UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`
`APPLE INC.,
`Petitioner
`
`v.
`
`DODOTS LICENSING SOLUTIONS LLC,
`Patent Owner
`_________________
`
`
`Inter Partes Review Case No. IPR2023-00939
`U.S. Patent No. 8,510,407
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`
`
`
`
`PETITIONER’S REQUEST FOR REHEARING BY THE DIRECTOR
`
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`
`APPLE INC.,
`Petitioner
`
`v.
`
`DODOTS LICENSING SOLUTIONS LLC,
`Patent Owner
`_________________
`
`
`Inter Partes Review Case No. IPR2023-00939
`U.S. Patent No. 8,510,407
`
`
`
`
`
`PETITIONER’S REQUEST FOR REHEARING BY THE DIRECTOR
`
`
`
`Inter Partes Review No. IPR2023-00939
`U.S. Patent No. 8,510,407
`
`TABLE OF CONTENTS
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`INTRODUCTION and factual background .............................................. 1
`I.
`LEGAL STANDARD ................................................................................... 6
`II.
`III. ARGUMENT ................................................................................................ 6
`THE BOARD’S DECISION UNDERMINES POLICY RATIONALE OF §
`A.
`102(E) ................................................................................................... 7
`THE OFFICE’S PRACTICAL POLICY CONCERNING LARGE
`APPENDICES DOES NOT JUSTIFY REMOVING THE SLIVKA
`APPENDICES FROM THE PUBLIC ............................................................. 9
`NONE OF THE CASE LAW RELIED UPON BY THE BOARD SUPPORTS
`PUNISHING THE PUBLIC BY WITHDRAWING THE SLIVKA
`APPENDICES FROM THE PRIOR ART ..................................................... 12
`IV. CONCLUSION ........................................................................................... 15
`
`
`C.
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`B.
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`i
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`I.
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`IPR2023-00939
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`INTRODUCTION AND FACTUAL BACKGROUND
`This case presents a question of first impression—whether a disclosure
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`contained in appendices submitted with a patent application should be withdrawn
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`from the public as prior art under 35 U.S.C. § 102(e) due to the prior art patent’s
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`alleged failure to properly incorporate those appendices by reference. It should not,
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`particularly where the applicant’s alleged failure did not impact (1) the public notice
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`of those appendices, (2) how the public gained access to the appendices, or (3) when
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`the public gained access to the appendices. Put simply, any negative consequences
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`that result from a purportedly flawed prosecution process underlying a prior art
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`patent should be imposed exclusively on the prior art patentee. The public should
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`not also be punished by the USPTO withdrawing a prior art disclosure and allowing
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`others to patent subject matter that had been previously submitted to the Office.
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`Petitioner advanced proposed grounds based on U.S. Patent No. 6,061,695 to
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`Slivka, et al. (“Slivka Patent”), citing to the Slivka Patent and to appendices
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`submitted with the application that issued as the Slivka Patent (“Slivka
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`Appendices”)—an application filed more than two years before the earliest priority
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`date to which the Challenged Claims could be entitled. The appendices were
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`submitted with the specification, claims, and drawings, indicating the applicant’s
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`intent for the Slivka Appendices to be a part of the Slivka Patent:
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`1
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`Ex. 1005 (Slivka File History), 253. Further evincing the applicant’s intent for the
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`appendices to be part of the patent and putting the public on notice of the appendices,
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`the Slivka Patent specification repeatedly describes the Slivka Appendices as
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`“attached” to the patent. Relevant to the grounds advanced by Petitioner, the Slivka
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`Appendices provide examples of HTML instructions that illustrate the concepts
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`described in the Slivka Patent. Those appendices did not publish as part of the Slivka
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`Patent due to Office procedural rules governing large appendices. Instead, they were
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`made publicly available in the Slivka Patent’s file history upon issuance.
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`Petitioner treated the Slivka Appendices as prior art pursuant to 35 U.S.C. §
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`102(e) as part of the “entire disclosure” of the Slivka Patent. See MPEP 2136.02
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`(“Under pre-AIA 35 U.S.C. 102(e), the entire disclosure of a U.S. patent . . . can be
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`relied on to reject the claims.”). It is undisputed that, if they are deemed properly
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`incorporated by reference into the Slivka Patent, the Slivka Appendices are § 102(e)
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`2
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`prior art. It is also undisputed that, even if the Office finds that the applicant failed
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`to properly incorporate them by reference, such a failure had no impact on the timing
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`or means by which the Slivka Appendices were made available to the public.
