Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 9
`Date: January 9, 2020
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`FINTIV, INC.,
`Patent Owner.
`____________
`
`IPR2020-00019
`Patent 8,843,125 B2
`____________
`
`
`
`Before WILLIAM M. FINK, Vice Chief Administrative Patent Judge, and
`LINDA E. HORNER and LYNNE E. PETTIGREW, Administrative Patent
`Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Patent Owner’s Request on Rehearing of Order Authorizing
`Petitioner’s Supplemental Brief on Claim Construction and Increasing Word
`Limit for Patent Owner’s Preliminary Response
`37 C.F.R. § 42.71(d)(1)
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 9
`Date: January 9, 2020
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`FINTIV, INC.,
`Patent Owner.
`____________
`
`IPR2020-00019
`Patent 8,843,125 B2
`____________
`
`
`
`Before WILLIAM M. FINK, Vice Chief Administrative Patent Judge, and
`LINDA E. HORNER and LYNNE E. PETTIGREW, Administrative Patent
`Judges.
`
`PETTIGREW, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Patent Owner’s Request on Rehearing of Order Authorizing
`Petitioner’s Supplemental Brief on Claim Construction and Increasing Word
`Limit for Patent Owner’s Preliminary Response
`37 C.F.R. § 42.71(d)(1)
`
`
`
`
`
`
`
`
`
`IPR2020-00019
`Patent 8,843,125 B2
`
`I. INTRODUCTION
`Petitioner, Apple Inc., filed a Petition in this case on October 28,
`2019, challenging certain claims of U.S. Patent No. 8,843,125 B2 (Ex. 1001,
`“the ’125 patent”) owned by Patent Owner, Fintiv, Inc. Paper 1. On
`November 27, 2019, in a parallel district court proceeding, the court issued a
`Markman order construing seven disputed claim terms in the ’125 patent.
`Ex. 1027 (Claim Construction Order in Fintiv, Inc. v. Apple Inc., Case No.
`6:18-CV-372-ADA (W.D. Tex.), Dkt. 86).
`Following a conference call with counsel for both parties on
`December 5, 2019, we granted Petitioner’s request for leave to file the
`district court’s Markman order and a supplemental brief (no longer than
`1,000 words) with accompanying exhibits to address how Petitioner
`contends the prior art satisfies one claim term, “OTA proxy,” for which the
`district court provided its own construction instead of adopting either
`Petitioner’s or Patent Owner’s proposed construction. Paper 6 (PTAB
`Dec. 6, 2019) (“Order”). We increased the word limit for Patent Owner’s
`preliminary response by 1,000 to 15,000 words, but we left unchanged the
`filing deadline for the preliminary response—three months after the entry of
`the Notice of Filing Date Accorded to the Petition (Paper 3 (PTAB Nov. 15,
`2019)). Order 4. On December 9, 2019, Petitioner filed its supplemental
`brief along with the district court’s Markman order (Ex. 1027) and five
`exhibits alleged by Petitioner to show the knowledge of a person having
`ordinary skill in the art—four industry standard documents (Exs. 1029–32)
`and a published U.S. patent application (Ex. 1028). Paper 7 (“Pet. Supp.
`Br.).
`
`On December 20, 2019, Patent Owner timely filed a Request for
`Rehearing of our Order. Paper 8 (“Reh’g Req.”); see 37 C.F.R. §§ 42.71(b),
`
`2
`
`
`
`IPR2020-00019
`Patent 8,843,125 B2
`(d)(1). Patent Owner contends the Board abused its discretion in granting
`Petitioner’s request because Petitioner did not file a motion to submit
`supplemental information pursuant to 37 C.F.R. § 42.123(c). Reh’g Req. 1.
`Patent Owner also argues that because we did not require Petitioner to
`submit a motion pursuant to § 42.123(c), Patent Owner was deprived of a
`meaningful opportunity to be heard as required by the Administrative
`Procedure Act and due process. Id. Finally, Patent Owner contends that the
`Board abused its discretion in not granting Patent Owner’s alternative
`request for additional time to file its preliminary response. Id.
`For the reasons given below, we deny Patent Owner’s Request for
`Rehearing of the Board’s Order.
`
`II. DISCUSSION
`A. Standard for Rehearing
`The party challenging a decision in a request for rehearing bears the
`burden of showing the decision should be modified. 37 C.F.R. § 42.71(d).
