UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`WESTERN DIGITAL CORPORATION, TOSHIBA CORPORATION, TOSHIBA
`AMERICA ELECTRONIC COMONENTS, INC., and APRICORN1,
`Petitioners
`
`v.
`
`SPEX TECHNOLOGIES, INC.,
`Patent Owner
`
`
`
`
`Case IPR2018-00082
`U.S. Patent No. 6,088,802
`
`
`
`
`
`
`
`NOTICE OF APPEAL
`
`
`1 Kingston Technology Company, Inc., which filed a Petition in Case IPR2018-
`
`01003, has been joined as a petitioner in this proceeding. Toshiba Corporation,
`
`Toshiba America Electronic Components, Inc, Apricorn, which filed a Petition in
`
`Case IPR2018-01068, have been joined as petitioners in this proceeding. (The
`
`official caption in this IPR was never corrected to reflect that Kingston is a party.)
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`WESTERN DIGITAL CORPORATION, TOSHIBA CORPORATION, TOSHIBA
`AMERICA ELECTRONIC COMONENTS, INC., and APRICORN1,
`Petitioners
`
`v.
`
`SPEX TECHNOLOGIES, INC.,
`Patent Owner
`
`
`
`
`Case IPR2018-00082
`U.S. Patent No. 6,088,802
`
`
`
`
`
`
`
`NOTICE OF APPEAL
`
`
`1 Kingston Technology Company, Inc., which filed a Petition in Case IPR2018-
`
`01003, has been joined as a petitioner in this proceeding. Toshiba Corporation,
`
`Toshiba America Electronic Components, Inc, Apricorn, which filed a Petition in
`
`Case IPR2018-01068, have been joined as petitioners in this proceeding. (The
`
`official caption in this IPR was never corrected to reflect that Kingston is a party.)
`
`
`
`Pursuant to 35 U.S.C. § 141 and 37 C.F.R. § 90.2, Petitioner Kingston
`
`Case IPR2018-01003
`Attorney Docket: 37307-0012IP3
`
`
`Technology Company, Inc. (“Petitioner”) hereby provides notice that it appeals to
`
`the United States Court of Appeals for the Federal Circuit from the Final Written
`
`Decision entered April 18, 2019 (Paper 40) and from all underlying orders,
`
`decisions, rulings, and opinions adverse to it regarding U.S. Patent 6,088,802 (“the
`
`‘802 patent”) at issue in Inter Partes Review IPR2018-00082.
`
`In accordance with and for the purpose of providing the Director with the
`
`information requested pursuant to 37 C.F.R. § 90.2(a)(3)(ii), Petitioner anticipates
`
`that the issues on appeal may include, but are not limited to the following, as well
`
`as any underlying findings, determinations, rulings, decisions, opinions, or other
`
`related issues:
`
` 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.
`
` 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
`
`2
`
`
`
`limiting Petitioner’s arguments to issues raised in a Patent Owner’s
`
`Case IPR2018-01003
`Attorney Docket: 37307-0012IP3
`
`
`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.
`
` 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 3 admissions by the Patent Owner’s experts that were made after the
`
`Petition was filed, constitutes a new “ground” for unpatentability.
`
` 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.
`
`Simultaneous with this filing and in accordance with 35 U.S.C. § 142 and 37
`
`C.F.R. § 90.2(a)(1), this Notice is being filed with the Director of the United States
`
`Patent and Trademark Office, and a copy of this Notice is being concurrently filed
`
`with the Patent Trial and Appeal Board. In addition, a copy of this Notice along
`
`with the required docketing fees are being filed with the Clerk’s Office for the
`
`United States Court of Appeals for the Federal Circuit via CM/ECF.
`
`3
`
`
`
`Case IPR2018-01003
`Attorney Docket: 37307-0012IP3
`
`
`Respectfully submitted,
`
`
`/David Hoffman/
`
`David Hoffman
`Reg. No. 54,174
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Date: June 7, 2019
`
`
`Customer Number 26171
`Fish & Richardson P.C.
`Telephone: (512) 226-8154
`Facsimile: (877) 769-7945
`
`4
`
`
`
`Case IPR2018-01003
`Attorney Docket: 37307-0012IP3
`
`
`CERTIFICATE OF SERVICE
`
`
`
`In accordance with 37 CFR § 90.2(a)(1) and § 104.2, the undersigned hereby
`
`certifies that on June 7, 2019, in addition to being filed electronically through the
`
`Board’s E2E System, the original version of the foregoing, Patent Owner’s Notice
`
`of Appeal was filed by hand on the Director of the United States Patent and
`
`Trademark Office, at the following address:
`
`
`
`
`
`
`
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`Madison Building East, 10B20
`600 Dulany Street
`Alexandria, VA 22314-5793
`
`The undersigned hereby certifies that on June 7, 2019, a true and correct
`
`copy of the foregoing, Patent Owner’s Notice of Appeal, along with a copy of the
`
`Final Written Decision, was filed electronically with the Clerk’s Office of the
`
`United States Court of Appeals for the Federal Circuit, at the following address:
`
`
`
`United States Court of Appeals for the Federal Circuit
`717 Madison Place, N.W., Suite 401
`Washington, DC 20005
`
`5
`
`
`
`
`Pursuant to 37 CFR § 42.6(e)(1), the undersigned certifies that on June 7,
`
`Case IPR2018-01003
`Attorney Docket: 37307-0012IP3
`
`
`2019, a complete and entire copy of this Patent Owner’s Notice of Appeal was
`
`provided via email, to the Petitioner by serving the email correspondence addresses
`
`of record as follows:
`
`Peter Lambrianakos: plambrianakos@brownrudnick.com
`Vincent J. Rubino, III: vrubino@brownrudnick.com
`Alfred R. Fabricant: : afabricant@brownrudnick.com
`Enrique W. Iturralde: eiturralde@brownrudnick.com
`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`
`
`
`
`
`
`
`
`/Edward G. Faeth/
`Edward G. Faeth
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(202) 626-6420
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`6
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
