Trials@uspto.gov
`571-272-7822
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`Paper 6
`Date: December 6, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`FINTIV, INC.,
`Patent Owner.
`____________
`
`IPR2020-00019
`Patent 8,843,125 B2
`____________
`
`
`
`Before WILLIAM M. FINK, Vice Chief Administrative Patent Judge, and
`LINDA E. HORNER and LYNNE E. PETTIGREW, Administrative Patent
`Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
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`571-272-7822
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`
`
`
`
`
`
`Paper 6
`Date: December 6, 2019
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`FINTIV, INC.,
`Patent Owner.
`____________
`
`IPR2020-00019
`Patent 8,843,125 B2
`____________
`
`
`
`Before WILLIAM M. FINK, Vice Chief Administrative Patent Judge, and
`LINDA E. HORNER and LYNNE E. PETTIGREW, Administrative Patent
`Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`IPR2020-00019
`Patent 8,843,125 B2
`
`A conference call was held on December 5, 2019, among
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`Judges Horner and Pettigrew and respective counsel for Petitioner, Apple
`
`Inc., and Patent Owner, Fintiv, Inc. Petitioner requested the call to seek
`
`leave to file the Markman order recently issued by the district court in
`
`Fintiv, Inc. v. Apple Inc., Case No. 6:18-CV-372-ADA (W.D. Tex.), and a
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`paper addressing how Petitioner contends the prior art satisfies one claim
`
`construction provided by the district court that was not proposed by either
`
`party. Patent Owner informed us before the call that it opposes Petitioner’s
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`request.
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`DISCUSSION
`
`The Petition in this case was filed on October 28, 2019. See Paper 1.
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`The Board entered the Notice of Filing Date Accorded to the Petition on
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`November 15, 2019. See Paper 3. According to Petitioner, the district court
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`issued its Markman order on November 27, 2019.
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`Petitioner stated on the call that, in the district court proceeding, the
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`parties had proposed constructions for seven disputed claim terms.
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`Petitioner further explained that the district court adopted either Apple’s or
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`Fintiv’s proposed construction for six of the disputed claim terms, but for the
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`seventh term—“over-the air (OTA) proxy” or “OTA proxy”—the district
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`court did not adopt either party’s proposal and provided its own
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`construction. During the call, Patent Owner agreed with Petitioner’s
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`characterization of the district court’s Markman order.
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`Petitioner seeks to file the district court’s Markman order and a short
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`paper with accompanying exhibits to address how Petitioner contends the
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`prior art satisfies the term “OTA proxy” as construed by the district court.
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`According to Petitioner, the Petition analyzes the claims and the prior art
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`2
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`
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`IPR2020-00019
`Patent 8,843,125 B2
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`under both parties’ constructions of the term but not under the district
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`court’s later-issued construction.
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`Patent Owner opposes Petitioner’s request. Among other reasons
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`provided on the call, Patent Owner argues it would suffer prejudice if we
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`authorize Petitioner’s request because the filing deadline for its preliminary
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`response is February 15, 2019.
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`In inter partes review proceedings, pursuant to a 2018 amendment to
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`our rules, the Board now uses the same claim construction standard that
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`would be used to construe the claim in a civil action under 35 U.S.C.
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`§ 282(b). 37 C.F.R. § 42.100(b) (2019); see Patent Trial and Appeal Board
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`Consolidated Trial Practice Guide 45–46 (Nov. 19),
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`https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf (“Trial
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`Practice Guide”). The revised rule also provides that any prior claim
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`construction determination concerning a claim term in a civil action that is
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`timely made of record in an inter partes review will be considered.
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`37 C.F.R. § 42.100(b). The Trial Practice Guide provides that “[p]arties
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`should submit a prior claim construction determination by a federal
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`court . . . in an AIA proceeding as soon as that determination becomes
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`available.” Trial Practice Guide 47.
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`As we ruled during the conference call, we grant Petitioner’s request
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`under the particular circumstances in this case. A district court claim
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`construction determination preferably should be submitted with a paper such
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`as a petition or preliminary response, along with explanations. See Trial
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`Practice Guide 47. Nevertheless, in our view the timing here warrants
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`submission of the Markman order along with a supplemental brief by
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`Petitioner so that the district court’s claim construction and Petitioner’s
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`arguments are on record as soon as possible in this proceeding. The district
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`3
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`IPR2020-00019
`Patent 8,843,125 B2
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`court issued its Markman order only one month after the Petition in this case
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`was filed, and Petitioner promptly requested authorization to file the
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`Markman order and a short brief. Moreover, Patent Owner still has more
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`than ten weeks to file a preliminary response, providing ample time for
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`Patent Owner to incorporate into that paper any response to arguments in
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`Petitioner’s supplemental brief. As stated on the call, we will increase the
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`word limit for any preliminary response filed by Patent Owner in an amount
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`equal to the word limit of Petitioner’s supplemental brief.
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`Accordingly, it is:
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`ORDER
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`ORDERED that Petitioner is authorized to file the district court’s
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`Markman order as an exhibit;
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`FURTHER ORDERED that Petitioner is authorized to file a
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`supplemental brief addressing how Petitioner contends the prior art satisfies
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`the claim term “OTA proxy” under the district court’s construction of that
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`term, along with accompanying exhibits;
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`FURTHER ORDERED that Petitioner’s supplemental brief shall
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`be no longer than 1,000 words and shall be filed no later than
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`December 9, 2019;
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`FURTHER ORDERED that the word limit for any preliminary
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`response filed by Patent Owner is increased to 15,000 words; and
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`FURTHER ORDERED that the due date for a preliminary response
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`remains unchanged.
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`4
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`IPR2020-00019
`Patent 8,843,125 B2
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`PETITIONER:
`
`Travis Jensen
`K. Patrick Herman
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`T61ptabdocket@orrick.com
`P52ptabdocket@orrick.com
`
`
`PATENT OWNER:
`Jonathan Waldrop
`Rodney Miller
`John Downing
`KASOWITZ BENSON TORRES LLP
`jwaldrop@kasowitz.com
`rmiller@kasowitz.com
`jdowning@kasowitz.com
`
`5
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`
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