Trials@uspto.gov
`571-272-7822
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`
`
`
`
`Paper No. 12
`Filed: September 24, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`OMNI MEDSCI, INC.,
`Patent Owner.
`____________
`
`Case IPR2019-00910 (Patent 9,757,040 B2)
`Case IPR2019-00911 (Patent 9,861,286 B1)
`Case IPR2019-00913 (Patent 9,651,533 B2)
`Case IPR2019-00914 (Patent 9,861,286 B1)
`Case IPR2019-00916 (Patent 9,651,533 B2)
` Case IPR2019-00917 (Patent 9,757,040 B2)1
`____________
`
`
`Before GRACE KARAFFA OBERMANN, JOHN F. HORVATH, and
`SHARON FENICK, Administrative Patent Judges.
`
`HORVATH, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5(a)
`
`
`1 This Order applies to each of the listed cases. We exercise our discretion to
`issue one Order to be docketed in each case. The parties, however, are not
`authorized to use this caption for any subsequent papers.
`
`
`
`

`

`Case IPR2019-00910 (Patent 9,757,040 B2)
`Case IPR2019-00911 (Patent 9,861,286 B1)
`Case IPR2019-00913 (Patent 9,651,533 B2)
`Case IPR2019-00914 (Patent 9,861,286 B1)
`Case IPR2019-00916 (Patent 9,651,533 B2)
`Case IPR2019-00917 (Patent 9,757,040 B2)
`
`
`Apple Inc. (“Petitioner”) filed a Petition requesting inter partes
`review of claims 5, 7–10, 13, and 15–17 of U.S. Patent No. 9,651,533 B2
`(“the ’533 patent”). IPR2019-00916, Paper 1 (“Pet”).2 Omni MedSci Inc.
`(“Patent Owner”), filed a Preliminary Response. IPR2019-00916, Paper 10
`(“Prelim. Resp.). Petitioner and Patent Owner identify the following District
`Court proceeding, Omni MedSci Inc. v. Apple Inc., 2-18-cv-00134-RWS
`(EDTX), as related.3 See IPR2019-00916, Paper 1, x; Paper 7, 1–2.
`
`In its Preliminary Response, Patent Owner contends that the Board
`should exercise its discretion and deny the Petition on procedural grounds.
`Prelim. Resp. 3 (citing Trial Practice Guide Update, 83 Fed. Reg. 39989
`(Aug. 13, 2018)). Specifically, Patent Owner contends that the Board should
`deny the Petition because the challenges it raises rely on the same references
`Petitioner has identified in its District Court invalidity contentions, and any
`
`2 We cite to the Papers filed in IPR2019-00916 for convenience. Similar
`papers, in some cases challenging different claims of different patents, were
`filed in each of the cases identified in the caption. This Order applies to each
`of the cases identified in the caption.
`3 In IPR2019-00914 and IPR2019-00911, Petitioner and Patent Owner also
`identify Omni MedSci, Inc. v. Apple Inc., 2-18-cv-00429-RWS (EDTX) as a
`related matter. See e.g. IPR2019-00914, Paper 1, xi; Paper 8, 2. However,
`in those cases, Patent Owner does not provide information regarding the
`status of that litigation, or base its § 314(a) arguments, described infra, on
`the progress of that litigation. See e.g. IPR2019-00914, Paper 7, 2–6. Thus,
`in this Order, our reference to District Court litigation refers solely to the
`proceedings in Omni MedSci Inc. v. Apple Inc., 2-18-cv-00134-RWS
`(EDTX).
`
`
`2
`
`

