Case IPR2019-00820
`Patent 7,937,581
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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
`U.S. Patent No. 7,937,581
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`PATENT OWNER’S REQUEST FOR DIRECTOR REVIEW OF
`ADVERSE JUDGMENT ON REMAND
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`Patent 7,937,581
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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
`U.S. Patent No. 7,937,581
`____________
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`PATENT OWNER’S REQUEST FOR DIRECTOR REVIEW OF
`ADVERSE JUDGMENT ON REMAND
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`Case IPR2019-00820
`Patent 7,937,581
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`I.
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`Introduction
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`In a case of first impression, Patent Owner MPH Technologies Oy (“MPH”)
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`respectfully requests Director review of the Board’s May 11, 2023, Adverse
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`Judgment on Remand. Paper 55. Specifically, Patent Owner requests review of the
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`panel’s determination that Patent Owner’s statutory disclaimer of claim 4 under 37
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`C.F.R. § 1.321 constituted a request for adverse judgment under 37 C.F.R. §
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`42.73(b) and entry of the same.
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`Respectfully, as explained further below, the panel erred because it
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`incorrectly divorced 37 C.F.R. § 42.73(b)’s requirement that the request for
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`adverse judgment be made “during a proceeding” from the actions construed to be
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`a request for adverse judgment. Thus, Patent Owner requests that the Director
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`grant review and vacate the Board’s Adverse Judgment on Remand.
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`II.
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`In a case of first impression, the Board erred in determining that
`actions construed as a request for adverse judgment need not be made
`“during a proceeding.”
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`Title 37, Section 42.73(b) of the Code of Federal Regulations
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`unambiguously states:
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`(b) Request for adverse judgment. A party may request judgment against
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`itself at any time during a proceeding. Actions construed to be a request for
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`adverse judgment include:
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`(1) Disclaimer of the involved application or patent;
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`2
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`Case IPR2019-00820
`Patent 7,937,581
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`(2) Cancellation or disclaimer of a claim such that the party has no
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`remaining claim in the trial;
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`(3) Concession of unpatentability or derivation of the contested
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`subject matter; and
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`(4) Abandonment of the contest.
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`Plainly read, the first sentence of 37 C.F.R. § 42.73(b) explicitly requires that a
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`request for adverse judgment be made “during a proceeding” while the second
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`sentence further enumerates examples of actions that may be construed as such.
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`Under the explicit language, because the first sentence sets forth the requirements
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`for a “request” for adverse judgment whereas the second sentence merely provides
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`examples of actions that may be construed as such a “request,” the actions
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`enumerated by the second sentence must meet the requirements set forth by the
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`first sentence, including that the “request” be made “during a proceeding.” 37
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`C.F.R. § 42.73(b). Indeed, the panel itself adopts this reading of 37 C.F.R. §
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`42.73(b): “The first sentence states that ‘[a] party may request judgment against
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`itself at any time during a proceeding,’ which relates to when a party may request
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`adverse judgment during a proceeding (i.e., ‘at any time [during a proceeding]’).
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`The second sentence relates to examples of what should be construed as a request
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`for adverse judgment.” Paper 55, 5 (internal citations omitted).
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`3
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`Case IPR2019-00820
`Patent 7,937,581
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`Despite its apparent agreement with the logical interpretation of this clear
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`and unambiguous language, the panel incorrectly concluded that such a reading
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`“conflates the first sentence of § 42.73(b) with the second sentence [because] the
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`second sentence does not include a temporal requirement.” Paper 55, 5. But the
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`fact that the second sentence does not restate the temporal requirement is irrelevant
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`to whether actions construed to be a request for adverse judgment must be made
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`“during a proceeding,” because that requirement is explicitly set forth by the first
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`sentence.1 Even the panel agrees that the second sentence merely sets forth a list of
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`examples of actions that could be construed to be a request for adverse judgment,
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`so long as the request meets the requirements provided by the first sentence.
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`1 The cases cited by the panel, including Nichia Corp. v. Document Security
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`Systems, Inc., IPR2018-01165, Paper 35 at 2–3 (PTAB Nov. 18, 2022); Auris
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`Health, Inc. v. Intuitive Surgical Operations Inc., IPR2019-01547, Paper 31 at 2–4
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`(PTAB July 22, 2022); Foundation Medicine, Inc. v. Caris MPI, Inc., IPR2019-
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`00166, Paper 65 at 2–3 (PTAB June 15, 2022); and Apple Inc. v. Corephotonics
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`Ltd., IPR2018-01146, Paper 45 at 4 (PTAB Feb. 11, 2022) are inapposite because
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`the disclaimers in each case were made after the Federal Circuit returned
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`jurisdiction to the Board (i.e., while a proceeding was pending before the Office).
