From:
`To:
`Cc:
`
`Subject:
`Date:
`
`Kenneth Weatherwax
`Precedential_Opinion_Panel_Request
`AXF-PTAB; PTABInbound@fr.com; Roberto Devoto; IPR39521-0079IP1@fr.com; Bridget Smith; Kenneth
`Weatherwax; Patrick Maloney; Colette Woo; Nathan Lowenstein
`IPR2020-00266 Patent Owner"s Request for Rehearing Of Decision Granting Institution
`Friday, August 28, 2020 11:57:21 PM
`
`Dear Honorable Board and Precedential Opinion Screening Committee:
`
`I write on behalf or SEVEN Networks, LLC (“Patent Owner”) regarding U.S. Patent No.10,135,771 (the
`’771 patent), which is the subject of a petition for inter partes review filed by Apple Inc.
`(“Petitioner”). On August 14, 2020, an assigned panel of the Board, acting on behalf of the Director,
`issued a Decision regarding Institution (“DI”) determining to institute review. (Paper 12.)
`
`Patent Owner has submitted a request for rehearing of the decision instituting review, and
`respectfully asks that the matter be heard by a Precedential Opinion Panel pursuant to Standard
`Operating Procedure 2.
`
`A request for rehearing and recommendation for Precedential Opinion Panel review on questions 2,
`3 and 4 below is also being filed today in IPR2020-00180 and IPR2020-0079, involving the same
`parties.
`
`Questions Presented
`
`Based on my professional judgment, I believe that the assigned panel’s institution decision is
`contrary to 35 U.S.C. § 325(d), 314(a), and the following decisions of the Board that have been
`designated as precedential and binding upon the Board: Apple, Inc. v. Fintiv, Inc., IPR2020-00019,
`Paper 11 (PTAB Mar. 20, 2020) (precedential) and NHK Spring Co. v. Intri-Plex Technologies, Inc.,
`IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential); and requires an answer to one or
`more precedent-setting questions of exceptional importance, including the following:
`
`1. Whether, for purposes of determining under § 325(d) whether to institute inter partes
`review, the Director or his delegate may take into account whether the same or substantially
`the same prior art or arguments were previously presented to and considered by the Office
`in a continuing application from the challenged patent’s application disclosure with
`substantially similar claims as the challenged patent, where the petitioner does not allege an
`error by the Office in the examination of the continuing application.
`
`2. Whether, for purposes of determining under § 314(a) whether to institute inter partes
`review, the institution of review in other cases involving other patents involved in the same
`litigation between the petitioner and the patent owner weighs in favor of not exercising
`discretion not to institute under § 325(d)?
`
`3. Whether, for purposes of determining under § 314(a) whether to institute inter partes
`review, the fact that the merits of the petition are determined to be strong enough to
`support institution under § 314(a) weighs in favor of not exercising discretion not to institute
`under § 314(a), NHK Spring, and Fintiv?
`
`IPR2020-00266
`Ex. 3001 p. 1 of 3
`
`

