DOCKET NO.: 337722-000230
`Filed on behalf of Apple Inc.
`By: Larissa S. Bifano, Reg. No. 59,051
`Joseph W. Wolfe, Reg. No. 73,173
`Zachary Conrad, Reg. No. 77,682
`
`DLA Piper LLP (US)
`33 Arch Street, 26th Floor
`Boston, Massachusetts 02110-1447
`Email: Larissa.Bifano@dlapiper.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner
`
`v.
`
`BILLJCO LLC,
`Patent Owner
`
`IPR2022-00131
`
`PETITIONER’S RESPONSE TO MOTION TO STRIKE
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`Filed on behalf of Apple Inc.
`By: Larissa S. Bifano, Reg. No. 59,051
`Joseph W. Wolfe, Reg. No. 73,173
`Zachary Conrad, Reg. No. 77,682
`
`DLA Piper LLP (US)
`33 Arch Street, 26th Floor
`Boston, Massachusetts 02110-1447
`Email: Larissa.Bifano@dlapiper.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner
`
`v.
`
`BILLJCO LLC,
`Patent Owner
`
`IPR2022-00131
`
`PETITIONER’S RESPONSE TO MOTION TO STRIKE
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`III.
`
`IV.
`
`INTRODUCTION ...........................................................................................1
`
`ALLEGATIONS OF HABERMAN’S PREFERENCES AND
`VANLUIJT’S PREFERENCES BEING EQUIVALENT TO THE
`PRIVILEGE-BASED CLAIM LIMITATIONS .............................................1
`
`PETITIONER’S ARGUMENTS RELATED TO THE “DESTINATION
`IDENTITY” ARE PROPER............................................................................3
`
`PATENT OWNER HAS CONTINUALLY MISCHARACTERIZED
`DEPOSITION TESTIMONY..........................................................................5
`
`V.
`
`CONCLUSION................................................................................................7
`
`ii
`
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`
`Quiagen North American Holdings, Inc. v. Handylab, Inc.,
`IPR 2019-00488 ....................................................................................................4
`
`Other Authorities
`
`Manual of Patent Examining Procedure §2183 .....................................................1, 2
`
`USPTO’s “Consolidated Trial Practice Guide November 2019”..............................3
`
`iii
`
`
`
`Exhibits
`
`Exhibit Description
`
`1001
`
`U.S. Patent No. 8,639,267
`
`1002
`
`Declaration of Dr. Thomas La Porta
`
`1003
`
`Prosecution History of U.S. Patent No. 8,639,267
`
`1004
`
`U.S. Patent Publication No. 2005/0096044 to Haberman et al.
`
`1005
`
`U.S. Patent Publication No. 2002/0159401 to Boger
`
`1006
`
`U.S. Patent Publication No. 2002/0132614 to Vanluijt et al.
`
`1007
`
`BillJCo, LLC v. Apple Inc., Case No. 6:21-cv-00528-ADA, Dkt. 27,
`Agreed Scheduling Order.
`
`1008
`
`Thom Tillis letter to Andrew Hirschfeld dated November 2, 2021.
`
`1009
`
`“How reliable are trial dates relied on by the PTAB in the Fintiv
`analysis?”, Andrew Dufresne et al., 1600ptab.com (October 29,
`2021).
`
`1010
`
`Fintiv, Inc. v. Apple Inc., 6:21-CV-00926-ADA, Dkt. 41 2, Order.
`
`1011
`
`Erik Fuehrer letter to Brian R. Michalek dated November 23, 2021.
`
`1012
`
`Supplemental Declaration of Dr. Thomas La Porta
`
`iv
`
`
`
`IPR2022-00131 – Response to Motion to Strike
`
`I.
`
`INTRODUCTION
`
`For the reasons outlined below, the Petitioner respectfully requests that the
`
`Board deny Patent Owner’s (hereinafter “PO”) Motion to Strike (hereinafter
`
`“Motion”).
`
`II.
`
`ALLEGATIONS OF HABERMAN’S PREFERENCES AND
`VANLUIJT’S PREFERENCES BEING EQUIVALENT TO THE
`PRIVILEGE-BASED CLAIM LIMITATIONS
`
`In the Motion, PO alleges that Petitioner’s response should be stricken
`
`because Petitioner argued that Haberman’s preferences and Vanluijt’s preferences
`
`are “equivalent” to the claimed privileges and that this equivalence argument is a
`
`shift in position. See Motion, pp. 5-11; 12-14. This is incorrect.
`
`PO’s position greatly exaggerates and misunderstands Petitioner’s position.
`
`Petitioner’s use of the word “equivalence” is not an attempt to shift theories by
`
`making an equivalence argument as suggested by the PO. Instead, Petitioner has
`
`always maintained that, despite Haberman and Vanluijt not reciting the word
`
`“privilege” or “privileges,” a POSITA would interpret Haberman’s preferences and
`
`Vanluijt’s preferences as the claimed privileges.
