Paper No. 8
`Filed February 5, 2020
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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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`COMMUNICATIONS TEST DESIGN, INC.,
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`Petitioner
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`v.
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`CONTEC, LLC,
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`Patent Owner
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`
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`Case: IPR2019-01670
`U.S. Patent No. 8,209,732
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`PATENT OWNER CONTEC, LLC’S SURREPLY
`IN SUPPORT OF ITS PRELIMINARY RESPONSE
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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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`
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`Filed February 5, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`COMMUNICATIONS TEST DESIGN, INC.,
`
`Petitioner
`
`v.
`
`CONTEC, LLC,
`
`Patent Owner
`
`
`
`Case: IPR2019-01670
`U.S. Patent No. 8,209,732
`
`
`
`PATENT OWNER CONTEC, LLC’S SURREPLY
`IN SUPPORT OF ITS PRELIMINARY RESPONSE
`
`
`
`
`
`
`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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`
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`
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`Case No. IPR2019-01670
`U.S. Patent No. 8,209,732
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`I.
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`INTRODUCTION
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`In its Reply, CTDI never discusses the text of § 311(a) and its effect on the
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`jurisdictional time bar under § 315(b). Instead, CTDI mistakenly contends that the
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`Board has already decided the issue and misconstrues Contec’s statutory
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`interpretation in an attempt to discredit it. CTDI fails to meet its burden to show that
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`its Petition is timely. Accordingly, CTDI’s Petition should be denied as time-barred.
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`II. CTDI’S PETITION IS UNTIMELY
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`A. The Board Has Never Considered Whether Section 311(a) Renders
`the Grace Period Under Section 21 Inapplicable to IPR Petitions.
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`As Contec explained, the plain text of § 311(a) establishes that a petitioner
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`cannot rely on § 21 to file an IPR petition outside the one-year, jurisdictional
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`deadline under § 315(b). See Prelim. Response at 4-8. CTDI cites three prior Board
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`decisions in support of its claim that § 21(b) should apply to § 315(b). As shown
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`below, none of these decisions considered the language of § 311(a).
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`1.
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`The Samsung Decision Did Not Consider § 311(a).
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`Contec addressed the Samsung panel decision at length in its Preliminary
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`Response. See Prelim. Resp. at 4-5, 8. CTDI’s arguments in reply miss the mark.
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`First, Contec does not contend that the Samsung decision was decided on an
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`incomplete record. The Samsung panel’s statement that it was “not persuaded on the
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`current record” that § 21(b) should not apply “in this situation,” Samsung, Paper No.
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`10 at 17, indicates that the decision was limited to the specific facts and arguments
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`Case No. IPR2019-01670
`U.S. Patent No. 8,209,732
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`in that case, and should not be considered as providing guidance for other cases,
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`which is consistent with the decision’s non-precedential status. Further, Contec
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`points to the Samsung panel’s belief that “nothing in the Patent Act suggests that the
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`filing of [IPR] petitions is exempt from the provisions of § 21(b)” not to suggest that
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`§ 311(a) was not in the record. (The Patent Act is the law, not part of the evidentiary
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`record.) Rather, the Samsung panel made this blanket statement without anyone
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`directing attention to the language of § 311(a) or explaining its importance. Had the
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`Samsung panel considered § 311(a), it would have decided the matter differently.
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`Second, CTDI is incorrect to claim that Contec’s reliance on § 311(a)
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`“repackages” the argument considered in Samsung. In Samsung, the patent owner
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`made a basic statutory construction argument that § 21 provides a general rule that
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`is in conflict with, and must yield to, the specific jurisdictional limitation in § 315(b).
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`Samsung at 14, 18. This argument simply compares § 21 and § 315(b) without
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`considering any other provisions in the statutory framework governing IPRs. Contec,
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`by contrast, demonstrated that the language of § 311(a) limits who may petition for
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`IPR by reference to the provisions of “this chapter” (Chapter 31), which includes the
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`jurisdictional time bar of § 315(b), but not the grace period of § 21. No such
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`argument was made or considered in Samsung.
