Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`Paper 7
`Date: October 18, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`
`
`DODOTS LICENSING SOLUTIONS LLC,
`Patent Owner.
`__________
`
`IPR2023-00937 (Patent 9,369,545 B2)
`IPR2023-00938 (Patent 8,020,083 B1)
` IPR2023-00939 (Patent 8,510,407 B1)1
`_______________
`
`Before HUBERT C. LORIN, GRACE KARAFFA OBERMANN,
`AMBER L. HAGY, and SHARON FENICK, Administrative Patent Judges.
`
`
`PER CURIAM.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`1 We exercise our discretion to issue one order to be entered in each case.
`The parties are not authorized to use a caption identifying multiple cases.
`This is not an expanded panel. The panel for IPR2023-00937 includes
`Judges Lorin, Obermann, and Fenick. The panel for IPR2023-00938 and
`IPR2023-00939 includes Judges Lorin, Hagy, and Fenick.
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`Paper 7
`Date: October 18, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`
`
`DODOTS LICENSING SOLUTIONS LLC,
`Patent Owner.
`__________
`
`IPR2023-00937 (Patent 9,369,545 B2)
`IPR2023-00938 (Patent 8,020,083 B1)
` IPR2023-00939 (Patent 8,510,407 B1)1
`_______________
`
`Before HUBERT C. LORIN, GRACE KARAFFA OBERMANN,
`AMBER L. HAGY, and SHARON FENICK, Administrative Patent Judges.
`
`
`PER CURIAM.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`1 We exercise our discretion to issue one order to be entered in each case.
`The parties are not authorized to use a caption identifying multiple cases.
`This is not an expanded panel. The panel for IPR2023-00937 includes
`Judges Lorin, Obermann, and Fenick. The panel for IPR2023-00938 and
`IPR2023-00939 includes Judges Lorin, Hagy, and Fenick.
`
`
`
`IPR2023-00937 (Patent 9,369,545 B2)
`IPR2023-00938 (Patent 8,020,083 B1)
`IPR2023-00939 (Patent 8,510,407 B1)
`Petitioner requests authorization to file preliminary replies to Patent
`Owner’s Preliminary Responses (“Prelim. Resp.”)2 “limited to PO’s
`arguments concerning Slivka’s appendices.” Ex. 30013. Petitioner indicates
`that Patent Owner opposes the request. Id. Patent Owner opposes because
`“both parties have already explained in their respective papers the reasons
`why the appendices are or are not part of the Slivka prior art reference. No
`additional papers on this issue are needed. For this reason, [Petitioner] does
`not believe that a do-over in the form of a reply should be permitted.” Id.4
`After consideration of the record, we believe that it may be useful
`to the Board for the parties to further address whether the appendices are
`or are not part of the Slivka prior art reference.
`Slivka (Patent 6,061,69; Ex. 10045) is applied as the primary
`reference in all the proposed grounds of unpatentability presented in the
`Petitions (“Pet.”)6.
`Petitioner contends that “Slivka was filed December 6, 1996, and
`issued May 9, 2000, qualifying as prior art at least under 35 U.S.C.
`
`
`2 See IPR2023-00937, Paper 6; IPR2023-00938, Paper 7; IPR2023-00939,
`Paper 6.
`3 Entered in IPR2023-00937, IPR2023-00938, IPR2023-00939.
`4 The parties appear to be at odds over whether Petitioner conferred with
`Patent Owner over the requested relief. Ex. 3001. To the extent that had not
`been done here, Petitioner is directed to meet and confer with Patent Owner
`prior to submitting any future email communications to the Board.
`5 IPR2023-00937, IPR2023-00938, IPR2023-00939.
`6 See IPR2023-00937, Paper 1, 7; IPR2023-00938, Paper 1, 5; IPR2023-
`00939, Paper 1, 7.
`
`2
`
`
`
`IPR2023-00937 (Patent 9,369,545 B2)
`IPR2023-00938 (Patent 8,020,083 B1)
`IPR2023-00939 (Patent 8,510,407 B1)
`§ 102(e) (pre-AIA).” IPR2023-00937, Pet. 9 (citing Ex. 1004, (22),
`(45)). 7
`Petitioner contends that “Slivka’s specification incorporates
`several appendices stamped with the filing date, December 6, 1996.”