`

`Case IPR2019-00910 (Patent 9,757,040 B2)
`Case IPR2019-00911 (Patent 9,861,286 B1)
`Case IPR2019-00913 (Patent 9,651,533 B2)
`Case IPR2019-00914 (Patent 9,861,286 B1)
`Case IPR2019-00916 (Patent 9,651,533 B2)
`Case IPR2019-00917 (Patent 9,757,040 B2)
`
`Final Written Decision entered in this proceeding (if instituted) would not be
`due until October 22, 2020, more than eight months after commencement of
`a jury trial in the District Court. Id. at 5 (citing Pet. 3; Ex. 2101, 3;
`Ex. 2102, 2, Ex. 2110). Therefore, Patent Owner argues, “[t]he Board
`should exercise its discretion to deny the Petition under § 314(a) because the
`facts here are similar to those in NHK.” Id. at 4 (citing NHK Spring Co.,
`Ltd. v. Intri-Plex Techs., Inc., IPR2018-00752, slip op. at 20 (PTAB Sept.
`12, 2018) (Paper 8) (Precedential).
`The Board seeks additional input from the parties on the facts and
`factors the Board should consider when deciding whether to exercise its
`discretion to deny institution under 35 U.S.C. § 314(a). Therefore, the
`Board authorizes Petitioner to file a Reply to Patent Owner’s Preliminary
`Response limited to discussing those issues, and Patent Owner to file a Sur-
`Reply limited to discussing the same issues. Petitioner’s Reply shall be no
`longer than seven (7) pages and due no later than September 30, 2019.
`Patent Owner’s Sur-Reply shall be no longer than seven (7) pages and due
`no later than October 4, 2019.
`To assist the parties, the Board identifies the following findings of fact
`relevant to IPR2019-00916, and notes that similar facts are presented in the
`other cases identified in the caption:
`1. Petitioner was served with a complaint asserting infringement
`of the ’533 patent on April 10, 2018 (Ex. 1004, 2).
`
`3
`
`

`

`Case IPR2019-00910 (Patent 9,757,040 B2)
`Case IPR2019-00911 (Patent 9,861,286 B1)
`Case IPR2019-00913 (Patent 9,651,533 B2)
`Case IPR2019-00914 (Patent 9,861,286 B1)
`Case IPR2019-00916 (Patent 9,651,533 B2)
`Case IPR2019-00917 (Patent 9,757,040 B2)
`
`
`2. The District Court issued a Scheduling Order on June 19, 2018,
`scheduling a jury trial to commence on February 18, 2020, and
`setting a Dispositive Motion Deadline on July 9, 2019
`(Ex. 2102, 1–2).
`3. The Board issued NHK as a non-precedential decision on
`September 12, 2018 (See NHK, slip op. at 1).
`4. Petitioner served Patent Owner with Proposed Claim
`Constructions for the ’533 patent on November 1, 2018
`(Ex. 1040, 5).
`5. Petitioner and Patent Owner filed in the District Court an
`Amended Joint Claim Construction and Prehearing Statement
`for the ’533 patent on January 11, 2019 (Ex. 1043, 4).
`6. Petitioner filed the Petition in IPR2019-00916 on April 10,
`2019, challenging the patentability of claims 5, 7–10, 13, and
`15–17 over Lisogurski and Carlton, and claims 8, 9, 16, and 17
`over Lisogurski, Carlton, and Mannheimer (Pet. 3).
`7. The Board designated NHK as a precedential decision on
`May 7, 2019 (See NHK, slip op. at 1).
`8. Patent Owner served Petitioner with an Amended Final
`Election of Asserted Claims on May 7, 2019, asserting claims
`5, 9, 13, and 15–17 of the ’533 patent (Ex. 2111, 1, 3);
`9. Petitioner served Patent Owner with a Final Election of
`Asserted Prior Art on May 22, 2019, challenging the asserted
`
`4
`
`

