position of the Office as to unpatentability before the action 1s made final") and content
`
`requirements ("a rebuttal of any arguments raised in the patent owner's response") on final
`
`Office action in ex parte reexamination that are not set forth in 37 C.F.R. § 1. I 13 and that are not
`
`required in initial examination under MPEP § 706.07 due to the substantial differences between
`
`initial examination and ex parte reexamination (described in MPEP § 2271).
`
`Because the CRU's Decision did not consider the requirements set forth in MPEP § 2271,
`
`the CRU's Decision incorrectly concluded that "[i]n making an action final, the examiner is not
`
`required to respond to every argument made by Patent Owner." Decision at 4. Similarly, as
`
`evidenced by the Examiner's reliance on MPEP § 706.07 in the Advisory Action, the Examiner
`
`failed to consider the requirements of MPEP § 2271 in preparing the Final Office Action. MPEP
`
`§ 2271 requires that the final Office action "include a rebuttal of any arguments raised in the
`
`patent owner's response." As noted in the Initial Petition, numerous arguments presented by
`
`Rembrandt were not addressed in the Final Office Action. See, e.g., Initial Petition at 6-10.
`
`Accordingly, due to the failure of the CRU's Decision to apply the requirements of MPEP
`
`§ 2271, which directly resulted in at least the above described errors, the Initial Petition must be
`
`reconsidered, and the Final Office Action must be vacated or rendered non-final.
`
`The CRU's Decision Confirms that the Final Office Action Set Forth a New Ground of
`Rejection
`
`In the CRU's Decision, the CRU Director argues that no new grounds of rejection were
`
`set forth in the Final Office Action:
`
`Keeping in mind that the ultimate criterion of whether a
`rejection is considered 'new' is whether the appellant had fair
`opportunity to react to the thrust of the rejection, Patent Owner
`indeed had such an opportunity to respond here. Upon receipt of
`the initial rejection, Patent Owner had notice that it had to show
`that the art of record, namely Y amano, does not teach, or
`teaches away from, a destination address.
`
`6
`
`Apple Exhibit 1010
`
`IPR2020-00033 Page 01101
`
`

`

`Decision at 4 (emphasis added).
`
`This is, in fact, the very point Rembrandt made in the Initial Petition. Rembrandt was on
`
`notice that the Office was relying on Yamana as allegedly teaching the destination address of
`
`claims 2 and 59. In the Non-Final Office Action, the Examiner conceded that "Snell does not
`
`expressly teach wherein at least one group of transmission sequences is addressed for an
`
`intended destination of the payload" and, therefore, asserted that "Yamana discloses transmitting
`
`a group of transmission sequences or messages, including a preamble and main body, and that
`
`the preamble includes a destination address 'for an intended destination of the payload portion.'"
`
`Non-Final Office Action at 14, 16-17; see also Initial Petition at 13. Accordingly, Rembrandt
`
`agrees with the CRU Director that after the Non-Final Office Action Rembrandt was on notice
`
`that it needed to address the deficiencies in the Yamana reference with regard to the recited
`
`destination address. The problem with the Final Office Action is that the Examiner relied on,for
`
`the first time, Snell as teaching the destination address:
`
`Snell teaches that the transceiver is for use in a WLAN
`( col. 4, lines 41- 4 7). It is known in the art that a packet has a
`destination address in WLAN and it is so well known that Snell
`. . . Snell inherently teaches it.
`does not even mention it.
`
`Final Office Action at 42 (emphasis added).
`
`In other words, between the Non-Final Office Action and the Final Office Action, the
`
`Examiner altered the obviousness grounds of rejection -
`
`in the Non-Final Office Action,
`
`Yamana was relied on to the "destination address," while in the Final Office Action, Snell is also
`
`relied on to teach the "destination address." As noted in the CRU's Decision, "Patent Owner had
`
`notice that it had to show that the art of record, namely Yamana, does not teach, or teaches away
`
`from, a destination address." But prior to the Final Office Action, Rembrandt had no notice that
`
`7
`
`IPR2020-00033 Page 01102
`
`