`A request for rehearing “must specifically identify all matters the party
`believes the Board misapprehended or overlooked, and the place where each
`matter was previously addressed.” Id. Although Patent Owner contends that
`the Order should be reviewed for abuse of discretion, see Reh’g Req. 4, that
`standard applies only to a request for rehearing of an interlocutory non-panel
`decision, 37 C.F.R. § 42.71(b), and to a request for rehearing of a decision
`by the Board on whether to institute a trial based on a petition, 37 C.F.R.
`§ 42.71(c). The Order in this instance was an interlocutory panel decision.
`B. Analysis
`Patent Owner first contends that we overlooked 37 C.F.R. § 42.123(c)
`when we held a telephonic hearing and granted Petitioner’s request to submit
`the district court’s claim construction order and a supplemental brief without
`
`3
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`
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`IPR2020-00019
`Patent 8,843,125 B2
`requiring Petitioner to file a motion to submit supplemental information
`under § 42.123(c). Reh’g Req. 4. According to Patent Owner, § 42.123(c)
`required Petitioner first to request authorization to file a motion to submit
`the information and then, if authorized, file a motion showing why the
`supplemental information reasonably could not have been obtained earlier
`and that consideration of the information would be in the interests of justice.
`Reh’g Req. 4–5 (citing 37 C.F.R. § 42.123(c)).
`We disagree with Patent Owner that § 42.123(c) applies in the present
`situation. In both the Consolidated Trial Practice Guide (November 2019)
`and the Trial Practice Guide Update (July 2019), the Board has provided
`guidance on the procedure in an AIA proceeding for submitting a prior claim
`construction determination by a federal court. Patent Trial and Appeal
`Board Consolidated Trial Practice Guide 45–46 (Nov. 2019),
`https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf (“Cons.
`TPG”); Trial Practice Guide Update 16–17 (July 2019),
`https://www.uspto.gov/sites/default/files/documents/trial-practice-guide-
`update3.pdf (“TPG Update”). The guidance emphasizes that a district
`court’s claim construction determination should be submitted “as soon as
`that determination becomes available.” Cons. TPG 47; TPG Update 16; see
`also Cons. TPG 48 (“Again, parties should submit a prior claim construction
`as soon as the decision is available.”); TPG Update 17 (same). The guidance
`also provides that a party seeking to submit a district court’s claim
`construction must file a motion for supplemental information only if a trial
`already has been instituted. Cons. TPG 47–48 (“After a trial is instituted,
`the Board’s rules on supplemental information govern the timing and
`procedures for submitting claim construction decisions.” (emphasis added)
`(citing 37 C.F.R. §§ 42.123, 42.223)); TPG Update 16 (same). That
`
`4
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`
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`IPR2020-00019
`Patent 8,843,125 B2
`guidance is consistent with the Board’s rule for filing supplemental
`information, which applies after a trial has been instituted. See 37 C.F.R.
`§ 42.123(a) (“Once a trial has been instituted, a party may file a motion to
`submit supplemental information . . . within one month of the date the trial is
`instituted [when] the supplemental information [is] relevant to a claim for
`which the trial has been instituted.” (emphases added)); id. § 42.123(b)
`(providing additional requirements when “[a] party seek[s] to submit
`supplemental information more than one month after the date the trial is
`instituted” (emphasis added)); id. § 42.123(c) (providing additional
`requirements when “[a] party seek[s] to submit supplemental information
`not relevant to a claim for which the trial has been instituted” (emphasis
`added)).
`Because a trial has not been instituted, Petitioner was not required to
`request authorization to file a motion to submit the district court’s claim
`construction order as supplemental information under 37 C.F.R. § 42.123(c).
`Rather, Petitioner followed the proper procedure according to our rules and
`Trial Practice Guide when it requested leave to file the Markman order and
`an explanation of how the district court’s construction of “OTA proxy”
`applies to its asserted grounds of unpatentability. Although the Trial
`Practice Guide states that a district court claim construction preferably
`should be submitted with a paper such as a petition or preliminary response,
`we determined that the particular circumstances of this case warranted
`Petitioner’s prompt submission of the Markman order and a supplemental
`brief so that the district court’s claim construction and Petitioner’s
`arguments would be made of record as early as possible in the proceeding.
`Order 3 (citing Cons. TPG 47); see also TPG Update 16 (containing same
`guidance as Cons. TPG).
`
`5
`
`
`
`IPR2020-00019
`Patent 8,843,125 B2
`Patent Owner’s argument on rehearing that it was deprived of due
`process and a meaningful opportunity to be heard is premised on its
`erroneous contention that Petitioner was required to submit a motion for
`supplemental information under 37 C.F.R. § 42.123(c). Reh’g Req. 1, 7. As
`discussed above, however, Petitioner was not required to file a motion under
`§ 42.123(c), and therefore Patent Owner was not entitled under Board rules
`to file an opposition to such a motion pursuant to 37 C.F.R. § 42.23.