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`The Board concluded that the Slivka Appendices are not prior art pursuant to
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`§ 102(e) because they were not properly incorporated by reference. Paper 12, 7
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`(“Our determination is based on finding1 that Petitioner’s challenge relies on
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`appendices (Ex. 1005, 69–245) that were not published with the ’695 patent (Ex.
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`1004). As discussed herein, we conclude, on the record before us, that Petitioner has
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`insufficiently shown that the relied-upon appendices qualify as prior art under 35
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`U.S.C. § 102(e)[.]”). The Board’s conclusion turns critically on the language used
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`by the applicant to reference the Slivka Appendices. Rather than stating the
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`appendices were “incorporated by reference[,]” the applicant repeatedly referred to
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`the appendices as “attached” to the Slivka Patent. Id. at 9. From this, the Board
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`concluded they had not been properly incorporated by reference. Id. at 9-10 (noting
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`that, “[t]o incorporate material by reference, the host document must identify with
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`detailed particularity what specific material it incorporates[,]” and concluding the
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`Slivka Appendices “were not incorporated by reference”).
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`The policies underlying all implicated statutes and Office rules weigh against
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`the Board’s conclusion. There is no question that the applicant intended the Slivka
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`1 All emphases added unless noted otherwise.
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`Appendices to be part of the Slivka Patent and to constitute a public disclosure of
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`the material contained therein. Nor is there any question that the Slivka Appendices
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`were in fact made available to the public at the same time and via the same means as
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`if they had been properly incorporated by reference. There are also no legitimate
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`concerns with public notice—the often-cited rationale for requiring material
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`incorporated by reference be identified with “detailed particularity.” Indeed, the
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`Slivka Appendices that were submitted as part of the application are contained
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`within the file history and are referred to as “attached” throughout the specification.
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`Further, as illustrated in the following excerpt, the Slivka Patent provides extensive
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`and specific detail as to how the portions of the Slivka Appendices relied upon by
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`Petitioner relate to and elaborate on the relevant disclosures in the Slivka Patent:
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`4
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`Ex. 1004 (Slivka Patent), 18:49-67 (explaining the relevance of specific portions of
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`the Slivka Appendices to specific portions of the Slivka Patent) (annotated); Paper
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`1, 13-16 (explaining teachings from the Slivka Patent and Slivka Appendices
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`relevant to the proposed grounds). Accordingly, the Slivka Patent identifies with
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`detailed particularity how the Slivka Appendices relied upon by Petitioner are
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`relevant to and elaborate on specific portions of the Slivka Patent specification.
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`The policy rationale underlying § 102(e) dictates that prior art disclosed to the
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`patent office before the priority date qualifies as prior art even if it does not become
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`publicly available until later, ensuring that no patent is issued on material previously
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`submitted by another to the Office. 35 U.S.C. § 102(e)(2); Hazeltine Research, Inc.
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`v. Brenner, 382 U.S. 252, 255-256 (1965) (explaining that prior art is accorded the
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`filing date because “[t]he delays of the patent office ought not to cut down the effect
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`of what has been done.”). Indeed, the legislative history confirms § 102(e) is founded
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`on the principle that an invention’s priority is assessed as of the date of filing “for
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`the purpose of anticipating a subsequent inventor.” S. Rep. No. 1979, 82d Cong., 2d
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`Sess. 17 (1952); see also H. R. Rep. No. 1923, 82d Cong., 2d Sess. 17 (1952) (noting
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`that under § 102(e), “for the purpose of anticipating subsequent inventors, a patent
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`disclosing the subject matter speaks from the filing date of the application disclosing
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`the subject matter.”). Excluding the Slivka Appendices from the prior art solely
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`because the applicant referenced the appendices using what the Board deemed the
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`wrong particularized language is directly at odds with the rationale underlying §
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`102(e). Any failure on the part of the applicant to use procedurally correct language
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`when referring to the Slivka Appendices should impact only the scope and/or
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`validity of the Slivka Patent. The public should not be punished by allowing others
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`to patent that which had already been disclosed to the Office.
