Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 55
`Date: May 11, 2023
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`APPLE INC.,
`Petitioner,
`v.
`MPH TECHNOLOGIES OY,
`Patent Owner.
`
`
`
`IPR2019-00820
`Patent 7,937,581 B2
`__________________________
`
`
`Before KEVIN C. TROCK, JOHN D. HAMANN, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`HAMANN, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Adverse Judgment on Remand
`37 C.F.R. 42.73(b)
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 55
`Date: May 11, 2023
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`APPLE INC.,
`Petitioner,
`v.
`MPH TECHNOLOGIES OY,
`Patent Owner.
`
`
`
`IPR2019-00820
`Patent 7,937,581 B2
`__________________________
`
`
`Before KEVIN C. TROCK, JOHN D. HAMANN, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`HAMANN, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Adverse Judgment on Remand
`37 C.F.R. 42.73(b)
`
`
`
`
`
`
`
`IPR2019-00820
`Patent 7,937,581 B2
`
`INTRODUCTION
`I.
`This case returns on remand from the United States Court of Appeals
`
`for the Federal Circuit in Apple Inc. v. MPH Techs. OY, Nos. 2021-1355,
`2021-1356, 2022 WL 4103286, at *1 (Fed. Cir. Sept. 8, 2022).1 In our prior
`Final Written Decision in this proceeding, we determined that by a
`preponderance of the evidence Apple Inc. (“Petitioner”) (i) proved that
`claims 1–3, 5, and 9 of U.S. Patent No. 7,937,581 B2 (Ex. 1001, “the ’581
`patent”) are unpatentable, and (ii) did not prove that claims 4 and 6–8 are
`unpatentable. Paper 37 (“FWD”), 68. On Petitioner’s appeal, the Federal
`Circuit held that we erred in our construction of a term, and as a result,
`vacated our judgment of no unpatentability for claim 4 and remanded to the
`Board for further proceedings. Apple, 2022 WL 4103286, at *4–6, 8. In
`addition, the Federal Circuit affirmed our “patentability determination that
`[Petitioner] failed to meet its burden as to claims 6–8 of the ’581 patent.” Id.
`at *8.
` After the Federal Circuit’s decision, and five days before the mandate
`issued, MPH Technologies Oy (“Patent Owner”) filed with the Patent Office
`a statutory disclaimer under 37 C.F.R. § 1.321, which stated that Patent
`Owner “hereby disclaims and dedicates to the public the entirety of claim 4
`of the ’581 Patent.” Ex. 3003, 1; Paper 48 (Mandate).
`A. Related Matters
`The parties identify as related matters: (i) MPH Techs. Oy v. Apple
`
`Inc., No. 5:18-cv-05935-PJH (N.D. Cal.); (ii) Apple Inc. v. MPH Techs. Oy,
`
`1 The Federal Circuit issued a joint decision, addressing Petitioner’s appeal
`from this proceeding, as well as Petitioner’s appeal from Apple Inc. v. MPH
`Techs. Oy, IPR2019-00819. Apple, 2022 WL 4103286, at *1. On remand,
`we issue separate decisions for these cases for purposes of clarity.
`
`2
`
`
`
`IPR2019-00820
`Patent 7,937,581 B2
`IPR2019-00819 (PTAB) (involving related U.S. Patent No. 7,620,810 B2);
`(iii) Apple Inc. v. MPH Techs. Oy, Appeal No. 21-1355 (Fed. Cir.); and
`(iv) MPH Techs. Oy v. Apple Inc., Appeal No. 21-1390 (Fed. Cir.).
`Paper 42, 1; Paper 43, 1.
