Case IPR2019-00820
`Patent 7,937,581 B2
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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 B2
`____________
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`PATENT OWNER’S REQUEST FOR REHEARING
`OF DECISION GRANTING INSTITUTION OF INTER PARTES REVIEW
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`Patent 7,937,581 B2
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`APPLE INC.,
`Petitioner,
`
`v.
`
`MPH TECHNOLOGIES OY,
`Patent Owner,
`____________
`
`Case IPR2019-00820
`Patent 7,937,581 B2
`____________
`
`
`PATENT OWNER’S REQUEST FOR REHEARING
`OF DECISION GRANTING INSTITUTION OF INTER PARTES REVIEW
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`Patent Owner respectfully requests rehearing of the Board’s decision on
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`behalf of the Director to institute inter partes review. The decision declined to
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`exercise discretion under 35 U.S.C. § 325(d) to reject the Petition despite the fact
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`that the two primary references in the Petition were previously discussed
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`extensively and applied in rejections by the Examiner during the original
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`prosecution. The decision relied on the panel’s views that (i) the Examiner’s use
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`of the two references in separate rejections, rather than combined in a single
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`rejection, weighed against exercising discretion under 35 U.S.C. § 325(d); and (ii)
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`an implicit difference of opinion with the Examiner concerning how best to apply
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`one of those references constitutes an “error” under factor (e) of Becton,
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`Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB
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`Dec. 15, 2017) (informative) (precedential as to factors). The panel’s decision
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`conflicts with § 325(d) and with the Board’s precedential and informative
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`decisions interpreting and applying § 325(d).
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`The panel misapprehended or overlooked that § 325(d) and prior Board
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`decisions interpreting § 325(d) establish that (1) the examiner’s entry of separate
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`rejections based on references relied on in the Petition does not weigh against
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`exercising discretion merely because they were not applied together in the exact
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`combination in the Petition; and (2) the panel’s difference of opinion with the
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`examiner concerning what a particular applied reference would have suggested to
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`POSITA is insufficient to supply the type of error contemplated by factor (e) of the
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`Becton, Dickinson test (“whether Petitioner has pointed out sufficiently how the
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`Examiner erred in its evaluation of the asserted prior art”).
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`This conflict presents questions of wide applicability and undermines the
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`certainty and consistency of the Board’s application of the Director’s statutory
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`discretion under § 325(d). These issues warrant the attention of the Precedential
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`Opinion Panel.
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`Rehearing should be granted, and institution denied.
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`1. The Examiner’s Separate Rejections Based On References Relied On
`In The Petition Does Not Weigh Against Exercising Discretion Under
`§ 325(d) Merely Because The Separately Applied References Were
`Not Applied Together In The Exact Combination In The Petition.
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`During the original prosecution of the challenged patent, Patent Owner
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`received and overcame separate rejections over the principal references now relied
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`upon in the Petition. The panel nonetheless refused to exercise discretion under
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`§ 325(d) primarily because those applied references were not explicitly combined
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`together by the Examiner in a single rejection. This was error.
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`The decision recognized that the Ishayama and Ahonen references relied on
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`in the Petition were already applied by the Examiner in rejections during original
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`prosecution. However, the Decision rejected that consideration as support for
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`denial under § 325(d) on the basis that the two previously presented and discussed
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`references were not combined in the same rejection:
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`Although we agree with Patent Owner that Ishiyama and Ahonen
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`were considered during examination, and that each was relied on in
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`combination with other references in the Examiner’s rejections, as we
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`discuss below with respect to factor (d), Ishiyama and Ahonen were
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`the subject of different rejections, and they were never combined by
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`the Examiner.
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`Decision at 13; see also id. at 15 n.9 (concluding that Examiner’s Notice of
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`Allowance “d[id] not evidence that the Examiner combined Ishiyama and
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`Ahonen”).1
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`1 The Petition raised a third reference, Murakawa, which was not considered
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`by the Examiner. The panel found that Murakawa is not materially cumulative of
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`the previously-applied Ahonen, even though “Murakawa and Ahonen disclose
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`forwarding messages to other terminals via a security gateway,” because
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`“Murakawa and Ahonen are materially different in address changing.” Decision at
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`12-13. However, it is impossible for a difference in address changing between
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`Murakawa and Ahonen to be “materially” different for § 325(d) purposes in this
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`case. As Patent Owner argued, POPR at 22, and the Decision acknowledges just
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`two pages later, the Petition relies on Murakawa for its alleged “security gateway
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`and/or other terminal” disclosure, not its “address changing” disclosure. Decision
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`at 14.
