VPLM REPLY ..REPEAT OF APPLE POSTING
nomorerollbacks Member Level Friday, 01/12/18 08:57:23 PM
Re: pickered post# 47198
Post #
47218
of 47294 Go
Opinion:Good.response..Succinct,.to.the.point. . . .
. .
and.addresses.and.destroys.all.the.arguments Apple gave for the rehearing request.
The PTAB will look mighty foolish if they go ahead with granting any rehearing.
Prediction - Apple's request gets DENIED.
MOST PERTINENT PASSAGES
Had any of the Sawyer Letters addressed the merits of these proceedings, refuted prior art references, or discussed the patent’s claims, that would have been improper. But that is not the case here.
----
And in analogous settings where recusals were sought following ex parte communications with judges or their staff, courts have declined to grant relief especially where the communications did not affect the merits of the decision. See, e.g., In re Adbox, Inc., 234 Fed. Appx. 420, 421 (9th Cir. 2007) (denying motion for recusal despite “several ex parte contacts,” as there was “no evidence that those communications affected the bankruptcy judge’s rulings”)
---
Petitioner doesn’t identify what, exactly, gives the “appearance” of bias.
Petitioner assumes that the mere fact of the Sawyer Letters creates an appearance of bias—an unsupported and patronizing view that denigrates the competence and independence of the Board. Courts have rejected this very view, refusing to infer bias solely due to the fact of ex parte communication.
----
Petitioner’s overwhelming reliance on accusations of bias and prejudice in this Motion belie its claims that Petitioner’s loss on the merits is due to the Sawyer Letters. But the content of the Sawyer Letters was irrelevant to the substantive issues before the Panel, and even if Petitioner had made a timely protest (which it deliberately chose not to do), that would not explain how Petitioner’s technical submissions would have been any different. The same flawed arguments and evidence could not have led to a different decision on the merits. Thus, Petitioner cannot substantiate any of its allegations of unfairness or of an improper result.
----
Petitioner’s Motion for Sanctions is separately barred because Petitioner was aware of the alleged ex parte communications, chose to do nothing, and waited until after final judgment. It is axiomatic that a request for sanctions must be made promptly after the alleged misconduct in order to be actionable.
----
That the late procedural posture of this case leaves only certain remedies available to Petitioner, such as judgment in its favor or a re-trial (see Paper 55 at 15), is a circumstance caused by Petitioner’s own failures. To grant Petitioner a remedy now would reward Petitioner for waiting and doing nothing.
pickered Friday, 01/12/18 07:03:53 PM
Re: pickered post# 47196
Post #
47198
of 47294 Go
Margie is working OT tonight...
The '005 patent owner response is available @ PTAB.
Copied inline below also.
Filed: January 12, 2018
Filed on behalf of:
Patent Owner Voip-Pal.com Inc.
By: Kevin N. Malek
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
APPLE INC.
Petitioner,
v.
VOIP-PAL.COM, INC.,
Patent Owner
Case No. IPR2016-01198
U.S. Patent 9,179,005
PATENT OWNER’S OPPOSITION TO APPLE’S MOTION FOR
SANCTIONS PURSUANT TO BOARD ORDER OF DECEMBER 20, 2017
-iTABLE
OF CONTENTS
Page No.
I. INTRODUCTION ...........................................................................................1
II. ARGUMENT...................................................................................................2
A. The Sawyer Letters Are Authorized By The Rules of Practice and Do
Not Qualify As Ex Parte Communications...........................................2
B. Petitioner’s Argument That It Was Prejudiced Is Wrong Because
Petitioner Lost Squarely On The Merits. ..............................................9
C. Petitioner Motion for Sanctions and the Relief Requested Therein Is
Untimely and Barred. ..........................................................................12
D. Petitioner’s Due Process Rights Were Not Violated. .........................14
III. CONCLUSION..............................................................................................16
TABLE OF AUTHORITIES
Page No(s).