`B. Additional Briefing Post-Remand
`After the remand, we authorized a simultaneous exchange of
`additional briefing for the parties to address the legal effect of the statutory
`disclaimer of claim 4. Paper 50, 6. Pursuant to that authorization, Petitioner
`filed an Opening Brief Post-Remand (Paper 51, “Pet. Rem. Open.”), Patent
`Owner filed an Opening Brief (Paper 52, “PO Rem. Open.”), Petitioner filed
`a Response Brief Post-Remand (Paper 53, “Pet. Rem. Resp.”), and Patent
`Owner filed a Response Brief (Paper 54, “PO Rem. Resp.”).
`II. ANALYSIS
`The parties dispute the legal effect of Patent Owner’s statutory
`
`disclaimer of claim 4. Petitioner argues that we should treat Patent Owner’s
`statutory disclaimer of claim 4 as a “request for adverse judgement and enter
`same.” Pet. Rem. Open. 2. Patent Owner disagrees. See generally PO Rem.
`Open.; PO Rem. Resp.
`
`We agree with Petitioner and determine that Patent Owner requested
`adverse judgment against itself by filing a statutory disclaimer for claim 4.
`Pet. Rem. Open. 2–3. In particular, “[a]ctions construed to be a request for
`adverse judgment include . . . disclaimer of a claim such that the party has
`no remaining claim in the trial.” 37 C.F.R. § 42.73(b). Here, claim 4 was
`the sole remanded claim. Apple, 2022 WL 4103286, at *8 (remanding only
`claim 4 for this proceeding).
`
`3
`
`
`
`IPR2019-00820
`Patent 7,937,581 B2
`
`We also agree with Petitioner and determine that “claims 6–8 are no
`longer part of this [inter partes review] proceeding, because the Board made
`a final judgment with regard to these claims and that judgment has not been
`reversed or vacated.” Pet. Rem. Resp. 4 (citing 37 C.F.R. § 42.2); see also
`Apple, 2022 WL 4103286, at *8 (affirming as to claims 6–8); 37 C.F.R.
`§ 42.2 (“A decision is final only if it disposes of all necessary issues with
`regard to the party seeking judicial review, and does not indicate that further
`action is required.”). As such, claims 6–8 no longer remain “in the trial,”
`within the meaning of 37 C.F.R. § 42.73(b)(2).
`
`Thus, in light of the disclaimer of claim 4, Patent Owner has no
`remaining claim in the trial. Hence, we view Patent Owner statutorily
`disclaiming claim 4 as a request for adverse judgment. This is consistent
`with how other panels have handled this issue. See Nichia Corp. v.
`Document Security Systems, Inc., IPR2018-01165, Paper 35 at 2–3 (PTAB
`Nov. 18, 2022); Auris Health, Inc. v. Intuitive Surgical Operations Inc.,
`IPR2019-01547, Paper 31 at 2–4 (PTAB July 22, 2022); Foundation
`Medicine, Inc. v. Caris MPI, Inc., IPR2019-00166, Paper 65 at 2–3 (PTAB
`June 15, 2022); Apple Inc. v. Corephotonics Ltd., IPR2018-01146, Paper 45
`at 4 (PTAB Feb. 11, 2022).
`
`We find unavailing Patent Owner’s argument that “claims 6–8 remain
`in the remanded proceeding until the Director issues an IPR certificate
`confirming their patentability under 35 U.S.C. § 318(b).” PO Rem. Open.
`3–4. Section 318(b) states that if the Board issues “a final written decision
`. . . and the time for appeal has expired or any appeal has terminated, the
`Director shall issue and publish a certificate canceling any claim of the
`patent finally determined to be unpatentable, [and] confirming any claim of
`
`4
`
`
`
`IPR2019-00820
`Patent 7,937,581 B2
`the patent determined to be patentable.” 35 U.S.C. § 318(b). This language
`does not address when the trial ends, and whether claims on remand remain
`in the trial. Id. Rather, it is directed to when the Director shall issue the
`certificate. Id. Moreover, Patent Owner simply asserts that the language of
`§ 318(b) supports its argument without explaining why. See PO Rem. Open.