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`Because the Examiner used the relied-upon references in separate rejections,
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`and not in the exact combination of those references presented by the Petition, the
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`panel found “this factor weigh[s] against denying institution” under § 325(d).
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`Decision at 14–16. However, the panel’s holding is diametrically contrary to
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`Becton, Dickinson, which addressed materially the same facts and came to exactly
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`the opposite conclusion.
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`In Becton, Dickinson, the Board held that the Examiner’s separate rejections
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`using the multiple references relied upon in the Petition, which were relied upon by
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`the Petition in a different combination, weighed in favor of, not against, exercising
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`discretion under § 325(d):
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`[Petitioner’s references] were substantively considered, albeit in
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`separate obviousness rejections, during prosecution of the parent
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`application from which the ’762 patent issued as a continuation. …
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`[T]he asserted prior art for this ground of unpatentability, i.e.
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`[Petitioner’s references], were each considered by the Examiner,
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`albeit in separate obviousness rejections, during prosecution. This is
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`not a case where the prior art was simply listed in an IDS during
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`prosecution. Both [Petitioner’s references] were included as a basis
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`for, and evaluated with respect to obviousness rejections in the parent
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`application over claims with scope similar to that of the ’762 patent,
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`as evidenced by the Terminal Disclaimer filed by Applicant in the
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`prosecution leading to allowance of the ’762 patent.
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`Becton, Dickinson at 22-23 (informative) (precedential as to factors) (citations
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`omitted and emphasis added).
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`The panel’s holding also conflicts with the Board’s informative decision in
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`Kayak Software Corp. v. International Business Machines Corp., CBM2016-
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`00075, Paper 16, 8-9 (PTAB Dec. 15, 2016) (informative). Specifically, Kayak
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`held that to require an Examiner to have applied the exact combination of
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`references raised in the petition in order for denial under § 325(d) to be appropriate
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`“would exalt form over substance.” Id. There, the Board denied institution under
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`§ 325(d):
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`[W]e discern that instituting review solely because the exact
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`combination of Reference 7, Simon, and Alber advanced by Petitioner
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`was not set forth in the prosecution history would exalt form over
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`substance, if Section 325(d) could be avoided entirely by merely
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`adding an already-considered incremental reference to a previously
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`considered prior art combination. We are unpersuaded that such a
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`position is credible.
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`Id.
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`Thus, the present panel’s holding, that the original examiner’s separate
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`rejections over references relied upon in the Petition weighed against exercising
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`discretion under 35 U.S.C. § 325(d) because the separately applied references were
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`not applied together in the same exact combination as in the Petition, is contrary to
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`precedential and informative opinions of the Board. Moreover, it exalts form over
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`substance and is inconsistent with 35 U.S.C. § 325(d). To correct this split from
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`PTAB precedent, Patent Owner is also requesting review by the Precedential
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`Opinion Panel.
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`On rehearing, the panel’s holding should be reconsidered, and institution
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`should be denied.
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`2. A Mere Difference Of Opinion With The Examiner Over What A
`Previously Applied Reference Disclosed To A POSITA Does Not
`Establish An “Error” Weighing Against Exercising Discretion Under
`§ 325(d).
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`In evaluating whether institution should be denied under § 325(d), the
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`PTAB’s precedential decision in Becton, Dickinson asks in factor (e) “whether
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`Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of
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`the asserted prior art.” Becton, Dickinson & Co. v. B. Braun Melsungen AG,
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`IPR2017-01586, Paper 8, 17-18 (PTAB Dec. 15, 2017) (precedential as to factors).
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`In the present case, the panel found that Petitioner had shown such an error
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`merely by arguing for applying the Ishiyama reference in a manner different than
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`how the Examiner applied it in rejections during the original prosecution:
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`[W]e are persuaded that Petitioner (by making a sufficient showing
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`that Ishiyama discloses a security gateway) has demonstrated that the
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`Examiner erred by not applying Ishiyama during the examination of
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`either the ’810 patent [(i.e., the parent patent of the ’581 patent)] or
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`the ’581 patent in the manner Petitioner argues.
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`Decision at 17. In other words, by putting forth a difference of opinion with the
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`Examiner about how best to apply a particular reference that was used in claim
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`rejections or possibly what it would have disclosed to a POSITA, the panel found
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`some implicit error by the examiner.
