`Sent:
`To:
`Cc:
`
`Subject:
`Attachments:
`
`Dear Honorable Board:
`
`Carmichael, Jim (External)
`Monday, October 21, 2019 4:09 PM
`Precedential_Opinion_Panel_Request
`dblock-ptab@sternekessler.com; spappas-ptab@sternekessler.com; mspecht-
`ptab@sternekessler.com; MPH-IPRs
`Precedential Opinion Panel request for IPR2019-00820
`2019-10-21 12. IPR2019-00820 - rehearing request.pdf
`
`I write on behalf of Patent Owner MPH Technologies Oy regarding the PTAB decision to institute review of U.S.
`Patent No. 7,937,581 in case number IPR2019‐00820. The decision by Judges Hamann, Jivani, and Margolies grants the
`petition of Apple Inc. for inter partes review and declines to exercise the Director’s discretion under § 325(d) to reject
`Apple’s petition, despite the fact that both primary references raised in Apple’s petition were extensively discussed and
`applied in rejections of claims during original prosecution.
`
`The decision was based on the panel’s erroneous beliefs (1) that the original examiner’s separate rejections over
`references relied upon in the Petition weighed against exercising discretion under 35 U.S.C. § 325(d) because the
`separately applied references were not applied simultaneously in the same exact combination as in the Petition and (2)
`that the panel’s implicit difference of opinion with the examiner concerning what a particular applied reference would
`have suggested to POSITA counts as a sufficient “error” weighing against exercising § 325(d) discretion under factor (e)
`of Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017‐01586, Paper 8, (PTAB Dec. 15, 2017) (precedential).
`SATISFACTION OF REQUIREMENTS OF STANDARD OPERATING PROCEDURE 2
`Based on my professional judgment, I believe the Board’s panel decision is contrary to the following precedent
`of the Board: Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017‐01586, Paper 8, (PTAB Dec. 15, 2017)
`(precedential as to § 325(d) factors).
`Based on my professional judgment, I believe this case requires an answer to one or more precedent‐setting
`questions of exceptional importance: (1) whether an examiner’s separate rejections over references relied upon in the
`Petition weighs against exercising discretion under 35 U.S.C. § 325(d) merely because the separately applied references
`were not applied together in the same exact combination as in the Petition and (2) whether second‐guessing what an
`examiner may or may not have had in their mind when evaluating the exact same applied reference sufficiently counts
`as an explicit examiner “error” under factor (e) of Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017‐01586,
`Paper 8, (PTAB Dec. 15, 2017) (precedential).
`REASONS FOR RECOMMENDING PRECEDENTIAL OPINION PANEL REVIEW
`
`As stated in the attached request for rehearing: The Board panel’s decision to decline to exercise discretion
`under § 325(d) on the Director’s behalf misapprehended or overlooked that an examiner’s separate rejections based on
`references relied on in the Petition do not weigh against exercising discretion under 35 U.S.C. § 325(d) merely because
`the separately applied references were not applied together in the exact combination in the Petition. Becton, Dickinson
`itself expressly addressed a situation in which two references raised in combinations in the petition were applied only
`separately in previous prosecution, and held that the prior separate discussion and application of the references during
`prosecution nevertheless weighed in favor of denying institution under § 325(d), not against. Becton, Dickinson, at 22‐
`23. The informative Board decision of Kayak Software further supports this line of authority, and suggests that to
`conclude otherwise “would exalt form over substance” in the § 325(d) inquiry. Kayak Software Corp. v. International
`Business Machines Corp., CBM2016‐00075, Paper 16, 8‐9 (PTAB Dec. 15, 2016) (informative).
`
`1
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`IPR2019-00820
`Ex. 3001 p. 1 of 2
`
`
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`The Board panel’s decision to decline to exercise discretion under § 325(d) also misapprehended or overlooked
`that a difference of opinion with an examiner’s purportedly implied views, concerning what a particular applied
`reference would have suggested to POSITA, is insufficient to supply the type of error contemplated by Becton, Dickinson
`factor (e) (“whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior
`art”). As the Board has previously held when applying this Becton, Dickinson factor: “Requiring a showing of explicit and
`intrinsic error in a petition for an AIA post‐grant proceeding properly places the burden on the party who seeks to
`challenge the patentability of the issued claims over the same or substantially the same prior art or arguments
`presented previously to the Office during examination. Requiring a showing of error also ensures protection for Patent
`Owner, where only upon such a showing can the Board readily ascertain whether there are serious doubts about how
`the patent issued over the same or substantially the same prior art that the Office considered previously during
`examination.” Juniper Networks, Inc. v. Mobile Telecomm’ns Techs., LLC, IPR2017‐00642, Paper 31, 21 (PTAB Mar. 14,
`2018) (emphasis added).
`
`Those conflicts present questions of wide applicability and undermine the certainty and consistency of the
`Board’s application of the Director’s statutory discretion under § 325(d). Accordingly, these issues warrant the
`attention of the Precedential Opinion Panel.
`Respectfully submitted,
`
`James T. Carmichael
`Lead Counsel for Patent Owner MPH Technologies Oy
`
`James T. Carmichael
`8000 Towers Crescent Drive, 13th Floor
`Tysons, VA 22182
`(703)646‐9255
`jim@carmichaelip.com
`
`This message may contain privileged and confidential information. If you are not the intended recipient, kindly contact the sender and destroy all copies
`
`IPR2019-00820
`Ex. 3001 p. 2 of 2
`
`2
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