`

`4. Whether, for purposes of determining under § 314(a) whether to institute inter partes
`review, the fact that the petitioner agrees, conditioned upon institution, to drop the exact
`grounds in the petition from the parties’ co-pending district court litigation weighs in favor
`of not exercising discretion not to institute under § 314(a), NHK Spring, and Fintiv?
`
`§ 325(d) Issue (Question #1)
`
`After Patent Owner received a copy of the Petition in this case, Patent Owner filed, in a pending
`continuation application claiming the benefit of the challenged patent, a copy of the Petition, the
`expert declaration, and the art of the proposed grounds. Patent Owner also filed copies of
`Petitioner's Markman briefing and the District Court's Claim Construction Order. The claims of the
`continuation are substantially similar to the claims challenged in the Petition. The Examiner of the
`continuation initially rejected the pending claims, applying in the rejection the same grounds in the
`Petition, then considered Patent Owner's responsive arguments and the Petitioner’s claim
`construction arguments in District Court, and allowed the claims. The continuation claims were
`allowed prior to the due date for filing Patent Owner's preliminary response. In the preliminary
`response, Patent Owner argued that the Board should take the continuation application prosecution
`into account under § 325(d).
`
`The assigned panel’s Institution Decision found that § 325(d) should not apply, citing Advanced
`Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 (PTAB Feb. 13,
`2020) (precedential). However, Advanced Bionics did not address the situation in which the same
`prior art and arguments presented in a petitioner were presented in a continuing application.
` Nothing in Advanced Bionics warrants a conclusion that § 325(d) does not apply in these
`circumstances. Rather, it counsels that “[t]he factors set forth in Becton, Dickinson should be read
`broadly ... to apply to any situation in which a petition relies on the same or substantially the same
`art or arguments previously presented to the Office during a proceeding pertaining to the
`challenged patent.” Id., 9. The correct outcome here is that the continuation application should be
`considered in a § 325(d) analysis.
`
`The Institution Decision further concluded sua sponte, as a fall-back reason for declining to apply the
`continuation application prosecution under § 325(d), that the Office Examiner in the continuation
`application materially erred by applying the wrong claim construction. The Board instead found and
`applied a different sua sponte construction. However, the claim construction the Examiner applied
`was the same claim construction advocated by the Petitioner before the district court, and was
`consistent with the Court's claim construction order, which was considered by the Examiner. The
`question before the Board under § 325(d) is whether the art/arguments made by the Petitioner are
`the same as the art/arguments previously considered by the Office, not whether the art/arguments
`made by the Petition might succeed under a construction that is different than the one Petitioner
`advocates. Petitioner cannot disavow the Examiner's claim construction in favor of the Board's sua
`sponte claim construction, for Petitioner is the one who proposed the Examiner's claim construction.
` Thus, the art and arguments made by the Petitioner are necessarily the same as the art and
`arguments previously considered by the Office. Accordingly, this case should have been denied
`under § 325(d).
`
`IPR2020-00266
`Ex. 3001 p. 2 of 3
`
`

`

`§ 314(a) (Questions #2-#4)
`
`When assessing Fintiv factor 6, the Board relied on its decision to institute earlier IPRs between the
`parties to support institution of this later IPR. Yet, the fact that earlier cases on other patents, with
`factors favoring institution, were instituted cannot be the basis to institute in later cases, with
`factors (such as the 9+ month lag between the District Court trial and the final written decision)
`strongly disfavoring institution. The decision's logic thus misapplied the Board's precedent. Also
`assessing Factor 6, the Board concluded that the petitions' "strong" merits weighed against
`exercising discretionary denial. This also misapplies the Board’s precedent. If a case has weak
`merits and does not meet the institution threshold, § 314(a) necessarily does not apply. Therefore,
`if § 314(a) is being considered at all, Factor 6 would, under the assigned panel’s reasoning, always
`favor the petitioner and so would not be an equitable factor. Finally, the Institution Decision
`incorrectly assessed the issue of "overlap" in issues between this case and the co-pending district
`court case between the parties in Fintiv Factor 4. Here, the District Court and the Board will decide
`the same question: patentability, and Petitioner’s narrow stipulation not to rely on exactly the same
`grounds in the two forums only promotes the potential for inconsistency and inefficiency, as it only
`promotes the possibility that the two forums could reach different conclusions on the different
`grounds.
`
`For the reasons above and as described in more detail in the rehearing petition, Patent Owner
`respectfully requests that a Precedential Opinion Panel be convened to rehear and assess the
`question described in this email. Patent Owner is available to provide additional briefing on this
`question before the Precedential Opinion Panel should it desire additional briefing.
`
`Counsel of record for Petitioner are copied on this email.
`
`Respectfully,
`
`/Kenneth J. Weatherwax/
`Counsel of record for Patent Owner SEVEN Networks, LLC
`
`Kenneth Weatherwax | Lowenstein & Weatherwax LLP
`1880 Century Park East, Suite 815
`Los Angeles, California 90067
`Office: 310.307.4503
`
`IPR2020-00266
`Ex. 3001 p. 3 of 3
`
`