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`II. LEGAL STANDARD
`“Requests for Director Review of the Board’s decision whether to institute an
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`AIA trial, or decisions granting rehearing of such a decision, shall be limited to
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`decisions presenting (a) an abuse of discretion or (b) important issues of law or
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`policy.” USPTO, Revised Interim Director Review Process at 2.B, Availability of
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`Director Review: AIA Trial Proceedings (last modified July 25, 2023),
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`https://www.uspto.gov/patents/ptab/decisions/revised-interim-director-review-
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`process.
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`III. ARGUMENT
`A number of statutes and Office rules are implicated by the Board’s decision.
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`Critically, none of the policy rationales underlying those implicated statutes and
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`rules align with the result of the Board’s decision. Indeed, the Board’s decision
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`withdraws from the public a prior art disclosure solely because the prior art applicant
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`purportedly used the wrong language to reference a set of appendices. This decision
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`fails to acknowledge that the Slivka Patent put the public on notice of the Slivka
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`6
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`Appendices disclosure that was intended to be public as part of the Slivka Patent.
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`The decision also fails to credit the fact that the Slivka Appendices were indeed made
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`public at the same time and via the same means as if the applicant has stated the
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`appendices were “incorporated by reference,” rather than “attached.” This decision
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`allows others to patent that which had already been disclosed to the Office, directly
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`conflicting with the policy rationale underlying § 102(e).
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`A. The Board’s Decision Undermines Policy Rationale of § 102(e)
`Today, the Office maintains patent applications in confidence for eighteen
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`months after filing. 35 U.S.C. §122; 37 C.F.R. §1.211. When the application that
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`issued as the Slivka Patent was filed, applications were maintained confidentially
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`until issuance. Ex. 1018, 37 C.F.R. § 1.11 (Rev. 2, July 1996), 4 (noting a patent and
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`its file history were made public upon issuance). But for this confidentiality policy
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`during which the Slivka Appendices were maintained confidentially for almost three
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`and a half years, they would have been made public—as the applicant intended—
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`upon filing. And had the Slivka application with appendices been made public upon
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`filing, they would have been prior art pursuant to 35 U.S.C. § 102(b), having been
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`filed many years before the earliest possible priority date for the Challenged Patent.
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`Accounting for this period of confidentiality post-filing and to ensure that the
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`patent system accurately recognizes the true first inventor of a given concept, §
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`102(e) dictates that disclosures submitted to the patent office before the priority date
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`qualify as prior art even if they do not become publicly available until later. 35
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`U.S.C. § 102(e)(2); Hazeltine Research, 382 U.S. at 255-256 (explaining that prior
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`art is accorded the filing date because “[t]he delays of the patent office ought not to
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`cut down the effect of what has been done.”) (quoting Alexander Milburn Co. v.
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`Davis-Bournonville Co., 270 U.S. 390, 46 S. Ct. 324, 70 L. Ed. 651 (1926)) (internal
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`quotations omitted). Indeed, Congress expressly codified this very rationale as §
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`102(e). S. Rep. No. 1979, 82d Cong., 2d Sess. 17 (1952) (explaining that § 102(e)
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`“is new and enacts the rule of Milburn v. Davis-Bournonville. . . for the purpose of
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`anticipating a subsequent inventor”). Further, the MPEP specifies that “[u]nder 35
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`U.S.C. §102(e), the entire disclosure of a U.S. patent having an earlier filing date .
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`. . can be relied on to reject the claims.” MPEP 2136.02 (emphasis added).
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`The rationale underlying § 102(e) strongly supports concluding that the Slivka
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`Appendices are prior art. They were submitted with the application well before the
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`priority date of the Challenged Patent and they became public (as part of the Slivka
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`Patent file history) after the priority date solely as a result of the Office policy that
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`maintains applications in confidence for a period of time post-filing. § 102(e)
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`ensures Office delay does not “cut down the effect of what has been done” “for the
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`purpose of anticipating a subsequent inventor.” Ignoring the Slivka Appendices, as
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`the Board’s decision did, fails to give effect to the full prior art disclosure and
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`permits others to recapture material that has been previously submitted to the Office
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`by an earlier inventor. In doing so, the Board’s decision undermines the foundation
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`and purpose of § 102(e).
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`B.
`The Office’s Practical Policy Concerning Large Appendices Does
`Not Justify Removing the Slivka Appendices From the Public
`As a practical policy, the Office does not publish lengthy appendices with an
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`issued patent, but instead makes those disclosures available in a patent’s file history.
