`Tel: 571-272-7822
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`Paper 55
`Date: May 11, 2023
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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,
`v.
`MPH TECHNOLOGIES OY,
`Patent Owner.
`
`
`
`IPR2019-00820
`Patent 7,937,581 B2
`__________________________
`
`
`Before KEVIN C. TROCK, JOHN D. HAMANN, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`HAMANN, Administrative Patent Judge.
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`
`
`
`JUDGMENT
`Adverse Judgment on Remand
`37 C.F.R. 42.73(b)
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`IPR2019-00820
`Patent 7,937,581 B2
`
`INTRODUCTION
`I.
`This case returns on remand from the United States Court of Appeals
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`for the Federal Circuit in Apple Inc. v. MPH Techs. OY, Nos. 2021-1355,
`2021-1356, 2022 WL 4103286, at *1 (Fed. Cir. Sept. 8, 2022).1 In our prior
`Final Written Decision in this proceeding, we determined that by a
`preponderance of the evidence Apple Inc. (“Petitioner”) (i) proved that
`claims 1–3, 5, and 9 of U.S. Patent No. 7,937,581 B2 (Ex. 1001, “the ’581
`patent”) are unpatentable, and (ii) did not prove that claims 4 and 6–8 are
`unpatentable. Paper 37 (“FWD”), 68. On Petitioner’s appeal, the Federal
`Circuit held that we erred in our construction of a term, and as a result,
`vacated our judgment of no unpatentability for claim 4 and remanded to the
`Board for further proceedings. Apple, 2022 WL 4103286, at *4–6, 8. In
`addition, the Federal Circuit affirmed our “patentability determination that
`[Petitioner] failed to meet its burden as to claims 6–8 of the ’581 patent.” Id.
`at *8.
` After the Federal Circuit’s decision, and five days before the mandate
`issued, MPH Technologies Oy (“Patent Owner”) filed with the Patent Office
`a statutory disclaimer under 37 C.F.R. § 1.321, which stated that Patent
`Owner “hereby disclaims and dedicates to the public the entirety of claim 4
`of the ’581 Patent.” Ex. 3003, 1; Paper 48 (Mandate).
`A. Related Matters
`The parties identify as related matters: (i) MPH Techs. Oy v. Apple
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`Inc., No. 5:18-cv-05935-PJH (N.D. Cal.); (ii) Apple Inc. v. MPH Techs. Oy,
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`1 The Federal Circuit issued a joint decision, addressing Petitioner’s appeal
`from this proceeding, as well as Petitioner’s appeal from Apple Inc. v. MPH
`Techs. Oy, IPR2019-00819. Apple, 2022 WL 4103286, at *1. On remand,
`we issue separate decisions for these cases for purposes of clarity.
`
`2
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`IPR2019-00820
`Patent 7,937,581 B2
`IPR2019-00819 (PTAB) (involving related U.S. Patent No. 7,620,810 B2);
`(iii) Apple Inc. v. MPH Techs. Oy, Appeal No. 21-1355 (Fed. Cir.); and
`(iv) MPH Techs. Oy v. Apple Inc., Appeal No. 21-1390 (Fed. Cir.).
`Paper 42, 1; Paper 43, 1.
`B. Additional Briefing Post-Remand
`After the remand, we authorized a simultaneous exchange of
`additional briefing for the parties to address the legal effect of the statutory
`disclaimer of claim 4. Paper 50, 6. Pursuant to that authorization, Petitioner
`filed an Opening Brief Post-Remand (Paper 51, “Pet. Rem. Open.”), Patent
`Owner filed an Opening Brief (Paper 52, “PO Rem. Open.”), Petitioner filed
`a Response Brief Post-Remand (Paper 53, “Pet. Rem. Resp.”), and Patent
`Owner filed a Response Brief (Paper 54, “PO Rem. Resp.”).
`II. ANALYSIS
`The parties dispute the legal effect of Patent Owner’s statutory
`
`disclaimer of claim 4. Petitioner argues that we should treat Patent Owner’s
`statutory disclaimer of claim 4 as a “request for adverse judgement and enter
`same.” Pet. Rem. Open. 2. Patent Owner disagrees. See generally PO Rem.
`Open.; PO Rem. Resp.
`
`We agree with Petitioner and determine that Patent Owner requested
`adverse judgment against itself by filing a statutory disclaimer for claim 4.
`Pet. Rem. Open. 2–3. In particular, “[a]ctions construed to be a request for
`adverse judgment include . . . disclaimer of a claim such that the party has
`no remaining claim in the trial.” 37 C.F.R. § 42.73(b). Here, claim 4 was
`the sole remanded claim. Apple, 2022 WL 4103286, at *8 (remanding only
`claim 4 for this proceeding).
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`IPR2019-00820
`Patent 7,937,581 B2
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`We also agree with Petitioner and determine that “claims 6–8 are no
`longer part of this [inter partes review] proceeding, because the Board made
`a final judgment with regard to these claims and that judgment has not been
`reversed or vacated.” Pet. Rem. Resp. 4 (citing 37 C.F.R. § 42.2); see also
`Apple, 2022 WL 4103286, at *8 (affirming as to claims 6–8); 37 C.F.R.
