Pluta, Robert G.
`Precedential_Opinion_Panel_Request
`Jennifer Bailey; Adam Seitz; paul.hart@eriseip.com; FW-CLIENT-Maxell-Apple-Service
`Precedential Opinion Panel Request - IPR2020-00202
`Wednesday, July 22, 2020 2:12:46 PM
`IPR2020-00202 PO Request for Rehearing.pdf
`
`From:
`To:
`Cc:
`Subject:
`Date:
`Attachments:
`
`Dear Board,
`
` I write on behalf of Patent Owner Maxell, Ltd. to request Precedential Opinion Panel
`(“POP”) review of the Board’s panel decision in Apple Inc. v. Maxell, Ltd., IPR2020-00202,
`Paper 11 (PTAB July 15, 2020) (hereafter “Panel Decision”).
`
`I.
`
`Basis for POP Review
`
`Based on my professional judgment, I believe this case requires an answer to the
`following precedent-setting question of exceptional importance: whether under 35 U.S.C.
`Section 314(a), NHK Spring, IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential)
`and Apple v. Fintiv IPR2020-00019, Paper 11 (PTAB March 20, 2020) (precedential), the
`proper time with which to evaluate facts with respect to Fintiv Factor 4 and whether to deny
`institution based on 35 U.S.C. Section 314(a) is at the time the Petition is filed or sometime
`thereafter such as the date of Institution. Such a fixed timeframe—the filing of the Petition—
`for the Board’s Factor 4 analysis would prevent situations where, like here, petitioners
`manufacture a favorable situation by dropping overlapping prior art in the District Court. Such
`tactics do not promote NHK and Fintiv’s goal of efficiency and fairness.
`
`If the answer is “at the time the Petition is filed,” the Panel Decision’s analysis and
`conclusion with respect to Factor 4 would be the complete opposite than if the answer is “at
`the time of institution.” In the District Court Action, Apple relied upon the same prior art as
`this Petition until at least April 7, 2020 (four months after filing its Petition) at which point it
`selectively dropped certain prior art references in an attempt to compensate for its delay in
`filing its Petition.
`
`The POP should correct the Board’s course in this case where undue emphasis was
`placed on the overlap of issues, and where at the time of the filing of the Petition there was a
`complete overlap of issues, but Petitioner then took advantage of the timeframe between the
`filing of the petition and Institution to inject additional favorable facts to support its arguments
`against §314 denial. Fixing the “look back” date for Factor 4 as the date of the filing of the
`Petition promotes Fintiv’s quest for efficiency and fairness, rather than a shifting sands
`approach that allows petitioners to take advantage of deadlines and disclosures in each venue
`to create an inefficient and unfair process.
`
`Based on my professional judgment, I believe that the Panel Decision improperly
`applied the Director’s discretionary denial authority under 35 U.S.C. Section 314(a), NHK
`Spring, IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential) and Apple v. Fintiv
`IPR2020-00019, Paper 11 (PTAB March 20, 2020 (precedential), based solely or primarily on
`the undue weight it gave Fintiv Factor 4 (overlap of issues) over, for example, Factor 2 where
`in this circumstance trial will be complete many months prior to the Final Written Decision.
`Fintiv does not require complete overlap in issues or claims to weigh Factor 4 in favor of
`denial. Nor does Fintiv place particular emphasis on Factor 4 over other factors. Instead,
`Fintiv counsels that “the Board takes a holistic view of whether efficiency and integrity of the
`
`IPR2020-00202
`Ex. 3001 p. 1 of 2
`
`

`

`system are best served by denying or instituting review.” Fintiv at 6. The Board required
`complete overlap in claims and prior art in its analysis of Factor 4, leading to an unreasonable
`balancing of the Fintiv factors, even where the Board found more factors weigh in favor of
`denial than not.
`
`II.
`
`Conclusion
`
`For these reasons and those in the Request for Rehearing, which is being filing
`concurrently herewith and a copy of which is attached, Patent Owner seeks review by the POP
`and requests that the Board deny institution of inter partes review.
`
`Respectfully submitted,
`
`/Robert G. Pluta/
`Robert G. Pluta
`Attorney of Record for Maxell, Ltd.
`Mayer Brown LLP
`71 S. Wacker Drive
`Chicago, Illinois 60606
`(312) 701-8641
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`IPR2020-00202
`Ex. 3001 p. 2 of 2
`
`