-iiCases
AIG Baker Shopping Ctr. Props., LLC v. Deptford Twp. Planning Bd., No. 04–
CV–5849(FLW), 2006 WL 83107, at *12 (D.N.J. Jan. 10, 2006)........................8
Aiken Cnty. v. BSP Div. of Envirotech Corp., 866 F.2d 661, 679 (4th Cir.1989).....8
Arris Grp., Inc., Petitioner, IPR2015-00635, 2015 WL 12711783 .........................14
In re Adbox, Inc., 234 Fed. Appx. 420, 421 (9th Cir. 2007) .....................................8
Kaufman v. Am. Family Mut. Ins. Co., No. 05-CV-02311-WDM-MEH, 2009 WL
924442, at *1 (D. Colo. Apr. 3, 2009)...................................................................9
Knop v. Johnson, 977 F.2d 996, 1011 (6th Cir.1992) ...............................................8
RPX Corp. v. Applications in Internet Time, LLC, IPR2015-01750 .......................10
Scherer v. Washburn Univ., No. CIV.A. 05-2288-CM, 2006 WL 2570274, at *2,
FN 1 (D. Kan. Mar. 30, 2006)................................................................................8
Stone v. FDIC, 179 F.3d 1368, 1377 (Fed. Cir. 1999) ............................................15
Wells Fargo Bank Nw., N.A. v. Biotab Nutraceuticals, Inc., No. 1300435, 2013
WL 12202754, at *2 (C.D. Cal. Mar. 11, 2013)....................................................8
Statutes and Rules
37 C.F.R. § 42.5(d) ....................................................................................................2
Rules of Practice for Trials Before the Patent Trial and Appeal Board, 77 FR
48612-01 ................................................................................................................2
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Patent Owner Voip-Pal.com, Inc. (“Voip-Pal”) hereby opposes Petitioner
Apple’s Motion for Sanctions (Paper No. 55) and respectfully submits that denial of
the Motion for Sanctions is mandated.
I. INTRODUCTION
Petitioner’s Motion for Sanctions is an unwarranted attack on Patent Owner
and the Board and is driven by nothing more than speculation and unsupported
accusations of bias and misconduct. Petitioner requests that the Board ignore its
sound and final written decision and instead render judgment in Petitioner’s favor or
order re-trial on the merits. Petitioner’s request is absurd for numerous reasons:
First, the Code of Federal Regulations and the Rules of Practice make clear
that the Sawyer Letters are not impermissible ex parte communications;
Second, none of the Sawyer Letters addressed the merits of the pending
proceedings and there has been no prejudice here;
Third, Petitioner’s request for relief is untimely and barred as it comes after
an adverse judgment and also in light of the fact that Petitioner was in possession of
the first and the last of the Sawyer Letters and still chose to do nothing; and
Finally, even assuming the Sawyer Letters were improper ex parte
communications, the requested sanctions are completely unprecedented and
disproportionate to the alleged misconduct and actual harm.
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II. ARGUMENT
A. The Sawyer Letters Are Authorized By The Rules of Practice and Do Not
Qualify As Ex Parte Communications.
The Sawyer Letters are not impermissible ex parte communications; they are
exempted and authorized by the C.F.R. and Rules of Practice. The heart of
Petitioner’s Motion rests upon 37 C.F.R. § 42.5(d), generally prohibiting
communications with the Board “unless both parties have an opportunity to be
involved.” See Motion at 9. But § 42.5(d) does not prohibit all ex parte
communications. Indeed, in explaining § 42.5(d), the Rules of Practice provide:
The prohibition on ex parte communications does not extend to: […]
(4) reference to a pending case in support of a general proposition
(for instance, citing a published opinion from a pending case or
referring to a pending case to illustrate a systemic concern).
See, e.g., Rules of Practice for Trials Before the Patent Trial and Appeal Board, 77
FR 48612-01 (emphasis added). Therefore, communications that make “reference”
to a pending case in order to “illustrate a systemic concern” are permissible. Id.
