Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
` Paper 12
`Entered: July 22, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MAXELL, LTD.,
`Patent Owner.
`
`
`IPR2020-00407 (Patent 6,748,317 B2)
`IPR2020-00408 (Patent 6,430,498 B1)
` IPR2020-00409 (Patent 6,580,999 B2)1
`
`
`
`
`
`
`
`
`
`
`
`Before LYNNE E. PETTIGREW, MINN CHUNG, JOHN A. HUDALLA,
`JASON W. MELVIN, and FREDERICK C. LANEY, Administrative Patent
`Judges. 2
`
`PETTIGREW, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`1 This order will be entered in each case. The parties are not authorized to
`use this caption.
`2 This is not an order from an expanded panel of the Board. Administrative
`Patent Judges comprising the three-judge panels in all three proceedings are
`listed.
`
`
`Tel: 571-272-7822
`
`
`
`
` Paper 12
`Entered: July 22, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MAXELL, LTD.,
`Patent Owner.
`
`
`IPR2020-00407 (Patent 6,748,317 B2)
`IPR2020-00408 (Patent 6,430,498 B1)
` IPR2020-00409 (Patent 6,580,999 B2)1
`
`
`
`
`
`
`
`
`
`
`
`Before LYNNE E. PETTIGREW, MINN CHUNG, JOHN A. HUDALLA,
`JASON W. MELVIN, and FREDERICK C. LANEY, Administrative Patent
`Judges. 2
`
`PETTIGREW, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`1 This order will be entered in each case. The parties are not authorized to
`use this caption.
`2 This is not an order from an expanded panel of the Board. Administrative
`Patent Judges comprising the three-judge panels in all three proceedings are
`listed.
`
`
`
`IPR2020-00407 (Patent 6,748,317 B2)
`IPR2020-00408 (Patent 6,430,498 B1)
`IPR2020-00409 (Patent 6,580,999 B2)
`
`
`On July 17, 2020, a conference call was held among counsel for
`Apple Inc. (Petitioner), counsel for Maxell, Ltd. (Patent Owner), and Judges
`Pettigrew, Chung, Hudalla, Melvin, and Laney. The purpose of the call was
`to address Petitioner’s request for authorization to file a supplemental brief
`in each of these proceedings to address one of the factors set forth in Apple
`Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020)
`(precedential) (“Fintiv”). A court reporter engaged by Petitioner was on the
`call; Petitioner has filed the reporter’s transcript as Exhibit 1057. 3
`Fintiv provides factors the Board considers when determining whether
`to exercise its discretion to deny institution under 35 U.S.C. § 314(a) when
`there is a related, parallel district court action involving the challenged
`patent. Fintiv, Paper 11 at 5–16. After Patent Owner filed its Preliminary
`Response to the Petition, and pursuant to our authorization, the parties filed
`supplemental briefing and supporting documentary evidence addressing the
`Fintiv factors. See Paper 7 (order authorizing Reply and Sur-reply); Paper 8
`(Petitioner’s Preliminary Reply); Paper 10 (Patent Owner’s Preliminary Sur-
`reply).
`Petitioner now seeks to file an additional supplemental brief to
`address how a recent motion for summary judgment filed by Maxell in the
`parallel district court proceeding might affect the Fintiv analysis in these
`proceedings. Ex. 1057, 5:24–6:3. Petitioner explains that, in the summary
`judgment motion, Maxell challenges the public availability of the Abowd
`reference, an issue also raised by Patent Owner here. Id. at 6:16–23.
`
`
`3 Citations are to IPR2020-00407. The parties filed similar papers and
`exhibits in IPR2020-00408 and IPR2020-00409.
`
`2
`
`
`
`IPR2020-00407 (Patent 6,748,317 B2)
`IPR2020-00408 (Patent 6,430,498 B1)
`IPR2020-00409 (Patent 6,580,999 B2)
`
`Because the Board and district court apply different standards of proof and
`have before them different evidence on the public availability issue,
`Petitioner requests additional briefing to address the relevance of Maxell’s
`summary judgment motion to the analysis under Fintiv factor 4—the overlap
`between issues raised in the Board proceedings and in the parallel
`proceeding. Id. at 6:4–7, 6:24–10:2, 15:1–13.
`Patent Owner opposes Petitioner’s request, asserting there has been
`enough briefing on the Fintiv factors for the Board to make an informed
`decision. Id. at 11:9–12. Patent Owner points out that the issue of whether
`Abowd was publicly available prior art is the same here as it is in the district
`court proceeding. Id. at 12:16–23. Patent Owner also contends the evidence
`before both tribunals is substantially the same. Id. at 12:24–13:17.
`Having considered both parties’ positions, we determine that
`additional briefing is not warranted. We agree with Patent Owner that there
`has been sufficient briefing on the Fintiv factors, as each party has filed a
`supplemental brief with ten pages of argument relating to Fintiv. The parties
`agree that the question of whether Abowd was publicly available presents
`the same issue before the Board and the district court. Maxell’s summary
`judgment motion does not change the underlying issue that would be
`considered by both tribunals if the Board institutes inter partes reviews.
`Moreover, to the extent Petitioner contends that different standards of proof
`are relevant considerations under Fintiv, Petitioner had the opportunity to
`make that argument in its Preliminary Reply. For these reasons, we deny
`Petitioner’s request for authorization to file additional supplemental briefing
`to address the Fintiv factors.
`
`3
`
`
`
`IPR2020-00407 (Patent 6,748,317 B2)
`IPR2020-00408 (Patent 6,430,498 B1)
`IPR2020-00409 (Patent 6,580,999 B2)
`
`
`Accordingly, it is
`ORDERED that Petitioner’s request for authorization to file an
`additional supplemental brief is denied.
`
`
`PETITIONER:
`
`Adam P. Seitz
`Paul R. Hart
`Jennifer C. Bailey
`ERISE IP, P.A.
`adam.seitz@eriseip.com
`paul.hart@eriseip.com
`jennifer.bailey@eriseip.com
`
`
`PATENT OWNER:
`
`Robert G. Pluta
`Amanda S. Bonner
`Luiz Miranda
`James A. Fussell
`Saqib J. Siddiqui
`rpluta@mayerbrown.com
`astreff@mayerbrown.com
`lmiranda@mayerbrown.com
`jfussell@mayerbrown.com
`ssiddiqui@mayerbrown.com
`
`
`4
`
`
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