`3–4; PO Rem. Resp. 3–4. Our corresponding Rule substantively has the
`same language (except for replacing “the Director shall” with “the Office
`will”), and thus, we view it the same way. See 37 C.F.R. § 42.80.
`We also find unavailing Patent Owner’s argument that the “statutory
`
`disclaimer of claim 4 of the ’581 patent cannot be construed as a request for
`adverse judgment because it did not occur ‘during a proceeding’ at the
`Board as required by 37 C.F.R. § 42.73(b).” PO Rem. Open. 3. Rather, we
`agree with Petitioner that Patent Owner incorrectly conflates the first
`sentence of § 42.73(b) with the second sentence. Pet. Rem. Resp. 2–3. The
`first sentence states that “[a] party may request judgment against itself at any
`time during a proceeding,” which relates to when a party may request
`adverse judgment during a proceeding (i.e., “at any time”). 37 C.F.R.
`§ 42.73(b). The second sentence relates to examples of what should be
`construed as a request for adverse judgment. Id. Notably, the second
`sentence does not include a temporal requirement. Id. Thus, when Patent
`Owner filed the statutory disclaimer of claim 4 here is immaterial.
`
`We also find unavailing Patent Owner’s argument that regardless of
`whether the requirements of 37 C.F.R. § 42.73(b) are met, that the Rule is
`permissive and we should decline to enter an adverse judgment because
`otherwise we “would frustrate the policy of 37 C.F.R. 42.1(b) and the
`Federal Circuit’s mandate.” PO Rem. Open. 5. Patent Owner does not
`
`5
`
`
`
`IPR2019-00820
`Patent 7,937,581 B2
`explain how either would be frustrated by an adverse judgment for claim 4.
`Id. Nor do we see how the just, speedy, and inexpensive resolution of this
`proceeding would be frustrated by entering an adverse judgment for claim 4.
`Patent Owner already has “disclaim[ed] and dedicate[d] to the public the
`entirety of claim 4,” which is consistent with entering an adverse judgment
`for claim 4. Ex. 3003, 1.
`
`In addition, we find inapposite Patent Owner’s citing of Judge
`O’Malley’s concurring opinion in Arthrex, Inc. v. Smith & Nephew, Inc., 880
`F.3d 1345 (Fed. Cir. 2018). PO Rem. Open. 5. The portion of the
`discussion that Patent Owner cites to relates to adverse judgments at the
`pre-institution stage, but here the proceeding is post-institution. Id. (citing
`Arthrex, 880 F.3d at 1351).
`
`III. ORDER
`In consideration of the foregoing, it is hereby
`ORDERED that adverse judgment is entered under 37 C.F.R.
`§ 42.73(b) against Patent Owner as to claim 4 of the ’581 patent; and
`FURTHER ORDERED that this proceeding is terminated.
`
`
`
`6
`
`
`
`IPR2019-00820
`Patent 7,937,581 B2
`PETITIONER:
`
`David W. O’Brien
`Andrew S. Ehmke
`HAYNES AND BOONE, LLP
`david.obrien.ipr@haynesboone.com
`andy.ehmke.ipr@haynesboone.com
`
`
`PATENT OWNER:
`
`James T. Carmichael
`Stephen Schreiner
`CARMICHAEL IP LAW, PLLC
`jim@carmichaelip.com
`schreiner@carmichaelip.com
`
`
`Christopher J. Lee
`Richard B. Megley
`Brian E. Haan
`Ashley E. LaValley
`LEE SHEIKH MEGLEY & HAAN LLC
`clee@leesheikh.com
`rmegley@leesheikh.com
`bhaan@leesheikh.com
`alavalley@leesheikh.com
`
`
`Kenneth J. Weatherwax
`Patrick Maloney
`Jason C. Linger
`LOWENSTEIN & WEATHERWAX LLP
`weatherwax@lowensteinweatherwax.com
`maloney@lowensteinweatherwax.com
`linger@lowensteinweatherwax.com
`
`
`
`
`7
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