`

`Snell was being relied on to teach the destination address. 1 The Examiner's reliance on Snell for
`
`the first time in the Final Office Action runs contrary to MPEP § 2271, which requires that the
`
`Examiner "twice provide the patent owner with such information and references as may be
`
`useful in defining the position of the Office as to unpatentability before the action is made final."
`
`(emphasis added).
`
`Furthermore, when the Examiner presents a new rejection based on inherency, as is the
`
`case, here, the new inherency arguments should be set forth as a new ground of rejection. See,
`
`e.g., Application of Echerd, 471 F.2d 632, 635 (C.C.P.A. 1973) ("Under such circumstances,
`
`appellants should have been accorded an opportunity to present rebuttal evidence as to the new
`
`assumptions of inherent characteristics made by the board.").
`
`Thus, it is clear that the Final Office Action raises a new ground of rejection.
`
`The Examiner's New Claim Construction in the Final Office Action is a New Ground of
`Rejection
`
`The CRU's Decision does not contest that the Examiner set forth a new definition for the
`
`claim term "different type[s]' of modulation methods. Decision at 4.
`
`Instead, the CRU's
`
`Decision argues that "the use of extrinsic evidence, such as dictionary definitions, does not
`
`constitute a new ground of rejection." Id. There are numerous issues with this determination, all
`
`of which warrant reconsideration of the Decision.
`
`First, the new definition for "different type[s]' of modulation methods does not come
`
`from extrinsic evidence, such as a dictionary. See, e.g., Final Office Action at 31. Instead, the
`
`1 For completeness, Rembrandt notes that the anticipation rejection over Snell also failed to put
`
`Rembrandt on notice that Snell allegedly taught the "destination address." That's because, in the
`
`anticipation rejection, the Examiner did not give patentable weight to any of the recitations that
`
`included the "destination address" at issue in the obviousness grounds. See, e.g., Non-Final
`
`Office Action at 9 and 11.
`
`8
`
`IPR2020-00033 Page 01103
`
`

`

`Examiner makes a conclusory statement about how the term will be interpreted.
`
`Id.
`
`Accordingly, the Decision's reliance on an alleged ability to rely on dictionary definitions
`
`without setting forth such a definition in a new ground of rejection is a non sequitur as the
`
`Examiner did not set forth a dictionary definition in the Final Office Action.
`
`Second, even if the Examiner had set forth a dictionary definition for "different type[s]' of
`
`modulation methods, such a new definition would have amounted to a new ground of rejection.
`
`As explained by the Federal Circuit, the ordinary procedure is to set forth a new ground of
`
`rejection when a dictionary is relied upon, unless the dictionary serves a minor role:
`
`Ordinarily, citation by the board of a new reference,
`such as the dictionary in this case, and reliance thereon to
`support a rejection, will be considered as tantamount to the
`assertion of a new ground of rejection. This will not be the case,
`however, where such a reference is a standard work, cited only to
`support a fact judicially noticed and ... the fact so noticed plays a
`minor role, serving only to fill in the gaps which might exist in the
`evidentiary showing made by the Examiner to support a particular
`ground for rejection.
`
`In re Biedermann, 733 F.3d 329, 338 (Fed. Cir. 2013) (internal citations and quotations omitted)
`(emphasis added).
`
`Third, the correct construction of "different type[s]' of modulation methods plays more
`
`than a minor role in the current proceeding. The correct construction of this term is what
`
`resulted in the Federal Circuit confirming the patentability of the claims at issue in the present
`
`proceeding after they were challenged in district court:
`
`Contrary to the way Samsung has cast the issue, whether
`Boer meets the "different types" limitation under the court's
`construction is a factual question. Particularly with regard to
`obviousness, it is a factual question going to the scope and content
`of the prior art. See Graham v. John Deere Co. of Kan. City, 383
`U.S. 1, 17, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). We review such
`factual questions underlying obviousness for substantial evidence.
`Circuit Check, 795 F.3d at 1334. Taken with Dr. Morrow's
`testimony,
`the fact
`that Boer's DBPSK and PPM/DQPSK
`
`9
`
`IPR2020-00033 Page 01104
`
`