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`Paper 55, 4.
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`4
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`Case IPR2019-00820
`Patent 7,937,581
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`Indeed, if the second sentence provided an independent basis for determining
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`whether actions may be construed as a request for adverse judgment (rather than
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`examples of actions that may qualify as a request for adverse judgment under the
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`first sentence) as the panel suggests, disclaiming claims at any time regardless of
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`whether a proceeding exists or not—including disclaimers made prior to the filing
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`of an IPR petition—would constitute a request for adverse judgment. But such a
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`view of § 42.73(b) is plainly contradicted by the weight of authority, which has
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`never recognized that a disclaimer made without a proceeding may be interpreted
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`as a request for adverse judgment. See Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed.
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`Cir. 1996) (“the patent is viewed as though the disclaimed claims had never existed
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`in the patent.”); Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1383 (Fed.
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`Cir. 1998); and 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”).
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`Here, there is no dispute that Patent Owner disclaimed claim 4 at a time
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`when no proceeding existed before the Office. While Petitioner argued § 42.73(b)
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`does not require disclaimers be made “during a proceeding,” Petitioner did not
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`challenge Patent Owner’s assertion that its disclaimer was not made during a
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`proceeding. Paper 53 (Petitioner’s Responsive Brief), 2-3. As explained by Patent
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`Owner’s brief at 2, “MPH[‘s statutory disclaimer of ] claim 4 of the ’581 patent[]
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`5
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`Case IPR2019-00820
`Patent 7,937,581
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`took place on October 13, 2022, before the Federal Circuit issued its mandate to
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`the Board on October 18, 2022.” Paper 52, 2. MPH’s disclaimer could not have
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`been “during a proceeding”—i.e. during a trial or preliminary proceeding—at the
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`Board because it occurred during the Federal Circuit appeal, that is, after the Board
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`was divested of jurisdiction on November 23, 2020 (when Apple filed its Notice of
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`Appeal) and before the Federal Circuit released jurisdiction of the remanded case
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`back to the Board. See 37 C.F.R. § 41.35(b)(2) (“The jurisdiction of the Board ends
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`when … [t]he Board enters a final decision (see § 41.2) and judicial review is
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`sought…”); Smart Microwave Sensor Gmbh v. Wavetronix LLC, IPR2016-00488,
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`Paper 59 at 3 (PTAB Aug. 24, 2017) (“The general rule is that the Board is
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`divested of jurisdiction when either party files a notice of appeal to the Federal
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`Circuit.”); Emerson Electric Co. v. SIPCO, LLC, IPR2016-00984, Paper 52 at 25-
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`26 (PTAB Jan. 24, 2020) (determining that events that occur after the Board is
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`divested of jurisdiction, including during pendency of an appeal to the Federal
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`Circuit, are not “during a proceeding” and finding that a Certificate of Correction
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`which issued after Patent Owner filed an appeal to the Federal Circuit had no
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`impact on the Final Decision because the Certificate of Correction was not in effect
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`during the proceeding.”); 37 C.F.R. § 42.2 (“Proceeding means a trial or
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`preliminary proceeding.”).
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`6
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`Case IPR2019-00820
`Patent 7,937,581
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`MPH statutorily disclaimed claim 4 of the ’581 patent on October 13, 2022,
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`well after jurisdiction passed from the Board to the Federal Circuit, and before the
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`Federal Circuit issued its mandate returning jurisdiction to the Board on October
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`18, 2022. Ex. 3003 (Statutory Disclaimer); Ex. 2010 (’581 patent USPTO
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`disclaimer filings); Paper 48 (Mandate). Thus, “MPH’s statutory disclaimer of
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`claim 4 of the ’581 patent cannot be construed as a request for adverse judgment
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`because it did not occur ‘during a proceeding’ at the Board as required by 37
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`C.F.R. § 42.73(b). Rather, it occurred during the Federal Circuit appeal and before
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`the Federal Circuit issued its mandate and returned jurisdiction to the Board.”
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`Paper 52, 3.
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`Accordingly, Director review is necessary to correct the Board’s erroneous
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`interpretation of 37 C.F.R. § 42.73(b) reading out the requirement that a request for
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`adverse judgment must be made “during a proceeding.”
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`III. Conclusion
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`For the foregoing reasons, the Director should vacate the Board’s Adverse
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`Judgment on Remand.
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`Date: June 12, 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
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`Carmichael IP, PLLC
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`Counsel for Patent Owner
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`Case IPR2019-00820
`Patent 7,937,581
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that the following document was served by
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`electronic service on the date signed below:
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`PATENT OWNER’S REQUEST FOR DIRECTOR REVIEW OF
`ADVERSE JUDGMENT ON REMAND
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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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`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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`Dated: June 12, 2023
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