throbber
Trials@uspto.gov
`571.272.7822
`
`
`
`
`
` Paper No. 70
`Entered December 21, 2018
`
`
`UNITED STATEdS PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VOIP-PAL.COM, INC.,
`Patent Owner
`____________
`
`Case IPR2016-01198 and IPR2016-012011
`Patents 9,179,005 B2 and 8,542,815 B2
`____________
`
`
`
`Before SCOTT R. BOALICK, Acting Chief Administrative Patent Judge,
`JACQUELINE WRIGHT BONILLA, Acting Deputy Chief Administrative
`Patent Judge, and MICHAEL P. TIERNEY, Vice Chief Administrative
`Patent Judge.
`
`BOALICK, Acting Chief Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting-in-Part Petitioner’s Motion for Sanctions
`37 C.F.R. §§ 42.5, 42.12
`
`
`
`
`1 This Order pertains to both noted proceedings. The Board exercises its
`discretion to issue a single Order for entry in each proceeding. The parties
`are not authorized to use this style heading for any subsequent papers.
`
`

`

`IPR2016-01198 and IPR2016-01201
`Patents 9,179,005 B2 and 8,542,815 B2
`
`
`
`The two above-captioned proceedings are on remand from the United
`
`States Court of Appeals for the Federal Circuit. Apple Inc. v. Voip-Pal.com,
`
`Inc., Nos. 18-1456, -1457 (Fed. Cir. Feb. 21, 2018) (“Remand Order”). The
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`Federal Circuit’s order remands these cases for the limited purpose of
`
`allowing us to consider the motion for sanctions (“Motion” or “Mot.”) that
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`Apple Inc. (“Petitioner”) filed, and states that the court otherwise retains
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`jurisdiction over the appeals. Id.
`
`For the reasons that follow, the Motion is granted-in-part. The
`
`Motion is granted to the extent that Petitioner seeks sanctions against Voip-
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`Pal.com, Inc. (“Patent Owner”) for improper ex parte communications and a
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`new panel (Mot. 14–15). As a sanction, the new panel will reconsider the
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`Final Written Decisions on rehearing in view of the entirety of record in
`
`these proceedings. The Motion is denied to the extent that Petitioner seeks
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`judgment against Patent Owner on all claims at issue in these proceedings,
`
`or vacatur of the Final Written Decisions (Mot. 1, 15; Reply 10).
`
`
`
`
`
`I.
`
`PROCEDURAL HISTORY
`
`On November 20, 2017, the Board entered Final Written Decisions in
`
`each of the proceedings at issue. IPR2016-01198, Paper 53;
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`IPR2016-01201, Paper 54. During a conference call on December 19, 2017,
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`Petitioner obtained authorization to file a motion for sanctions. The Board
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`memorialized this authorization in an order entered on December 20, 2017.
`
`Paper 54, 3.2 That order stayed the deadline for filing requests for rehearing
`
`of the Final Written Decisions pending a decision on Petitioner’s motion,
`
`
`2 This citation and all subsequent citations to Paper numbers are to the
`Paper numbers in IPR2016-01198.
`
`
`
`2
`
`