`§ 42.2 (“A decision is final only if it disposes of all necessary issues with
`regard to the party seeking judicial review, and does not indicate that further
`action is required.”). As such, claims 6–8 no longer remain “in the trial,”
`within the meaning of 37 C.F.R. § 42.73(b)(2).
`
`Thus, in light of the disclaimer of claim 4, Patent Owner has no
`remaining claim in the trial. Hence, we view Patent Owner statutorily
`disclaiming claim 4 as a request for adverse judgment. This is consistent
`with how other panels have handled this issue. See Nichia Corp. v.
`Document Security Systems, Inc., IPR2018-01165, Paper 35 at 2–3 (PTAB
`Nov. 18, 2022); Auris Health, Inc. v. Intuitive Surgical Operations Inc.,
`IPR2019-01547, Paper 31 at 2–4 (PTAB July 22, 2022); Foundation
`Medicine, Inc. v. Caris MPI, Inc., IPR2019-00166, Paper 65 at 2–3 (PTAB
`June 15, 2022); Apple Inc. v. Corephotonics Ltd., IPR2018-01146, Paper 45
`at 4 (PTAB Feb. 11, 2022).
`
`We find unavailing Patent Owner’s argument that “claims 6–8 remain
`in the remanded proceeding until the Director issues an IPR certificate
`confirming their patentability under 35 U.S.C. § 318(b).” PO Rem. Open.
`3–4. Section 318(b) states that if the Board issues “a final written decision
`. . . and the time for appeal has expired or any appeal has terminated, the
`Director shall issue and publish a certificate canceling any claim of the
`patent finally determined to be unpatentable, [and] confirming any claim of
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`IPR2019-00820
`Patent 7,937,581 B2
`the patent determined to be patentable.” 35 U.S.C. § 318(b). This language
`does not address when the trial ends, and whether claims on remand remain
`in the trial. Id. Rather, it is directed to when the Director shall issue the
`certificate. Id. Moreover, Patent Owner simply asserts that the language of
`§ 318(b) supports its argument without explaining why. See PO Rem. Open.
`3–4; PO Rem. Resp. 3–4. Our corresponding Rule substantively has the
`same language (except for replacing “the Director shall” with “the Office
`will”), and thus, we view it the same way. See 37 C.F.R. § 42.80.
`We also find unavailing Patent Owner’s argument that the “statutory
`
`disclaimer of claim 4 of the ’581 patent cannot be construed as a request for
`adverse judgment because it did not occur ‘during a proceeding’ at the
`Board as required by 37 C.F.R. § 42.73(b).” PO Rem. Open. 3. Rather, we
`agree with Petitioner that Patent Owner incorrectly conflates the first
`sentence of § 42.73(b) with the second sentence. Pet. Rem. Resp. 2–3. The
`first sentence states that “[a] party may request judgment against itself at any
`time during a proceeding,” which relates to when a party may request
`adverse judgment during a proceeding (i.e., “at any time”). 37 C.F.R.
`§ 42.73(b). The second sentence relates to examples of what should be
`construed as a request for adverse judgment. Id. Notably, the second
`sentence does not include a temporal requirement. Id. Thus, when Patent
`Owner filed the statutory disclaimer of claim 4 here is immaterial.
`
`We also find unavailing Patent Owner’s argument that regardless of
`whether the requirements of 37 C.F.R. § 42.73(b) are met, that the Rule is
`permissive and we should decline to enter an adverse judgment because
`otherwise we “would frustrate the policy of 37 C.F.R. 42.1(b) and the
`Federal Circuit’s mandate.” PO Rem. Open. 5. Patent Owner does not
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`IPR2019-00820
`Patent 7,937,581 B2
`explain how either would be frustrated by an adverse judgment for claim 4.
`Id. Nor do we see how the just, speedy, and inexpensive resolution of this
`proceeding would be frustrated by entering an adverse judgment for claim 4.
`Patent Owner already has “disclaim[ed] and dedicate[d] to the public the
`entirety of claim 4,” which is consistent with entering an adverse judgment
`for claim 4. Ex. 3003, 1.
`
`In addition, we find inapposite Patent Owner’s citing of Judge
`O’Malley’s concurring opinion in Arthrex, Inc. v. Smith & Nephew, Inc., 880
`F.3d 1345 (Fed. Cir. 2018). PO Rem. Open. 5. The portion of the
`discussion that Patent Owner cites to relates to adverse judgments at the
`pre-institution stage, but here the proceeding is post-institution. Id. (citing
`Arthrex, 880 F.3d at 1351).
`
`III. ORDER
`In consideration of the foregoing, it is hereby
`ORDERED that adverse judgment is entered under 37 C.F.R.
`§ 42.73(b) against Patent Owner as to claim 4 of the ’581 patent; and
`FURTHER ORDERED that this proceeding is terminated.
`
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`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
`
`
`Christopher J. Lee
`Richard B. Megley
`Brian E. Haan
`Ashley E. LaValley
`LEE SHEIKH MEGLEY & HAAN LLC
`clee@leesheikh.com
`rmegley@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
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