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`Case IPR2019-00820
`Patent 7,937,581 B2
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MPH TECHNOLOGIES OY,
`Patent Owner.
`____________
`
`Case IPR2019-00820
`Patent 7,937,581 B2
`____________
`
`PATENT OWNER MPH TECHNOLOGIES OY’S
`POSITION ON REMAND PROCEDURES PER THE
`BOARD’S NOVEMBER 18, 2022 CONFERENCE CALL AND
`STANDARD OPERATING PROCEDURE 9 APPENDIX 2
`
`
`
`Case IPR2019-00820
`Patent 7,937,581 B2
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`Patent Owner MPH Technologies Oy respectfully submits its positions on
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`remand procedures for Case Nos. IPR2019-00819 (Patent 7,620,810 B2) and
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`IPR2019-00820 (Patent 7,937,581 B2).1
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`I.
`
`Further Briefing or Evidence is Inappropriate in IPR2019-00819
`
`The sole issue on remand is whether the Board should confirm claims 4-6 of
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`the ’810 patent due to the Petition’s failure to address the limitations of intervening
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`claim 3. This is the issue identified by the Federal Circuit in footnote 4 of its remand
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`decision. Apple Inc. v. MPH Techs. Oy, 2022 WL 4103286, at *6 n.4 (Fed. Cir. Sept.
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`8, 2022). The issue was fully briefed and tried (but not decided) in the original trial.2
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`As such, any additional briefing, evidence, hearings, or other “do-over” would be
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`highly inappropriate and unfairly prejudicial to Patent Owner.
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`During the November 18, 2022, panel conference, Apple was unable to
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`identify any way in which the Federal Circuit’s claim construction affects the issue
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`identified by the Federal Circuit in footnote 4. There is a good reason for this. The
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`construction of one term in claim 1 has no impact on the Petition’s complete failure
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`to address any of claim 3’s limitations in the grounds against dependent claims 4-6.
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`Indeed, when briefing claims 4-6 in the original IPR proceeding, neither party
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`1 MPH is filing this same paper in both cases, captioned separately.
`2 See IPR2019-00819, Paper 22, POR, pp. 63-64, 73; Paper 26, Pet. Reply,
`pp. 22-25; Paper 29, PO Sur-reply, pp. 24-25.
`1
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`Case IPR2019-00820
`Patent 7,937,581 B2
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`discussed the meaning of claim 1’s disputed claim term (“request message and/or
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`reply message being encrypted”).3 In these circumstances, no further briefing is
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`appropriate. See PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC,
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`IPR2013-00342 (Paper 55) (PTAB Aug. 4, 2016) (denying requested briefing
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`because it was unrelated to Federal Circuit claim construction).
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`Any other substantive issue that might have remained on remand was mooted
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`by Patent Owner’s disclaimer of claims 1-3 of the ’810 patent and claim 4 of the
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`’581 patent. At the panel conference, Apple said this attempt to streamline the issues
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`and simplify these proceedings was some kind of “trick.” Only Apple—the world’s
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`largest company—could call economizing by its smaller rival a “trick.” IPR
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`proceedings are intended to be quick and economical. 37 C.F.R. § 42.1(b) (“This
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`part shall be construed to secure the just, speedy, and inexpensive resolution of every
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`proceeding.”)
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`Even if the claim construction adopted by the Federal Circuit could somehow
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`affect a live issue—which it does not—Apple would still not be entitled to any
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`additional briefing (much less additional evidence or hearings). Apple was on notice
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`of that construction during the original trial. In fact, it was Apple’s own construction
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`all along. As the Board noted, “[Apple] argued that one of ordinary skill in the art
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`3 Id.
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`2
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`Case IPR2019-00820
`Patent 7,937,581 B2
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`would have understood that only a portion of the message need be encrypted. …
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`[Apple] repeated its argument that Ishiyama’s request message is encrypted because
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`the encapsulated packet is encrypted, even though the outer packet’s header is
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`unencrypted.”). IPR2019-00819, Paper 37, FWD, p. 21. The Federal Circuit adopted
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`that very construction. Apple Inc., 2022 WL 4103286, at *6 (“The Challenged
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`Patents contemplate that a message can still be considered ‘encrypted’ if its packet
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`has unencrypted ‘outer IP header’ information.”). Therefore, it is far too late for
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`Apple to make new arguments or submit new evidence based on the Federal Circuit’s
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`(and its own) claim construction. Wireless Protocol Innovations, Inc. v. TCT Mobile,
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`Inc., 2022 WL 2813743, at *5 (Fed. Cir. July 19, 2022) (petitioner forfeited
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`arguments presented for the first time on remand because during the original
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`proceeding the petitioner was on notice of the claim construction position adopted
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`by the Court).
