Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 49
`Date: August 2, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MICROSOFT CORPORATION,
`Petitioner,
`v.
`IPA TECHNOLOGIES INC.,
`Patent Owner.
`
`IPR2019-00810, IPR2019-00811, IPR2019-00814 (Patent 6,851,115 B1)
`IPR2019-00835, IPR2019-00836 (Patent 7,069,560 B1)1
`
`
`
`
`
`
`
`
`
`Before LYNNE E. PETTIGREW, MINN CHUNG, and KEVIN C. TROCK,
`Administrative Patent Judges.
`PETTIGREW, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding on Remand
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`1 This Order addresses issues that are the same in all identified cases. We
`exercise our discretion to issue one Order to be entered in each case.
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 49
`Date: August 2, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MICROSOFT CORPORATION,
`Petitioner,
`v.
`IPA TECHNOLOGIES INC.,
`Patent Owner.
`
`IPR2019-00810, IPR2019-00811, IPR2019-00814 (Patent 6,851,115 B1)
`IPR2019-00835, IPR2019-00836 (Patent 7,069,560 B1)1
`
`
`
`
`
`
`
`
`
`Before LYNNE E. PETTIGREW, MINN CHUNG, and KEVIN C. TROCK,
`Administrative Patent Judges.
`PETTIGREW, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding on Remand
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`1 This Order addresses issues that are the same in all identified cases. We
`exercise our discretion to issue one Order to be entered in each case.
`
`
`
`
`
`IPR2019-00810, IPR2019-00811, IPR2019-00814 (Patent 6,851,115 B1)
`IPR2019-00835, IPR2019-00836 (Patent 7,069,560 B1)
`Microsoft Corporation (“Petitioner”) challenged claims of U.S. Patent
`No. 6,851,115 B1 (IPR2019-00810, Ex. 1001, “the ’115 patent”) in five
`inter partes reviews, including IPR2019-00810, IPR2019-00811, and
`IPR2019-00814. Petitioner challenged claims of related U.S. Patent No.
`7,069,560 B1 (IPR2019-00835, Ex. 1001, “the ’560 patent”) in three inter
`partes reviews, including IPR2019-00835 and IPR2019-00836. We entered
`Final Written Decisions holding all challenged claims unpatentable, except
`for claims 8–10, 29–47, 63, and 86–89 of the ’115 patent and claims 10, 11,
`28, 50, 51, and 53–55 of the ’560 patent. IPR2019-00810, Paper 44;
`IPR2019-00811, Paper 44; IPR2019-00812, Paper 44; IPR2019-00813,
`Paper 44; IPR2019-00814, Paper 44; IPR2019-00835, Paper 42; IPR2019-
`00836, Paper 42; IPR2019-00837, Paper 42.
`Petitioner appealed, and IPA Technologies Inc. (“Patent Owner”)
`cross-appealed. See, e.g., IPR2019-00810, Papers 45, 46; IPR2019-00835,
`Papers 43, 44. The U.S. Court of Appeals for the Federal Circuit affirmed
`all of our determinations challenged on appeal by Patent Owner. Microsoft
`Corp. v. IPA Techs. Inc., 2022 WL 989403, at *1 (Fed. Cir. Apr. 1, 2022).
`As to Petitioner’s appeal, the Federal Circuit affirmed our determinations
`that Petitioner had not shown that claims 29–47 of the ’115 patent and
`claims 50, 51, and 53–55 of the ’560 patent are unpatentable. Id. The court
`reversed certain determinations regarding claims 8–10, 63, and 86–89 of the
`’115 patent and claims 10, 11, and 28 of the ’560 patent and remanded for
`further proceedings as may be necessary and appropriate. Id. at *1, *11.
`The claims at issue on remand were challenged in IPR2019-00810
`(claims 8–10 of the ’115 patent), IPR2019-00811 (claims 86–89 of the
`’115 patent), IPR2019-00814 (claim 63 of the ’115 patent), IPR2019-00835
`
`2
`
`
`
`IPR2019-00810, IPR2019-00811, IPR2019-00814 (Patent 6,851,115 B1)
`IPR2019-00835, IPR2019-00836 (Patent 7,069,560 B1)
`(claim 28 of the ’560 patent), and IPR2019-00836 (claims 10 and 11 of the
`’560 patent). This Order addresses the procedure for these cases on remand.