`

`IPR2016-01198 and IPR2016-01201
`Patents 9,179,005 B2 and 8,542,815 B2
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`and also entered six ex parte communications (Ex. 3003–3008) into the
`
`record. Id. at 2–3.
`
`
`
`As authorized, Petitioner filed its Motion for Entry of Judgment in
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`Favor of Petitioner as a sanction, alleging that the ex parte communications
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`were improper ex parte communications made by Patent Owner’s former
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`CEO (Dr. Thomas Sawyer), in concert with Patent Owner and its counsel.
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`Paper 55. Patent Owner filed an Opposition to the Motion (“Opp’n”).
`
`Paper 61. Petitioner filed a Reply in support of its Motion (“Reply”).
`
`Paper 65. Just prior to filing its Reply, Petitioner also filed a Notice of
`
`Appeal indicating that it had appealed the Final Written Decisions to the
`
`Federal Circuit. Paper 64. As noted above, the Federal Circuit stayed those
`
`appeals pending the resolution of the Motion before the Board in both cases.
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`Remand Order 2.
`
`Thereafter, the Board issued an order changing the panel to Deputy
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`Chief Administrative Patent Judge (currently Acting Chief Administrative
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`Patent Judge) Boalick, Vice Chief Administrative Patent Judge (currently
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`Acting Deputy Chief Administrative Patent Judge) Bonilla, and Vice Chief
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`Administrative Patent Judge Tierney. Paper 69.
`
`
`
`II.
`
`BACKGROUND
`
`Petitioner’s Motion requests that the Board sanction Patent Owner in
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`light of six letters Patent Owner’s former CEO and Chairman and current
`
`advisor, Dr. Thomas Sawyer, wrote and sent to the Chief Administrative
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`Patent Judge, among many others, including the judges initially assigned to
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`conduct the proceedings. Mot. 1; Exs. 3003–3008. Petitioner argues that
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`these letters are ex parte communications that violate Petitioner’s due
`
`
`
`3
`
`

`

`IPR2016-01198 and IPR2016-01201
`Patents 9,179,005 B2 and 8,542,815 B2
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`process rights, Board regulations, and the Administrative Procedure Act
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`(“APA”). Mot. 7. Petitioner further argues that Patent Owner is responsible
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`for these letters, that the Board’s response to these letters prejudiced
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`Petitioner, and that the Board should sanction Patent Owner by entering
`
`adverse judgment against Patent Owner or, alternatively, by vacating the
`
`Final Written Decisions and assigning a new panel to preside over
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`“constitutionally correct” proceedings going forward. Id. at 8–9, 12–15.
`
`Patent Owner opposes Petitioner’s Motion, arguing first that the
`
`letters are not ex parte communications because they only reference a
`
`pending proceeding to illustrate a systemic concern and do not discuss
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`substantive issues relevant to the instant proceedings themselves. Opp’n 2–7
`
`(citing Office Patent Trial Practice Guide (“Trial Practice Guide”), 77 Fed.
`
`Reg. 48,756, 48,758 (Aug. 14, 2012)). Patent Owner further contends that
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`even if the letters are deemed impermissible ex parte communications, they
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`are not so egregious as to require the sanctions Petitioner requests, that
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`Petitioner was not prejudiced by the letters, and that Petitioner’s due process
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`rights were not violated. Id. at 7–11, 14–15. Furthermore, Patent Owner
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`states that Petitioner’s Motion is untimely and barred because Petitioner was
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`aware of two of the letters, but chose to do nothing, instead waiting until
`
`after the Board issued its Final Written Decisions to bring the Motion. Id.
`
`at 12–14.
`
`In the Reply, Petitioner faults Patent Owner for previously
`
`misrepresenting in a press release that the letters were written “independent
`
`of [Patent Owner’s] management” and issuing a corrected press release
`
`stating that the letters were written “in consultation with [Patent Owner’s]
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`management” only after Petitioner filed the Motion. Reply 1–2 (emphases
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`
`
`4
`
`