`
`Nevertheless, PO’s arguments are without merit. In the Motion, PO alleges
`
`that Petitioner has failed to show equivalence based on the standard established in
`
`MPEP 2183. PO states that “[a]n argument regarding whether a prior art element
`
`is equivalent of a claimed element is typically for a means-plus-function element.”
`
`1
`
`
`
`IPR2022-00131 – Response to Motion to Strike
`
`Motion, 9 (citing MPEP 2183). This is incorrect. MPEP 2183 is not typically for a
`
`means-plus-function claim; MPEP 2183 is entirely reserved for means-plus-
`
`function claims. Specifically, the test laid out by MPEP 2183 requires the element
`
`to be a means-plus-function element:
`
`If the examiner finds that a prior art element
`(A) performs the function specified in the claim,
`(B) is not excluded by any explicit definition provided in
`the specification for an equivalent, and
`(C) is an equivalent of the means- (or step-) plus-function
`limitation,
`the examiner should provide an explanation and rationale in the
`Office action as to why the prior art element is an equivalent.
`
`MPEP 2183.
`
`Here, the privilege-based limitations in question are not means-plus-
`
`function limitations. Neither the Petitioner nor the PO has asserted or
`
`argued that any of the privilege-based limitations are means-plus-function
`
`limitations. As a result, because the privilege-based limitations are not
`
`means-plus-function limitations, MPEP 2183 is inapplicable.
`
`Finally, had PO reached out to Petitioner with this very point, Petitioner
`
`would have submitted a revised reply and declaration that replaces the word
`
`“equivalent” to eliminate any confusion. Instead, PO never reached out to the
`
`Petitioner and has instead chosen to rely on the use of the word “equivalent” as an
`
`attempt to strike Petitioner’s Reply and Supplemental Declaration in their
`
`2
`
`
`
`IPR2022-00131 – Response to Motion to Strike
`
`entireties. Such process is a waste of the Board’s time and resources when the
`
`matter could have been resolved in a more amicable manner.
`
`Thus, for at least the reasons provided above, the Petitioner submits that
`
`PO’s motion should be denied.
`
`III. PETITIONER’S ARGUMENTS RELATED TO THE “DESTINATION
`IDENTITY” ARE PROPER
`
`In the Motion, PO alleges that Petitioner’s arguments that Haberman and
`
`Vanluijt disclose the granting of a right should be stricken because “[t]he entire
`
`concept of the granting of rights is absent from the Petition and Original
`
`Declaration, and was raised only in the Reply and Supplemental Declaration.”
`
`Motion, pp. 14-15. The Petitioner disagrees.
`
`As laid out in the USPTO’s “Consolidated Trial Practice Guide November
`
`2019” (hereinafter “Trial Practice Guide”), “a reply or sur-reply may only respond
`
`to arguments raised in the preceding brief.” See Trial Practice Guide, p. 74. A
`
`Petitioner “may not submit new evidence or argument in reply that it could have
`
`presented earlier, e.g. to make out a prima facie case of unpatentability.” See id. at
`
`73.
`
`In the present case, Petitioner’s arguments focusing on Haberman and
`
`Vanluijt disclosing the granting of rights are a direct response to PO’s proposed
`
`interpretation of the plain and ordinary meaning of “destination identity” that PO
`
`has offered – for the very first time – in their PO’s Response (“POR”).
`
`3
`
`
`
`IPR2022-00131 – Response to Motion to Strike
`
`Specifically, in the POR, PO alleges that the plain and ordinary meaning of
`
`destination identity is in the context of a grantor/grantee relationship, in which the
`
`PO argues that the “destination identity” is the grantor in a privilege conveyance
`
`between a grantor and a grantee. POR 15-17; Petitioner’s Reply 3-7. As a direct
`
`result of this brand-new interpretation of the plain and ordinary meaning of
`
`“destination identity,” Petitioner submits that both Haberman and Vanluijt still
`
`discloses the claimed “destination identity” under PO’s narrow interpretation of the
`
`claim language.
`
`This position is entirely supported by PTAB jurisprudence. In particular, in
`
`Quiagen North American Holdings, Inc. v. Handylab, Inc., IPR 2019-00488,
`
`Patent Owner filed a motion to strike in response to Petitioner’s arguments that
`
`addressed Patent Owner’s proposed construction of the claim term “multi-lane
`
`microfluidic cartridge” that appeared, for the very first time, in the Patent Owner
`
`Response. See Quiagen, p. 4. In Quiagen, the Board denied Patent Owner’s
`
`motion stating that “[r]esponding to arguments made in the patent owner response
`
`is within the proper scope of a reply.” See id. As laid out above, similar to the
`
`issue in Quiagen, Petitioner’s arguments related to “destination identity” in the
`
`Reply were merely in response to PO’s arguments, which differed from their
`
`arguments for “destination data” in their Preliminary Response. See Preliminary
`
`Response, pp. 5-8. The first time PO presented this interpretation of the plain and
`
`4
`
`
`
`IPR2022-00131 – Response to Motion to Strike
`
`ordinary meaning of “destination identity” was in their POR. In fact, as pointed
`
`out in Petitioner’s Reply, PO abandoned this language during prosecution of the
`
`’267 Patent in order to pursue broader scope. See Petitioner’s Reply, pp. 5-6.
