Paper 12
`Date: March 13, 2015
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC.,
`Petitioner,
`
`v.
`
`CONTENTGUARD HOLDINGS, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00400
`Patent 8,583,556 B2
`____________
`
`Before JAMESON LEE, MICHAEL R. ZECHER,
`and JENNIFER S. BISK, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
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`
`
`Order
`Conduct of Proceedings
`37 C.F.R. § 42.5
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`

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`
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`IPR2015-00400
`Patent 8,583,556 B2
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`On February 25, 2015, Petitioner was ordered to provide a clarification of
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`precisely what grounds of unpatentability are asserted by Petitioner. Paper 10.
`Petitioner filed a Notice of Clarification on February 27, 2015. Paper 11. The
`response, however, exceeded the scope authorized by the Board, by adding a
`column to a table, which articulates, for each alleged obviousness ground of
`unpatentability, the differences between each challenged claim and the primary
`reference relied on in each alleged ground of unpatentability. Paper 11, 3–4.
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`The unauthorized material is inappropriate. If differences between the
`claimed invention and the prior art are identified in the petition, they need not be
`identified once again. If differences were not presented in the Petition, it is
`inappropriate for Petitioner to add them for consideration subsequent to the filing
`of the Petition. In submitting its Preliminary response, Patent Owner should only
`refer to differences identified in the Petition, if any, and not to differences
`identified by Petitioner subsequent to the filing of the Petition. We have not
`authorized the filing of a revised or corrected petition.
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`If Patent Owner’s Preliminary Response relies on differences identified by
`Petitioner subsequent to the filing of the Petition, the arguments in that regard will
`not be considered, because they would not be directed to the Petition. Petitioner
`may not add to its Petition in the name of providing a clarification.
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`Petitioner in its Notice of Clarification filed on February 27, 2015, also
`states that it “proposes to withdraw the proposed obviousness grounds based on
`Doherty or Hollar considered alone, and to proceed with the obviousness grounds
`in the petition based on combinations of each primary reference with one or more
`secondary references.” Paper 11, 2. It is unclear what Petitioner intends by use of
`language “proposes.” It is clear, however, that by using the word “proposes,”
`Petitioner has not withdrawn any ground from consideration.
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`2
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`IPR2015-00400
`Patent 8,583,556 B2
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`For the foregoing reasons, it is
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`ORDERED that Petitioner shall file, within 5 days of the date of this Order,
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`a second response to our Order dated February 25, 2015, that is free of the above-
`noted deficiencies;
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`FURTHER ORDERED that Paper 11 will be expunged from the record as
`non-compliant to the Order dated February 25, 2015, after filing of a compliant
`second response by Petitioner; and
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`FURTHER ORDERED that if Petitioner desires that certain alleged grounds
`of unpatentability no longer be considered, it may include in its second response a
`clear statement to the effect that Petitioner withdraws and removes these grounds
`from consideration.
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`3
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`For Petitioner:
`Jeffrey Kushan
`Michael Franzinger
`iprnotices@sidley.com
`
`For Patent Owner:
`Thomas Lebens
`Timothy Maloney
`Robert Cote
`tom@fitcheven.com
`tpmalo@fitcheven.com
`rcote@mckoolsmith.com