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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 REQUEST FOR LIMITED BRIEFING POST-REMAND
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`Petitioner’s Request for Limited Briefing
`IPR2019-00820 (Patent No. 7,937,581)
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`TABLE OF CONTENTS
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`Introduction ...................................................................................................... 1
`I.
`Proposal for Post-Remand Proceedings .......................................................... 2
`II.
`III. Discussion ........................................................................................................ 3
`IV. Conclusion ....................................................................................................... 4
`CERTIFICATE OF SERVICE .............................................................................. 5
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`- i -
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`Petitioner’s Request for Limited Briefing
`IPR2019-00820 (Patent No. 7,937,581)
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`PETITIONER’S EXHIBIT LIST
`Updated: December 2, 2022
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`1001
`1002
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`1003
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`1004
`1005
`1006
`1007
`1008
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`1011
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`U.S. Patent No. 7,937,581 to Vaarala et al. (“’581 patent”)
`Declaration of Dr. David Goldschlag in Support of Petition for
`Inter Partes Review of U.S. Patent No. 7,937,581 (“Goldschlag
`Decl.”)
`Prosecution History of U.S. Patent No. 7,937,581 (“Prosecution
`History”)
`U.S. Patent No. 6,904,466 to Ishiyama, et al. (“Ishiyama”)
`U.S. Patent No. 7,028,337 to Murakawa (“Murakawa”)
`U.S. Patent No. 6,976,177 to Ahonen (“Ahonen”)
`U.S. Patent No. 6,954,790 to Forslöw (“Forslöw”)
`S. Frankel, Demystifying the IPsec Puzzle, Artech House, Inc.,
`2001 (“Frankel”)
`1009 W. Stallings, IP Security - The Internet Protocol Journal – Volume
`3, No. 1, March 2000 (“Stallings”)
`1010 Mobility-aware IPsec ESP tunnels, Francis Dupont, IETF Draft
`Posted February 22, 2001 (“Dupont”)
`RFC2401 - S. Kent, and R. Atkinson, Security Architecture for the
`Internet Protocol, RFC2401, The Internet Society, November 1998
`(“RFC 2401”)
`RFC793 - Transmission Control Protocol, Darpa Internet Program
`Protocol Specification, September 1981 (“RFC 793”)
`U.S. Patent No. 7,079,499 to Akhtar et al. (“Akhtar”)
`U.S. Patent No. 7,174,018 to Patil et al. (“Patil”)
`U.S. Patent No. 6,418,130 to Cheng et al. (“Cheng”)
`Curriculum Vitae of Dr. David Goldschlag
`Declaration of Sandy Ginoza for IETF (Regarding RFC2401 and
`RFC793) (“Ginoza Decl.”)
`Declaration of Alexa Morris for IETF (Regarding “Mobility-aware
`IPsec ESP tunnels” by Dupont) (“Morris Decl.”)
`U.S. Patent No. 7,620,810 to Vaarala et al. (“Vaarala”)
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`1012
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`1013
`1014
`1015
`1016
`1017
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`1018
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`1019
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`- ii -
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`Petitioner’s Request for Limited Briefing
`IPR2019-00820 (Patent No. 7,937,581)
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`1020
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`1021
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`1022
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`1023
`1024
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`Prosecution History of U.S. Patent No. 7,620,810 (“’810
`Prosecution History”)
`Transcript of the Deposition of Dr. George N. Rouskas, March 20,
`2020 (“Rouskas Depo.”)
`Declaration of Dr. David Goldschlag in Support of Petitioner’s
`Reply to Patent Owner’s Response (“Second Goldschlag Decl.”)
`Teleconference Transcript, May 27, 2020
`Telephonic Hearing, November 18, 2022
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`- iii -
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`I.
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`Petitioner’s Request for Limited Briefing
`IPR2019-00820 (Patent No. 7,937,581)
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`INTRODUCTION
`Parties have met and conferred and have subsequently participated in a
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`teleconference with the Board as contemplated by Standard Operating Procedure 9
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`(“SOP 9”). During that SOP 9 conference, the Parties each argued their positions
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`regarding necessary procedure on remand. Petitioner indicated, relative to
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`the -00820 proceeding (and ‘581 patent), that the legal effect of Patent Owner’s
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`statutory disclaimer as a request for adverse judgment required briefing.1 The 18-
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`1 See Exhibit 1024, 6-7. More specifically, Petitioner argued during the SOP 9
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`conference that the disclaimer of the sole remaining claim is to be construed as a
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`request for adverse judgement under 37 C.F.R. 42.73(b)(2). Id. Patent Owner
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`maintained the position that it had advocated during meet and confer, namely that
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`adverse judgment was not indicated. Id. at 13-14. Specifically, Patent Owner
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`argued during the SOP 9 conference that claims whose unpatentability had been
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`affirmed and for which the Office still needed to issue a trial certificate constitute
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`“remaining claims in trial” and thus precluded entry of adverse judgement. Id., but
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`see Apple Inc. v. Corephotonics Ltd., IPR2018-01146, paper 45 (Feb. 11, 2022)
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`(judgment on remand and in view of statutory disclaimer referenced by counsel
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`during conference).
