UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`ZYXEL COMMUNICATIONS CORPORATION,
`Petitioner,
`
`v.
`
`UNM RAINFOREST INNOVATIONS,
`Patent Owner.
`_____________________
`Case IPR2021-00734
`Joined with case IPR2021-00375
`Patent No. 8,265,096 B2
`_____________________
`
`PETITIONER’S NOTICE OF APPEAL
`35 U.S.C. § 142 & 35 C.F.R. 90.2
`
`
`Mail Stop:
`via PTAB E2E
`Patent Trial & Appeal Board
`
`via Priority Mail Express
`Director of the United States Patent and Trademark Office
`Office of the General Counsel
`P.O. Box 1450
`Alexandria, Virginia 22313-1450.
`
`via CM/ECF
`United States Court of Appeals for the Federal Circuit
`
`
`
`
`
`
`
`
`_____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`ZYXEL COMMUNICATIONS CORPORATION,
`Petitioner,
`
`v.
`
`UNM RAINFOREST INNOVATIONS,
`Patent Owner.
`_____________________
`Case IPR2021-00734
`Joined with case IPR2021-00375
`Patent No. 8,265,096 B2
`_____________________
`
`PETITIONER’S NOTICE OF APPEAL
`35 U.S.C. § 142 & 35 C.F.R. 90.2
`
`
`Mail Stop:
`via PTAB E2E
`Patent Trial & Appeal Board
`
`via Priority Mail Express
`Director of the United States Patent and Trademark Office
`Office of the General Counsel
`P.O. Box 1450
`Alexandria, Virginia 22313-1450.
`
`via CM/ECF
`United States Court of Appeals for the Federal Circuit
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2021-00734 by Joinder in IPR2021-00375
`U.S. Patent No. 8,265,096
`
`Please take notice, under 5 U.S.C. § 702; 28 U.S.C. § 1295(a)(4)(A); 35
`
`U.S.C. §§ 141(c), 142 and 319; 37 C.F.R. § 90.2(a)(1); Fed. R. App. P. 15(a), that
`
`ZyXEL Communications Corporation (“ZyXEL”) hereby appeals to the United
`
`States Court of Appeals for the Federal Circuit from the final written decision under
`
`35 U.S.C. § 318(a) of a panel of members of the Patent Trial and Appeal Board
`
`(“Board”) of the United States Patent and Trademark Office (“Office”) entered in
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`the above-captioned inter partes review of U.S. Patent No. 8,265,096 (“’096
`
`Patent”) on July 15, 2022, Paper 68 ( “Final Written Decision”) (Exhibit A attached
`
`hereto).
`
`ZyXEL, Petitioner in IPR2021-00734, was joined to IPR2021-00375, and the
`
`Final Written Decision identifies ZyXEL as a party to the joined proceeding.
`
`Accordingly, ZyXEL files this appeal of the joined action pursuant to 35 C.F.R.
`
`§ 319. See Mylan Pharm. Inc. v. Research Corp. Techs., Inc., 914 F.3d 1366, 1373
`
`(Fed. Cir. 2019) (“Joined parties, as provided in § 315, may appeal pursuant to
`
`§ 319.”).1 This notice is filed in the period for filing an appeal of the judgment of
`
`
`1 Pursuant to instructions from the PTAB E2E support center, this Notice was filed
`in proceeding IPR2021-00734. Out of an abundance of caution this paper is also
`being filed in IPR2021-00375 pursuant to the Board’s order (IPR2021-00734 Paper
`17 at 23) that all filings should be in the IPR2021-00375 proceeding. ZyXEL files
`this Notice of Appeal pursuant to its rights under 35 C.F.R. § 319, without any
`involvement by the original petitioner in IPR2021-00375, which has not joined or
`been consulted in taking this appeal.
`
`
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`- 1 -
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`Case IPR2021-00734 by Joinder in IPR2021-00375
`U.S. Patent No. 8,265,096
`
`the Board under 37 C.F.R. § 90.2(a)(1) as calculated based on the issuance date of
`
`the Board’s final written decision.
`
`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), this notice provides that
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`ZyXEL’s issues on appeal may include, but are not limited to:
`
`(i)
`
`the Board’s determination that claim 8 of the ’096 patent was not shown
`
`to be unpatentable, including the Board’s determination that Petitioner
`
`raised new arguments upon reply and the Board’s determination that a
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`Person of Ordinary Skill in the Art would not have been motivated to
`
`combine Talukdar and Nystrom;
`
`(ii)
`
`the Board’s decision to grant Patent Owner’s Motion to Amend (Paper
`
`37), including the Board’s determination that Patent Owner could
`
`provide written description support for the amended claims for the first
`
`time on reply; and
`
`(iii) any further findings or determinations by the Director or the Board
`
`supporting or relating to the issues above, including the Board’s
`
`consideration of the expert testimony, prior art, and other evidence in
`
`the record; the Board’s claim constructions; and the Board’s factual
`
`findings, conclusions of law, or other determinations supporting or
`
`related to the issues above.