`

`modulation methods both alter phase is substantial evidence to
`support the jury's presumed fact finding that Boer did not teach the
`"different types" limitation.
`
`Rembrandt Wireless Techs., LP v. Samsung Elecs. Co., 853 F.3d 1370, 1379 (Fed. Cir. 2017).
`
`The art and grounds of rejection in the current proceeding rely on DBPSK and DQPSK,
`
`which are similar to "Boer's DBPSK and PPM/DQPSK modulation methods" that were found by
`
`the Federal Circuit to be insufficient to render the subject claims of the '580 Patent unpatentable.
`
`Therefore, construction of "different type[s]' of modulation methods is not a minor issue for
`
`which extrinsic evidence may be cited without setting forth a new ground of rejection.
`
`Fourth, it is the practice of the Office to set forth new grounds of rejection in response to
`
`a new claim construction. Rembrandt provides the following small sampling of the Office's
`
`recent decisions illustrating this practice:
`
`the
`is different from
`Since our claim interpretation
`Examiner's and our rationale for affirming the rejections is
`different from the Examiner's, we designate the affirmances 2-4 as
`new grounds of rejections.
`
`Woodbolt Distribution, LLC. Requester & Respondent, APPEAL 2016-000745, 2016 WL
`2866240, at *17 (May 13, 2016).
`
`Nevertheless, because we disagree with the Examiner's
`claim interpretation, and because our findings and explanation
`expand upon and/or differ from the Examiner's in some ways, we
`designate our affirmance as New Grounds of Rejection, giving
`Appellants a fair opportunity to respond in prosecution.
`
`Ex Parte Shelly Lynn Shields & Omar Yousif Abdelmagid, APPEAL 2017-000052, 2017 WL
`5508884, at *7 (Oct. 30, 2017).
`
`Because in some instances the claim interpretation and
`reasoning we rely on to sustain the rejections of claims I and 4-9
`differs from the Examiner's claim interpretation, we designate our
`affirmance of the rejections of these claims as new grounds of
`rejection so as
`to provide Appellants with a full and fair
`opportunity to respond to the thrust of the rejections.
`
`Ex Parte Luca Antonio Bortoloso, Guido Giuffrida, & Isabella Roncagliolo, APPEAL 2015-
`006985, 2016 WL 6216650, at *5 (Oct. 20, 2016).
`
`10
`
`IPR2020-00033 Page 01105
`
`

`

`Because in some instances the claim interpretation and
`reasoning we rely on to sustain the rejections of claims 1-12 and
`14-21 differs from those of the Examiner, we designate our
`affirmances of the rejections of these claims as new grounds of
`rejection so as
`to provide Appellants with a full and fair
`opportunity to respond to the thrust of the rejections.
`
`Ex Parte Vassilina Nikoulina &Agnes Sandor, APPEAL 2016-003107, 2017 WL 244135, at *12
`(Jan. 17, 2017).
`
`Finally, in the following quotation, the CRU's Decision may be suggesting that a new
`
`ground of rejection may be permissible in response to Rembrandt rebuttal arguments:
`
`Patent Owner conversely argues that the examiner made
`new grounds of rejection because the examiner apparently, actually
`responded to all of Patent Owner's arguments. Responding to
`Patent Owner's arguments is not considered a new ground of
`rejection.
`
`Decision at 4.
`
`In any case, while it is unclear if the CRU Director is argumg that the Examiner's
`
`arguments did not amount to new grounds of rejection, or is instead suggesting that rebuttal
`
`arguments cannot be considered new grounds of rejections, the latter is a clear misstatement of
`
`the law. It is well established that "A new ground of rejection is not negated by the fact that the
`
`Board is responding to an appellant's argument." In re Biedermann, 733 F.3d 329, 338 (Fed. Cir.
`
`2013); see also MPEP § 2271 ("[T]he examiner will twice provide the patent owner with such
`
`information and references as may be useful in defining the position of the Office as to
`
`unpatentability before the action is made final."). As for the former, Rembrandt notes that the
`
`discussion above, the discussion in the Initial Petition, and the discussion in the Supplemental
`
`Petition show that the Examiner's rebuttal arguments clearly set forth new grounds of rejection.
`
`As also discussed above and contrary to the CRU Director's statement, in the Initial Petition and
`
`in the Supplemental Petition, the Examiner did not "actually respond[] to all of Patent Owner's
`
`arguments." See, e.g., Initial Petition at 6-10.
`
`11
`
`IPR2020-00033 Page 01106
`
`