`

`IPR2016-01198 and IPR2016-01201
`Patents 9,179,005 B2 and 8,542,815 B2
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`omitted) (quoting Exs. 1019, 1023). Petitioner again argues that the letters
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`are ex parte communications that violate 37 C.F.R. § 42.5(d) and deprive
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`Petitioner of due process. Id. at 4–10. The Reply reiterates Petitioner’s
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`request for judgment against Patent Owner and, in the alternative, requests
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`an opportunity to file new petitions. Id. at 10.
`
`
`
`III. ANALYSIS
`
`The parties’ arguments initially present two threshold issues: (A)
`
`whether Petitioner’s Motion is barred under 37 C.F.R. § 42.73(a)
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`(Opp’n 13–14); and (B) whether the letters are ex parte communications
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`(Mot. 9–10; Opp’n 2–7; Reply 4–6). If these threshold issues are resolved
`
`such that the Motion is not barred and the letters are, in fact, ex parte
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`communications, then the parties ask us to further consider the following
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`three issues: (C) whether Petitioner’s due process rights were violated
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`(Mot. 10–12; Opp’n 14–15; Reply 6–9); (D) whether Patent Owner should
`
`be sanctioned and, if so, what sanction is appropriate (Mot. 14–15; Opp’n 7–
`
`9; Reply 10); and (E) whether Petitioner’s rights under the APA were
`
`violated (Mot. 10). We address each of these issues in turn.
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`A. Whether the Motion Is Barred Under 37 C.F.R. § 42.73(a)
`
`Under 37 C.F.R. § 42.73(a), “[a] judgment, except in the case of a
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`termination, disposes of all issues that were, or by motion reasonably could
`
`have been, raised and decided.” Patent Owner asserts that Petitioner is
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`barred from bringing its Motion under § 42.73(a) because Petitioner became
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`aware of two of the letters, on May 8, 2017, and November 1, 2017,
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`respectively, before the Board issued the Final Written Decisions on
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`November 20, 2017, yet chose to do nothing. Opp’n 13. Petitioner
`
`
`
`5
`
`

`

`IPR2016-01198 and IPR2016-01201
`Patents 9,179,005 B2 and 8,542,815 B2
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`acknowledges that it was aware of the first and last letters, but indicates that
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`it did not become aware of the second through fifth letters until it began an
`
`investigation after the Final Written Decisions issued. Mot. 9 n.5; Reply 2–
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`3; Ex. 1021, 3–6.
`
`
`
`We are not persuaded that 37 C.F.R. § 42.73(a) serves to bar
`
`Petitioner’s Motion in this case, namely because Petitioner was not aware of
`
`four of the six letters until after the Final Written Decisions issued. Patent
`
`Owner argues that those four letters are cumulative (Opp’n 14), but we
`
`disagree. Unlike the two letters of which Petitioner was aware, the four
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`additional letters request, for example, “a judgment in the patent owner’s
`
`favor or a dismissal of the action” (Ex. 3004, 3); an “explanation for the
`
`replacement of all of the members of the panel” (Ex. 3005, 1); and that the
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`Board “dismiss the two Apple petitions that have been instituted”
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`(Ex. 3006, 5).
`
`
`
`Thus, evidence supports the finding that Petitioner did not know about
`
`a number of relevant letters and, likewise, did not know that those letters
`
`requested certain substantive action in the instant cases, until after the Final
`
`Written Decisions issued. Thus, we determine that Petitioner is not barred
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`from bringing its Motion under § 42.73(a).
`
`B. Whether Patent Owner’s Letters Are Ex Parte Communications
`
`Under 37 C.F.R. § 42.5(d), an ex parte “[c]ommunication regarding a
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`specific proceeding with a Board member defined in 35 U.S.C. 6(a) is not
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`permitted unless both parties have an opportunity to be involved in the
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`communication.” This prohibition on ex parte communications includes
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`“seeking supervisory review in a proceeding by contacting the judge’s
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`supervisor, without including the opposing party in the communication.”
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`
`
`6
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`

