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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 RESPONSIVE BRIEF POST-REMAND
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`Petitioner’s Responsive Brief Post-Remand
`IPR2019-00820 (Patent No. 7,937,581)
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`TABLE OF CONTENTS
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`I.
`II.
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`Introduction ...................................................................................................... 1
`Adverse Judgment Should be Entered on Claim 4 of the ’581 Patent. ........... 2
`1.
`Patent Owner incorrectly imports into 37 C.F.R. § 42.73(b) a
`“during a proceeding” requirement on when a statutory disclaimer
`is filed. ................................................................................................... 2
`Claims 6-8 are no longer part of this IPR proceeding, and are not
`“in the trial” within the meaning of § 42.73(b)(2). ............................... 3
`III. Conclusion ....................................................................................................... 5
`CERTIFICATE OF SERVICE .............................................................................. 6
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`2.
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`- i -
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`I.
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`Petitioner’s Responsive Brief Post-Remand
`IPR2019-00820 (Patent No. 7,937,581)
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`INTRODUCTION
`With Patent Owner’s disclaimer of claim 4, which is the sole remaining
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`claim in this IPR proceeding, Patent Owner has no remaining claim in the trial. As
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`such, entry of adverse judgment should be entered on claim 4 under 37 C.F.R.
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`§ 42.73(b)(2).
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`As explained in detail below, Patent Owner’s arguments that no adverse
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`judgment should be entered on claim 4 are unsupported and should be rejected.
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`Specifically, Patent Owner incorrectly imported an unsupported “during a
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`proceeding” requirement to 37 C.F.R. § 42.73(b). Furthermore, Patent Owner
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`erroneously asserted that claims 6-8 remain in this IPR proceeding until Director’s
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`issuance of an IPR certificate. However, Patent Owner’s erroneous assertion
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`regarding claims 6-8 ignores that the Board made a final judgment regarding
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`claims 6-8, which has not been reversed or vacated, and is contrary to the Board’s
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`decision in IPR2018-01145.
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`Accordingly, Petitioner respectfully request entry of adverse judgment on
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`claim 4.
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`- 1 -
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`Petitioner’s Responsive Brief Post-Remand
`IPR2019-00820 (Patent No. 7,937,581)
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`II. ADVERSE JUDGMENT SHOULD BE ENTERED ON CLAIM 4 OF
`THE ’581 PATENT.
`1.
`Patent Owner incorrectly imports into 37 C.F.R. § 42.73(b) a
`“during a proceeding” requirement on when a statutory
`disclaimer is filed.
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`Patent Owner argues that its statutory disclaimer of claim 4 cannot be
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`construed as a request for adverse judgment under § 42.73(b) because it did not file
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`the statutory disclaimer “during a proceeding,” but instead filed the statutory
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`disclaimer during the Federal Circuit appeal and before the Federal Circuit issued
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`its mandate. PO Opening Brief, 4.
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`However, § 42.73(b) has no such a “during a proceeding” requirement for
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`the Board to construe a statutory disclaimer as a request for adverse judgment.
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`Specifically, the first statement of § 42.73 (b) provides, “[a] party may request
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`judgment against itself at any time during a proceeding.” (emphasis added).
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`This first statement is directed at when a party may request adverse judgment
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`during a proceeding. It does not even mention “statutory disclaimer,” much less
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`impose any requirement on when a statutory disclaimer should be filed for the
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`Board to construe it as a request for adverse judgment. In fact, the first statement
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`of § 42.73 (b) directed at a party requesting judgment against itself is not at issue
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`here, because Patent Owner “did not request judgment against itself.” See PO
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`Opening Brief, 2.
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`- 2 -
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`Petitioner’s Responsive Brief Post-Remand
`IPR2019-00820 (Patent No. 7,937,581)
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`Furthermore, the second statement of § 42.73(b), which lists the actions
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`construed to be a request for adverse judgment, does not have a requirement on
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`when the statutory disclaimer should be filed. Specifically, the second statement
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`of § 42.73(b) provides, “Actions construed to be a request for adverse judgment
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`include:…(2) Cancellation or disclaimer of a claim such that the party has no
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`remaining claim in the trial;….” (emphasis added). Here, Patent Owner’s
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`disclaimer of claim 4 is such that Patent Owner has no remaining in the trial.
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`Regardless of when the disclaimer of claim 4 is filed, it should be construed to be
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`request for adverse judgment.
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`2.
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`Claims 6-8 are no longer part of this IPR proceeding, and are not
`“in the trial” within the meaning of § 42.73(b)(2).
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`Patent Owner incorrectly argued that its disclaimer of claim 4 did not result
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`in “no remaining claim in the trial” as required for adverse judgment under
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`§42.73(b)(2), because “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).” PO Opening Brief, 3-4, citing 37 CFR § 42.80. Based on its incorrect
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`assertion that claims 6-8 remain in the remanded proceeding, Patent Owner further
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`asserted—again incorrectly—that “MPH indisputably did not disclaim all of the
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`contested claims of the ’581 patent,” and that “[i]t would make no sense to enter an
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`- 3 -
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`Petitioner’s Responsive Brief Post-Remand
`IPR2019-00820 (Patent No. 7,937,581)
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`‘adverse’ judgment when claims 6-8 are clearly patentable.” PO Opening Brief, 4
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`and 6.
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`However, claims 6-8 are no longer part of this IPR proceeding, because the
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`Board made a final judgment with regard to these claims and that judgment has not
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`been reversed or vacated. See 37 C.F.R. § 42.2 (“A decision is final only if it
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`disposes of all necessary issues with regard to the party seeking judicial review,
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`and does not indicate that further action is required.”); Paper 49, Fed. Cir.
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`Decision, 18 (The Federal Circuit remanded the Decision as to only claim 4 of the
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`’581 patent). As such, claims 6-8 are not “in the trial” within the meaning of
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`§42.73(b)(2), and patent Owner’s disclaimer of claim 4 means that Patent Owner
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`has no claims remaining in the present proceeding. See Apple Inc. v.
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`Corephotonics Ltd., IPR2018-01146, paper 45 at 4 (PTAB Feb. 11, 2022).
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`Because claims 6-8 are no longer in this proceeding, and in view of the
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`disclaimer of claim 4, Patent Owner has no claims remaining in the trial. As such,
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`adverse judgment on claim 4 should be entered.
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`Petitioner’s Responsive Brief Post-Remand
`IPR2019-00820 (Patent No. 7,937,581)
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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 the trial as request for adverse judgment
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`and enter same.
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`Dated: February 21, 2023
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`Respectfully submitted,
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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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`- 5 -
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`Petitioner’s Responsive 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 21, 2023
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`Manner of service: Electronic Service by E-Mail
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`Documents served: Petitioner’s Responsive 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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`- 6 -
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