`

`Conclusion
`
`In light of the errors in the CRU' s Decision noted above, Rembrandt respectfully requests
`
`that the Initial Petition be reconsidered, and the Director exercise his supervisory authority to
`
`either vacate the Final Office Action of July 18, 2017 or at least make it non-final, as requested
`
`in Rembrandt's Initial Petition. Rembrandt further requests that the Office's decision on this
`
`Request for Reconsideration be made a final agency action. See, e.g., MPEP § 1002.02.
`
`To the extent the Office believes any rules prevent full consideration of this petition,
`
`Rembrandt further petitions the Director to suspend such rules under the power granted to the
`
`Director by 37 C.F.R. § 1.183.
`
`Any fee required for submission of this petition may be charged to Counsel's Deposit
`
`Account Number 02-2135.
`
`Date: November 27, 2017
`
`By:
`
`Respectfully submitted,
`
`/Michael V. Battaglia/
`Michael V. Battaglia
`Reg. No. 64,932
`ROTHWELL, FIGG, ERNST
`& MANBECK, P.C.
`607 14th Street, N.W., Suite 800
`Washington, DC 20005
`Phone: 202-783-6040
`Facsimile: 202-783-6031
`
`Attorney for Petitioner
`Rembrandt Wireless Technologies, LP
`
`Nancy J. Linck, Ph.D.
`cc:
`Counsel for Rembrandt Wireless Technologies, LP
`
`12
`
`IPR2020-00033 Page 01107
`
`

`

`Electronic Acknowledgement Receipt
`
`EFSID:
`
`Application Number:
`
`31045629
`
`90013808
`
`International Application Number:
`
`Confirmation Number:
`
`2211
`
`Title of Invention:
`
`SYSTEM AND METHOD OF COMMUNICATION USING AT LEAST TWO
`MODULATION METHODS
`
`First Named Inventor/Applicant Name:
`
`8023580
`
`Customer Number:
`
`6449
`
`Filer:
`
`Michael Vincent Battaglia/Judith Pennington
`
`Filer Authorized By:
`
`Michael Vincent Battaglia
`
`Attorney Docket Number:
`
`3277-0114US-RXM 1
`
`Receipt Date:
`
`Filing Date:
`
`Time Stamp:
`
`27-NOV-2017
`
`12-SEP-2016
`
`14:07:04
`
`Application Type:
`
`Reexam (Patent Owner)
`
`Payment information:
`
`Submitted with Payment
`
`I no
`
`File Listing:
`
`Document
`Number
`
`Document Description
`
`File Name
`
`File Size(Bytes}/
`Message Digest
`
`Multi
`Part /.zip
`
`Pages
`(if appl.)
`
`90926
`
`1
`
`ReqReconsideration.pdf
`
`yes
`
`13
`
`7e Scb0d 22bb0644 773 c0318d 5 d09c4 b96e
`1c7039
`
`IPR2020-00033 Page 01108
`
`