`

`IPR2016-01198 and IPR2016-01201
`Patents 9,179,005 B2 and 8,542,815 B2
`
`Rules of Practice for Trials Before the Patent Trial and Appeal Board and
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`Judicial Review of Patent Trial and Appeal Board Decisions (“Trial Practice
`
`Rules”), 77 Fed. Reg. 48,612, 48,617 (Aug. 14, 2012). The prohibition,
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`however, does not extend to, among other things, “referring to a pending
`
`case to illustrate a systemic concern.” Id.; accord Trial Practice Guide, 77
`
`Fed. Reg. at 48,758.
`
`We do not agree with Patent Owner that the letters at issue refer to the
`
`instant proceedings entirely for the purpose of illustrating a systemic
`
`concern (Opp’n 2). Although the letters do allege what could be termed
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`systemic concerns, the letters go beyond that discussion such that they seek
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`specific relief from the Chief Administrative Patent Judge in these
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`proceedings. In particular, among other things, the letters suggest the need
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`to disqualify a panel of judges hearing the identified cases, ask for judgment
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`in Patent Owner’s favor or dismissal of the petitions, and argue that such
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`relief is necessary to satisfy due process. Ex. 3003, 1–3; Ex. 3004, 3; Ex.
`
`3006, 5.
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`In its own briefing, Patent Owner acknowledges that it discussed
`
`relevant issues with Dr. Sawyer and participated in preparing the letters Dr.
`
`Sawyer sent to the Board. Opp’n 2 n.1; see also Motion 8–9 (discussing
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`Patent Owner’s website postings in September 2017). Thus, evidence
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`sufficiently establishes that Patent Owner, through Dr. Sawyer, engaged in
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`written communication with the Board in a manner that did not involve or
`
`inform Petitioner. Because Patent Owner participated in preparing the
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`letters, and because Petitioner did not have the opportunity to be involved in
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`the communications, we determine that the letters constitute improper ex
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`parte communications under 37 C.F.R. § 42.5(d).
`
`
`
`7
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`

`

`IPR2016-01198 and IPR2016-01201
`Patents 9,179,005 B2 and 8,542,815 B2
`
`
`C. Whether Petitioner’s Due Process Rights Were Violated
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`Petitioner relies on Stone v. Federal Deposit Insurance Corp.,
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`179 F.3d 1368 (Fed. Cir. 1999), in arguing that Patent Owner’s improper ex
`
`parte communications violated its due process rights. Mot. 11–12; Reply 6–
`
`9. We agree with Patent Owner, however, that Stone is not applicable in this
`
`instance (Opp’n 14–15) and that Petitioner’s due process rights have not
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`been violated.
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`Stone involves a federal constitutional claim under the Due Process
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`Clause of the Fifth Amendment. 179 F.3d at 1374. In Stone, the Federal
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`Circuit made clear that the appellant’s due process arguments depended
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`upon having a property right. Id. (“[The appellant]’s federal constitutional
`
`due process claim depends on his having a property right in continued
`
`employment. . . . If [the appellant] does possess such a property interest,
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`then the government cannot deprive him of this property without due
`
`process.”); id. at 1377 (further discussing the appellant’s property interest in
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`continued employment); cf. Oil States Energy Servs., LLC v. Greene’s
`
`Energy Group, LLC, 138 S. Ct. 1365, 1375 (2018) (stating that patents
`
`convey “a specific form of property right—a public franchise” and that the
`
`Court’s “decision should not be misconstrued as suggesting that patents are
`
`not property for purposes of the Due Process Clause”).
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`Here, by contrast, Petitioner does not allege that it has any property
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`interest of which it has been deprived. Because there is no evidence that
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`Petitioner possesses the prerequisite property interest for a Stone analysis to
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`apply, we do not find that Petitioner has shown that it had its rights
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`unconstitutionally violated under the Due Process Clause of the Fifth
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`
`
`8
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`

