Director_PTABDecision_Review
`"Paul Hart"; Director_PTABDecision_Review
`Trials; jason.s.charkow@gmail.com; richard.juang@gmail.com; Chandran Iyer; Ron Daignault; DoDotsLit; Adam
`Seitz; Kevin Rongish; Christina Canino
`RE: Apple Inc. v. DoDots Licensing Solutions LLC; Director Review Requests Notification Email
`Thursday, February 29, 2024 12:59:00 PM
`
`From:
`To:
`Cc:
`
`Subject:
`Date:
`
`Counsel,
`
`As explained on the Director Review webpage, to request Director Review, a party
`must: (1) file a Request for Rehearing by the Director in P-TACTS, and (2) email the
`Director at Director_PTABDecision_Review@uspto.gov, copying counsel for all
`parties to the proceeding. “A Director Review request is not perfected until both
`submissions are made.” Available at
`https://www.uspto.gov/patents/ptab/decisions/revised-interim-director-review-
`process at Section 3.A. In these cases, Petitioner submitted its Request for Rehearing
`by the Director in P-TACTS but failed to send the required email within the required
`time frame.
`
`In this instance, the Office will accept Petitioner’s requests for Director Review
`although the requisite email was not submitted on time. Counsel is cautioned,
`however, that Office procedures, including those for Director Review, must be
`followed.
`
`From: Paul Hart <paul.hart@eriseip.com>
`Sent: Wednesday, February 28, 2024 5:17 PM
`To: Director_PTABDecision_Review <Director_PTABDecision_Review@uspto.gov>
`Cc: Trials <Trials@USPTO.GOV>; jason.s.charkow@gmail.com; richard.juang@gmail.com; Chandran
`Iyer <cbiyer@daignaultiyer.com>; Ron Daignault <rdaignault@daignaultiyer.com>; DoDotsLit
`<dodotslit@daignaultiyer.com>; Adam Seitz <adam.seitz@eriseip.com>; Kevin Rongish
`<kevin.rongish@eriseip.com>; Christina Canino <christina.canino@eriseip.com>
`Subject: Re: Apple Inc. v. DoDots Licensing Solutions LLC; Director Review Requests Notification
`Email
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`To the Director,
`
`Per the Revised Interim Director Review Process guidelines, Petitioner Apple Inc. provides notice of
`the attached Requests for Director Review in the following proceedings:
`
`IPR2023-00937 (U.S. Patent No. 9,369,545)
`IPR2023-00938 (U.S. Patent No. 8,020,083)
`IPR2023-00939 (U.S. Patent No. 8,510,407)
`
`IPR2023-00939
`Ex. 3100
`
`

`

`In each Request, the parties are the same and the issues for which Petitioner seeks Director review
`are identical. Petitioner recognizes that no new evidence may be submitted with a Request for
`Director Review. Exhibits 1018 submitted in each of these proceedings are merely copies of an MPEP
`chapter applicable at a specific point in time that is relevant to the underlying arguments. For ease
`of reference, this archived version of the MPEP chapter was submitted as an exhibit. Petitioner does
`not believe this constitutes new evidence in violation of the Office guidelines.
`
`As set forth in the attached requests, the Board denied institution, finding each Proposed Ground
`relied on appendices to a prior art patent that did not print with the patent and finding those
`appendices had not been properly incorporated by reference into that patent. Accordingly, the
`Board concluded the appendices could not be relied upon as prior art under §102(e).
`
`Each of the attached Requests for Director Review were submitted to the Director because they
`raise an important issue of law and policy that Petitioner believes is an issue of first impression.
`Namely, while the requests challenge the Board’s conclusion that the appendices were not properly
`incorporated by reference, even if the appendices had been improperly incorporated by reference
`by the prior art patent applicant (e.g., as a result of having used the wrong referential language to
`incorporate the appendices into the patent), the policy rationales underlying §102(e) strongly
`disfavor withdrawing the appendices from the public. Any negative consequences that result from a
`purportedly flawed prosecution process underlying a prior art patent should be imposed exclusively
`on the prior art patentee. The public should not also be punished by the USPTO withdrawing a prior
`art disclosure and allowing others to patent subject matter that had been previously submitted to
`the Office.
`
`Finally, as set forth in the below email chain, Petitioner inadvertently failed to sent this notification
`email when the Requests for Director Review were filed via P-TACTS and were served on Patent
`Owner’s counsel.
`
`Respectfully,
`
`
`
`
`
`
`
`
`717 17th St.
`
` Paul Hart | Shareholder
`Erise IP, P.A.
`Suite 1400
`Denver, CO 80202
`(main) 913-777-5600
`(direct) 720-689-5441
`(fax) 913-777-5601
`paul.hart@eriseip.com
`www.eriseip.com
`
`

