IPR2023-00939 (U.S. Patent No. 8,510,407) – PO’s Sur-Reply
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________
`APPLE INC.,
`Petitioner
`v.
`DODOTS LICENSING SOLUTIONS LLC,
`Patent Owner
`Case IPR2023-00939
`U.S. Patent No. 8,510,407
`__________________________________________________________________
`
`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY
`TO PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________
`APPLE INC.,
`Petitioner
`v.
`DODOTS LICENSING SOLUTIONS LLC,
`Patent Owner
`Case IPR2023-00939
`U.S. Patent No. 8,510,407
`__________________________________________________________________
`
`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY
`TO PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`IPR2023-00939 (U.S. Patent No. 8,510,407) – PO’s Sur-Reply
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`TABLE OF CONTENTS
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`Slivka failed to properly submit html code. ....................................................... 1
`I.
`II. Slivka separated its appendices from the specification. ..................................... 2
`III. Merely attaching references is not incorporation. .............................................. 3
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`i
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`IPR2023-00939 (U.S. Patent No. 8,510,407) – PO’s Sur-Reply
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`I.
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`Slivka failed to properly submit HTML code.
`It is undisputed that the 177 pages of appendices Slivka submitted to the
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`Patent Office is comprised of twenty separate appendices. Transmittal Letter, Ex.
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`2011. Though certain appendices are textbook excerpts (e.g., R, S, and T), Apple’s
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`Appendices (i.e. appendices A, C, D, E and F) comprise five different HTML files.
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`And each of Apple’s Appendices are less than 10 pages; in fact, they total less than
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`10 pages. These appendices that are not part of the application because Slivka
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`failed to follow the requirements set forth in MPEP 608.05 and 37 C.F.R. 1.96.
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`In fact, Apple does not dispute that its appendices were submitted in a
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`manner that runs afoul of these provisions. Instead, Apple argues that Slivka did
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`not have to follow 37 CFR 1.96 because the Apple Appendices are not “computer
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`program listings.” See Reply at 2. Apple is wrong and its argument is counter to
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`what Apple states in its petition. MPEP 608.05 defines “computer program
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`listings” as a “printout that lists, in proper sequence, the instructions, routines and
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`other contents of a program for a computer.” See Ex. 2008 at 600-88. And in its
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`petition, Apple’s expert argues that “Slivka teaches exemplary HTML instructions
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`in individual HTML documents, such as Appendices C-F.” See Exhibit 1003 at ¶
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`49. Given the plain words of MPEP 608.05 and Apple’s expert admitting that
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`Appendices C-F contain HTML “instructions,” there can be no dispute that
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`Apple’s Appendices contain “computer program listings.”
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`1
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`IPR2023-00939 (U.S. Patent No. 8,510,407) – PO’s Sur-Reply
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`37 C.F.R. §1.96(b), “[m]aterial which will be printed in the patent,” requires
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`computer program listings of ten pages or less to be submitted “as drawings or as
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`part of the specification” by positioning it at the “end of the description but before
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`the claims.” Ex. 1017 at 15. Alternatively, §1.96(c) titled “[a]s an appendix which
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`will not be printed” requires submission of programs over ten pages “in the form
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`of microfiche, [and must be] referred to in the specification…as ‘microfiche
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`appendix.’” Id. Slivka did not follow either of these two required procedures; the
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`appendices are not printed in the patent and there is no reference to a “microfiche
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`appendix.” Therefore, Apple’s Appendices are not part of Slivka.
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`II.
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`Slivka separated its appendices from specification.
`DoDots agrees that the appendices were filed with the application and other
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`documents, and that all of the documents were stamped with the same filing date.
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`Reply at 1. But that fact carries no weight. Filing a collection of documents that
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`includes an application and appendices does not mean that the appendices are
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`incorporated into the patent specification. To conclude otherwise would eviscerate
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`37 C.F.R. 1.96. Apple’s claim that the applicant “expressly not[ed] the
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`incorporation of the appendices to the Examiner during prosecution of the Slivka
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`patent” is also plainly false. Reply at 1. Slivka did not note that he was
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`incorporating the appendices to the specification.
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`2
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`IPR2023-00939 (U.S. Patent No. 8,510,407) – PO’s Sur-Reply
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`III. Merely attaching references is not incorporation.
`Apple argues that Slivka provides “clear and consistent references to the
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`appendices throughout the specification.” But every citation Apple provides to
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`support its argument shows the opposite—that the appendices are not incorporated
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`by reference into the patent specification and instead merely called out as an
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`attachment to the patent. Every appendix is characterized as simply being
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`“attached hereto” or “attached…respectively.” Referencing appendices as being
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`attached is not incorporating the contents of the appendices into the “entire
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`disclosure” of specification. Per 37 CFR 1.96, simply noting that code is attached
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`is not the proper way to incorporate computer program listings into a patent.
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`Further, Apple’s discussion of the policy underlying 102(e) is irrelevant as
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`to whether the Slivka appendices are 102(e) prior art.1 35 USC 316(e), which
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`places the burden of proof to show unpatentability, overrides any policy argument.
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`To meet its burden here, Apple must show that a document it relies on is actually
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`prior art. For reasons set forth above and in the POPR, Apple failed to meet this
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`burden.
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`1 Petitioner cites MPEP 2136.02 to say that Slivka’s entire disclosure can be relied
`on to reject the claim. But Petitioner ignores that MPEP 2136.02 also states “that
`the disclosure relied on in the rejection must be present in the issued patent.” Here,
`there is no dispute that the Apple Appendices are “not present” either at the “end of
`the description but before the claims” per §1.96(b) or in a “microfiche Appendix”
`per §1.96(c). As a result of this failure to follow §1.96, the “entire disclosure” of
`the Slivka application or patent as issued does not include the appendices.
`3
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`IPR2023-00939 (U.S. Patent No. 8,510,407) – PO’s Sur-Reply
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`Dated: November 1, 2023
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`Respectfully submitted,
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`
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`By: /Jason S. Charkow/
`Jason S. Charkow (USPTO Reg. No. 46,418)*
`Richard Juang (USPTO Reg. No. 71,478)*
`Chandran B. Iyer (USPTO Reg. No. 48,434)
`Ronald M Daignault*
`jason.s.charkow@gmail.com
`richard.juang@gmail.com
`cbiyer@dagignaultiyer.com
`rdaignault@daignaultiyer.com
`DAIGNAULT IYER LLP
`8618 Westwood Center Drive
`Suite 150
`Vienna, VA 22182
`*Not admitted in Virginia
`
`Attorneys for DoDots Licensing Solutions LLC
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`4
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that the foregoing PATENT OWNER’S
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`SUR-REPLY TO PETITIONER’S REPLY TO PATENT OWNER’S
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`PRELIMINARY RESPONSE was served electronically via email on November 1,
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`2023, on the following counsel of record for Petitioner:
`
`Paul R. Hart
`Adam P. Seitz
`Kevin Rongish
`ERISE IP, P.A.
`PTAB@eriseip.com
`Paul.Hart@eriseip.com
`adam.seitz@eriseip.com
`kevin.rongish@eriseip.com
`
`
`Dated: November 1, 2023
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`Respectfully Submitted,
`By: / Jason S. Charkow /
`
`Jason S. Charkow
` USPTO Reg. No. 46,418
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