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`- 1 -
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`November-2022 conference was transcribed by a court reporter and, per the
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`Petitioner’s Request for Limited Briefing
`IPR2019-00820 (Patent No. 7,937,581)
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`panel’s instructions and verbal authorization during the conference, a transcript has
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`been filed in this proceeding as an exhibit. See Exhibit 1024.
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`After considering the Parties’ arguments and/or counterarguments, the panel
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`directed each Party to file a paper (not to exceed 5 pages) detailing the contours of
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`its proposal for post-remand procedure by addressing the eleven (11) items listed
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`in Appendix 2 of SOP 9. This is that paper for Petitioner and for this proceeding.
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`II.
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`PROPOSAL FOR POST-REMAND PROCEEDINGS
`The panel directed Parties to address the eleven items listed in Appendix 2
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`of SOP 9. Those items and Petitioner’s proposed post-remand procedure follow:
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`1. whether additional briefing is necessary—yes.
`2. subject matter limitations on briefing—briefing could properly be limited to
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`legal effect as a request for adverse judgment of Patent Owner’s disclaimer
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`of claim 4, the sole remaining claim in trial.
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`3. length of briefing—5 pages.
`4. should briefs be filed concurrently or sequentially—sequentially.
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`5. which party should open—Petitioner has the burden and should open.
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`6. whether a second brief from either party should be permitted—yes,
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`Petitioner bears the burden and should therefore be afforded a reply.
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`- 2 -
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`Petitioner’s Request for Limited Briefing
`IPR2019-00820 (Patent No. 7,937,581)
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`7. the briefing schedule—Order +30 days for opening brief; Order +60 days for
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`responsive brief; Order +75 days for Petitioner’s reply brief.
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`8. should either party be permitted to supplement the evidentiary record—no.
`9. limitations, if any, and the type of additional evidence—n/a.
`10. the schedule for submitting additional evidence, if any—n/a.
`11. any other relevant procedural issues—not at this time.
`III. DISCUSSION
`The reviewing court determined that the Board had applied an erroneous
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`claim construction. Apple Inc. v. MPH Techs. Oy, Appeal 2021-1355, slip op., 13
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`(Sept. 8, 2022). Specifically, the court vacated the Board’s “patentability
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`determinations” as to claim 4 and remanded for further proceedings. Id., 18.
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`Patent Owner subsequently filed a statutory disclaimer of claim 4, the sole
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`remaining claim in trial.
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`Trial regulations address this situation. See 37 C.F.R. 42.73(b)(2) (providing
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`that “[c]ancellation or disclaimer of a claim such that the party has no remaining
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`claim in the trial” is an action that is “construed to be a request for adverse
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`judgment.”). Petitioner explained its application of 42.73(b)(2) during the
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`conference. Exhibit 2024, 6-7. Patent Owner presented a competing legal theory.
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`Id., 13-14. Limited briefing is required.
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`Petitioner’s Request for Limited Briefing
`IPR2019-00820 (Patent No. 7,937,581)
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`IV. CONCLUSION
`Petitioner respectfully requests that the Board issue a scheduling order
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`substantially in accordance with the above request for the post-remand phase of
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`this proceeding.
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`Respectfully submitted,
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`Dated December 2, 2022
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`/David W. OBrien/
`David W. O’Brien
`Lead Counsel for Petitioner
`Registration No. 40,107
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`- 4 -
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`Petitioner’s Request for Limited Briefing
`IPR2019-00820 (Patent No. 7,937,581)
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`CERTIFICATE OF SERVICE
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`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: December 2, 2022
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`Manner of service: Electronic Service by E-Mail
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`Documents served: Petitioner’s Request for Limited Briefing and Argument
`Petitioner’s Updated Exhibit List
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`Persons served: James T. Carmichael (jim@carmichaelip.com)
`Kenneth J. Weatherwax
`(weatherwax@lowensteinweatherwax.com)
`Stephen T. Schreiner (schreiner@carmichaelip.com)
`Christopher J. Lee (clee@leesheikh.com)
`Richard B. Megley (rmegley@leesheikh.com)
`Brian E. Haan (bhaan@leesheikh.com)
`Ashley E. LaValley (alavalley@leesheikh.com)
`Patrick Maloney (maloney@lowensteinweatherwax.com)
`Jason C. Linger (linger@lowensteinweatherwax.com)
`MPH-IPRs@carmichaelip.com
`/David W. OBrien/
`David W. O’Brien
`Lead Counsel for Petitioner
`Registration No. 40,107
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`- 5 -
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