1. The Sawyer Letters illustrate systemic issues in the IPR
process as allowed under the Rules of Practice.
All of the Sawyer Letters constitute the authorized illustration of systemic
concerns about the U.S.P.T.O. and PTAB process that are permitted under the Rules
of Practice and the C.F.R.
1 Reference to this proceeding does not make the Sawyer
1 Much has been made about the involvement of Patent Owner in the Sawyer Letters.
Patent Owner has been as concerned as Dr. Sawyer about systemic issues with
Office practice. Patent Owner did have discussions with Dr. Sawyer about these
systemic issues and did participate in the preparation of the Sawyer Letters, as was
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Letters impermissible ex parte communications. See supra. Petitioner tries to create
issues where none exist by misrepresenting the Sawyer Letters, some of which were
already in Petitioner’s possession. See Section II.C. A careful review reveals that the
letters are not impermissible ex parte communications under the Rules of Practice.
May 1, 2017 Letter (the “May Letter”): Foremost, the May 1, 2017 Letter
was admittedly received by Petitioner. See Section II.C. And Petitioner did nothing
about it. That fact alone removes the May Letter from the scope of § 42.5; it is not
an impermissible ex parte communication. Separately, the fact that the May Letter,
which was sent to the Honorable David P. Ruschke and copied to the U.S. President
and various members of Congress and officials, was transmitted in order to criticize
general USPTO policies that prevent participants in the Inter Partes Review process
from accessing information necessary to determine whether there is bias or
impartiality in any particular proceeding, also disqualifies the May Letter as an ex
parte communication under § 42.5. For example, the May Letter contrasts the
requirement that federal judges disclose financial conflicts of interests with evidence
showing that similar disclosures are not required in the PTAB setting due to
systemic policies. As the May Letter states:
The financial disclosures are withheld in full pursuant to Exemption
(b)(6) of the FOIA, ... [as] a clearly unwarranted invasion of personal
privacy [making it] impossible to get financial information about the
stated in the October Letter, publicly posted on Patent Owner’s website. But, as set
forth here, Patent Owner did so within the requirements of § 42.5(d). See infra.
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three members of the panel in the current IRB [and] information
concerning any potential bias in the administration of this judicial
system. See Ex. 3003 (May Letter) at page 2.
That the May Letter refers to a pending case to illustrate a point is actually
authorized by the Rules of Practice. Petitioner falsely asserts, without evidence, that
the May Letter “demanded” the Board replace the original Panel (Paper 55 at 1); in
fact, no “demand” was ever made for the Board to change the panel. Petitioner’s
suggestion that the Board granted relief based on the May Letter is pure conjecture.
Id. at 1. Thus, the May Letter is not an impermissible ex parte communication.
July 27, 2017 Letter (the “July 27 Letter”): The July 27 Letter is not
impermissible under § 42.5; it, too, illustrates systemic concerns with the PTAB
process and policy of allowing special purpose entities to file petitions on behalf of
other undisclosed parties and failing “to provide constitutional protections to patent
holders.” See Ex. 3006 (July 27 Letter) at 1. The July 27 Letter does not reference
the instant proceedings specifically, only the fact that Patent Owner “has had eight
IPR petitions filed against it,” in order to illustrate these systemic concerns.
August 31, 2017 Letter (the “August Letter”): The August Letter is also
not an ex parte communication under § 42.5. The August Letter raises systemic
concerns about potential unfairness of the IPR system due to “gang tackling”, PTAB
panel stacking/manipulation, or conflicts of interest due to USPTO officers having
financial stakes in Silicon Valley. See Ex. 3007 (August Letter) at 1-4. While this
letter was copied to the Panel, all of the issues were systemic in nature and none of
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the issues raised were relevant to the substantive merits of the case before the new
Panel. Id.