`

`IPR2016-01198 and IPR2016-01201
`Patents 9,179,005 B2 and 8,542,815 B2
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`Amendment and the Stone framework. However, a due process violation is
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`not required in order to impose sanctions.
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`D. Whether Patent Owner Should Be Sanctioned and, if so, What
`Sanction is Appropriate
`
`Under 37 C.F.R. § 42.12(a)(1), “[t]he Board may impose a sanction
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`against a party for misconduct, including . . . [f]ailure to comply with an
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`applicable rule . . . in the proceeding.” Accordingly, “the initiation of . . . an
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`ex parte communication may result in sanctions against the initiating party.”
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`Trial Practice Rules, 77 Fed. Reg. at 48,616. As we have found in § III.B
`
`above, Patent Owner has violated 37 C.F.R. § 42.5(d) prohibiting ex parte
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`communications, and this is sanctionable misconduct.
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`As a remedy for Patent Owner’s noncompliance with this rule,
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`Petitioner seeks entry of judgment against Patent Owner as to all of the
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`claims at issue or, alternatively, vacatur of the Final Written Decisions
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`followed by assignment of a new panel, and the opportunity to file new
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`petitions. Mot. 15; Reply 10. “[L]oss of patent rights, like dismissal with
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`prejudice of a civil action, is a sanction which may sound the death knell for
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`important rights and interests. . . . [S]uch dismissals should be used as ‘a
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`weapon of last, rather than first, resort.’” Abrutyn v. Giovanniello,
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`15 F.3d 1048, 1053 (Fed. Cir. 1994) (citation omitted) (quoting Gerritsen v.
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`Shirai, 979 F.2d 1524, 1532 (Fed. Cir. 1992)).
`
`The Board’s rules provide for sanctions up to and including adverse
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`judgment. 37 C.F.R. § 42.12(b). In fashioning a sanction for violating the
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`rules, the selected sanction should bear a reasonable relationship to the
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`severity of the violation. Further, a sanction should be selected to ensure
`
`
`
`9
`
`

`

`IPR2016-01198 and IPR2016-01201
`Patents 9,179,005 B2 and 8,542,815 B2
`
`compliance with the Board’s rules, deter others from such conduct and, if
`
`appropriate, render whole the aggrieved party. See 37 C.F.R. § 42.11(d)(4).
`
`On the current record, there is evidence sufficient to conclude that
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`Patent Owner intentionally violated 37 C.F.R. § 42.5(d). As noted above,
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`Patent Owner admits to participating in preparing the letters. Opp’n 2 n.1.
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`This admission is even more troublesome in view of the fact that Patent
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`Owner’s initial press release posting the letters on its website stated that the
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`letters were written “independent of [Patent Owner’s] management”
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`(Ex. 1019), and that Patent Owner did not issue a correction until after
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`Petitioner filed its Motion (see Ex. 1023 (corrected press release stating that
`
`the letters were written “in consultation with [Patent Owner’s]
`
`management”)). We do not find credible Patent Owner’s assertion that it
`
`believed that the content of the letters was permissible under 37 C.F.R.
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`§ 42.5(d). See Opp’n 2–3, 2 n.1, 6–7 (asserting that the letters referenced a
`
`pending case to illustrate a systemic concern, such that the letters were
`
`within the requirements of 37 C.F.R. § 42.5 pursuant to the Trial Practice
`
`Guide, and that Patent Owner did not hide the letters, instead posting them
`
`on its website).
`
`Viewing the entire record as a whole, we do not find that Petitioner
`
`has been unfairly prejudiced as a result of Patent Owner’s actions. Petitioner
`
`contends that it has been prejudiced because “the Board took actions adverse
`
`to [Petitioner] after receiving [Patent Owner]’s unauthorized ex parte
`
`communications asking for that precise result.” Mot. 13. According to
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`Petitioner, because the original panel was accused of bias and replaced with
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`a substitute panel, the substitute panel was, in turn, instilled with a
`
`
`
`10
`
`