`
`Therefore, under both the USPTO’s Trial Practice Guide and PTAB
`
`jurisprudence, PO’s motion should be denied.
`
`IV. PATENT OWNER HAS CONTINUALLY MISCHARACTERIZED
`DEPOSITION TESTIMONY
`
`Finally, for completeness of the record, Petitioner notes that PO has
`
`continually mischaracterized deposition testimony of Petitioner’s expert in their
`
`Motion and throughout the inter partes review process. Specifically, PO has
`
`purposely cherry picked portions of Dr. La Porta’s testimony in an attempt to
`
`discredit Petitioner’s position.
`
`Throughout the Motion, PO posits that Petitioner’s expert admitted that a
`
`preference does not have the same meaning as the claimed preference. These
`
`statements mischaracterize the record. For example, PO alleges that “La Porta
`
`admitted, however, that the term ‘permission’ (aka ‘privilege’) had a different
`
`meaning than the term ‘preference’ in computer science arts and that he would not
`
`equate these terms.” See Motion, p. 6 (citing EX2009, 46:5-47:14). This is
`
`incorrect.
`
`When Dr. La Porta’s deposition testimony is fairly and accurately described,
`
`it is clear that such statements are an attempt by the PO to avoid addressing
`
`5
`
`
`
`IPR2022-00131 – Response to Motion to Strike
`
`Haberman’s preferences and Vanluijt’s preferences as applied to the claimed
`
`privilege-related limitations. So that Dr. La Porta’s testimony is presented as
`
`accurately as possible, Petitioner submits the following complete excerpts of
`
`deposition testimony from EX2009:
`
`Q. Which one?
`
`A.
`
`Q.
`
`I think it's -- the users give preferences which is giving
`permissions for the device to 4 show certain advertisements.
`
`So is it your opinion that, in computer science, a permission is
`synonymous with a preference?
`
`A.
`
`So, in general, in computer science a permission is not the same
`as a preference, but I believe it is in this -- in this patent.
`EX2009, 46:5-10.
`
`Q.
`
`A.
`
`Is it your opinion that a preference of a user is the same thing as
`a permission in computer science?
`
`So if we're talking about computer science in general I wouldn't
`necessarily say that's always the case. In the way this claim is
`written and from what I read in the patent, that that's basically
`what it is.
`
`EX2009, 40:20-41:3.
`
`As clear from the above, PO has mischaracterized these portions of expert
`
`testimony to conclude that “La Porta’s admission that a preference was not a
`
`privilege confirmed the holes in the obviousness contentions.” Motion, p. 6. As
`
`the above excerpts indicate, this is incorrect. Dr. La Porta clearly stated that while
`
`a permission and a preference generally have different meanings in computer
`
`6
`
`
`
`IPR2022-00131 – Response to Motion to Strike
`
`science, the manner in which preferences are used in Haberman [and Vanluijt] and
`
`the manner in which the privilege related limitations are used in the ’267 Patent are
`
`the same. When PO quoted Dr. La Porta in their Motion they conveniently left out
`
`the statement that contradicts their position, i.e., “In the way this claim is written
`
`and from what I read in the patent, that that’s basically what it is.” See Motion, p.
`
`11 (“La Porta then admitted ‘in general, I would not equate a preference with a
`
`permission in computer science.’” Full Stop.).
`
`Accordingly, PO’s statements mis-characterizing Dr. La Porta’s testimony
`
`should be disregarded.
`
`V.
`
`CONCLUSION
`
`For at least the reasons provided above, the Board should deny PO’s Motion
`
`to Strike.
`
`7
`
`
`
`IPR2022-00131 – Response to Motion to Strike
`
`Dated: January 23, 2023
`
`Respectfully Submitted,
`
`/Larissa S. Bifano/
`Larissa S. Bifano
`Reg. No. 59,051
`
`Joseph Wolfe
`Reg. No. 73,173
`
`Zachary Conrad
`Reg. No. 77,682
`
`Attorneys for Petitioner Apple Inc.
`
`8
`
`
`
`IPR2022-00131 – Response to Motion to Strike
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies service of a copy of this document on the Patent
`
`Owner’s counsel of record pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(b) by
`
`electronic mail to the following:
`
`brian.michalek@saul.com
`joseph.kuo@saul.com
`brian.landry@saul.com
`IPGroupMailbox@saul.com
`courtland.merrill@saul.com
`
`Dated: January 23, 2023
`
`/Joseph Wolfe/
`Joseph Wolfe, Reg. No. 73,173
`
`Attorney for Petitioner Apple Inc.
`
`9
`
`
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