October 23, 2017 Letter (“October Letter”): The October Letter is not an
impermissible ex parte communication under § 42.5, at least because it was received
by Petitioner, which failed to act. See Section II.C. Separately, the October Letter
reiterated the same criticisms about PTAB policies and systemic issues regarding
fundamental fairness. See Ex. 3008 (October Letter) at 3-6. Petitioner alleges that
the October Letter demands unwarranted relief. But the Rules of Practice authorize
complaints about systemic issues, all of which come with the inherent right to
request that those systemic concerns be remedied. Petitioner’s admitted awareness
of the October Letter and the timing of the Motion for Sanctions is suspicious at
best.
June 21 and July 11 Letters (the “Follow Up Letters”): The Follow Up
Letters, too, are permissible under § 42.5. Petitioner’s portrayal of the June 21 Letter
as seeking “a judgment in the patent owner’s favor or a dismissal of the action” is
misleading. See Paper 55 at 4. The June 21 and July 11 Letters follow up the May
Letter to seek transparency regarding the changes to the original Panel. That
transparency never came because the letters were either not received or ignored.
Petitioner’s argument that the June 21 and July 11 Letters sought “sanctions”
in the form of a judgment in the Patent Owner’s favor is misleading. See Paper 55
(Motion) at 4, 5. The June 21 Letter merely suggests that the process of substituting
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a panel, if done to remedy a conflict, would not address any predicate decision of
the substituted panel. See June 21 Letter at 2. These comments are hardly earth
shattering and had no effect on the proceeding. Dr. Sawyer’s suggestion to “allow
the new panel to reconsider the institution decision” was never acted upon. Id.
Even if it had been acted upon, reconsideration of institution would not necessarily
have led to judgment for the Patent Owner. Similarly, the July 11 Letter criticizes
the PTAB’s procedure of substituting a panel without revisiting the substituted
panel’s decisions. The July 11 Letter concludes with an explanation about sanctions
that, ironically, are not even applicable to judges. See Ex. 3005 (July 11 Letter) at 3.
2. Patent Owner’s conduct with respect to the Sawyer Letters
was entirely proper under the Rules of Practice.
Both Voip-Pal and its shareholder shared the foregoing systemic concerns. As
noted above, the Rules of Practice authorize ex parte communications regarding
systemic issues and reference to current proceedings to provide context and
illustration. Had any of the Sawyer Letters addressed the merits of these
proceedings, refuted prior art references, or discussed the patent’s claims, that would
have been improper. But that is not the case here.
All of the Sawyer Letters illustrated systemic concerns about potential
unfairness and bias of the Inter Partes Review system, citing various public sources
of commentary by patent practitioners, industry experts, and even Federal Circuit
judges echoing those systemic concerns. See Exhibits 2058-2096. The Sawyer
Letters scrupulously avoid discussion of all “substantive issues” (prior art, non-
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obviousness or antedating). No attempt was made to communicate clandestinely
with the Panel; the letters provided an open list of “cc’d” recipients, including the
Board and federal court judges through which Petitioner received what it
characterizes as the most egregious ex parte communications. Nor did Patent Owner
hide these letters, but rather, posted them on its public website and issued a press
release.2
3. The relief requested by Petitioner would be unprecedented
under these circumstances.
Even if deemed impermissible ex parte communications, the Sawyer Letters
do not come close to being egregious conduct that is worthy of the unprecedented
sanctions requested by Petitioner – reversal of the Board’s sound decision or re-trial.
Where a party has engaged in ex parte communications with a judge, courts have
declined to impose sanctions, and instead, have opted to warn parties against further
communications, invoking the possibility of sanctions only if the warnings were
violated. See, e.g., Scherer v. Washburn Univ., No. CIV.A. 05-2288-CM, 2006 WL
2570274, at *2, FN 1 (D. Kan. Mar. 30, 2006) (declining to impose sanctions after
“numerous [ex parte] contacts, via email and telephone, with the court regarding this
case and various other topics”); see also Wells Fargo Bank Nw., N.A. v. Biotab
2 The press release states that the letters were independently written by Dr. Sawyer.
As made clear in the Sawyer Letters and this brief, the Patent Owner contributed to
Dr. Sawyer’s letters about their mutual concerns, shared by the commentators cited
in the letters, regarding systemic issues in the Office as authorized by the Rules.