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`Ex. 2008, 10-12; MPEP 608.05. When the application that issued as the Slivka
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`Patent was filed, the MPEP expressly acknowledged “Computer Program Listings”
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`as a type of disclosure that is part of the patent but is not printed with the patent.
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`Paper 6, at 14, 25-26; Ex. 2008, 10-12. Based on logistical challenges related to
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`submitting such materials, the MPEP set forth specific procedures for submitting
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`appendices in the form of Computer Program Listings. Ex. 1017, 42793. The PTO
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`has since expanded the types of appendices with similar requirements. See MPEP
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`608.05 (imposing submission requirements for “Sequence Listing” and “Large
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`Tables”). The MPEP recognizes (1) that the three expressly identified types of
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`appendices are not exclusive, and (2) that all appendices are treated identically with
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`respect to publication. See MPEP 1121 (noting “[a]ppendices, other than those
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`containing ‘Sequence Listings’ . . . or ‘Large Tables’, are not printed if they are
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`contained on pages located after the claims[,]” and similarly noting that “‘Computer
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`Program Listing Appendices’ . . . are not printed as part of the patent”).
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`But for this practical policy, the Slivka Appendices would have published as
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`part of the Slivka Patent, unquestionably constituting prior art pursuant to § 102(e).
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`This was the intent of the applicant. As noted above, the Slivka Patent specification
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`repeatedly refers to the appendices as “attached” to the patent and provides extensive
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`detail as to how the portions of the Slivka Appendices relied upon by Petitioner
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`relate to and elaborate on the relevant disclosures in the Slivka Patent. Having
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`submitted 177 pages of appendices, however, Office policy ensured they did not
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`print with the issued patent. The rationale for this policy turns on the considerations
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`implicated by large supplemental disclosures submitted with a patent application.
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`See Ex. 2008, 11 (noting that “lengthy computer program listings . . . can become
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`burdensome” and “[t]he cost of printing long computer programs in patent
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`documents is also very expensive”). No policy rationale supports the Board’s
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`decision to remove those disclosures from the prior art.
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`Nor is the Board’s decision supported by the Patent Owner’s suggestion that
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`the Slivka applicant failed to follow proper procedure when submitting the Slivka
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`Appendices. Paper 6, 24-25 (“[T]he appendices cannot be considered part of the
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`Slivka application because Slivka failed to comply with MPEP 608.05 and 37 C.F.R.
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`1.96, which set forth the specific steps an applicant is required to take when
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`depositing computer program listings with a patent application.”). Of the 177 pages
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`submitted, the vast majority of the Slivka Appendices are not material that could be
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`10
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`properly characterized as “computer program listings.” Paper 8, 2-3 (explaining that
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`“only 24 of the 177 pages of appendices relate to computer code, and those pages
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`are merely HTML templates” and that “[t]he remaining 153 pages of appendices are
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`not directed toward any type of computer code at all, and instead comprise material
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`such as textbook excerpts”). Accordingly, any procedural requirements imposed
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`upon an applicant when submitting “computer program” appendices did not apply
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`to the Slivka applicant. But even if the applicant were obligated to follow a specific
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`procedure, the Board correctly concluded rules do not set forth any consequence for
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`failing to comply. Paper 12, 12 (“[T]he relevant guidance and regulation at the time
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`. . . does not describe the effect if submissions were not compliant.”). Accordingly,
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`even if the Director were to find the applicant failed to follow the Office procedure
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`when submitting the Slivka Appendices, there is no guidance as to what
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`consequences result from that failure. More importantly, there is no suggestion in
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`the rules or rationale underlying Office policy that support punishing the public by
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`excluding the Slivka Appendices from the prior art. Any consequences that result
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`from an alleged procedural/clerical error perpetrated by the prior art applicant should
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`be imposed exclusively on the applicant, e.g., preventing the applicant from relying
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`on the Slivka Appendices for purposes of establishing compliance with the written
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`description or enablement requirements.
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`C. None of the Case Law Relied Upon by the Board Supports
`Punishing the Public by Withdrawing the Slivka Appendices From the
`Prior Art
`The Board cites two categories of cases in support of its conclusion that the
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`Slivka Appendices should be withdrawn from the prior art as a result of the applicant
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`having allegedly failed to properly incorporate them by reference into the Slivka
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`Patent. Neither supports the Board’s decision.