`Moreover, the purpose of our call with the parties on December 5, 2019, was
`to address Petitioner’s request under our rules. See Ex. 3001 (e-mail to the
`Board from Petitioner requesting a call to discuss “Apple’s request to file a
`5-page paper (and accompanying exhibits) that address how Apple contends
`the prior art satisfies one claim construction issued by the district court” and
`stating that “Fintiv opposes Apple’s request”). Patent Owner, aware of
`Board rules and the guidance regarding district court claim construction
`orders in the Trial Practice Guide, was afforded the opportunity on the call
`to respond to Petitioner’s request. Importantly, Patent Owner has the
`opportunity in its preliminary response, with an expanded word limit, to
`respond on the merits to Petitioner’s supplemental brief addressing the
`district court’s construction of “OTA proxy.” Order 4.
`Because Petitioner was not required to file a motion under 37 C.F.R.
`§ 42.123(c), it was not necessary, as Patent Owner argues, for Petitioner to
`show that the district court’s claim construction order reasonably could not
`have been obtained earlier and that consideration of the claim construction
`order would be in the interests of justice. See Reh’g Req. 8–9.
`Nevertheless, we find those requirements have been met. First, the district
`court issued its Markman order on November 27, 2019, approximately one
`month after the Petition was filed, and Petitioner promptly requested
`
`6
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`
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`IPR2020-00019
`Patent 8,843,125 B2
`authorization to file the Markman order and a short brief. See Order 3–4.
`Thus, the district court’s claim construction order, and Petitioner’s
`arguments regarding a construction of “OTA proxy” that neither party
`proposed, reasonably could not have been obtained earlier. Patent Owner
`provides no explanation for its contrary assertion in the Rehearing Request.
`See Reh’g Req. 8.
`We also determine that consideration of the district court’s claim
`construction and Petitioner’s supplemental brief is in the interests of justice.
`Patent Owner asserts that the Board would have been made aware of the
`district court’s claim construction order when it files its preliminary
`response. Id. If anything, this statement supports a showing that the
`Board’s consideration of the Markman order is in the interests of justice. It
`is also in the interests of justice for the Board to consider Petitioner’s
`position as well as Patent Owner’s position regarding the district court’s
`construction of “OTA proxy” when determining whether to institute a trial.
`The Board now applies the same claim construction standard as the
`district court and must consider any prior claim construction determination
`timely made of record. 37 C.F.R. § 42.100(b) (2019). Our Order granting
`Petitioner’s request to submit the Markman order and a supplemental brief
`ensures that the district court’s claim construction and both parties’
`arguments are on record as soon as possible in this proceeding and thus
`serves the purpose of securing a “just, speedy, and inexpensive resolution”
`of this proceeding. 37 C.F.R. § 42.1. Following an unnecessary motion
`practice to submit the briefing authorized by the Trial Practice Guide, see
`Cons. TPG 48, would undermine these purposes.
`At the time of our Order and Petitioner’s submission of the Markman
`order and its supplemental brief, Patent Owner still had approximately ten
`
`7
`
`
`
`IPR2020-00019
`Patent 8,843,125 B2
`weeks remaining in the three-month period (i.e., thirteen weeks) to file a
`preliminary response. We are not persuaded that Patent Owner is prejudiced
`by our decision to maintain the original deadline for the preliminary
`response, particularly because Petitioner’s supplemental brief substantively
`addresses only one new requirement imposed by the district court’s
`construction of a single claim term that appears in only some of the
`challenged claims. See Pet. Supp. Br. 1–5. Accordingly, we decline to
`modify our earlier decision not to modify the filing deadline for the
`preliminary response.
`
`III. ORDER
`
`Accordingly, it is
`ORDERED that Patent Owner’s Request for Rehearing of the Board’s
`Order dated December 6, 2019, is denied.
`
`
`
`
`
`
`8
`
`
`
`IPR2020-00019
`Patent 8,843,125 B2
`FOR PETITIONER:
`Travis Jensen
`K. Patrick Herman
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`tjensen@orrick.com
`pherman@orrick.com
`
`
`FOR PATENT OWNER:
`
`Jonathan Waldrop
`Rodney Miller
`John Downing
`KASOWITZ BENSON TORRES LLP
`jwaldrop@kasowitz.com
`rmiller@kasowitz.com
`jdowning@kasowitz.com
`
`
`9
`
`
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