`

`Multipart Description/PDF files in .zip description
`
`Document Description
`
`Reexam Certificate of Service
`
`Reexam Miscellaneous Incoming Letter
`
`Start
`
`13
`
`1
`
`End
`
`13
`
`12
`
`Warnings:
`
`Information:
`
`Total Files Size (in bytes)
`
`90926
`
`This Acknowledgement Receipt evidences receipt on the noted date by the USPTO of the indicated documents,
`characterized by the applicant, and including page counts, where applicable. It serves as evidence of receipt similar to a
`Post Card, as described in MPEP 503.
`
`New Agglications Under 35 U.S.C. 111
`If a new application is being filed and the application includes the necessary components for a filing date (see 37 CFR
`1.53(b)-(d) and MPEP 506), a Filing Receipt (37 CFR 1.54) will be issued in due course and the date shown on this
`Acknowledgement Receipt will establish the filing date of the application.
`National Stage of an International Agglication under 35 U.S.C. 371
`If a timely submission to enter the national stage of an international application is compliant with the conditions of 35
`U.S.C. 371 and other applicable requirements a Form PCT /DO/EO/903 indicating acceptance of the application as a
`national stage submission under 35 U.S.C. 371 will be issued in addition to the Filing Receipt, in due course.
`New International Agglication Filed with the USPTO as a Receiving Office
`If a new international application is being filed and the international application includes the necessary components for
`an international filing date (see PCT Article 11 and MPEP 181 O), a Notification of the International Application Number
`and of the International Filing Date (Form PCT/RO/1 OS) will be issued in due course, subject to prescriptions concerning
`national security, and the date shown on this Acknowledgement Receipt will establish the international filing date of
`the application.
`
`IPR2020-00033 Page 01109
`
`

`

`CERTIFICATE OF SERVICE
`
`It is hereby certified that on this 6th day of December, 2017, the foregoing REQUEST
`
`FOR EXTENSION OF TIME PURSUANT TO 37 C.F.R. § 1.550 was served, by first-class
`
`U.S. Mail, on the attorney of record for the third-party Requesters Samsung Electronics Co., Ltd.
`
`and Samsung Electronics America, Inc., at the following address:
`
`J. Steven Baughman, Esq.
`Ropes & Gray LLP
`IPRM - Floor 43
`Prudential Tower
`800 Boylston Street
`Boston, Massachusetts 02199-3600
`Phone: 202-508-4606
`Facsimile: 202-383-8371
`
`/Michael V. Battaglia/
`Michael V. Battaglia
`Reg. No. 64,932
`
`13
`
`IPR2020-00033 Page 01110
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In Ex Parte Reexamination of
`
`Group Art Unit: 3992
`
`Gordon F. BREMER
`
`Patent No.:
`
`8,023,580 B2
`
`Control No.: 90/013,808
`
`Issued: September 20, 2011
`
`Reexam Request Filed: September 12, 2016
`
`For:
`
`SYSTEM AND METHOD OF COMMUNICATION USING AT LEAST TWO
`MODULATION METHODS
`
`REQUEST FOR EXTENSION OF TIME PURSUANT TO 37 C.F.R. § 1.550
`
`In Ex Parte Reexamination Control No. 90/013,808 ("'808 Reexamination"), Patent
`
`Owner ("Rembrandt") respectfully requests a one (1) month extension of time to file its notice of
`
`appeal, extending the due date for Rembrandt's notice of appeal from December 18, 2017 to
`
`January 18, 2018. As will be shown through the discussion below, sufficient cause exists for the
`
`granting of the present request.
`
`Statement of Facts
`
`1) On September 12, 2016, Samsung Electronics America, Inc. ("Requester") filed a Request
`
`for Ex Parte Reexamination of U.S. Patent No. 8,023,580 ("Request"). Set forth in the
`
`Request were alleged substantial new questions of patentability based in part on U.S. Patent
`
`No. 5,982,807 to Snell ("Snell"), as well as Harris 1064.4 and Harris AN9614 (collectively
`
`the "Harris documents").
`
`2) On September 27, 2017, the Office issued an Order granting reexamination of claims 2 and
`
`59 of the '580 patent ("Order").
`
`1
`
`IPR2020-00033 Page 01111
`
`