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`II.
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`Further Briefing or Evidence is Inappropriate in IPR2019-00820
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`The only remaining task for the Board in IPR2019-00820 (’581 patent) is to
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`issue a certificate confirming the claims affirmed by the Federal Circuit. No briefing
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`or evidence is appropriate for Apple’s novel request for an adverse judgment.
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`MPH’s statutory disclaimer of certain claims cannot be construed as a request
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`for adverse judgment because it did not occur “during a proceeding” at the Board as
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`required by 37 C.F.R. § 42.73(b). Rather, it occurred during the Federal Circuit
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`3
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`Case IPR2019-00820
`Patent 7,937,581 B2
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`appeal, before the Federal Circuit issued its mandate and returned jurisdiction to the
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`Board. See 37 C.F.R. § 42.2 (“Proceeding means a trial or preliminary proceeding”).
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`The non-precedential case cited by Apple during the panel conference (Apple Inc. v.
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`Corephotonics Ltd., IPR2018-01146) is not to the contrary. There, the claims at issue
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`were disclaimed three months after the Federal Circuit issued its mandate and passed
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`jurisdiction back to the Board. Thus, the disclaimer in that case took place “during a
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`proceeding” at the Board, unlike in the present case.
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`Further, MPH’s disclaimers did not result in “no remaining claim in the trial”
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`as required for adverse judgment under § 42.73(b)(2). For one, ’581 patent claims
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`6-8 remain for the Board to issue an IPR certificate confirming their patentability.
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`During the panel conference, Apple suggested an adverse judgment could be
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`entered even when only some of the remaining claims are disclaimed, because that
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`would somehow be a “concession of unpatentability [] of the contested subject
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`matter” under § 42.73(b)(3). However, “the contested subject matter” refers to the
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`entirety of the contested subject matter, not just part. More importantly, a disclaimer
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`of a claim is not a “concession” of unpatentability. Gilead Sciences Inc. v. U.S., 2020
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`WL 582380, at *21 n.31 (PTAB Feb. 5, 2020). Instead, such claims should be treated
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`as though they never existed. Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379,
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`1383 (Fed. Cir. 1998); Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996).
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`4
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`III.
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`Conclusion
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`Case IPR2019-00820
`Patent 7,937,581 B2
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`For the reasons set forth above and pursuant to Appendix 2 of the Board’s
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`Standard Operating Procedure 9 (“SOP”), MPH respectfully submits that, for Item
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`No (1) of the SOP, additional briefing or evidence is not appropriate for either case,
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`IPR2019-00819 or IPR2019-00820. Therefore, Items (2)-(11) are inapplicable.4
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`Respectfully submitted,
`
`
`
`
`/James T. Carmichael/
`
`James T. Carmichael, Reg. No. 45,306
`CARMICHAEL IP, PLLC
`
`Date: December 2, 2022
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`4 If the panel were (incorrectly) to grant Apple any additional briefing, the
`usual rule—Patent Owner having the last word—should apply.
`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 documents were served
`by electronic service on the date signed below:
`
`
`PATENT OWNER MPH TECHNOLOGIES OY’S
`POSITION ON REMAND PROCEDURES PER THE
`BOARD’S NOVEMBER 18, 2022 CONFERENCE CALL AND
`STANDARD OPERATING PROCEDURE 9 APPENDIX 2
`
`The names and address of the parties being served are as follows:
`
`
`David W. O’Brien
`Andrew S. Ehmke
`
`
`
`
`Dated: December 2, 2022
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`david.obrien.ipr@haynesboone.com
`andy.ehmke.ipr@haynesboone.com
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`
`Respectfully submitted,
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`
`
`
`
`
`/Brian E. Haan /
`
`
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