`IPR2023-00937, Pet. 9 (citing Ex. 1005, 69-245)8. According to
`Petitioner, “Slivka’s appendices qualify as prior art at least under 35
`U.S.C. § 102(e) (pre-AIA)” because, inter alia, “the entire disclosure
`of a U.S. patent and…can be relied on to reject the claims.” Id. (citing,
`inter alia, MPEP § 2136.02)9.
`Patent Owner responds, inter alia, that “[t]he fact is, the Slivka
`application does not incorporate the appendices because the Slivka
`applicant expressly noted that the appendices were being submitted
`separate from the specification.” IPR2023-00937, Prelim. Resp. 27
`(citing Ex. 2007). 10 “[T]he transmittal letter expressly identifies the
`appendices as being submitted separate from the ‘34 pages of
`specification.’” Id. at 26 (citing Ex. 2011)11.
`This raises an issue as to the effect of this incorporation of
`appendices in an application.
`
`
`7 See also IPR2023-00938, Pet. 8 (citing Ex. 1004, (22), (45)); IPR2023-
`00839, Pet. 10 (citing Ex. 1004, (22), (45)).
`8 See also IPR2023-00938, Pet. 8; IPR2023-00839, Pet. 10.
`9 See also IPR2023-00938, Pet. 8; IPR2023-00839, Pet. 10.
`10 See also IPR2023-00938, Prelim. Resp. 27–28 (citing Ex. 2009); Prelim.
`Resp. 27 (citing Ex. 2007).
`11 See also IPR2023-00938, Prelim. Resp. 26 (citing Ex. 2009); Prelim.
`Resp. 26 (citing Ex. 2011).
`
`3
`
`
`
`IPR2023-00937 (Patent 9,369,545 B2)
`IPR2023-00938 (Patent 8,020,083 B1)
`IPR2023-00939 (Patent 8,510,407 B1)
`Given that the resolution of this issue may be an important factor
`in deciding whether to institute inter partes review, we determine good
`cause exists to support Petitioner’s request for a reply to Patent Owner’s
`Preliminary Response to address the issue. See 37 C.F.R. § 42.108(c).
`Accordingly, Petitioner’s request for authorization to file a
`preliminary reply limited to addressing whether the appendices are
`incorporated in the Slivka application is granted. We also authorize
`Patent Owner to file a preliminary sur-reply limited to responding to
`Petitioner’s preliminary reply.
`For the foregoing reasons, it is
`ORDERED that Petitioner’s request for authorization to file a
`preliminary reply to the Preliminary Response limited to addressing whether
`the appendices are incorporated in the Slivka application is granted, and that
`the preliminary reply shall be limited to three pages and shall be filed within
`five business days after the date of this ORDER;
`FURTHER ORDERED that Patent Owner may file a preliminary
`sur-reply, limited to three pages, within five business days from the date the
`preliminary reply is filed; and,
`FURTHER ORDERED that no new evidence or exhibits are
`permitted in connection with the respective preliminary reply and
`preliminary sur-reply.
`
`
`
`
`
`
`
`
`4
`
`
`
`IPR2023-00937 (Patent 9,369,545 B2)
`IPR2023-00938 (Patent 8,020,083 B1)
`IPR2023-00939 (Patent 8,510,407 B1)
`For PETITIONER:
`
`Paul R. Hart
`Adam P. Seitz
`Keving Rongish
`ERISE IP,P.A.
`paul.hart.@eriseip.com
`adam.seitz@eriseip.com
`kevin.rongish@eriseip.com
`
`For PATENT OWNER:
`
`Jason S. Charkow
`Richard Juang
`Chandran B. Iyer
`DAIGNAULT IYER LLP
`jcharkow@daignaultiyer.com
`richard.juang@gmail.com
`cbiyer@daignaultiyer.com
`
`
`5
`
`
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