`

`3) On September 30, 2016 (prior to receiving the Office's Order), Rembrandt filed a Petition
`
`Requesting the Director to Exercise Her Discretionary Authority Under 35 U.S.C. § 325(d)
`
`requesting that the Director reject Samsung's Request("§ 325(d) Petition").
`
`4) On November 22, 2016, the Office of Patent Legal Administration ("OPLA") dismissed
`
`Rembrandt's § 325(d) Petition, in essence, focusing on whether there was a substantial new
`
`question of patentability rather than considering the reach of§ 325(d).
`
`5) On January 24, 2017, the Office issued a Non-Final Office Action which, inter alia, raised
`
`issues beyond the scope of reexamination.
`
`6) On February 9, 2017, Rembrandt filed a petition asking the Director to withdraw the January
`
`24, 2017 Non-Final Office Action and revise and reissue another Non-Final Office Action.
`
`7) On March 27, 2017, the CRU Director vacated the January 24, 2017 Non-Final Office Action
`
`because it "include[d] a discussion of issues outside the scope of ex parte reexamination .... "
`
`The Decision also indicated the Office Action "will form no part of the record and will not be
`
`available to the public."
`
`8) On March 31, 2017, the Office issued a second Non-Final Office Action.
`
`9) On June 30, 2017, Rembrandt filed a Reply to the second Non-Final Office Action. The
`
`Reply included arguments for patentability supported by evidence submitted through Dr.
`
`Robert Akl (37 C.F.R. § 1.132 Declaration of Dr. Robert Akl ("Akl Dec.")). The Reply also
`
`included arguments challenging the status of the Harris documents as prior art. Reply at 55-
`
`69.
`
`10) On July 18, 2017, the Office issued a Final Office Action. The Final Office Action, inter
`
`alia, did not address Patent Owner's argument that the Harris documents had not been shown
`
`2
`
`IPR2020-00033 Page 01112
`
`

`

`to be prior art, as is legally required under the patent laws, i.e., had not been shown to be
`
`accessible to the relevant public.
`
`11) On September 18, 2017, Rembrandt filed a Response to the Final Office Action ("Response")
`
`that addressed the technical and legal errors in the Final Office Action. Concurrent with the
`
`filing of the Response, Rembrandt filed three documents: (1) a petition seeking termination
`
`of the grounds of rejection that relied upon the Harris documents ("Harris Petition"), (2) a
`
`request for reconsideration of the Office's earlier dismissal of a request to terminate the '808
`
`reexamination pursuant to 35 U.S.C. § 325(d) ("§ 325(d) Reconsideration Request") and for a
`
`final agency action, and (3) a petition to vacate or rescind the finality of the Final Office
`
`Action ("Petition to Rescind Finality").
`
`12) On October 16, 2017, the Office issued the Advisory Action in which the examiner admitted
`
`that she included new arguments in the final Office Action even though Rembrandt did not
`
`amend the claims or cite any new art (Advisory Action at 3). The Advisory Action set
`
`December 18, 2017 as the due date for Rembrandt's notice of appeal.
`
`13) On November 13, 2017, the Director of the Central Reexamination Unit ("CRU") issued a
`
`decision dismissing the September 18 Petition to Rescind Finality ("CRU's Decision"). In
`
`the CRU's Decision, the CRU Director makes errors of procedure and fact that justify
`
`reconsideration of the September 18 Petition to Rescind Finality.
`
`14) On November 14, 2017 (prior to receipt of the CRU's Decision denying the September 18
`
`Petition to Rescind Finality), Rembrandt filed a supplemental petition ("Supplemental
`
`Petition") again requesting that the Final Office Action be vacated or rendered non-final and
`
`requesting that the Office consider certain admissions made by the Examiner in the October
`
`3
`
`IPR2020-00033 Page 01113
`
`

