UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`Samsung Electronics Co. Ltd., Samsung Electronics America, Inc., and Apple Inc.,
`Petitioners,
`
`v.
`
`Rosetta-Wireless Corporation,
`Patent Owner.
`
`Case IPR2016-006221
`Patent 7,149,511 B1
`
`
`
`PATENT OWNER’S REQUEST UNDER 37 C.F.R. § 42.71(d)
`FOR REHEARING OF THE FINAL WRITTEN DECISION
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`
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`1 Case IPR2016-00616 has been consolidated with this proceeding.
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`Samsung Electronics Co. Ltd., Samsung Electronics America, Inc., and Apple Inc.,
`Petitioners,
`
`v.
`
`Rosetta-Wireless Corporation,
`Patent Owner.
`
`Case IPR2016-006221
`Patent 7,149,511 B1
`
`
`
`PATENT OWNER’S REQUEST UNDER 37 C.F.R. § 42.71(d)
`FOR REHEARING OF THE FINAL WRITTEN DECISION
`
`
`
`
`
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`1 Case IPR2016-00616 has been consolidated with this proceeding.
`
`
`
`
`
`
`Exhibit
`Ex. 2001
`Ex. 2002
`Ex. 2003
`Ex. 2004
`
`Ex. 2005
`
`Ex. 2006
`
`Ex. 2007
`Ex. 2008
`
`Ex. 2009
`
`Ex. 2010
`Ex. 2011
`
`Ex. 2012
`
`Ex. 2013
`Ex. 2014
`
`Ex. 2015
`
`Ex. 2016
`
`Ex. 2017
`Ex. 2018
`Ex. 2019
`
`Ex. 2020
`Ex. 2021
`
`Ex. 2022
`Ex. 2023
`Ex. 2024
`Ex. 2025
`Ex. 2026
`
`PATENT OWNERS’ EXHIBIT LIST
`
`at
`
`Description
`Declaration of William H. Mangione-Smith, Ph.D.
`ATP Proposal Preparation Kit
`Email from David Nairn to Ed Bachner
`“Moving Toward a Future of Ubiquitous Computing,”
`Technology@Intel Magazine
`“TECHNOLOGY; Verizon Plans Fast Internet for Cellphones,”
`New York Times, Jan. 9, 2004.
`“Data Over Cellular: A Look at GPRS,” Communication Systems
`Design, April 2000.
`Telecom & Networking Glossary, 1999.
`(available
`Member
`benefits
`https://www.oclc.org/membership/benefits.en.html)
`“Libraries Hope for Web 2.0 Shake-up with New Site,”
`Washington Internet Daily, Dec. 15, 2006.
`Email from Sharon Shaffer to Keith Campbell
`ATP Project Brief: Wireless Replication of Enterprise Data for
`Instant Access by Mobile Workers
`“Wireless biz aims to link road warriors to office,” Crain’s
`Chicago Business, Jan. 14, 2002.
`Email chain between Sergio Fogel and Ed Bachner
`Declaration of Daniel A. Zaheer supporting motion for pro hac
`vice admission
`Declaration of Michael Ng supporting motion for pro hac vice
`admission
`Declaration of William H. Mangione-Smith, Ph.D. (originally
`filed as Ex. 2001 in IPR2016-616)
`Declaration of Edward F. Bachner III
`“Shrinking the Server,” InformationWeek, Jan. 21, 2002
`“NIST puts money where the risk is,” Government Computer
`News, Nov. 3, 2003
`“Welcome to WIPS,” Wireless Business & Technology, May 2004
`“New Technology Could Challenge Ubiquitous Blackberry,”
`MBA NewsLink, May 20, 2005
`Second Declaration of William H. Mangione-Smith, Ph.D.