Patent Owner’s participation ensured that the technical merits were not discussed.
See FN 1. A revised version of the press release was issued on January 11, 2018.
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Nutraceuticals, Inc., No. 1300435, 2013 WL 12202754, at *2 (C.D. Cal. Mar. 11,
2013) (declining sanctions, instead ordering that “ex parte communications” cease).
And in analogous settings where recusals were sought following ex parte
communications with judges or their staff, courts have declined to grant relief
especially where the communications did not affect the merits of the decision. See,
e.g., In re Adbox, Inc., 234 Fed. Appx. 420, 421 (9th Cir. 2007) (denying motion for
recusal despite “several ex parte contacts,” as there was “no evidence that those
communications affected the bankruptcy judge’s rulings”).
3
Here, none of the Sawyer Letters affected the rulings. Given that the Sawyer
Letters are entirely non-substantive, Petitioner has no choice but to conjure up a
nebulous argument about alleged “reciprocal bias”, misleadingly suggesting that the
“Substitute Panel” was “implicitly pushed” by Dr. Sawyer’s “additional ex parte
letters” (i.e., “the remainder of the letters”) onto some kind of biased, erroneous and
prejudiced “path,” as “every additional letter from Voip-Pal fostered and nurtured
that bias, compounding the error, the prejudice, and the due process violation.” See
Paper 55 at 13-14 (emphasis added). Such a proposed chain of prejudicial influence
3 See also Knop v. Johnson, 977 F.2d 996, 1011 (6th Cir.1992) (no relief granted
despite ex parte contacts because “lapses appear[ed] relatively harmless,” as the
court did not rely on the contacts in writing its opinion); Aiken Cnty. v. BSP Div. of
Envirotech Corp., 866 F.2d 661, 679 (4th Cir.1989) (no “reasonabl[e] ... belief that
the judge was not impartial,” where ex parte contacts didn’t touch “substantive
issues”); AIG Baker Shopping Ctr. Props., LLC v. Deptford Twp. Planning Bd., No.
04–CV–5849(FLW), 2006 WL 83107, at *12 (D.N.J. Jan. 10, 2006) (explains that
proscription against ex parte communications concerns those communications that
affect the merits of a proceeding; no recusal is necessary if they do not).
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is absurd because there is no evidence that members of the “Substitute Panel”
received or read, let alone acted upon, the Sawyer Letters.
Petitioner doesn’t identify what, exactly, gives the “appearance” of bias.
Petitioner assumes that the mere fact of the Sawyer Letters creates an appearance of
bias—an unsupported and patronizing view that denigrates the competence and
independence of the Board. Courts have rejected this very view, refusing to infer
bias solely due to the fact of ex parte communication. See, e.g., Kaufman v. Am.
Family Mut. Ins. Co., No. 05-CV-02311-WDM-MEH, 2009 WL 924442, at *1 (D.
Colo. Apr. 3, 2009).
4
In Kaufman, the plaintiff said that an ex parte communication
created an “appearance of partiality” and “somehow cast[] doubt on the reliability of
orders” issued. Id. (finding the argument to be “unavailing” and indicating that
“there is nothing to indicate partiality or even the appearance of partiality”). Thus,
there is no basis for the draconian sanctions that Petitioner requests.
B. Petitioner’s Argument That It Was Prejudiced Is Wrong Because
Petitioner Lost Squarely On The Merits.