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`The panel’s holding that this implicit difference of opinion with the
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`Examiner weighs against denial of institution under § 325(d) is contrary to many
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`PTAB decisions. For example, in Juniper Networks, Inc. v. Mobile
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`Telecommunications Technologies, LLC, IPR2017-00642, Paper 31, 17, 20-21
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`(PTAB Mar. 14, 2018), the Board determined that Becton, Dickinson factor (e)
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`requires showing an “explicit” error by the Examiner:
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`Requiring a showing of explicit and intrinsic error in a petition for an
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`AIA post-grant proceeding properly places the burden on the party
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`who seeks to challenge the patentability of the issued claims over the
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`same or substantially the same prior art or arguments presented
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`previously to the Office during examination. Requiring a showing of
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`error also ensures protection for Patent Owner, where only upon such
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`a showing can the Board readily ascertain whether there are serious
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`doubts about how the patent issued over the same or substantially the
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`same prior art
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`that
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`the Office considered previously during
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`examination. Further, requiring that the error is shown as specifically
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`as practicable in the intrinsic record ensures that the Board is
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`presented with facts available in the public record.
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`Id. at 21 (emphasis added). In other words, merely second-guessing what the
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`Examiner impliedly might have had in his or her mind while evaluating a particular
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`reference applied in a rejection, rather than identifying an explicit error in the
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`examiner’s written evaluation, does not weigh against exercising discretion under
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`§ 325(d). Although Juniper is not presently designated either precedential or
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`informative, it represents the Board’s most detailed and thoughtful consideration of
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`this question to date and its reasoning in this respect is correct.
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`Other PTAB decisions likewise dismiss an alleged “error” when it is merely
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`second-guessing what an examiner may or may not have had in mind when
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`evaluating the reference. See, e.g., W. Pharm. Servs., Inc. v. Sanofi-Aventis
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`Deutschland GmbH, IPR2018-01162, Paper 7, 11 (PTAB Dec. 6, 2018) (“Whether
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`and to what extent the examiner appreciated the full scope of David-Hegerich, we
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`may never know. What we do know, however, is that the examiner reviewed the
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`reference and relied upon it in rejecting claim 5. Those facts, at a minimum,
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`suggest that the Examiner considered the reference in the context of an
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`obviousness rejection, the same statutory basis for Petitioner’s challenge here.”);
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`Edge Endo, LLC v. Maillefer Instruments Holding S.A.R.L., IPR2018-01349, Paper
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`15, 14 (PTAB Jan. 14, 2019) (“Nonetheless, whether and to what extent the
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`examiner appreciated the full scope of the related McSpadden reference, we may
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`never know. What we do know, however, is that the examiner reviewed the
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`reference and relied upon it in rejecting the then-pending claims.”).
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`The conflict between the present panel decision and the previously
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`established line of PTAB decisions presents important issues of broad applicability
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`to the Board. This decision relies on another recent PTAB decision by the same
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`panel in another case applying the same interpretation of § 325(d) discretion,
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`contrary to the previous line of cases discussed herein, to arrive at a similarly
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`flawed decision on the parent of this patent. Decision at 17 (citing IPR2019-
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`00819, Paper 10 (PTAB Sep. 27, 2019), at 15–16).
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`The present decision should be reversed to resolve this conflict among Board
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`decisions, to promote certainty and consistency, and to comply with the intent of
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`§ 325(d) to protect Patent Owners from redundant challenges in AIA proceedings
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`and provide some measure of repose. The PTO should establish once and for all
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`that simply second-guessing what an examiner may or may not have had in mind
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`when evaluating the exact same reference does not constitute a sufficient showing
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`of error under precedential Becton, Dickinson factor (e). To this end, Patent
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`Owner is also requesting review by the Precedential Opinion Panel.
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`For the reasons given above, rehearing should be granted, the decision to
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`grant institution should be reconsidered, and the Petition should be denied under
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`§ 325(d).
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`Respectfully submitted,
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`____/ James T. Carmichael /_________
`James T. Carmichael, Reg. No. 45,306
`CARMICHAEL IP, PLLC
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`Date: October 21, 2019
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`CERTIFICATE OF SERVICE
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`Case IPR2019-00820
`Patent 7,937,581 B2
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`The undersigned hereby certifies that the following documents were served
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`by electronic service, by agreement between the parties, on the date signed below:
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`PATENT OWNER’S REQUEST FOR REHEARING
`OF DECISION GRANTING INSTITUTION OF INTER PARTES REVIEW
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`The names and address of the parties being served are as follows:
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`Michael D. Specht
`Daniel S. Block
`Timothy L. Tang
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`mspecht-PTAB@sternekessler.com
`dblock-PTAB@sternekessler.com
`ttang-PTAB@sternekessler.com
`PTAB@sternekessler.com
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`Respectfully submitted,
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` / Jason Linger /
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`Date: October 21, 2019
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