`The Board’s Standard Operating Procedure 9 provides guidance
`regarding the procedure for handling cases remanded from the Federal
`Circuit. See PTAB SOP 9 (“Procedure for Decisions Remanded from the
`Federal Circuit for Further Proceedings”). Under SOP 9, “the panel shall
`consider procedures proposed by the parties,” but “ultimately will decide the
`procedures to be followed on remand.” Id. at 5 (App’x 2). SOP 9 further
`provides that “[t]he panel will consider the scope of the remand, as
`determined from the reasoning and instructions provided by the Federal
`Circuit, as well as ‘the effect . . . on the economy, the integrity of the patent
`system, the efficient administration of the Office, and the ability of the
`Office to timely complete proceedings.’” Id. at 6 (App’x 2) (quoting
`35 U.S.C. §§ 316(b), 326(b)). As to additional briefing, SOP 9 states that
`“the panel will take into account whether the parties already have had an
`adequate opportunity to address the issues raised by the remand.” Id. If
`additional briefing is allowed it “will normally be limited to the specific
`issues raised by the remand.” Id. (citing Microsoft Corp. v. Proxyconn, Inc.,
`Case No. IPR2012-00026 (Paper 77) (PTAB Sept. 1, 2015); Dell Inc., v.
`Acceleron, LLC, Case No. IPR2013-00440 (Paper 46) (PTAB May 26,
`2016)).
`On July 25, 2022, the parties sent and email to the Board jointly
`requesting a briefing schedule to address the issues on remand. Ex. 3003.
`The parties agree that no new evidence will be submitted and that the scope
`of briefing will be limited to the following three claim groups:
`1) claims 8–10 and 63 of the ’115 patent and claim 28 of the
`’560 patent;
`
`3
`
`
`
`IPR2019-00810, IPR2019-00811, IPR2019-00814 (Patent 6,851,115 B1)
`IPR2019-00835, IPR2019-00836 (Patent 7,069,560 B1)
`2) claims 86–89 of the ’115 patent; and
`3) claims 10 and 11 of the ’560 patent.
`We agree that additional briefing is warranted in these remand
`proceedings and authorize briefing according to the following schedule:
`Each party is authorized to file a single opening brief, limited to 10
`pages, no later than September 16, 2022. Each party’s brief shall address
`all issues pertaining to the three claim groups above and shall be filed in
`each of IPR2019-00810, IPR2019-00811, IPR2019-00814, IPR2019-00835,
`and IPR2019-00836.
`Each party is authorized to file a single responsive brief, limited to 10
`pages, no later than September 30, 2022. Each party’s brief shall be filed in
`each of IPR2019-00810, IPR2019-00811, IPR2019-00814, IPR2019-00835,
`and IPR2019-00836.
`The briefs may cite to the record in any of the five cases, making clear
`the proceeding in which any particular paper or exhibit was entered.
`
`It is
`ORDERED that each party is authorized to file an opening brief and a
`responsive brief according to the schedule above; and
`FURTHER ORDERED that no issues other than those pertaining to
`the three identified claim groups shall be briefed, and no new evidence shall
`be submitted.
`
`
`
`
`
`
`4
`
`
`
`IPR2019-00810, IPR2019-00811, IPR2019-00814 (Patent 6,851,115 B1)
`IPR2019-00835, IPR2019-00836 (Patent 7,069,560 B1)
`PETITIONER:
`
`Joseph A. Micallef
`Scott M. Border
`SIDLEY AUSTIN LLP
`jmicallef@sidley.com
`sborder@sidley.com
`
`PATENT OWNER:
`
`Steven W. Hartsell
`Alexander E. Gasser
`Sarah E. Spires
`SKIERMONT DERBY LLP
`shartsell@skiermontderby.com
`agasser@skiermontderby.com
`sspires@skiermontderby.com
`
`
`5
`
`
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