From:
`To:
`Subject:
`Date:
`
`wg_tech on behalf of Webmaster
`Precedential_Opinion_Panel_Request
`Precedential Opinion Panel (POP) Amicus Request Form
`Tuesday, April 6, 2021 1:22:07 PM
`
`Name = Joshua J Malone
`
`Affiliation = none
`
`Client represented = none
`
`Case number = IPR2020-01322
`
`Case name = Canon Inc. v. Optimum Ima
`
`Paper number = 10
`
`Type of amicus = Opposing POP Review
`
`Brief description = Rehearing should be denied in this case. The petitioner has not provided any basis for their
`assertion that the Niikawa reference is newly discovered prior art. There is no record evidence to support their
`position. The petition merely states: “In fact, the primary references were only uncovered by Petitioner in the last 2
`months (which is why the Petition was not filed earlier)”; without any evidence for their oversight. Petition at 5.
`Petitioner then makes several assertions – without proffering any evidence – that amount to an admission to
`performing an inadequate search in the first-filed case. Reply at 5-6. At the very least the petitioner must provide a
`declaration by the responsible attorney to establish facts for the panel to consider.
`
`The dispute over whether or not the decision was a proper application of Fintiv cannot be decided by the POP absent
`a factual record and panel finding on whether or not the prior art was actually “newly uncovered”.
`
`Petitioner also complains that they cannot assert the prior art in the parallel litigation because they missed the
`deadline. But that is their own fault. Furthermore, the district court has discretion to consider their “newly
`uncovered” prior art if it is in the interest of justice.
`
`But here it is not in fact, newly uncovered prior art. It is a published patent application in the same class as the
`patent at issue. Petitioner affirmed they knew of Niikawa when they cited it in their own patent applications
`US2005/0128316, US2006/0285034, and US2010/0321539. It was not hidden prior art, but was known to the
`petitioner all along.
`
`This petition and rehearing request smacks of gamesmanship. Petitioner seeks multiple attacks on the patent,
`exemption from deadlines in the first-filed action, and expansion of the litigation. The panel properly denied the
`petition under 316(b), because institution would likely have a harmful effect on the economy, the integrity of the
`patent system, and/or the efficient administration of the Office.
`
`NOTE: My participation as amicus shall not be construed as acquiescence to the lawfulness of the precedential
`opinion mode of regulation. Rather, I fully support the position of the plaintiffs in US Inventor v. Hirshfeld, Case
`No. 2:21-cv-00047 in the Eastern District of Texas (that ad hoc guidance is a violation of the APA and AIA).
`Additionally, I urge the Director to resolve the NHK/Fintiv controversy by ruling on the pending Petition for
`Rulemaking Pursuant To 5 U.S.C. § 553(e) filed by US Inventor, available at https://usinventor.org/wp-
`content/uploads/USI-SBTC-Institution-Rulemaking-Petition.pdf.
`
`Relationship to a party to the proceeding = none
`
`I certify that I am submitting this amicus form within seven business days of entry of the Notification of POP
`request into the case docket or patent application file = Yes
`
`IPR2020-01322
`Ex. 3002
`
`

`

`Signature = /Joshua J Malone/
`
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