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`
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`- 2 -
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`Case IPR2021-00734 by Joinder in IPR2021-00375
`U.S. Patent No. 8,265,096
`
`In accordance with Fed. Cir. R. 15, and related Practice Note, ZyXEL
`
`attaches to this Notice of Appeal copies of the decision referenced above from
`
`which review is sought. Concurrently with the present submission, ZyXEL is filing
`
`a copy of this Notice of Appeal with the Director, and a copy of the same along
`
`with the required docketing fee, with the Clerk of the United States Court of
`
`Appeals for the Federal Circuit as set forth in the accompanying certificate of
`
`service.
`
`
`
`
`Dated: September 12, 2022
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /Peter J. Chassman/
`
`Peter J. Chassman (Reg. No. 38,841)
`Reed Smith LLP
`811 Main Street
`Suite 1700
`Houston, TX 77002
`Tel: 713.469.3800
`Fax: 713.469.3899
`pchassman@reedsmith.com
`
`Attorneys for Petitioner/Appellant
`ZyXEL Communications Corporation
`
`- 3 -
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`
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`Case IPR2021-00734 by Joinder in IPR2021-00375
`U.S. Patent No. 8,265,096
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`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR §§ 42.6(e)(4) the undersigned certifies that on September
`
`12, 2022, a complete and entire copy of this Petitioner’s Notice of Appeal, and the
`
`accompanying exhibits, was electronically filed through the Patent Trial & Appeal
`
`Board’s E2E system in accordance with 37 C.F.R. § 42.6(b)(1), and was served by
`
`email to the Patent Owner at the following correspondence address of record
`
`pursuant to 37 C.F.R. § 42.6(e):
`
`Jay P. Kesan
`DIMUROGINSBERG, PC
`jkesan@dimuro.com
`
`
`Dated: September 12, 2022
`
`
`
`
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`
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`
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`
`
`
`
`Alfonso Chan
`SHORE CHAN LLP
`achan@shorechan.com
`
`
`
`
`Respectfully submitted,
`
`By: /Peter J. Chassman/
`
`Peter J. Chassman (Reg. No. 38,841)
`Reed Smith LLP
`811 Main Street
`Suite 1700
`Houston, TX 77002
`Tel: 713.469.3800
`Fax: 713.469.3899
`pchassman@reedsmith.com
`
`Attorneys for Petitioner/Appellant
`ZyXEL Communications Corporation
`
`- 4 -
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`Case IPR2021-00734 by Joinder in IPR2021-00375
`U.S. Patent No. 8,265,096
`
`CERTIFICATE OF SERVICE
`The undersigned certifies that in addition to being filed electronically through
`
`the Patent Trial and Appeal Board’s E2E system, the foregoing Petitioner’s Notice
`
`of Appeal, and the accompanying exhibits, was served on the Director of the United
`
`States Patent and Trademark Office, via U.S. Priority Mail Express to the following
`
`address (in accordance with 37 C.F.R. §§ 90.2(a), 104.2(a)):
`
`
`
`
`
`
`
`
`
`Director of the United States Patent and Trademark Office
`Office of the General Counsel
`P.O. Box 1450
`Alexandria, Virginia 22313-1450.
`
`
`Dated: September 12, 2022
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /Peter J. Chassman/
`
`Peter J. Chassman (Reg. No. 38,841)
`Reed Smith LLP
`811 Main Street
`Suite 1700
`Houston, TX 77002
`Tel: 713.469.3800
`Fax: 713.469.3899
`pchassman@reedsmith.com
`
`Attorneys for Petitioner/Appellant
`ZyXEL Communications Corporation
`
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`- 5 -
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`
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`Case IPR2021-00734 by Joinder in IPR2021-00375
`U.S. Patent No. 8,265,096
`
`CERTIFICATE OF FILING
`
`The undersigned certifies that a true and correct copy of the foregoing
`
`Petitioner’s Notice of Appeal, and the accompanying exhibits, was filed
`
`electronically with the Clerk’s Office of the United States Court of Appeals for the
`
`Federal Circuit via CM/ECF.
`
`
`Dated: September 12, 2022
`
`
`
`
`
`
`
`
`
`
`
`
`
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`
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`Respectfully submitted,
`
`By: /Peter J. Chassman/
`
`Peter J. Chassman (Reg. No. 38,841)
`Reed Smith LLP
`811 Main Street
`Suite 1700
`Houston, TX 77002
`Tel: 713.469.3800
`Fax: 713.469.3899
`pchassman@reedsmith.com
`
`Attorneys for Petitioner/Appellant
`ZyXEL Communications Corporation
`
`- 6 -
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`
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`Case IPR2021-00734 by Joinder in IPR2021-00375
`U.S. Patent No. 8,265,096
`
`CERTIFICATE OF COMPLIANCE
`
`Pursuant to 37 CFR § 90.3(a) the undersigned certifies that the notice of
`
`
`
`
`
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`appeal is filed with the Director of the United States Patent and Trademark Office
`
`no later than sixty-three (63) days after the date of the final Board decision, which
`
`issued on July 15, 2022.
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`
`
`
`Dated: September 12, 2022
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`
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`Respectfully submitted,
`
`By: /Peter J. Chassman/
`
`Peter J. Chassman (Reg. No. 38,841)
`Reed Smith LLP
`811 Main Street
`Suite 1700
`Houston, TX 77002
`Tel: 713.469.3800
`Fax: 713.469.3899
`pchassman@reedsmith.com
`
`Attorneys for Petitioner/Appellant
`ZyXEL Communications Corporation
`
`- 7 -
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