`

`On Feb 28, 2024, at 1:52 PM, Paul Hart <paul.hart@eriseip.com> wrote:
`
`To the Director,
`
`First, I apologize for the miscommunications on our end. The below email was originally
`sent on my behalf to Trials@uspto.gov, inquiring as to the status of three Requests for
`Director Review we filed recently that were not reflected in the Director Review
`Requests Status Spreadsheet. In response, Ms. Goldschlager asked us to forward our
`original emails requesting Director review
`to Director_PTABDecision_Review@uspto.gov. Instead of forwarding the requested
`information, we sent the below inquiry again.
`
`Second, today’s communications revealed that my team inadvertently failed to submit
`our Requests for Director Review to Director_PTABDecision_Review@uspto.gov after
`they were filed via P-TACTS and served on Patent Owner’s counsel of record.
`
` I
`
` am attaching all three Requests for Director Review that we filed via P-TACTS, but that
`have not yet been submitted to Director_PTABDecision_Review@uspto.gov. The
`proceedings and challenged patents are listed below. In each, the parties are the same
`and the issues for which we seek Director Review are identical.
`
`
`IPR2023-00937 (U.S. Patent No. 9,369,545)
`IPR2023-00938 (U.S. Patent No. 8,020,083)
`IPR2023-00939 (U.S. Patent No. 8,510,407)
`
`
`Please let me know if you require any additional information regarding these requests.
`
`Respectfully,
`
`717 17th St.
`
` Paul Hart | Shareholder
`Erise IP, P.A.
`Suite 1400
`Denver, CO 80202
`(main) 913-777-5600
`(direct) 720-689-5441
`(fax) 913-777-5601
`paul.hart@eriseip.com
`www.eriseip.com
`
`
`<EX1018 - 37 CFR 1.11 (Rev 2, 1996).pdf>
`<IPR2023-00937 Request for Director Review.pdf>
`<EX1018 - 37 CFR 1.11 (Rev 2, 1996).pdf>
`<IPR2023-00939 407 Request for Director Review.pdf>
`<EX1018 - 37 CFR 1.11 (Rev 2, 1996).pdf>
`<IPR2023-00938 083 Request for Director Review.pdf>
`
`

`

`
`
`
`
`
`
`On Feb 28, 2024, at 1:22 PM, Chalynda Giles
`<chalynda.giles@eriseip.com> wrote:
`
`Sent on behalf of Paul Hart
`
`Good Morning,
`
` I
`
` am writing on behalf of Petitioner, Apple Inc., in the matters of IPR2023-
`00937, IPR2023-00938, and IPR2023-00939. Requests for Director Review
`have been filed in each of the identified matters. On P-TACTs, however,
`IPR2023-00937 reflects a status of “Institution Denied” with no indication
`that the matter is currently pending Director Review. Additionally, none of
`the identified matters are reflected on the Director Review Requests
`Status Spreadsheet despite the spreadsheet having been updated after
`each of the Requests for Director Review had been filed. A summary chart
`of each of the identified matters is below:
`
`<PastedGraphic-1.png>
`
`Given the above, can you please confirm that each of the identified
`matters is currently pending director review? Additionally, if possible, are
`you able to clarify/correct (1) the incorrect status of IPR2023-00937 on P-
`TACTs; and (2) the inclusion of each of the matters from the Director
`Review Requests Status Spreadsheet?
`
`Thank you.
`
`
`
`Chalynda Giles
`paralegal
`P 913.777.5600 | D 913.777.5648
`erise IP
`7015 College Blvd., Ste. 700
`Overland Park, KS 66211
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