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`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________________________
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`MICROSOFT CORPORATION,
`Petitioner,
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`v.
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`IRON OAK TECHNOLOGIES, LLC,
`Patent Owner.
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`___________________________
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`IPR2019-00106
`U.S. Patent No. 5,699,275
`___________________________
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`PATENT OWNER NOTICE OF APPEAL
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`Pursuant to 37 C.F.R. § 90.2(a), notice is hereby given that Patent Owner Iron
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`Oak Technologies, LLC (“Iron Oak”) appeals to the United States Court of Appeals
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`for the Federal Circuit all issues that are ripe for appeal from the Final Written
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`Decision of the Patent Trial and Appeal Board (“PTAB”) entered on February 7,
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`2020 (Paper 21) in Case No. IPR2019-00106, and from all underlying orders,
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`decisions, rulings, and opinions.
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), and without waiver or prejudice,
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`Iron Oak anticipates that the issues on appeal may include, but are not limited to:
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`I.
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`The PTAB’s express and implicit construction of claim terms and
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`phrases, lack of construction of claim terms or phrases, and its
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`determination that the clam terms and phrases in U.S. Patent No.
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`5,699,275 (“the ‘275 patent”) were disclosed by the cited references.
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`II.
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`The PTAB’s determination that Petitioner Microsoft Corporation
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`(“Microsoft”) has shown, by a preponderance of the evidence, that
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`claim 1 of the ‘275 patent is determined to be unpatentable under 35
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`U.S.C. § 102 in light of JP Published Patent Application No. 1993-
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`128022 (“Sugita”.)
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`III. The PTAB’s retroactive application of inter partes review to the ’275
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`Patent, which issued prior to the Leahy-Smith America Invents Act,
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`Pub. L. No. 112–29, 125 Stat. 284 (2011) (effective September 16,
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`2012).
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`IV. Any findings or determinations relating to the foregoing issues, as
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`well as all other issues decided adversely to Iron Oak in any orders,
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`decisions, rulings, or opinions, and all other issues ripe for appeal
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`Pursuant to 37 C.F.R. § 90.2(a), this Notice of Appeal is being filed with the
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`Director of the United States Patent and Trademark Office as provided in 37 C.F.R.
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`§ 104.2; with the Patent Trial and Appeal Board as provided in 37 C.F.R. § 42.6(b);
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`and with the Clerk’s Office for the United States Court of Appeals for the Federal
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`Circuit as provided in Fed. Cir. R. 15(a)(1) and 25(b)(1), along with payment of the
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`Respectfully submitted,
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`By: /Al Deaver/
`Albert B. Deaver, Jr.
`Reg. No. 34,318
`Lead Counsel for Patent Owner
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`required fee.
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`Date: April 10, 2020
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`CERTIFICATE OF FILING AND SERVICE
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`I hereby certify that on April 10, 2020 I caused a true and correct copy of the
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`foregoing Patent Owner’s Notice of Appeal to be served via email, as previously
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`agreed by the parties, on the following Counsel for Petitioner:
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`Joseph A. Micallef (Reg. No. 39772) at jmicallef@sidley.com (202.736.8492)
`Scott M. Border at sborder@sidley.com (202.736.8818)
`Through their email alias at sidley_microsoft_ironoak_ipr@sidley.com
`Sidley Austin LLP
`1501 K Street
`N.W. #600
`Washington, DC 20005
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`The undersigned hereby also certifies that in addition to being filed and served
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`electronically through the Board’s E2E System, the foregoing document was filed
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`on April 10, 2020 with the Director of the United States Patent and Trademark Office
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`by way of UPS overnight delivery to:
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`Office of the General Counsel
`U.S. Patent and Trademark Office
`10B20, Madison Building East
`600 Dulany Street
`Alexandria, Virginia 22314
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`The undersigned hereby also certifies that the foregoing document was filed
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`on April 10, 2020 with the Clerk’s Office of the United States Court of Appeals for
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`the Federal Circuit through the court’s Case Management and Electronic Case Files
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`(CM/ECF) system along with the requisite fee. As per Administrative Order 20-01
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`of March 20, 2020, of the Court of Appeals for the Federal Circuit, no paper copies
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`of this document were served to the Court.
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`Respectfully submitted,
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`By: /Al Deaver/
`Albert B. Deaver, Jr.
`Reg. No. 34,318
`Lead Counsel for Patent Owner
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`Date: April 10, 2020
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