`

`16 Advisory Action. Those admissions further support Rembrandt's argument that the Final
`
`Office Action should be vacated or rendered non-final.
`
`15) On November 24, 2017, Rembrandt filed a request for reconsideration of the CR U's Decision
`
`("Finality Reconsideration Request") and for a final agency action.
`
`Sufficient Cause Exists for Granting Patent Owner's Request for Extension of Time
`
`37 C.F.R. § 1.550(c) requires a showing of sufficient cause for extensions of time in ex
`
`parte reexaminations. Rembrandt respectfully submits that sufficient cause exists to grant a one(cid:173)
`
`month extension of time for Rembrandt to file its notice of appeal in order to allow consideration
`
`of Rembrandt's pending petitions and requests for reconsideration. Specifically, a decision in
`
`one or more of the pending petitions and requests for reconsideration will prevent prejudice to
`
`Rembrandt, reduce or simplify issues on appeal, and/or render an appeal unnecessary. With
`
`respect to preventing prejudice to Rembrandt, upon filing the Notice of Appeal, Rembrandt will
`
`need to begin expending substantial resources to prepare its appeal brief, all of which will be
`
`wasted if any of the petitions are granted. Given that Rembrandt has been forced to spend
`
`millions of dollars to date defending numerous IPRs which failed to result in invalidation of the
`
`challenged claims, it would be prejudicial to demand that Rembrandt spend still more money
`
`prior to any decision on the pending petitions. Therefore, sufficient cause exists to grant
`
`Rembrandt a one-month extension of time to file its notice of appeal. Furthermore, there will be
`
`no prejudice to any party, including Requester Samsung, if Rembrandt is granted a one-month
`
`extension of time (as explained below).
`
`Rembrandt's Finality Reconsideration Request Provides Sufficient Cause to Grant an
`Extension of Time
`
`The Office recognizes that the grounds of rejection in final Office actions "must ... be
`
`clearly developed to such an extent that the patent owner may readily judge the advisability of an
`
`4
`
`IPR2020-00033 Page 01114
`
`