Board Decisions hold that a showing of harm is required in a motion for
sanctions. See, e.g., RPX Corp. v. Applications in Internet Time, LLC, IPR2015-
4 Petitioner’s theory that the Panel “responded” to the Sawyer Letters (id. at 14) is
contradicted by the fact that the Board did not answer Dr. Sawyer’s letters, nor did it
revisit the institution decision. Rather, the Board followed standard operating
procedures to assess both Petitioner’s and Patent Owner’s positions on the merits.
Petitioner assumes that substitution of the Original Panel is proof of a response, but
Petitioner admits it was aware of this change and also aware of the May Letter but
did nothing, having “no reason to believe” that there was an effect. See Section II.C.
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01750, Paper No. 58, at 2 (noting that a motion for sanctions must address the
following factors: (1) whether a party has engaged in conduct that warrants
sanctions; (2) whether the moving party has suffered harm from that conduct; and
(3) whether the sanctions requested are proportionate to the harm suffered by the
moving party). But these factors do not support Petitioner’s request for sanctions.
In arguing that it was harmed by the Sawyer Letters, Petitioner
mischaracterizes the record in order to discredit the Final Written Decision
(“FWD”) as tainted by bias. Petitioner states that “the replacement panel reversed
the [Original Panel’s] decision,” and that Patent Owner “repeated the same rejected
arguments from the POPR and rehearing request.” Paper 55 at 1, 3. Both allegations
are false and misleading. In fact, Patent Owner presented new arguments and new
evidence (e.g., testimony from Dr. Mangione-Smith and Petitioner’s expert, Dr.
Houh) that the Original Panel didn’t have. The new Panel analyzed “the entirety of
the record,” e.g., “the record... developed during trial.” Paper 53 (FWD) at 20, 27.
Petitioner also mischaracterizes the Board’s factual findings, stating that the
“FWD analyzed only the ordering of steps and motivation to combine arguments—
both of which the Original Panel had previously rejected…” Paper 53 (FWD) at 7.
Contrary to the Petitioner, the Board analyzed “the entirety of the record” (id. at 27)
to find, inter alia, that: (1) the Petitioner’s reasons to combine Chu ‘684 were
“conclusory and insufficient” and lacked “underlying evidentiary support” (id. at
18-21); (2) Chu ‘684 classified calls based simply on the “dialed digits” and did not
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require “knowledge of the attributes of a caller” (id. at 22); (3) Chu ‘684’s teaching
does not apply to reformatted numbers (id. at 22-23); (4) the record didn’t support
Petitioner’s claim that a skilled person would program Chu ‘684 to “analyze the
dialed digits and reformat as necessary” for classification (id. at 23); and (5)
Petitioner didn’t account for the order of steps required by the claims (id. at 23-24).
Moreover, these factual findings were based on the entirety of the record
developed during trial, including new evidence from both Dr. Mangione-Smith and
Dr. Houh. Paper 53 (FWD) at 20. For example, the Panel expressly relied on Dr.
Mangione-Smith’s evidence to identify deficiencies in Dr. Houh’s testimony (id. at
19, citing Dr. Mangione-Smith’s testimony in Ex. 2016 ¶¶ 65–67) and also to
confirm it’s view that Chu ‘684 relied on the “dialed digits”, and not on any
attributes of a caller, to process a call (id. at 22, citing Ex. 2016 ¶ 71). For example,
the Board found:
Indeed, we credit Dr. Mangione-Smith’s view that Dr. Houh does not
explain adequately the nature of the deficiency in Chu ’684 that is
intended to be addressed.” Id. at 19 (citing Dr. Mangione-Smith’s
testimony in Ex. 2016 ¶¶ 65–67).
Thus, Petitioner’s characterization of the FWD as merely a reversal of earlier
decisions by the Original Panel or as merely rehashing rejected arguments is
disingenuous and inaccurate. Petitioner dismisses the detailed analysis the Board
performed in weighing all of the new evidence, to blame the decision on “bias”.