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`Third, CTDI claims that Contec cites no support for its argument, when
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`Contec in fact cited two en banc decisions from the Federal Circuit, both of which
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`2
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`U.S. Patent No. 8,209,732
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`concerned the same § 315(b) at issue here. See Prelim. Resp. at 7-8 (citing Wi-Fi
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`One and Click-to-Call).1 CTDI, on the other hand, resorts to citing unhelpful cases
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`involving different statutory frameworks and language.2
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`2.
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`The Google Decision Did Not Consider § 311(a) and Should
`be Dismissed as Non-Persuasive.
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`In Google, the patent owner did not provide any substantive arguments to
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`support its claim that the IPR petition was untimely. Google, Paper No. 9 at 10 n.7.
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`Instead, the patent owner attempted to incorporate by reference the arguments and
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`authorities raised in the IPR2018-01468 Samsung proceeding. Id. The Google panel
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`ruled that “[s]uch incorporation by reference is not permitted, and we do not consider
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`arguments so made.” Id. (citing 37 C.F.R. § 42.6(a)(3)).
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`The Google panel went on to apply the reasoning from Samsung and declined
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`to dismiss the petition as time barred under § 315(b). Id. at 10-11. The panel did not
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`1 Click-to-Call was considered by the Samsung panel in connection with a
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`different argument. See Samsung at 18.
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`2 See AFGE v. Gates, 486 F.3d 1316, 1324 (2007) (interpreting provisions in
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`Chapter 99 of Title 5 relating to the Department of Defense that expressly referred
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`to provisions in Chapter 71); Crawford Family Farm P'ship v. TransCanada
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`Keystone Pipeline, L.P., 409 S.W.3d 908, 916 (Tex. App. 2013) (interpreting state
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`natural resources statute that “merely state[d], in a descriptive manner, that a
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`common carrier under this section is one that is subject to the provisions of the
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`chapter,” not that such a common carrier is subject to all provisions of the chapter).
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`3
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`U.S. Patent No. 8,209,732
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`consider the language of § 311(a). Id. at 9-11. As a result, the Google panel, like the
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`Samsung panel, incorrectly believed that “nothing in Title 35 pertaining to [IPR]
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`suggests that its provisions are exempt from the effect of § 21(b).” Id. at 10-11.
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`3.
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`The ELM Decision is Inapposite.
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`In ELM, the statutory filing deadline fell on December 24, 2015, which was a
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`Thursday. ELM, Paper No. 11 at 4-5. Two days before the deadline, the USPTO
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`experienced a major power outage that required the shutdown of many systems.
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`Given the circumstances, the USPTO announced that it was considering December
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`22-24 a “Federal holiday” under § 21. The petitioner relied on § 21 to file its IPR
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`petition on Monday, December 28, the next succeeding business day after December
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`24, because December 25 was a Federal holiday. Id.
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`The patent owner argued that the petition was untimely because the USPTO
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`did not have the authority to treat December 22-24 as a Federal holiday. Id. at 5. The
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`patent owner did not contend or suggest that § 21 was inapplicable to IPR petitions
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`or the one-year time bar of § 315(b). See ELM, Paper No. 8, Patent Owner Prelim.
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`Resp., at 6-10 (arguing that “Federal holidays are declared by Congress in 5 U.S.C.
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`§ 6103, not by the PTO. The PTO has no authority to act contrary to statute.”). Thus,
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`after rejecting the patent owner’s lack of authority argument, the ELM panel simply
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`assumed without discussion that § 21 was applicable and found that the petition was
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`timely under § 315(b). ELM, Paper No. 11 at 5.
