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`CBM2016-00091
`U.S. Patent No. 9,037,502
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________________
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`FACEBOOK, INC. and INSTAGRAM LLC,
`PETITIONERS
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`V.
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`SKKY, LLC
`PATENT OWNER
`_____________________
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`CASE CBM2016-00091
`PATENT 9,037,502
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`PATENT OWNER’S RESPONSE TO PETITIONERS’ SUPPLEMENTAL
`BRIEF REGARDING REQUEST FOR REHEARING
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`
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`CBM2016-00091
`U.S. Patent No. 9,037,502
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`Rembrandt Wireless Techs., LP v. Samsung Elecs. Co., No. 2016-1729, 2017
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`U.S. LEXIS 6502 (Fed. Cir. April 17, 2017), is irrelevant to this matter. So, too,
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`are Petitioners’ arguments submitted in their supplemental briefing. Petitioners
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`seek to expand the narrow holding of Rembrandt to upend the Board’s well-
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`reasoned institution decision and supplant an established trend in proceedings
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`before the Board. If the Board adopts Petitioners’ position, not only would the
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`Board promote inefficiencies in post-grant review, the Board would be
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`contravening the explicit regulatory language governing CBM review. For these
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`reasons, the Board should deny Petitioners’ request for rehearing.
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`First, the rationale in Rembrandt is inapplicable to the case at hand. Indeed,
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`the Rembrandt decision does not reference CBM proceedings, as Petitioners’
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`counsel admitted during the April 24, 2017 teleconference. Rather, the Rembrandt
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`decision is concerned specifically with the marking requirement of 28 U.S.C. §
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`287. Rembrandt, 2017 U.S LEXIS 650 at *23. In particular, the Board premised its
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`decision on public notice function of patent marking. Id. at *25.
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`Petitioners’ briefing omits important background information leading to the
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`Rembrandt decision. In the district court proceedings, Rembrandt asserted a
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`number of claims against Samsung, including claim 40. Id. Rembrandt, however,
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`failed to require its licensees to mark products embodying claim 40. Id. Shortly
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`before trial, based on the failure to mark, Samsung moved to limit Rembrandt’s
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`CBM2016-00091
`U.S. Patent No. 9,037,502
`damages to the period of time beginning when Samsung received notice of
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`infringement through Rembrandt’s complaint. Id. To avoid this limitation, eight
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`days later, Rembrandt disclaimed claim 40. Id. at *23-24. The district court then
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`denied Samsung’s motion based on Rembrandt’s disclaimer. Id. at *24.
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`The Federal Circuit vacated and remanded the district court’s denial,
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`emphasizing the purpose of the marking statute—to protect the public from
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`liability for unknown infringement. Id. at *25. Because the purpose of marking is
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`to provide public notice, the Court reasoned that it was “irreconcilable” for
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`disclaimer to extinguish the right of the public to utilize unmarked features of a
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`product until receiving notice. Id. Protecting the public’s rights was central to the
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`decision, as reflected in the Court’s narrow holding: “the marking statute’s focus is
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`not only the rights of the patentee, but the rights of the public . . . we hold that
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`disclaimer cannot serve to retroactively dissolve the § 287(a) marking requirement
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`for a patentee to collect pre-notice damages.” Id. at *27. There is no reason to
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`globally expand this holding, especially given that the Court did not discuss post-
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`grant review proceedings in its decision.
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`In contrast to the marking statute in Rembrandt, the regulations governing
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`post-grant review contemplate disclaimer after a petition is filed. 37 C.F.R. §
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`42.207 relates to a patent owner’s preliminary response to a petition. The
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`regulation is clear that “[t]he patent owner may file a statutory disclaimer” of “one
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`CBM2016-00091
`U.S. Patent No. 9,037,502
`or more claims in the patent” and that “[n]o post-grant review will be instituted
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`based on disclaimed claims.” 37 C.F.R. § 42.207(e). In other words, this exact
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`situation was anticipated and disclaimer of some or all claims was an approved
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`response to a petition for post-grant review. The Board’s decision is thus aligned
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`with the purposes of post-grant review and should stand.
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`
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`Petitioners’ argument that 37 C.F.R. § 42.207(e) only applies to review of the
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`disclaimed claims is unavailing. Nothing in the regulatory language or commentary
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`to the same limits the application of 207(e) only to disclaimed claims. Rather, the
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`plain language is clear that institution will not be based on the disclaimed claim.
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`This, however, is exactly what Petitioners seek. Having failed to meet their burden
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`with regards to the remaining claims, Petitioners seek reconsideration and
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`institution of CBM review based entirely on the disclaimed claims. In so doing,
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`Petitioners seek to directly contradict the plain language of the regulation. Such
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`relief must be denied.
