UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AMAZON.COM, INC., AMAZON DIGITAL SERVICES, INC., AMAZON
`FULFILLMENT SERVICES, INC., HULU, LLC, and NETFLIX, INC.,
`Petitioners
`
`v.
`
`UNILOC LUXEMBOURG S. A.1
`Patent Owner
`
`IPR2017-00948
`PATENT 8,566,960
`
`PATENT OWNER'S REQUEST FOR
`REHEARING UNDER 37 C.F.R. § 42.71(D)
`
`1 The owner of this patent is Uniloc 2017 LLC.
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`AMAZON.COM, INC., AMAZON DIGITAL SERVICES, INC., AMAZON
`FULFILLMENT SERVICES, INC., HULU, LLC, and NETFLIX, INC.,
`Petitioners
`
`v.
`
`UNILOC LUXEMBOURG S. A.1
`Patent Owner
`
`IPR2017-00948
`PATENT 8,566,960
`
`PATENT OWNER'S REQUEST FOR
`REHEARING UNDER 37 C.F.R. § 42.71(D)
`
`1 The owner of this patent is Uniloc 2017 LLC.
`
`
`
`In response to the Final Written Decision entered August 1, 2018, (Paper
`
`31, hereinafter “Decision”) and pursuant to 37 CFR § 42.71(d), Uniloc 2017 LLC
`
`(“Patent Owner”) hereby respectfully requests a rehearing and reconsideration by
`
`the Patent Trial and Appeal Board (“Board”) of its Final Decision. Patent Owner’s
`
`request for rehearing is based upon the following considerations.
`
`I.
`
`APPLICABLE STANDARDS
`“A party dissatisfied with a decision may file a request for rehearing,
`
`without prior authorization from the Board.” 37 C.F.R. §42.71(d). “The request
`
`must specifically
`
`identify all 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.” Id. The Board reviews a
`
`decision for an abuse of discretion. 37 C.F.R. §42.71(c).
`
`II. ARGUMENT
`
`The Board misapprehended the law in concluding it is permissible in an
`
`IPR proceeding for the Board to consider a § 101 challenge, against claims that
`
`have been entered into the IPR by narrowed amendments that meet the
`
`requirements of 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121. As the Federal Circuit
`
`recently explained, “Congress carefully set out limits on the inter partes review
`
`(‘IPR’) program for review of patents after issuance. Persons sued for
`
`infringement … were restricted to presenting only certain §§ 102 and 103 grounds
`
`of unpatentability, thus excluding grounds based on, for example, § 101 . . . ..”
`2
`
`
`
`
`Secure Axcess, LLC v. PNC Bank Nat'l Ass'n, 848 F.3d 1370, 1379 (Fed. Cir.
`
`2017) (emphasis added); see also 35 U.S.C. § 311(b).
`
`The Board, nevertheless, found Patent Owner’s amended claims ineligible
`
`under § 101, citing Ariosa Diagnostics v. Isis Innovation Limited, Case IPR2012-
`
`00022 (PTAB Sept. 2, 2014) and Western Digital Corp. v. SPEX Techs., Inc.,
`
`Case IPR2018-00082 (PTAB Apr. 25, 2018) as authority for the conclusion that
`
`it was proper to engage in a § 101 analysis. In doing so, the Board
`
`misapprehended: (1) the impact of Aqua Products, Inc. v. Matal, 872 F.3d 1290
`
`(Fed. Cir. 2017) on the erroneous holding of Ariosa Diagnostics; and (2) the rule
`
`stated in Western Digital Corporation.
`
`1.
`
`The Board misapprehended the impact of Aqua Products on the
`rule articulated by Ariosa Diagnostics.
`
`
`Ariosa Diagnostics held that amended claims in an IPR are subject to
`
`§ 101 eligibility challenges because a patent owner has the burden of persuasion
`
`in a motion to amend, stating:
`
`Although . . . an inter partes review cannot be instituted using 35
`U.S.C. § 101 as the basis for a challenge brought by a petitioner, in a
`motion to amend, the patent owner has the burden of demonstrating
`the patentability of the claims.
`
`Ariosa Diagnostics, IPR2012-00022, Paper 166 at 50-53 (PTAB Sept. 2, 2014)
`
`(emphasis added) (internal cites omitted). By overruling the PTO’s erroneous
`
`practice of placing the burden on the patentee in amended claims, Aqua Products
`
`overruled the very basis for Ariosa Diagnostic’s holding that a motion to amend
`3
`
`
`
`
`
`must address patent eligibility under § 101.
`
`2.
`
`The Board overlooked the difference between this case and
`Western Digital.