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`Case No. IPR2019-01670
`U.S. Patent No. 8,209,732
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`Contrary to CTDI’s claim, the ELM panel never provided any “reasons why
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`§ 21(b) applies to § 315(b).” CTDI’s Reply at 2. The ELM panel did not consider
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`any argument that § 21 is inapplicable, much less an argument based on the language
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`of § 311(a). The ELM decision is therefore inapposite.
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`B. CTDI Has Not Meet Its Burden to Show that its Petition is Timely.
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`CTDI fails to respond to the substance of Contec’s argument. Rather than
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`addressing the actual language of § 311(a) and its effect on § 315(b), CTDI
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`mistakenly contends that the issue has already been decided and misconstrues
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`Contec’s statutory interpretation to claim that it would have nonsensical
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`consequences. The first sentence of § 311(a) limits who may file an IPR petition
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`with reference to the provisions of Chapter 31. Contec does not suggest that § 311(a)
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`renders § 21 inapplicable to all provisions in Chapter 31, such as the timing
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`provisions in § 314 and §316 for Director decisions. Lastly, because IPR petitioners’
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`reliance on § 21 has been extremely rare and is easily avoidable, there is no merit to
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`CTDI’s claim that denying its Petition will “create chaos for PTAB practitioners.”
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`III. CONCLUSION
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`For the foregoing reasons, CTDI’s Petition should be denied as untimely.
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`Dated: February 5, 2020
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`Respectfully submitted,
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`/Coby S. Nixon/
`Coby S. Nixon
`Registration No. 56,424
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`5
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`Case No. IPR2019-01670
`U.S. Patent No. 8,209,732
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`Taylor English Duma LLP
`1600 Parkwood Circle, Suite 400
`Atlanta, Georgia 30339
`Phone: (770) 434-6868
`Facsimile: (770) 434-7376
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`Attorney for Patent Owner Contec, LLC
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`6
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`Case No. IPR2019-01670
`U.S. Patent No. 8,209,732
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`CERTIFICATE OF COMPLIANCE
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`I hereby certify that the foregoing Surreply in Support of Patent Owner’s
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`Preliminary Response complies with the type-volume limitation of 37 C.F.R. §
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`42.24(c) and the Board’s authorization email from Mr. Andrew Kellogg dated
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`January 22, 2020, because it contains 1,254 words and is no more than five pages.
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`I further certify that the foregoing Surreply complies with the general format
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`requirements of 37 C.F.R. § 42.6(a) and has been prepared using Microsoft Word
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`2016 in 14-point Times New Roman proportional font.
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`Dated: February 5, 2020
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`/Coby S. Nixon/
`Coby S. Nixon
`Registration No. 56,424
`Attorney for Contec, LLC
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`7
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`Case No. IPR2019-01670
`U.S. Patent No. 8,209,732
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that the foregoing Sur-reply in Support of Patent
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`Owner’s Preliminary Response was served on this day by electronic mail upon the
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`following counsel of record for Petitioner Communications Test Design, Inc.:
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`Contec_732_IPR@ballardspahr.com
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`Richard W. Miller (Reg. No. 59,386)
`millerrw@ballardspahr.com
`Ballard Spahr LLP
`999 Peachtree Street, Suite 1000
`Atlanta, GA 30309-3915
`(678) 420-9340
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`Lynn E. Rzonca (Reg. No. 35,998)
`rzoncal@ballardspahr.com
`Ballard Spahr LLP
`1735 Market Street, 51st Floor
`Philadelphia, PA 19103-7599
`(215) 864-8109
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`Jonathon A. Talcott (Reg. No. 71,671)
`talcottj@ballardspahr.com
`Ballard Spahr LLP
`1 East Washington Street, Suite 2300
`Phoenix, AZ 85004-2555
`(602) 798-5485
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`
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`/Coby S. Nixon/
`Coby S. Nixon
`Registration No. 56,424
`Attorney for Contec, LLC
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`8
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`Dated: February 5, 2020
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