`

`IPR2016-01198 and IPR2016-01201
`Patents 9,179,005 B2 and 8,542,815 B2
`
`“reciprocal bias” against Petitioner, and the new panel was “implicitly
`
`pushed” to side in favor of Patent Owner. Id. at 13–14.
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`Petitioner’s allegation that the substitute panel members were biased
`
`is a serious accusation, yet it is based only on mere speculation.
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`Furthermore, notwithstanding the seriousness of Petitioner’s bias allegations
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`and even though Petitioner had two letters in its possession, Petitioner did
`
`not raise the issue promptly. Instead, Petitioner raised the issue of panel bias
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`only after receiving the Final Written Decisions that were not in Petitioner’s
`
`favor.
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`On this record, Petitioner, at best, has shown the potential for an
`
`appearance of prejudice, but has failed to provide sufficient evidence of
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`actual prejudice. The lack of evidence of actual prejudice to Petitioner
`
`weighs against imposing the sanction of judgment against Patent Owner on
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`all of the challenged claims.
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`We now consider any prejudice to the United States Patent and
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`Trademark Office (“Office”) or the public interest in determining an
`
`appropriate sanction. Those interests include “creating sufficient deterrence
`
`for like cases in the future,” Abrutyn, 15 F.3d at 1053, and as it relates to this
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`case, deterring improper ex parte communications and public
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`misrepresentations as to the parties’ involvement in those communications.
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`At the same time, however, it is in the Office’s interest to have parties
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`promptly raise any allegations of panel bias or improper ex parte
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`communications.
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`As discussed above, Petitioner could have raised its concerns as to
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`possible panel bias as of the June 7, 2017, conference call, at which time
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`Petitioner was aware of both the first letter and the fact that the panel had
`
`
`
`11
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`

`

`IPR2016-01198 and IPR2016-01201
`Patents 9,179,005 B2 and 8,542,815 B2
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`been replaced. Instead, Petitioner waited over six months to do so—until
`
`after the Final Written Decisions issued. Similarly, Petitioner was aware of
`
`the last letter on November 1, 2017 (Reply 3), yet did not request
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`authorization to file the Motion until December 15, 2017 (Ex. 3002)—again,
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`after the Final Written Decisions issued on November 20, 2017. Petitioner’s
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`Reply states that, although the last letter “suggested that [Patent Owner]
`
`might be involved [in the communications], it was far from clear.” Reply 3
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`(emphasis added). This statement is inconsistent with Petitioner’s
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`statements in the Motion, where Petitioner asserts that the last letter “makes
`
`clear that Dr. Sawyer [was] no rogue actor; rather [Patent Owner] knew
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`about—and assisted in—Dr. Sawyer’s ex parte communications with the
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`Board” (Mot. 8 (emphasis added); see also id. at 9 n.4 (“[Patent Owner]’s
`
`description of these letters as ‘independent’ is belied by the content of the
`
`letters themselves . . . .” (citation omitted))). Moreover, Dr. Sawyer’s last
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`letter, which Petitioner acknowledges it received on November 1, 2017
`
`(Reply 3), expressly states that, “[o]ver the last several months,” Dr. Sawyer
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`“participated in a series of meetings and consultations with attorneys for
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`Voip-Pal.” Ex. 3008, 1.
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`Accordingly, we are persuaded that the record sufficiently establishes
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`Petitioner had reason to understand, as of November 1, 2017, that
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`Dr. Sawyer prepared and sent at least his last letter (Ex. 3008) with Patent
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`Owner’s involvement or knowledge. When considering the interests of the
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`Office and public, judgment against Patent Owner would be an inappropriate
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`sanction under the facts of these cases. It is not in the Office’s interest to
`
`have a party delay its investigation into issues of alleged impropriety, or to
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`wait and see the results of a final written decision before raising any issues
`
`
`
`12
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`

