
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`Electric Co. v. SIPCO, LLC, No. IPR2016-00984, Paper No. 52 at 25-26 (PTAB Jan.
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`24, 2020) (“[W]e determine that the Certificate [of Correction], which issued after
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`the Final Decision and after Patent Owner filed an appeal to the Federal Circuit, has
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`no impact on the Final Decision in this case because it was not in effect during the
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`proceeding.”) (emphasis added). Here, well after Apple filed its Notice of Apple,
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`and before the Federal Circuit issued its mandate returning jurisdiction to the Board
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`on October 18, 2022, MPH statutorily disclaimed claim 4 of the ’581 patent on
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`October 13, 2022. Paper 38, Pet. Not. of Appeal; Ex. 3003 (Statutory Disclaimer);
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`Ex. 2010 (’581 patent USPTO disclaimer filings); Paper 48 (Mandate).
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`Apple does not dispute that MPH’s disclaimer was received by the USPTO in
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`proper form and with the fee on October 13, 2022, and, therefore, was recorded and
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`effective as of October 13, 2022. Ex. 3003 (Statutory Disclaimer); Ex. 2010 (’581
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`patent USPTO disclaimer filings); Vectra Fitness, Inc. v. TNWK Corp., 162 F. 3d
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`1379, 1382 (Fed.Cir. 1998) (finding disclaimer recorded and effective when
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`received by the PTO in proper form and with the fee); 35 U.S.C. § 253(a) (“Such
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`disclaimer shall be in writing, and recorded in the Patent and Trademark Office; and
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`Patent 7,937,581 B2
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`it shall thereafter be considered as part of the original patent…”) (emphasis added).
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`And only after the October 13, 2022 disclaimer did the Federal Circuit’s
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`October 18, 2022 Mandate pass jurisdiction back to the Board. Paper 48 (Mandate);
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`PTAB Standard Operating Procedure 9, p. 1 (“The mandate makes the judgment of
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`the Federal Circuit final and releases jurisdiction of the remanded case to the
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`Board.”). Thus, MPH’s disclaimer of claim 4 of the581 patent occurred during the
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`Federal Circuit appeal, not “during a proceeding” under 37 C.F.R. § 42.73(b), and
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`the Board should deny entry of adverse judgment.
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`Separately, Apple’s opening brief also failed to address that MPH’s disclaimer
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`of claim 4 of the ’581 patent did not result in “no remaining claim in the trial,” as
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`required for adverse judgment under § 42.73(b)(2). For this independent reason,
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`standing alone, the Board should decline to enter adverse judgment against claim 4.
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`In particular, in its September 8, 2022 opinion, the Federal Circuit provided a new
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`claim construction of one term, vacated the Board’s patentability determination for
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`claim 4 of the ’581 patent based on that term, affirmed the Board’s patentability
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`determination that Apple failed to meet its burdens as to claims 6-8 of the ’581 patent
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`based on deficiencies in Apple’s petition, and remanded to the Board for further
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`proceedings. Paper 39, Fed.Cir. decision; Apple Inc. v. MPH Techs. Oy, 2022 WL
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`4103286 (Fed.Cir. Sept. 8, 2022). Thus, claims 6-8 remain in the remanded
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`proceeding until the Director issues an IPR certificate confirming their patentability
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`3
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`Case IPR2019-00820
`Patent 7,937,581 B2
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`under 35 U.S.C. § 318(b). See also 37 C.F.R. § 42.80. For these reasons, “disclaimer
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`of a claim such that the party has no remaining claim in the trial” has not occurred
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`as a result of MPH’s disclaimer of claim 4, and the express requirements of 37 C.F.R.
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`§ 42.73(b)(2) are not met. The Board should decline to enter adverse judgment
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`against claim 4.
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`The non-precedential cases Apple cited are materially distinguishable and do
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`not compel entry of adverse judgment. See Paper 51, Apple’s Brief., p. 2.
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`In Apple Inc. v. Corephotonics Ltd., the patent owner disclaimed claims three
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`months after the Federal Circuit issued its mandate and passed jurisdiction back to
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`the Board, No. IPR2018-01146, 2022 WL 440984, Paper 45, at *1-2 (PTAB Feb.
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`11, 2022), unlike in the present case where MPH disclaimed claim 4 before the
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`Federal Circuit issued its mandate passing jurisdiction back to the Board. Ex. 3003
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`(Statutory Disclaimer); Ex. 2010 (’581 patent USPTO disclaimer filings); Paper 48
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`(Mandate). Thus, the non-precedential Corephotonics decision is inapposite.
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`Apple’s reliance on the non-precedential opinion in Unified Patents, LLC v.
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`Arsus, LLC is also misplaced because, there, the patent owner disclaimed all of the
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`challenged claims, and did so “during a proceeding,” just days after the institution
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`decision. No. IPR2020-00948, Paper 18 at 2 (PTAB Jan. 27, 2021); See Id. at Paper
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`15 (Decision granting Institution) and Paper 17 (Mot. to Dismiss and Disclaimer).
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`Those circumstances are not present here since MPH only disclaimed claim 4, not
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`4
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`Case IPR2019-00820
`Patent 7,937,581 B2
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`all challenged claims (nor all remaining claims), and MPH’s disclaimer occurred
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`during the Federal Circuit appeal, not during a proceeding at the Board.
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`Further, it makes no sense to enter “adverse judgment” against Patent Owner
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`when patentable claims 6-8 remain in the case and this Honorable Board’s decision
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`confirming those claims was affirmed by the Federal Circuit. Those claims were not
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`disclaimed. The only reasonable action is for the Board to issue a trial certificate
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`confirming claims 6-8 in accordance with the Federal Circuit’s Mandate. Such
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`action is most decidedly not an adverse judgment, and the Board should state as
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`much.
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`III. CONCLUSION
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`For the foregoing reasons above and set forth in MPH’s opening brief (Paper
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`52), the Board should decline to enter an adverse judgment on claim 4 of the ’581
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`patent, and should proceed to issue a certificate confirming claims 6-8 that were
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`affirmed by the Federal Circuit.
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`Date: February 21, 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 document was served by
`electronic service on the date signed below:
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`PATENT OWNER MPH TECHNOLOGIES OY’S RESPONSIVE
`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 21, 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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