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`A first category of cases focuses on the need for an applicant to identify
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`material incorporated by reference with detailed particularity. Paper 12, 9-10 (citing
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`Advanced Display and Callaway Golf Co. v. Acushnet Co., 576 F.3d 1331, 1346
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`(Fed. Cir. 2009)). The Board quotes Advanced Display for the proposition that, “[t]o
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`incorporate material by reference, the host document must identify with detailed
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`particularity what specific material it incorporates and clearly indicate where that
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`material is found in the various documents.” Paper 12, 10. And it quotes Callaway
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`Golf for the proposition that “mere reference to another application, or patent, or
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`publication is not an incorporation of anything therein.” Id. at 9-10.
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`Here, there is no relevant concern that the applicant failed to reference the
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`Slivka Appendices with “detailed particularity.” As set forth above, the Slivka
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`Appendices were submitted as part of the application, are contained within the file
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`history, and are referred to as “attached” throughout the specification. Further, the
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`Slivka Patent provides extensive detail as to how the portions of the Slivka
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`Appendices relied upon by Petitioner relate to and elaborate on the relevant
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`disclosures in the Slivka Patent. Ex. 1004 (Slivka Patent), 18:49-67 (explaining the
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`relevance of specific portions of the Slivka Appendices to specific portions of the
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`Slivka Patent) (annotated); Paper 1, 13-16 (explaining teachings from the Slivka
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`Patent and Slivka Appendices relevant to the proposed grounds).
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`Despite this extensive detail, the Board appears to have concluded that the
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`applicant failed to use the correct terminology that indicated a desire to formally
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`“incorporate” the Slivka Appendices into the Slivka Patent. Paper 12, 11 (“We agree
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`with Patent Owner that ‘Slivka did not note that he was incorporating the appendices
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`to the specification.’”) (emphasis in original). But not even the Board’s cited case
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`law stands for the proposition that the Office mandates language as specific as the
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`Board suggests. In Callaway Golf, the Federal Circuit concluded the language,
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`“[r]eference is made to[,]” . . . sufficient to indicate to one of skill in the art that the
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`referenced material is fully incorporated in the host document.” 576 F.3d at 1346.
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`The Federal Circuit has additionally explained that it “does not require ‘magic
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`words’ of reference or of incorporation.” Northrop Grumman Info. Tech., Inc. v.
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`United States, 535 F.3d 1339, 1346 (Fed. Cir. 2008) (discussing patent jurisprudence
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`in the context of a government contract issue). Indeed, the Federal Circuit recently
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`found that a user guide incorporated by reference a separate feature reference guide
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`where “the two documents were ‘collectively distributed as a single reference
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`document,’ and that the User Guide directs users to consult specific parts of the
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`Extended Feature Reference to implement the VPN features of the BinGO! Router.”
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`VirnetX Inc. v. Apple Inc., No. 2022-1523, 2023 WL 6933812, at *3 (Fed. Cir. Oct.
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`20, 2023) (concluding “that the two references can be considered as one for purposes
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`of anticipation”). Similar to the Federal Circuit’s analysis in VirnetX, the Slivka
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`Patent treats the Slivka Appendices as a part of its disclosure, repeatedly referring
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`the reader to the appendices as “attached” to the patent. For purposes of invalidity,
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`as in VirnetX, the Slivka Patent and Slivka Appendices should be considered a single
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`document. The Board’s overly narrow view that specific language is required for
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`incorporation by reference fails to properly credit that the Slivka Appendices were
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`referenced with particularity in the Slivka Patent, submitted together in a single
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`submission, and repeatedly described as “attached” to the Slivka Patent.
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`A second category of cases addresses the consequences of failing to properly
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`incorporate material by reference. The Board focuses this discussion on Southwest
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`Software, Inc. v. Harlequin Inc., 226 F.3d 1280, 1295 (Fed. Cir. 2000). Paper 12,
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`13-16. There, the PTO mistakenly failed to print 330 pages of computer code with
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`the asserted patent. Southwest Software, 226 F.3d at 1295-1296; Paper 12, 16. The
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`question addressed by the Federal Circuit was whether, assuming the patent claim
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`was invalid without the computer code (for failing to satisfy the written description
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`and enablement requirements), an accused infringer can be held liable for
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`infringement that occurred before the certificate of correction issued. Southwest
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`Software, 226 F.3d at 1295-1296. The Federal Circuit held that, if the claim was in
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`fact invalid without the missing disclosure, the patentee’s delay in seeking the
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`correction should mean that an accused infringer cannot be held liable for infringing
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`during the period before the certificate of correction issued. Id. Ultimately, the
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`Federal Circuit remanded to determine if the uncorrected patent would have been
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`invalid. Id. at 1297.