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`Further, it is unclear which, if any, of the public’s rights are extinguished by
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`the Board’s decision. Petitioners seem to rely on the right of an alleged infringer to
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`petition for CBM review after being sued for patent infringement. Even accepting
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`that right as a public right, Petitioners only have a right to petition for institution of
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`CBM review—there is no right to institution based on that petition. Here,
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`Petitioners exercised their right when they filed their Petition on June 15, 2016.
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`3
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`CBM2016-00091
`U.S. Patent No. 9,037,502
`Patent Owner’s subsequent disclaimer did not, and could not, retroactively
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`eliminate that right—Petitioners already utilized it. This is a far cry from the
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`Rembrandt decision, where Samsung’s right to practice unmarked features was
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`snuffed out on the eve of trial, exposing Samsung to a significantly expanded
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`damages period. Petitioners are not similarly situated and instead try to force the
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`round peg of Rembrandt into the square hole of this case. Since Patent Owner’s
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`disclaimer did not “relinquish the rights” of Petitioners, Rembrandt’s holding is
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`irrelevant to these proceedings.
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` Finally, Petitioners have no answer to the Board’s well-reasoned institution
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`decision. Paper 7. In its decision, the Board recognized that the majority of panels
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`confronted with the disclaimer issue treat the disclaimed claims as having never
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`existed. Id. at 8-9. This approach is consistent with Federal Circuit precedent and
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`regulatory scheme forming the basis of post-grant review. Petitioners cite to
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`nothing in Rembrandt justifying altering the Board’s determination. Instead,
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`Petitioners misapply Rembrandt in an attempt to obtain a second bite at the apple.
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`Petitioners similarly reinterpret the Board’s analysis of Genetics Inst., LLC v.
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`Novartis Vaccines & Diagnostics, Inc., 655 F.3d 1291 (Fed. Cir. 2011), Albert v.
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`Kevex Corp., 729 F.2d 757 (Fed. Cir. 1984), and Guinn v. Kopf, 96 F.3d 1419,
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`1422 (Fed. Cir. 1996) to find support for their position. Despite these
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`misapplications, Petitioners cite to nothing in any of the above cases supporting
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`4
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`CBM2016-00091
`U.S. Patent No. 9,037,502
`rehearing. The Board may only institute CBM review “for a patent that is a CBM
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`patent.” J.P. Morgan Chase & Co. v. Intellectual Ventures II, CBM2014-00160,
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`Paper 11 at 5 (PTAB Jan. 29, 2015). Here, the ’502 patent is not a CBM patent.
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`Petitioners’ request should be denied.
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`
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`Petitioners are grasping at straws. Having failed to demonstrate that the
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`remaining claims are patent ineligible, Petitioners seek to resurrect the disclaimed
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`claims in order to reargue their position. This is an inefficient use of the parties’,
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`and the Board’s, valuable time. The disclaimed claims no longer exist and can no
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`longer be asserted against Petitioners. These claims, in turn, cannot serve as the
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`basis of institution of post-grant review. This is the process working as intended—
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`post-grant review narrowed the scope of the asserted patent, in this case because
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`Patent Owner disclaimed a number of claims. In turn, these claims cannot form the
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`basis of a decision to institute CBM proceedings. There is no error here, there is no
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`new precedent, and there is nothing to reconsider. Accordingly, the Board should
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`deny Petitioners’ request for rehearing.
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`Dated: May 8, 2017
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`Respectfully submitted,
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`/Ryan M. Schultz/
`Ryan M. Schultz
`Registration No. 65,134
`Andrew J. Kabat
`Registration No. 71,252
`Attorneys for Patent Owner
`Robins Kaplan LLP
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`5
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`CBM2016-00091
`U.S. Patent No. 9,037,502
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`2800 LaSalle Plaza
`800 LaSalle Ave
`Minneapolis, MN 55401
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`CBM2016-00091
`U.S. Patent No. 9,037,502
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`CERTIFICATE OF SERVICE
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`
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`I hereby certify that on this May 8, 2017, a copy of PATENT OWNER’S
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`RESPONSE TO PETITIONERS’ SUPPLEMENTAL BRIEF REGARDING
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`REQUEST FOR REHEARING has been served in their entirety by electronic mail
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`to Petitioners:
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`hkeefe@cooley.com
`amace@cooley.com
`zpatdcdocketing@cooley.com
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`/Ryan M. Schultz/
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`Ryan M. Schultz
`Registration No. 65,134
`Andrew J. Kabat
`Registration No. 71,252
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`7
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