`

`appeal." MPEP § 2271. On September 18, 2017, Rembrandt challenged the finality of the Final
`
`Office Action because the Office action failed to address the substance of numerous arguments
`
`for patentability (and failed to address the evidence supporting those arguments) despite the
`
`requirement to do so. Petition to Rescind Finality at 6. Rembrandt further challenged the
`
`finality of the Office action because the Office action "failed to address any of the evidence
`
`submitted in the Akl declaration supporting Rembrandt's arguments, despite the requirement to
`
`do so."
`
`Id. at 11. Rembrandt also challenged the finality of the Office action because the
`
`Examiner raised numerous new arguments in the new Office action, including new grounds of
`
`rejection, to which Rembrandt was not able to adequately respond. In other words, Rembrandt
`
`has directly challenged whether the Final Office Action "clearly developed [the grounds of
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`rejection] to such an extent that the patent owner may readily judge the advisability of an
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`appeal." If Rembrandt is forced to file its notice of appeal prior receiving a final decision on
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`these issues, Rembrandt will be prejudiced by having to prematurely determine whether or not to
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`file an appeal before being able to "readily judge the advisability of an appeal" and by having to
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`expend substantial resources preparing its appeal brief.
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`While the CRU Director dismissed Rembrandt's Petition to Rescind Finality, Rembrandt
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`has filed the Finality Reconsideration Request to address clear errors in the CRU's Decision and
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`to seek a final agency action regarding this issue. For example, the CRU Director made clear
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`legal errors in failing to consider the relevant requirements of MPEP § 2271. See, e.g., CRU's
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`Decision at 3; see also, e.g., Finality Reconsideration Request at 4-6. The CRU's Decision also
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`ignored the existence of at least one new ground of rejection in the Final Office Action.
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`Specifically, Rembrandt noted that the Examiner relied on a first reference, Yamana, as
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`disclosing features of a pending claim in the Non-Final Office Action, but changed the rejection
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`5
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`IPR2020-00033 Page 01115
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`to rely on a different reference, Snell, in the Final Office Action. Finality Reconsideration
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`Request at 6-8. The CRU's decision confirms that Yamana was relied upon in the Non-Final
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`Office Action, but fails to even acknowledge the Examiner's reliance on Snell instead in the
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`Final Office Action. Compare CRU's Decision at 4 with Final Office Action at 42; see also, e.g.,
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`Finality Reconsideration Request at 6-8. The CRU's Decision essentially compounds the
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`Examiner's failure to "clearly [develop the grounds of rejection] to such an extent that the patent
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`owner may readily judge the advisability of an appeal." The Final Office Action relies on Snell.
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`In contrast, the CRU's Decision relies on the Examiner's position in the initial Office action
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`based on Y amano and claims, that, in spite of the Examiner's change of position, "Patent Owner
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`had notice that it had to show that the art of record, namely Yamana, does not teach, or teaches
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`away from, a destination address." CRU's Decision at 4. Given the CRU's Decision, it simply
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`is not clear which reference will need to be addressed in an appeal brief -- Snell or Yamana?
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`Contrary to the CRU Decision (see id.), the Final Office Action did, in fact, take a "tact which
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`can fairly be considered a new ground of rejection," or one "based on a different teaching."
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`Rembrandt's Finality Reconsideration Request also asks the Office to consider that the Examiner
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`admitted that she had presented new arguments in the Final Office Action. See, e.g., Advisory
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`Action at 3; see also, e.g., Supplemental Petition at 5.
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`Forcing Rembrandt to file its notice of appeal and begin preparing its appeal brief prior to
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`a decision on Rembrandt's Finality Reconsideration Request is particularly prejudicial within the
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`procedural constraints of ex parte reexamination. The Office readily recognizes that in ex parte
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`reexamination "the patent owner does not have the right to renew or continue the proceedings ...
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`by filing a request for continued examination," and, because of this limitation, the Office
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`provides high standards for final Office actions in ex parte reexaminations under MPEP § 2271.
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`6
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`IPR2020-00033 Page 01116
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`For Rembrandt to address the pending grounds of rejection in its appeal brief, it must be clear
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`which references are being relied upon for each element of the claimed invention. The current
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`rejections are anything but clear. Compare CRU's Decision at 4 with Final Office Action at 42;
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`see also, e.g., Finality Reconsideration Request at 6-8. Furthermore, in the event Rembrandt's
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`Finality Reconsideration Request is granted after jurisdiction transfers to the Patent Trial and
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`Appeal Board ("PTAB "), Rembrandt may be required to separately petition the PT AB to remove
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`the proceeding from appeal. This would not only prejudice Rembrandt in the form of additional
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`effort and expense, but it would be a waste of Office resources, providing further sufficient cause
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`to grant this Request for Extension of Time.
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`Rembrandt's Pending Harris Petition Provides Sufficient Cause to Grant an Extension of
`Time
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`On September 18, 2017, Rembrandt filed a petition seeking to terminate one or more
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`grounds of rejection in the present proceeding due to the Examiner's reliance on references that
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`have not been shown to be prior art. See, e.g., Harris Petition, passim. As will be shown below,
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`the Harris Petition should result in the termination of one or more grounds of rejection in the
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`present proceeding, reducing and simplifying issues for appeal. Accordingly, allowing
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`additional time for the Office to decide the Harris Petition provides sufficient cause for granting
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`the present Request for Extension of Time.
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`The Harris documents are relied on in at least each of the pending rejections under 35
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`U.S.C. § 103. See, e.g., Final Office Action at 7-15, 24-25. Without providing any legal support
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`for her position, the Examiner alleges that the Harris documents are prior art with regard to the
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`'580 patent because the Harris documents were submitted with the application that matured into
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`the Snell reference, which, according to the Examiner, rendered the Harris documents publicly
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`accessible, and therefore, available for incorporation by reference into Snell. See, e.g., Final
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`7
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`IPR2020-00033 Page 01117
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`Office Action of July 18, 2017 at 24 ("In other words, as long as the documents, i.e., Harris
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`AN9614 and Harris 4064.4, were provided by Snell at the time the application was filed, these
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`documents are publicly accessible and incorporation by reference is reasonable."). In fact, the
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`law is to the contrary. Previously, the Office addressed substantially the same evidence alleged
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`to support public accessibility in this case and deemed it insufficient. See, e.g., Microsoft Corp.
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`v. Biscotti Inc., Case IPR2014-01457, slip op. at 26-28 (PTAB Mar. 19, 2015) (Paper 9)
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`("Petitioner does not explain how submission of a document in an IDS of an unpublished,
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`ungranted patent application demonstrates public accessibility of the document, noting that
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`Petitioner does not identify any way that an interested person could or would have located the
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`document submitted in the IDS of an unpublished, ungranted patent application. . . . We are
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`persuaded that Petitioner has not demonstrated the public accessibility of the HDMI
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`Specification.").
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`The Exa