`

`Case IPR2019-00910 (Patent 9,757,040 B2)
`Case IPR2019-00911 (Patent 9,861,286 B1)
`Case IPR2019-00913 (Patent 9,651,533 B2)
`Case IPR2019-00914 (Patent 9,861,286 B1)
`Case IPR2019-00916 (Patent 9,651,533 B2)
`Case IPR2019-00917 (Patent 9,757,040 B2)
`
`
`claims on the basis of, inter alia, Lisogurski + Carlson +
`Mannheimer (Ex. 2101, 2, 6).
`10. The District Court issued a Claim Construction Memorandum
`Opinion and Order on June 24, 2019 (Ex. 2107, 1).
`11. Patent Owner filed and served its Preliminary Response on
`Petitioner on July 22, 2019 (Prelim. Resp. 32).
`The parties are invited to address the extent to which these, and any
`other relevant facts or factors, weigh in favor of or against denying the
`Petition under 35 U.S.C. § 314(a). In particular, the parties are invited to
`address whether, and to what extent, the Board should consider and weigh
`the following factors when deciding whether to institute or deny institution
`of the Petition under 35 U.S.C. § 314(a): (a) the merits of Petitioner’s
`challenge; (b) the amount of time between the District Court’s expected
`findings on validity and any expected Board findings on patentability;
`(c) any differences between the claims challenged in the District Court and
`the Petition; (d) any differences between the grounds raised in the District
`Court and the Petition, where a ground challenges the validity/patentability
`of an identified claim over identified prior art; and (e) any delay between the
`filing of Petitioner’s invalidity contentions in the District Court and the
`filing of the Petition.
`The parties are further invited to address (a) whether, and to what
`extent, Petitioner had sufficient notice that the Petition could be denied
`under 35 U.S.C. § 314(a), (b) whether, and to what extent, Petitioner’s
`
`5
`
`

`

`Case IPR2019-00910 (Patent 9,757,040 B2)
`Case IPR2019-00911 (Patent 9,861,286 B1)
`Case IPR2019-00913 (Patent 9,651,533 B2)
`Case IPR2019-00914 (Patent 9,861,286 B1)
`Case IPR2019-00916 (Patent 9,651,533 B2)
`Case IPR2019-00917 (Patent 9,757,040 B2)
`
`District Court invalidity contentions are the same as or substantially similar
`to the unpatentability grounds raised in the Petition, (c) whether Petitioner
`has filed any dispositive invalidity motions in the District Court, the grounds
`raised in any such motions, and Patent Owner’s response to the same, and
`(d) whether, and to what extent, any finding on the validity or invalidity of
`the claims challenged in the District Court proceeding would have an issue
`preclusive effect on the patentability or unpatentability of the claims
`challenged in the cases before the Board, should the Board institute inter
`partes review.
`
`
`ORDER
`In consideration of the foregoing, it is
`ORDERED that Petitioner is authorized to file a reply, in each of the
`proceedings identified above, limited to seven (7) pages discussing the
`Board’s discretion to deny institution under 35 U.S.C. § 314(a), and due no
`later than September 30, 2019; and
`FURTHER ORDERED that Patent Owner is authorized to file a sur-
`reply, in each of the proceedings identified above, limited to seven (7) pages
`discussing the Board’s discretion to deny institution under 35 U.S.C.
`§ 314(a), and due no later than October 4, 2019.
`
`
`
`
`
`
`6
`
`

`

`Case IPR2019-00910 (Patent 9,757,040 B2)
`Case IPR2019-00911 (Patent 9,861,286 B1)
`Case IPR2019-00913 (Patent 9,651,533 B2)
`Case IPR2019-00914 (Patent 9,861,286 B1)
`Case IPR2019-00916 (Patent 9,651,533 B2)
`Case IPR2019-00917 (Patent 9,757,040 B2)
`
`PETITIONER:
`Jeffrey P. Kushan
`Ching-Lee Fukuda
`Kathi Cover
`Thomas A. Broughan III
`jkushan@sidley.com
`clfukuda@sidley.com
`kcover@sidley.com
`tbroughan@sidley.com
`
`PATENT OWNER:
`Thomas A. Lewry
`John S. LeRoy
`Robert C.J. Tuttle
`John M. Halan
`Christopher C. Smith
`OMSC0110IPR1@brookskushman.com
`
`
`
`
`
`
`7
`
`