`
`Western Digital, unlike Ariosa Diagnostics, did not hold that a motion to
`
`
`
`amend must address § 101 eligibility. It does not even hold that it is permissible
`
`for a Board to consider § 101 eligibility. It is merely an order giving general
`
`“information and guidance on motions to amend . . . in the event Patent Owner
`
`elects to file a motion to amend.” See Western Digital Corp., Case IPR2018-
`
`00082 (PTAB Apr. 25, 2018) (Paper 13). Included in its list of general
`
`instructions is a section designed to clarify that § 42.121(a)(2)(i) “does not require
`
`. . . that every word added to or removed from a claim in a motion to amend be
`
`solely for the purpose of overcoming an instituted ground.” Id. It explains that
`
`“once a proposed claim includes amendments to address a prior art ground in the
`
`trial, a patent owner also may include additional limitations to address potential §
`
`101 or § 112 issues, if necessary.” Id. The purpose of this is not to broaden the
`
`scope of an IPR challenge. Rather, “[a]llowing an amended claim to address such
`
`issues, when a given claim is being amended already in view of a 35 U.S.C. § 102
`
`or § 103 ground, serves the public interest by helping to ensure the patentability
`
`of amended claims.” Id.
`
`That a patent owner may seek narrowing amendments to make the claims
`
`more robust against a potential § 101 challenge outside an IPR proceeding does
`
`
`
`4
`
`
`
`not mean that the Board may consider such a § 101 challenge in the IPR in which
`
`those amendments are entered. Western Digital does not provide even persuasive
`
`authority supporting the ineligibility conclusion of the Board here.
`
`Further, even if it were permissible for the Board to consider a § 101
`
`challenge in an IPR (and it is not), the record evidence here confirms the claims
`
`are both patentable and patent eligible. The Board expressly found the amended
`
`claims each respond to a ground of unpatentability involved in the trial, do not
`
`enlarge claim scope, and do not introduce new matter (i.e., the amendments satisfy
`
`the requirements of 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121). Paper 31 at 63-
`
`68. It further found the amended claims (1) are not indefinite and (2) are not
`
`obvious over the art of record. Id. Given that the Board found the original claims
`
`were rendered obvious by the art of record but that the amended claims were
`
`patentable over such art, there can be no question that the claim amendments are
`
`narrowed in scope with respect to the original claims. Because the original claims
`
`could not, by statute, be challenged in the IPR proceeding under § 101, it follows
`
`it was error to reject the claims narrowed by amendment based solely on a finding
`
`that they are ineligible under the § 101 abstract-idea analysis set forth in Mayo
`
`and Alice.
`
`III.
`
`CONCLUSION
`Following Aqua Products, the PTO issued a memorandum on November
`
`21, 2017 titled “Guidance on Motions to Amend in view of Aqua Products”
`
`
`
`5
`
`
`
`explaining that “a motion to amend must set forth a written description support
`
`and support for the benefit of a filing date in relation to each substitute claim, and
`
`respond to grounds of unpatentability involved in the trial.”2
`
`Because (1) an IPR cannot be instituted based on a § 101 challenge and (2)
`
`Patent Owner’s amended claims, which are narrower than the original claims, do
`
`not introduce § 101 issues into this trial, the only grounds for unpatentability
`
`“involved in the trial” are those based on §§ 102 and 103. Patent Owner satisfied
`
`all the statutory and regulatory requirements for having the amendments entered
`
`and the Decision cites no valid reason for engaging in a § 101 analysis in this IPR.
`
`Therefore, Patent Owner respectfully requests that the Board grant a
`
`rehearing and reconsider its Final Written Decision.
`
`
`
`
`
`
`
`2 See https://www.uspto.gov/sites/default/files/documents/guidance_on_motions_to_
`amend_11_2017.pdf (emphasis added).
`
`
`6
`
`
`
`Date: August 31, 2018
`
`Brett A. Mangrum
`brett@etheridgelaw.com
`Reg. No. 64,783
`
`Ryan Loveless
`ryan@etheridgelaw.com
`Reg. No. 51,970
`
`Counsel for Patent Owner
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies
`
`that
`
`the foregoing as served
`
`electronically via e-mail on the date below on the following counsel for
`
`Petitioner:
`
`Daniel T. Shvodian: DShvodian@perkinscoie.com
`Sarah E. Stahnke: SStahnke@perkinscoie.com
`
`
`Attorneys for AMAZON.COM,
`INC., AMAZON DIGITAL
`SERVICES, INC., AMAZON
`FULFILLMENT SERVICES, INC.,
`HULU, LLC, and NETFLIX, INC.
`
`
`
`
`7
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