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Apple Inc. v. SEVEN Networks, LLC

Docket IPR2020-00189, Patent Trial and Appeal Board (Dec. 2, 2019)
Joni Chang, Karl Easthom, Thu Dang, presiding
Case TypeInter Partes Review
Patent9608968
Patent Owner SEVEN Networks, LLC
Petitioner Apple Inc.
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12 Refund Approval: Notice of Refund

Document IPR2020-00189, No. 12 Refund Approval - Notice of Refund (P.T.A.B. Jul. 29, 2020)
Petitioner’s request for a refund of certain post-institution fees paid on December 2, 2019 in the above proceeding is hereby granted.
The amount of $28,800.00 has been refunded to Petitioner’s deposit account.
The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in the Patent Trial and Appeal Board End to End (PTAB E2E), accessible from the Board Web site at http://www.uspto.gov/PTAB.
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10 Institution Decision: Trial Instituted Document

Document IPR2020-00189, No. 10 Institution Decision - Trial Instituted Document (P.T.A.B. Jun. 11, 2020)
Institution of an inter partes review may not be authorized “unless ... the information presented in the petition ... and any response ... shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).
Upon consideration of the Petition and the Preliminary Response, we are not persuaded Petitioner demonstrated a reasonable likelihood of prevailing in establishing unpatentability claims 1–38 of the ’968 patent.
However, according to Petitioner, “neither the ’968 patent, nor any of the non-provisional priority applications, disclose that the trigger 132 is received by the server ‘in response to user input at the first device,’” as required by independent claims 1 and 10.
Patent Owner argues that “the grandparent application more than sufficiently describes the subject matter of the independent claims, including all features alleged to be missing from the disclosure.” Prelim. Resp. 16.
Patent 9,608,968 B2 “A patent must contain a specific reference to each prior-filed application to be entitled to those applications’ earlier filing dates.” Droplets, Inc. v. E*Trade Bank, 887 F.3d 1309, 1322 (Fed. Cir. 2018) (aff’g PTAB that priority claim to only immediately preceding parent but not its earlier ancestor applications necessary to reach back to provisional, failed “specific reference” requirement of 37 C.F.R. § 1.78, despite incorporation by reference of that immediate parent which had correct priority claim back to provisional and despite cross reference to that provisional; and aff’g obviousness of claims over ancestor application publication).
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4 Notice of Filing Date Accorded to Petition: Notice of Accord Filing Date

Document IPR2020-00189, No. 4 Notice of Filing Date Accorded to Petition - Notice of Accord Filing Date (P.T.A.B. Dec. 18, 2019)
Patent Owner is advised of the requirement to submit mandatory notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of the petition.
The parties are advised that under 37 C.F.R. § 42.10(c), recognition of counsel pro hac vice requires a showing of good cause.
Such motions shall be filed in accordance with the “Order -- Authorizing Motion for Pro Hac Vice Admission” in Case IPR2013-00639, Paper 7, a copy of which is available on the Board Web site under “Representative Orders, Decisions, and Notices.” The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in Patent Trial and Appeal Board End to End (PTAB E2E), accessible from the Board Web site at http://www.uspto.gov/PTAB.
Many non-profit organizations, both inside and outside the intellectual property field, offer alternative dispute resolution services.
If the parties actually engage in alternative dispute resolution, the Case IPR2020-00189 Patent 9,608,968 B2 PTAB would be interested to learn what mechanism (e.g., arbitration, mediation, etc.) was used and the general result.
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2 Petition: Petition for Inter Partes Review

Document IPR2020-00189, No. 2 Petition - Petition for Inter Partes Review (P.T.A.B. Dec. 2, 2019)
... a server that receives a qualifying first transaction “in response to user input at the first device.” The pro- visional applications disclose various transactions that the System SEVEN Server may receive, but Petitioner identified none ...
Nonetheless, these features were known 18 Attorney Docket No. 39521-0076IP2 IPR of U.S. Patent No. 9,608,968 and would have been obvious to implement in combination with Fiatal for the rea- sons set forth in this Petition.
Nonetheless, by the relatively late filing date of the ’968 patent (February 17, 2015), push-type systems that pushed complete email messages or other types of content to an intermediary for delivery to client devices were well-known.
Nonetheless, it was well-known by the time the ’968 patent was filed in 2015 (and in 2006) that emails were often addressed or otherwise intended to be received by multiple users.
Fiatal does not elaborate as to how the connection 25 is “continuously” maintained or how the system would rec- ognize when connection 25 had become “disconnected.” Nonetheless, a POSITA 59 Attorney Docket No. 39521-0076IP2 ...
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11 Refund Request: Petitioners Request for Refund of Post Institution Fees

Document IPR2020-00189, No. 11 Refund Request - Petitioners Request for Refund of Post Institution Fees (P.T.A.B. Jul. 20, 2020)
Proceeding No.: IPR2020-00189 Attorney Docket: 39521-0076IP2 Pursuant to the Patent and Trademark Office’s Final Rule Setting and Adjusting Patent Fees, 78 Fed. Reg. 4212, 4232–4234 (Jan. 18, 2013), Petitioner, Apple Inc., requests a refund in the amount of $28,800.00 to be paid to deposit account number 06-1050.
On December 2, 2019, Petitioner filed a Petition for Inter Partes Review of U.S. Patent No. 9,608,968 with the Patent Trial and Appeal Board that was assigned case number IPR2020-00189.
In accordance with the fee schedule specified in 37 C.F.R. § 42.15(a), Petitioner deposited an electronic payment in the amount of $20,900.00 with the Board at the time of filing of its Petition to cover associated fees with Petitioner’s inter partes review request, and a further $28,800.00 in Post-Institution fees.
On June 11, 2020, the Patent Trial and Appeal Board entered a Decision denying institution.
Accordingly, Petitioner requests a refund in the amount of $28,800.00 for the post-institution fees that it has paid to the USPTO in connection with this proceeding.
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9 Exhibit List: Petitioners Updated Exhibit List

Document IPR2020-00189, No. 9 Exhibit List - Petitioners Updated Exhibit List (P.T.A.B. May. 29, 2020)
Bill Dyszel, Microsoft Outlook 2000 For Windows For Dummies (1999) (“Outlook2000”)
RFC3428: Session Initiation Protocol Extension For Instant Messaging (“RFC3428”)
Claim Construction Memorandum and Order, Seven Networks LLC v. Apple Inc., Case No. 2:19-CV-00115-JRG (E.D.
(March 31, 2020) Order Granting Joint Motion to Amend the Docket Control Order re Schedule of Deadlines, Seven Networks LLC v. Apple Inc., Case No. 2:19-CV-00115-JRG (E.D.
(April 21, 2020) Seven’s Notice Regarding Claim Reduction, Seven Networks LLC v. Apple Inc., Case No. 2:19-CV-00115-JRG (E.D.
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8 Preliminary Response: Patent Owners Preliminary Response

Document IPR2020-00189, No. 8 Preliminary Response - Patent Owners Preliminary Response (P.T.A.B. Mar. 17, 2020)
... forward, Patent Owner need only “make a sufficient showing of entitlement to earlier filing date(s), in a manner that is commensurate in scope with the specific points and contentions raised by the petitioner,” of which there are none.
35 U.S.C. §311(b); Dexcowin Global, Inc. v. Aribex, Inc., IPR2016-00436, Paper 12, (PTAB July 7, 2016) (“A petitioner in an inter partes review … is not permitted to assert a ground of unpatentability under 35 U.S.C. §112.”) None of ...
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