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`The Board contends Southwest Software is instructive, but it fails to
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`acknowledge a critical distinction. Namely, the Federal Circuit punished the patentee
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`in Southwest Software for failing to act promptly to correct its own patent, but the
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`Board here punishes the public for an alleged failing on the part of the Slivka Patent
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`applicant. Policy may well support finding that the Slivka Patent may not rely on the
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`Slivka Appendices for purposes of supporting the scope or validity of its claims,
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`finding such a result appropriate for any alleged failure on the patentee’s part. But
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`no policy supports withdrawing the disclosures contained in the Slivka Appendices
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`from the public as a result of the Slivka patentee’s purported procedural failures.
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`IV. CONCLUSION
`The Director should vacate the panel’s institution denial and remand for
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`further consideration.
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`Date: February 2, 2024
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`IPR2023-00939
`U.S. Patent No. 8,510,407
`8,510,407
` Respectfully submitted,
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` BY: /s/ Paul R. Hart
`Paul R. Hart, Reg. No. 59,646
`Adam Seitz, Reg. No. 52,206
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`COUNSEL FOR PETITIONER
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`IPR2023-00939
`U.S. Patent No. 8,510,407
`8,510,407
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`APPENDIX OF EXHIBITS
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`Exhibit 1001 U.S. Patent No. 8,510,407 (“’407 Patent”)
`Exhibit 1002 Prosecution History for the ’407 Patent (“’407 FH”)
`Exhibit 1003 Declaration of Loren Terveen (“Dec.”)
`Exhibit 1004 U.S. Patent No. 6,061,695 to Slivka et al. (“Slivka”)
`Exhibit 1005 File History of U.S. Patent No. 6,061,695 (“Slivka FH”)
`Exhibit 1006 U.S. Patent No. 6,091,518 to Anabuki (“Anabuki”)
`Exhibit 1007 Declaration of June Munford (“Munford Dec.”)
`Exhibit 1008 PTAB - IPR2019-01279 (“Lenovo ’407 FWD”)
`Exhibit 1009 Lenovo Holding Company, Inc. v. DoDots Licensing Solutions LLC,
`21-1521, No. 16 (Fed. Cir. Dec. 8, 2021) (“Federal Circuit Claim
`Construction”)
`Exhibit 1010 PTAB – IPR2023-00701, Paper 2 (“Samsung ’407 IPR”)
`Exhibit 1011
`Intentionally Left Blank
`Exhibit 1012
`Intentionally Left Blank
`Exhibit 1013 HTML: The Complete Reference, Osborne/McGraw-Hill, by
`Thomas A. Powell 1998 (“Powell”)
`Exhibit 1014 U.S. Patent No. 6,185,589 to Votipka (“Votipka”)
`Exhibit 1015 U.S. Patent No. 6,031,989 to Cordell (“Cordell”)
`Exhibit 1016 Dkt. 98, Joint Claim Construction Statement
`Exhibit 1017 Federal Legislative History for 37 CFR, 61 FR 42790-01 (August
`19, 1996)
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`Currently Filed by Petitioner
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`Exhibit 1018 37 C.F.R. § 1.11 (Rev. 2, July 1996),
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`IPR2023-00939
`U.S. Patent No. 8,510,407
`8,510,407
`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. §§ 42.6(e), the undersigned certifies that on February
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`2, 2024, a complete and entire copy of this Petitioner’s Request for Rehearing by the
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`Director was provided by email, to the Patent Owner by serving the correspondence
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`addresses of record as follows:
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`Jason S. Charkow (jason.s.charkow@gmail.com)
`Richard Juang (richard.juang@gmail.com)
`Chandran B. Iyer (cbiyer@daignaultiyer.com)
`Ronald M. Daignault (rdaidnault@daignaultiyer.com)
`dodotslit@daignaultiyer.com
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`BY: /s/ Paul R. Hart
`Paul R. Hart, Reg. No. 59,646
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`COUNSEL FOR PETITIONER
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