`

`IPR2016-01198 and IPR2016-01201
`Patents 9,179,005 B2 and 8,542,815 B2
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`of alleged impropriety, and then reward that party for its delay by reversing
`
`a final written decision that is not in its favor.
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`In the alternative, Petitioner requests vacatur of the Final Written
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`Decisions and “constitutionally correct” proceedings going forward that
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`provide Petitioner with the right to file new petitions. Mot. 15; Reply 10.
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`We do not agree that this is an appropriate sanction for the same reasons that
`
`we do not find judgment against Patent Owner to be an appropriate sanction.
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`For example, we do not wish to reward Petitioner with a “do-over” after it
`
`failed to raise the issues promptly. Furthermore, it is in neither the Office’s
`
`nor the public’s interest to vacate the results of 17 months of proceedings
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`and commence entirely new proceedings. Although Stone explains that,
`
`where a constitutional due process violation has occurred as a result of ex
`
`parte communications, a new constitutionally correct procedure is required,
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`179 F.3d at 1377, we do not find that Stone applies here, as discussed in
`
`§ III.C above.
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`Petitioner has requested a new panel (Mot. 15), and in our view,
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`assigning a new panel and having the new panel issue a rehearing decision
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`achieves the most appropriate balance when considering both parties’
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`conduct as a whole. As noted above, the Board issued an order changing the
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`panel on August 22, 2018. Paper 69. In addition, the new panel now
`
`authorizes Petitioner to file a request for rehearing of the Final Written
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`Decision in each proceeding, limited to 20 pages, by Tuesday, January 8,
`
`2019. Patent Owner may file a response to Petitioner’s request, also limited
`
`to 20 pages, by Tuesday, January 22, 2019. Petitioner may then file a reply,
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`limited to 10 pages, by Tuesday, January 29, 2019. This panel will decide
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`each request for rehearing under the standard set forth in 37 C.F.R.
`
`
`
`13
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`

`

`IPR2016-01198 and IPR2016-01201
`Patents 9,179,005 B2 and 8,542,815 B2
`
`§ 42.71(d), meaning that Petitioner bears the burden of showing that the
`
`Final Written Decisions should be modified, and Petitioner must specifically
`
`identify all matters it believes the Board misapprehended or overlooked in
`
`the Final Written Decisions, and where in the record each matter was
`
`previously addressed.
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`E. Whether Petitioner’s Rights under the APA were Violated
`
`Petitioner contends that Patent Owner’s ex parte communications
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`violate the APA, specifically, § 557(d)(1)(A) of the APA. Mot. 10. APA
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`§ 557(d)(1)(A) applies to formal rulemaking and formal adjudications before
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`administrative agencies and prohibits ex parte communications “relevant to
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`the merits of the proceeding.” 5 U.S.C. § 557(d)(1)(A). In its briefing on
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`this argument, however, Petitioner does not explain why or how the letters at
`
`issue are “relevant to the merits of the proceeding” within the meaning of
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`that phrase under the APA. See Mot. 10.
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`In any event, courts have held that there are two remedies for
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`improper ex parte communications under the APA: “[t]he first is disclosure
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`of the communication and its content”; and “[t]he second requires the
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`violating party to ‘show cause why his claim or interest in the proceeding
`
`should not be dismissed, denied, disregarded, or otherwise adversely
`
`affected on account of [the] violation.’” Prof’l Air Traffic Controllers Org.
`
`v. Fed. Labor Relations Auth., 685 F.2d 547, 564 (D.C. Cir. 1982) (third
`
`alteration in original) (quoting 5 U.S.C. § 557(d)(1)(D)). The Board already
`
`has provided the first remedy. See Paper 54 (making Ex. 3003–3008 of
`
`record and available to the parties on December 20, 2017).
`
`As to the second remedy, “Congress did not intend . . . that an agency
`
`would dismiss a party’s interest more than rarely . . . [and] the statutory
`
`
`
`14
`
`

