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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
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`WESTERN DIGITAL CORPORATION,
`TOSHIBA CORPORATION,
`TOSHIBA AMERICA ELECTRONIC COMPONENTS, INC., and
`APRICORN
`Petitioners,
`v.
`SPEX TECHNOLOGIES, INC.
`Patent Owner
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`_________________________
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`CASE NO: IPR2018-00082
`U.S. PATENT: 6,088,802
`_________________________
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`PETITIONER APRICORN’S NOTICE OF APPEAL
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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
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`Pursuant to 35 U.S.C. § 141 and 37 C.F.R. § 90.2, Petitioner Apricorn
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`(“Petitioner”) hereby provides notice that it appeals to the United States Court of
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`Appeals for the Federal Circuit from the Final Written Decision entered April 18,
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`2019 (Paper 40) and from all underlying orders, decisions, rulings, and opinions
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`adverse to it regarding U.S. Patent 6,088,802 (“the ‘802 patent”) at issue in Inter
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`Partes Review IPR2018-00082.
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`In accordance with and for the purpose of providing the Director with the
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`information requested pursuant to 37 C.F.R. § 90.2(a)(3)(ii), Petitioner anticipates
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`that the issues on appeal may include, but are not limited to the following, as well as
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`any underlying findings, determinations, rulings, decisions, opinions, or other
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`related issues:
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`• The Board violated SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018), the
`Administrative Procedure Act, and/or Petitioner’s due process rights by denying
`Petitioner’s requests to: (i) supplement the record to include admissions made
`by Patent Owner’s experts that were made only after the Petition was filed, and
`(ii) file a reply, with respect to the patent claims for which the Board instituted
`review but did not find, based on the Petition, that Petitioner had a reasonable
`likelihood of prevailing.
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`• The Board violated SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018), the
`Administrative Procedure Act, and/or Petitioner’s due process rights by limiting
`Petitioner’s arguments to issues raised in a Patent Owner’s response, where the
`Patent Owner did not file a Patent Owner Response and hence raised no issues
`with respect to the patent claims for which the Board instituted review but did
`not find, based on the Petition, that Petitioner had a reasonable likelihood of
`prevailing.
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`• The Board erred in holding that an invalidity argument based on disclosure
`found in a prior art reference relied upon in the Petition, in combination with
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`admissions by the Patent Owner’s experts that were made after the Petition was
`filed, constitutes a new “ground” for unpatentability.
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` Any and all findings or determinations supporting or related to the above
`identified issues, and all other issues decided adversely to Petitioner in any
`order, decision, ruling, or opinion by the Board in this Inter Partes Review.
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`Simultaneous with this filing and in accordance with 35 U.S.C. § 142 and 37
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` •
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`C.F.R. § 90.2(a)(1), this Notice is being filed with the Director of the United States
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`Patent and Trademark Office, and a copy of this Notice is being concurrently filed
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`with the Patent Trial and Appeal Board. In addition, a copy of this Notice along with
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`the required docketing fees are being filed with the Clerk’s Office for the United
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`States Court of Appeals for the Federal Circuit via CM/ECF.
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`Respectfully submitted,
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`DATED: May 2, 2019
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`By: /Christopher D. Bright/
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`Christopher D. Bright (Reg. 46,578)
`MORGAN, LEWIS & BOCKIUS LLP
`600 Anton Blvd., Ste. 1800
`Costa Mesa, CA 92626
`United States of America
`Phone: (714) 830-0600
`Fax: (714) 830-0700
`Email:
`christopher.bright@morganlewis.com
`Additional e-mail: Apricorn-Spex-
`PTAB@morganlewis.com
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`Hersh H. Mehta (Reg. 62,336)
`MORGAN, LEWIS & BOCKIUS LLP
`77 West Wacker Drive
`Chicago, IL 60601
`Telephone: (312) 324-1739
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`Fax: (312) 324-1001
`E-mail: hersh.mehta@morganlewis.com
`Additional e-mail: Apricorn-Spex-
`PTAB@morganlewis.com
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`Attorneys for Petitioner Apricorn
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that, in addition to being filed electronically through
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`the Patent Trial and Appeal Board’s End to End system (PTAB E2E), the foregoing
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`Notice of Appeal was filed by Express Mail on May 2, 2019, with the Director of
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`the United States Patent and Trademark Office, at the following address:
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`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`The undersigned certifies that a copy of the foregoing Notice of Appeal, along
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`with the required docket fee, was filed on May 2, 2019, with the Clerk’s Office of
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`the United States Court of Appeals for the Federal Circuit through the Court’s
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`CM/ECF filing system.
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`The undersigned certifies service pursuant to 37 C.F.R. § 42.6(e) of a copy of
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`this Notice of Appeal by electronic mail on May 2, 2019, on the counsel of record
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`for Patent Owner:
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`Peter Lambrianakos, plambrianakos@brownrudnick.com
`Alfred R. Fabricant, afabricant@brownrudnick.com
`Vincent J. Rubino, III, vrubino@brownrudnick.com
`Enrique W. Iturralde, eiturralde@brownrudnick.com
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`DATED: May 2, 2019
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` /Christopher D. Bright/
`Christopher D. Bright (Reg. No. 46,578)
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`Attorney for Petitioner Apricorn
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