`Microsoft Computer Dictionary (5th ed. 2002)
`IBM Dictionary of Computing (10th ed. 1993)
`Network Dictionary (May 15, 2007)
`Dictionary of Computer and Internet Terms (10th ed., 2009)
`
`ii
`
`
`
`
`
`Ex. 2027
`Ex. 2028
`Ex. 2029
`Ex. 2030
`
`Microsoft Press Dictionary (3rd. ed. 2002)
`CeRapiInit (Windows CE 5.0), Microsoft Corporation, 2006
`“Remote API (RAPI),” eTutorial.org
`Patent Owner’s Demonstratives
`
`iii
`
`
`
`
`
`I.
`II.
`III.
`
`IV.
`
`V.
`
`
`TABLE OF CONTENTS
`Introduction ................................................................................................... 1
`Standard of Review ....................................................................................... 1
`The Decision on the ’616 Petition Violates 35 U.S.C. § 318(a) Because the
`Board Did Not Address All of the Claims Challenged in the Petition ......... 2
`Inter Partes Review Is Unconstitutional Because It Extinguishes Property
`Rights Without A Jury Trial And Outside An Article III Forum. ................ 3
`Conclusion ..................................................................................................... 6
`
`iv
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`
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`
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`I.
`
`Introduction
`
`Pursuant
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`to 37 C.F.R. § 42.71(d), Patent Owner Rosetta-Wireless
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`Corporation (“Rosetta”) respectfully submits this Request for Rehearing of the
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`final written decision for inter partes review in the consolidated cases IPR2016-
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`00616 (“the ’616 Petition”) and IPR2016-00622 (“the ’622 Petition”).
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`First, the Board’s decision with regard to the ’616 Petition violates 35
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`U.S.C. § 318(a), which provides that the Board must render a final written decision
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`on all claims challenged in the petition. Here, the petition in the ’616 Petition
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`challenged claims 7 and 64, but the Board declined to institute with regard to those
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`claims and its final decision does not address those claims. The Board’s decision
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`with regard to the ’616 Petition is invalid and should be vacated.
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`Second, the Board’s decision with regard to both of the petitions was made
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`in violation of the Seventh Amendment and Article III of the Constitution. A
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`patent is a property right and the final written decision would operate to extinguish
`
`that property right without affording Patent Owner a right to trial by jury or an
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`adjudication of the validity of the patent-in-suit by an Article III court. The final
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`written decision is therefore invalid in toto and should be vacated.
`II.
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`Standard of Review
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`The party challenging a decision by the Board bears the burden of showing
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`that the decision should be modified. 37 C.F.R. § 42.71(d).
`
`
`1
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`
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`
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`III. The Decision on the ’616 Petition Violates 35 U.S.C. § 318(a) Because
`the Board Did Not Address All of the Claims Challenged in the Petition
`Section 318(a) provides that “the Patent Trial and Appeal Board shall issue a
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`final written decision with respect to the patentability of any patent claim
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`challenged by the petitioner.” 35 U.S.C. § 318(a). Here, the ’616 Petition
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`challenged claims 1-10, 58-63 and 65 of the ’511 Patent, but the Board did not
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`institute or render a final written decision on the ’616 Petition with regard to
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`claims 7 and 64. The Board’s final written decision therefore violates section
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`318(a). See SAS Institute Inc. v. Lee, 137 S. Ct. 2160 (2017) (granting certiorari on
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`this question).
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`The phrase “any patent claim challenged by the petitioner” in section 318(a)
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`reflects Congress’ intent that a decision be issued with regard to each of the claims
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`placed at issue by the petition. See, e.g., Barseback Kraft AB v. United States, 121
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`F.3d 1475, 1480-81 (Fed. Cir. 1997) (“The ‘word “any” is generally used in the
`
`sense of “all” or “every” and its meaning is most comprehensive.’” (citation
`
`omitted)). Moreover, the statute’s use of the term “shall” connotes that it is
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`mandatory for the Board to address all claims challenged. This mandate
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`discourages petitioners from overloading their petitions with questionable claim
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`challenges and is therefore consistent with the overall purpose of the America
`
`Invents Act and of inter partes review to create an “efficient system” for resolving
`
`claims of invalidity. See H.R. REP. NO. 112-98, pt. 1 at 39-40 (2011).