`

`IPR2016-01198 and IPR2016-01201
`Patents 9,179,005 B2 and 8,542,815 B2
`
`language clearly states that a party’s interest in the proceeding may be
`
`adversely affected only ‘to the extent consistent with the interests of justice
`
`and the policy of the underlying statutes.’” Id. (citation omitted) (quoting 5
`
`U.S.C. § 557(d)(1)(D)). We do not find it in the interests of justice to enter
`
`judgment against Patent Owner for the reasons discussed in § III.D above.
`
`Rather, we determine that the proper course of action, as a matter of fairness
`
`in view of both parties’ actions, is to have the new panel reconsider the Final
`
`Written Decisions on rehearing in view of the entirety of record before us.
`
`In its requests for rehearing, Petitioner may point out matters it “believes the
`
`Board misapprehended or overlooked, and the place where each matter was
`
`previously addressed in a motion, an opposition, or a reply.” 37 C.F.R.
`
`§ 42.71(d).
`
`
`
`IV. CONCLUSION
`
`Petitioner’s Motion is granted-in-part. The Motion is granted to the
`
`extent that Petitioner has shown that Patent Owner engaged in sanctionable
`
`conduct under 37 C.F.R. § 42.5(d), and further to the extent that Petitioner
`
`has requested a new panel in these proceedings going forward. The Motion
`
`is denied to the extent that Petitioner requests judgment to be entered against
`
`Patent Owner as to all of the claims challenged in these proceedings or,
`
`alternatively, vacatur of the Final Written Decisions and new proceedings in
`
`which Petitioner may file new petitions.
`
`In view of the unique circumstances and record before us, we
`
`determine that the proper course of action, as a matter of fairness in view of
`
`actions by both parties, is for the new panel to reconsider the Final Written
`
`Decisions on rehearing in view of the entirety of record in these proceedings.
`
`
`
`15
`
`

`

`IPR2016-01198 and IPR2016-01201
`Patents 9,179,005 B2 and 8,542,815 B2
`
`Thus, upon completion of the briefing as authorized in this Order, the Final
`
`Written Decisions will be reviewed in accordance with the standard set forth
`
`in 37 C.F.R. § 42.71(d). Specifically, on rehearing, there will be an
`
`assessment of whether Petitioner sufficiently identifies “matters the party
`
`believes the Board misapprehended or overlooked, and the place where each
`
`matter was previously addressed in a motion, an opposition, or a reply.” 37
`
`C.F.R. § 42.71(d).
`
`
`
`
`
`It is hereby
`
`ORDER
`
`ORDERED that Petitioner’s Motion is granted-in-part;
`
`FURTHER ORDERED that the panel members for consideration of
`
`all matters in these proceedings are designated in accordance with the order
`
`filed on August 22, 2018 (Paper 69);
`
`FURTHER ORDERED that the stay of the deadline for Petitioner to
`
`file requests for rehearing of the Final Written Decisions is lifted;
`
`FURTHER ORDERED that Petitioner is authorized to file requests
`
`for rehearing of the Final Written Decisions in the two above-captioned
`
`proceedings by January 8, 2019, and such requests for rehearing shall total
`
`no more than 20 pages each and otherwise be subject to the standards set
`
`forth in 37 C.F.R. § 42.71(d);
`
`FURTHER ORDERED that Patent Owner is authorized to file, by
`
`January 22, 2019, responses to any requests for rehearing of the Final
`
`Written Decisions that Petitioner files, and such responses shall total no
`
`more than 20 pages each; and
`
`
`
`16
`
`

`

`IPR2016-01198 and IPR2016-01201
`Patents 9,179,005 B2 and 8,542,815 B2
`
`
`FURTHER ORDERED that Petitioner is authorized to file replies in
`
`support of any requests for rehearing by January 29, 2019, and such replies
`
`shall total no more than 10 pages each.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`17
`
`

`

`IPR2016-01198 and IPR2016-01201
`Patents 9,179,005 B2 and 8,542,815 B2
`
`PETITIONER:
`
`Adam Seitz
`Eric Buresh
`Paul Hart
`ERISE IP, P.A.
`Adam.seitz@eriseip.com
`Eric.buresh@eriseip.com
`Paul.hart@eriseip.com
`
`
`
`PATENT OWNER
`
`Kerry Taylor
`John Carson
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2KST@knobbe.com
`2jmc@knobbe.com
`
`
`
`Kevin Malek
`MALEK MOSS PLLC
`Kevin.malek@malekmoss.com
`
`
`
`
`
`
`
`18
`
`

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