From:
`To:
`Cc:
`Subject:
`Date:
`Attachments:
`
`O"Brien, David
`Precedential_Opinion_Panel_Request
`nrubin@raklaw.com; Jay Chung; Marc Fenster; James Tsuei; Shi, Hong; Ehmke, Andrew S.; Myrick, Krista
`Precedential Opinion Panel Request - IPR2020-00487
`Wednesday, October 14, 2020 10:28:32 PM
`image001.png
`IPR2020-00487 - Request for Rehearing.pdf
`
`Dear Honorable Board,
`
`I write on behalf of Petitioner, Apple Inc., regarding IPR2020-00487. On September 14, 2020, a
`panel of the Patent Trial and Appeal Board (“Board”) issued a Decision Denying Institution
`(“Decision,” Paper 9) in which the panel denied institution solely on the basis of the Board’s
`determination that Petitioner’s rationale for combining teachings of the Golan and Martin references
`was not sufficiently supported by rational underpinnings.
`
`That determination simply cannot be reconciled with the record including testimonial and
`documentary evidence introduced by Petitioner, but more significant for the Precedential Opinion
`Panel (“POP”), I believe, based on my professional judgement, this case requires an answer to
`precedent-setting questions of exceptional importance, including:
`
`1. Whether the Board may, consistent with 37 C.F.R. § 42.108(c), take into account mere
`attorney argument from a patent owner preliminary response—on the factual question of
`whether a skilled artisan would have been motivated to combine the prior art—while at the
`same time failing to view petitioner’s testimonial and documentary evidence on the issue of
`fact “in the light most favorable to the petitioner solely for purposes of decided whether to
`institute an inter partes review?”
`
`2. Whether the Board may, consistent with its judicial role and requirements of due process, act
`as patent owner’s technical expert—immune from cross-examination or challenge and, when
`relied upon at the preliminary stage, immune from even appellate review?
`
`I.
`
`Need for POP Review
`
`Petitioner respectfully requests that the Precedential Opinion Panel (“POP”) review the Decision for
`three independent reasons. First, POP review is needed to create binding agency authority with
`regard to the application of § 42.108(c) in proceedings where, as here, a patent owner advocates for
`non-institution based on mere attorney answers to factual questions such as whether a skilled artisan
`would have been motivated to combine the prior art. This is a particularly important issue where the
`Board, as here, purports to deny institution on substantive grounds rather than the statutorily
`afforded discretion to deny institution under § 314(a). Second, POP review is needed to provide
`clarity with regard to the substantive and evidentiary standards applied by the Board in evaluating a
`petitioner’s reasons for combining references. In particular, POP review is needed to ensure that
`standards employed by panels of the Board are consistent with well-established legal principals, such
`that decisions of the Board are neither arbitrary nor capricious and are not based on errant
`determinations or theories that could rise to the level of shenanigans lacking meaningful review.
`Third, POP review is needed to rehear the denial of institution in this case, to correct the panel’s
`errant threshold motivation to combine determination which cannot be reconciled with the record
`evidence. Correction of the panel’s errant threshold motivation to combine determination may be
`determinative in several additional matters currently pending before the Board, including IPR2020-
`00860, IPR2020-00861 and IPR2020-00862, each involving the same parties.
`
`II.
`
`The Panel’s Treatment of a Disputed Factual Issue Conflicts with Numerous Other
`IPR2020-00487
`Ex. 3001 p. 1 of 3
`
`

`

`Board Decisions that Apply § 42.108(c)
`
`Standard Operating Procedure 2 Revision 10 states that the “Precedential Opinion Panel also may be
`used to resolve conflicts between Board decisions….” SOP 2 Rev 10, p. 4. Here, the Decision
`conflicts with at least Paper 21 in IPR2017-02141, a Decision Granting Petitioner’s Requests for
`Rehearing. In IPR2017-02141, the Board panel acknowledged that, per 37 C.F.R. § 42.108(c),
`because “conflicting testimony create[d] a genuine issue of material fact, [it] should have viewed the
`material fact in the light most favorable to Petitioner solely for purposes of deciding whether to
`institute an inter partes review.” Yamaha Golf Car Co. v. Club Car, LLC, IPR2017-02141, Paper 21
`at 11 (PTAB Jun. 26, 2018). The Board acknowledged that it had resolved a factual dispute by
`crediting the patent owner’s testimonial evidence over the petitioner’s, such that its denial of
`institution was improper under the regulations. Accordingly, in Yamaha Golf, the panel granted the
`petitioner’s request for rehearing, viewed the competing testimonial evidence in accordance with the
`regulations, and instituted trial.
`
`The Decision in this proceeding, and its misapprehension of the requirements of § 42.108(c),
`conflicts with the correct application of the regulations in at least IPR2017-02141. See also Pungkuk
`EDM Mfg. Co. v. Ki Chul Seong, IPR2016-00763, Paper 14 at 15 (PTAB Sept. 8, 2016) (“Although
`we find Patent Owner’s arguments reasonable, Patent Owner’s testimonial evidence concerning
`disputed material facts will be viewed in the light most favorable to Petitioner for purposes of
`deciding whether to institute an inter partes review. 37 C.F.R. § 42.108(c).”); Google LLC et al. v.
`Zipit Wireless, Inc., IPR2019-01568, Paper 9 at 27–30 (PTAB Mar. 10, 2020) (conflicting expert
`testimony on teachings of prior art reference resolved in favor of petitioner); Solaredge Techs. Ltd. v.
`SMA Solar Tech. AG, IPR2019-01224, Paper 10 at 30 (PTAB Jan. 23, 2020) (conflicting expert
`testimony on motivation to combine resolved in favor of petitioner); Microsoft Corp. v. Uniloc 2017
`LLC, IPR2019-01026, Paper 7 at 10 (PTAB Dec. 4, 2019) (conflicting expert testimony on prior art
`teachings resolved in favor of petitioner); RTI Surgical, Inc. v. Lifenet Health, IPR2019-00570,
`Paper 16 at 34 (PTAB Sept. 3, 2019) (conflicting expert testimony on factual dispute resolved in
`favor of petitioner); American Nat’l Manuf., Inc. v. Sleep Number Corp., IPR2019-00514, Paper 10
`at 30 (Aug. 5, 2019) (conflicting testimony on inherent disclosure of prior art resolved in favor of
`petitioner); Hubei Grand Life Sci. and Tech. Co., Ltd. v. Vitaworks IP, LLC, IPR2018-01766, Paper
`10 at 29–30 (PTAB Apr. 9, 2019) (conflicting expert testimony on interpretation of prior art resolved
`in favor of petitioner).
`
`III.
`
`Conclusion
`
`For these reasons and those in the Request for Rehearing, which is being filed concurrently herewith
`(a copy of which is attached), Petitioner seeks review by the POP and respectfully requests that the
`Board institute inter partes review.
`
`Respectfully Submitted,
`
`David W. OBrien
`Lead Counsel for Petitioner Apple
`
`Counsel of record for Patent Owner are copied on this eMail.
`
`David O'Brien
`Partner
`david.obrien@haynesboone.com
`
`Haynes and Boone, LLP
`
`IPR2020-00487
`Ex. 3001 p. 2 of 3
`
`

`

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`IPR2020-00487
`Ex. 3001 p. 3 of 3
`
`