`
`2
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`
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`
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`Because the Board’s final written decision on the ’616 Patent does not
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`encompass all of the claims challenged in that Petition, it is invalid and must be
`
`vacated.
`
`IV.
`
`Inter Partes Review Is Unconstitutional Because It Extinguishes
`Property Rights Without A Jury Trial And Outside An Article III
`Forum.
`In 2011, Congress passed the Leahy-Smith America Invents Act, Pub. L.
`
`No. 112-29, 125 Stat. 284 (2011), which provided (among other modifications to
`
`the Patent Act) for the creation of inter partes review for the determination of
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`whether one or more claims of a granted patent are unpatentable under 35 U.S.C.
`
`section 102 or 103. See generally 35 U.S.C. §§ 311, 316. Inter partes review is an
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`adjudicatory proceeding which, as in this case, may result in extinguishment of a
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`patentee’s property rights by action of the Board and without the right to trial by
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`jury. This procedure violates the Seventh Amendment and Article III of the
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`Constitution. See generally Oil States Energy Services, LLC v. Greene’s Energy
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`Group, LLC, 137 S. Ct. 2239 (2017) (granting certiorari).
`
`The Seventh Amendment provides that “[i]n Suits at common law . . . the
`
`right of trial by jury shall be preserved . . . .” U.S. Const. amend. VII. Applying
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`the Seventh Amendment, the Supreme Court has long held that patent
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`“infringement cases today must be tried to a jury . . . .” Markman v. Westview
`
`Instruments, Inc., 517 U.S. 370, 377 (1996). This is true because “[a]n action for
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`patent infringement is one that would have been heard in the law courts of old
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`England.” Markman v. Westview Instruments, Inc., 52 F.3d 967, 992-93 (Fed. Cir.
`
`3
`
`
`
`
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`1995). Such infringement suits included trial of the question of patent validity.
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`See id. at 1013 (Newman, J., dissenting) (“Issues of patent infringement and
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`validity were tried only to a jury, in the courts of King’s Bench, Common Pleas, or
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`Assize.”).
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`Although some courts have recognized a narrow carve-out from the Seventh
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`Amendment for “public rights,” (see generally MCM Portfolio LLC v. Hewlett-
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`Packard Co., 812 F.3d 1284, 1292 (Fed. Cir. 2015)) this exception does not apply
`
`here. Rather, this exception applies to “new statutory ‘public rights’” that are
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`created by Congress. See Atlas Roofing Co., Inc. v. Occupational Safety & Health
`
`Review Commission, 430 U.S. 442, 455 (1977). Patent rights, in contrast, are not
`
`new statutory rights; they had long existed in English common law and from the
`
`fifteenth century were governed by the Statute of Monopolies. See generally Bilski
`
`v. Kappos, 561 U.S. 593, 626-27 (2010) (Stevens, J. concurring) (explaining that
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`“early American patent law was ‘largely based on and incorporated’ features of the
`
`English patent system” including the Statute of Monopolies). Congress’s power to
`
`protect patent rights is enshrined in the Constitution itself, (see U.S. Const. art. I, §
`
`8, cl. 8) and the passage of a statute governing patents was “among the first which
`
`followed the organization of our government” (see Grant v. Raymond, 31 U.S. 218,
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`241 (1832)). Because the applicability of the Seventh Amendment is determined
`
`by looking to the scope of that right in 1791 (Curtis v. Loether, 415 U.S. 189, 193
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`(1974)), the public rights exception does not apply.
