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Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 79
`Entered: September 2 , 2022
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC,
`Petitioner,
`v.
`IPA TECHNOLOGIES INC.,
`Patent Owner.
`
`IPR2019-00728 (Patent 6,851,115 B1)
`IPR2019-00730 (Patent 7,069,560 B1)
` IPR2019-00731 (Patent 7,069,560 B1)1
`
`
`
`Before KEN B. BARRETT, TREVOR M. JEFFERSON, and
`BART A. GERSTENBLITH, Administrative Patent Judges.
`JEFFERSON, Administrative Patent Judge.
`
`ORDER
`Conduct of Proceedings on Remand
`37 C.F.R. § 42.5
`
`
`1 This Order addresses issues that are identical in each of the above-
`identified cases. Accordingly, we exercise our discretion to issue one order
`to be filed in each case. The parties, however, are not authorized to use this
`style heading in any subsequent papers without prior authorization.
`
`

`

`IPR2019-00728 (Patent 6,851,115 B1)
`IPR2019-00730 (Patent 7,069,560 B1)
`IPR2019-00731 (Patent 7,069,560 B1)
`
`
`On September 2, 2020 and September 16, 2020, we issued Final
`Written Decisions in these proceedings finding, inter alia, that Petitioner had
`not shown that an asserted prior art reference was prior art to the challenged
`patents under § 102(a). Paper 74, 25 (IPR2019-00728); Paper 72, 26
`(IPR2019-00730); Paper 73, 26 (IPR2019-00731). Because each of
`Petitioner’s grounds relied on the asserted reference, we found that
`Petitioner failed to establish that the challenged claims were unpatentable
`under any of the grounds. Paper 74, 25 (IPR2019-00728); Paper 72, 26
`(IPR2019-00730); Paper 73, 26 (IPR2019-00731). Patent Owner appealed
`to the United States Court of Appeals for the Federal Circuit. Paper 76
`(IPR2019-00728); Paper 74 (IPR2019-00730); Paper 75 (IPR2019-00731).
`On May 19, 2022, the Federal Circuit issued an opinion vacating and
`remanding our Final Written Decisions finding that “the Board did not
`complete the full . . . analysis” required by Duncan Parking Technologies,
`Inc. v. IPS Group, Inc., 914 F.3d 1347, 1357 (Fed. Cir. 2019), with respect
`to the asserted prior art reference. Google LLC v. IPA Techs. Inc., 34 F.4th
`1081, 1087 (Fed. Cir. 2022). Specifically, the Federal Circuit instructs that,
`“to decide whether a reference patent is ‘by another’ . . . , the
`Board must”:
`(1) determine what portions of the reference patent
`were relied on as prior art to anticipate the claim
`limitations at issue, (2) evaluate the degree to
`which those portions were conceived ‘by another,’
`and (3) decide whether that other person’s
`contribution is significant enough, when measured
`against the full anticipating disclosure, to render
`him a joint inventor of the applied portions of the
`reference patent.
`
`2
`
`

`

`IPR2019-00728 (Patent 6,851,115 B1)
`IPR2019-00730 (Patent 7,069,560 B1)
`IPR2019-00731 (Patent 7,069,560 B1)
`
`Id. at 1085 (quoting Duncan Parking, 914 F.3d at 1358 (quoting pre-AIA 35
`U.S.C. § 102(e)) (alteration in original)). On June 28, 2022, the Federal
`Circuit issued its mandate. See, e.g., IPR2019-00728, Paper 77. The parties,
`in accordance with Standard Operating Procedure 9, contacted the Board
`requesting a call with the panel to discuss the remand proceedings.
`On July 21, 2022, Judges Barrett, Jefferson, and Gerstenblith held a
`call with the parties to discuss additional briefing in accordance with the
`Federal Circuit’s mandate. Although the parties agreed that no new
`evidence should be submitted, they differed on whether additional briefing
`was required. Petitioner sought supplemental briefing of 10 pages directed
`to the Federal Circuit’s decision, while Patent Owner contended that no
`supplemental briefing was necessary for the Board to make factual findings
`in accordance with the Federal Circuit’s remand.
`In light of the present record, the panel concludes that additional
`briefing directed to the Duncan analysis of the challenged reference and the
`Federal Circuit’s discussion of the record would be helpful in the remanded
`proceedings. Thus, the panel authorizes a single round of briefing directed
`to the Federal Circuit’s instruction to apply the Duncan analysis to the
`disputed prior art reference in the above-referenced cases. Petitioner is
`authorized to file an opening remand brief limited to 12 pages no later than
`two weeks after the entry of this order. Patent Owner is authorized to file a
`responsive remand brief limited to 12 pages no later than two weeks after the
`filing of Petitioner’s remand brief.. No additional reply or sur-reply briefing
`or new evidence is authorized. In addition, at this time, no new oral
`argument is warranted.
`
`3
`
`

`

`IPR2019-00728 (Patent 6,851,115 B1)
`IPR2019-00730 (Patent 7,069,560 B1)
`IPR2019-00731 (Patent 7,069,560 B1)
`
`
`ORDER
`
`It is
`ORDERED that Petitioner may submit a 12-page brief on remand due
`no later than two weeks after the entry of this order ; and
`FURTHER ORDERED that Patent Owner may submit a 12-page
`reply brief on remand due no later than no later than two weeks after the
`filing of Petitioner’s remand brief .
`
`
`4
`
`

`

`IPR2019-00728 (Patent 6,851,115 B1)
`IPR2019-00730 (Patent 7,069,560 B1)
`IPR2019-00731 (Patent 7,069,560 B1)
`
`For PETITIONER:
`Naveen Modi
`Joseph Palys
`Daniel Zeilberger
`Arvind Jairam
`PAUL HASTINGS LLP
`naveenmodi@paulhastings.com
`joesphpalys@paulhastings.com
`danielzeilberger@paulhastings.com
`arvindjairam@paulhastings.com
`
`PATENT OWNER:
`Steven Hartsell
`Alexander Gasser
`Sarah Spires
`SKIERMONT DERBY LLP
`shartsell@skiermontderby.com
`agasser@skiermontderby.com
`sspires@skiermontderby.com
`
`
`
`5
`
`

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