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`Moreover, a patent does not embody a mere public right; it is a personal
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`property right which encompasses the right to exclude and which can be enforced
`
`4
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`
`
`
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`privately without government approval or involvement. 35 U.S.C. § 261 (“patents
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`shall have the attributes of personal property”); see also Festo Corp. v. Shoketsu
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`Kinzoku Kogyo Kabushiki Co., 535 U. S. 722, 730 (2002) (A patent “is a property
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`right”). Accordingly, the Board’s final decision should be deemed invalid as
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`having violated Rosetta’s Seventh Amendment right to trial by jury. To the extent
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`this decision is allowed to stand, it constitutes an unconstitutional taking of
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`Rosetta’s property. U.S. Const. amend V (The Takings Clause of the Fifth
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`Amendment provides that “private property” shall not “be taken for public use,
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`without just compensation.”); James v. Campbell, 104 U.S. 356, 358 (1881).
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`Inter partes review also violates Article III of the Constitution. Pursuant to
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`Article III, “Congress may not ‘withdraw from judicial cognizance any matter
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`which, from its nature, is the subject of a suit at the common law . . . .’” Stern v.
`
`Marshall, 564 U.S. 462, 484 (2011). As with the Seventh Amendment, courts
`
`examine whether the type of action in question was subject to adjudication at
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`common law at the time of the Constitution’s ratification to determine whether
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`Congress may withdraw it from the purview of Article III courts. Id. For the
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`reasons already explained, patent suits fall squarely within that category of
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`historically recognized common law actions. Once a patent is granted it “is not
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`subject to be revoked or canceled by the president, or any other officer of the
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`Government . . . .” McCormick Harvesting Mach. Co. v. C. Aultman & Co., 169
`
`U.S. 606, 608 (1898). Instead, “[t]he only authority competent to set a patent
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`aside, or to annul it, or to correct it for any reason whatever, is vested in the courts
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`of the United States, and not in the department which issued the patent.” Id. at
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`5
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`
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`609. Inter partes review runs afoul of this requirement. The Board’s final written
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`decision should therefore be vacated.
`V. Conclusion
`Rosetta respectfully requests that the Board rehear its final written decision
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`and issue an order vacating the final written decision and the decisions of
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`institution,
`2
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`
`
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`and
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`terminating
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`these
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`proceedings.
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`2 By raising certain issues in this petition for rehearing, Rosetta does not concede
`or waive any other issue previously raised. To the extent this petition is not
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`granted, Rosetta reserves the right to raise any previously raised issue, including
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`but not limited to the proper construction of “downstream data” and “personal
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`network server.” See, e.g., Dissenting Opinion of Arbes, APJ.
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`6
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`
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`Dated: September 19, 2017
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`
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`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`By: /s/ Miranda Y. Jones
`
`
`
`Miranda Y. Jones (Reg. No. 64,721)
`Michael Ng (pro hac vice)
`
`Daniel A. Zaheer (pro hac vice)
`
`
`Attorneys for Patent Owner
`
`Rosetta-Wireless Corp.
`
`2
`
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`
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`CERTIFICATE OF SERVICE
`
`The undersigned certifies that pursuant to 37 C.F.R. § 42.6(e), a copy of the
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`foregoing PATENT OWNER’S REQUEST UNDER 37 C.F.R. § 42.71(d) FOR
`
`REHEARING OF THE FINAL WRITTEN DECISION was served via email to
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`lead and backup counsel of record for Petitioners as follows:
`
`
`Megan Raymond
`Steven Baughman
`Paul, Weiss, Rifkind, Wharton & Garrison LLP
`mraymond@paulweiss.com
`sbaughman@paulweiss.com
`
`
`Brian E. Ferguson
`Anish R. Desai
`Megan H. Wantland
`Weil, Gotshal & Manges LLP
`Brian.Ferguson@weil.com
`Anish.Desai@weil.com
`Megan.Wantland@weil.com
`
`Richard T. McCaulley
`Andrew J. Sutton
`Ropes & Gray LLP
`Richard.McCaulley@ropesgray.com
`Andrew.Sutton@ropesgray.com
`
`
`
`Dated: September 19, 2017
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`
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`By:
`
`
`
`
`/s/ Miranda Jones
`
`Miranda Y. Jones (Reg. No. 64,721)
`Attorney for Patent Owner
`Rosetta-Wireless Corp.
`
`3
`
`
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