While Petitioner complains that it did not have an opportunity to respond to the
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Sawyer Letters, it fails to provide any explanation for how the Sawyer Letters
impacted the factual findings in the FWD. They did not because they could not: the
Sawyer Letters did not even touch any of the “substantive issues” before the Panel.
Petitioner’s overwhelming reliance on accusations of bias and prejudice in
this Motion belie its claims that Petitioner’s loss on the merits is due to the Sawyer
Letters. But the content of the Sawyer Letters was irrelevant to the substantive
issues before the Panel, and even if Petitioner had made a timely protest (which it
deliberately chose not to do), that would not explain how Petitioner’s technical
submissions would have been any different. The same flawed arguments and
evidence could not have led to a different decision on the merits. Thus, Petitioner
cannot substantiate any of its allegations of unfairness or of an improper result.
C. Petitioner Motion for Sanctions and the Relief Requested Therein Is
Untimely and Barred.
Petitioner’s Motion for Sanctions is separately barred because Petitioner was
aware of the alleged ex parte communications, chose to do nothing, and waited until
after final judgment. It is axiomatic that a request for sanctions must be made
promptly after the alleged misconduct in order to be actionable. See, e.g., Square
Inc. v. REM Holdings 3, LLC, IPR2014-00312, Paper 59 (Petitioner’s request found
untimely because it waited more than four months after the misconduct and two
weeks after the final decision); see also IPR2015-00516, Paper 12 at 2 (finding
request “untimely because Patent Owner waited until this late stage..., after our
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Decision Denying Institution, to request relief”); and IPR2015-00165, Paper 19
(denying relief because “Patent Owner allowed nearly seven weeks to pass”).
Petitioner became aware of the May 1, 2017 Letter and the October 23, 2017
Letter on May 8, 2017 and November 1, 2017, respectively, yet chose to do
nothing.
5 Notwithstanding that fact and Petitioner’s awareness of the panel change
in June of 2017, Petitioner took no action to mitigate any alleged prejudice for seven
months and six weeks, respectively, waiting until after it lost on the merits by final
judgment. In a hearing with the present panel of judges, Petitioner’s counsel
admitted Petitioner’s awareness of the May 1 Letter and their own dilatory conduct:
The only reason we knew about that letter is a copy was sent to the
District Court in Nevada, where the clerk entered it into the record in
the litigation there. No actions were taken by Apple or the board with
respect to that letter. We didn’t take any action in response to that
letter because we had no reason to believe that it had any impact.
[See Ex. 1021(Hearing Transcript 12/19/2017) at
3:22-4:4 (emphasis added); see also Paper 55 at 10]
Yet, now, Petitioner asserts the contrary—that the May Letter did have an impact.
Separately, Petitioner’s Motion for Sanctions is statutorily barred under 37
C.F.R. 42.73(a), which provides, in relevant part, that “a judgment, except in the
case of a termination, disposes of all issues that were, or by motion reasonably could
have been, raised and decided.” Here, Petitioner received notice of the first and the
5 As set forth in the Declaration of Adam Knecht (Ex. 2057), the CM/ECF system in
co-pending federal court proceedings in the District of Nevada served Petitioner
with both the May and October Letters. And Petitioner’s counsel admitted that they
were received. (See Ex. 1021 (Hearing Transcript 12/19/2017) at 3-4)).
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last letters and “could have” raised its complaint as far back as May 2017 but chose
not to do anything until after judgment. Under § 42.73(a), Petitioner’s claim must be
denied. The fact that Petitioner did not receive the other Sawyer Letters is no excuse
because they are cumulative. See Section II.A.1.
The dilatory nature of Petitioner’s conduct belies the sincerity of Petitioner’s
allegation that any of the Sawyer Letters were prejudicial. See Section II.B and II.D.
If Petitioner truly believed the Sawyer Letters had impacted this proceeding, it could
have (and would have) done something. Now, under § 42.73(a), Petitioner is barred
from lodging any complaint at all. See also Arris Grp., Inc., Petitioner, IPR2015-
00635, 2015 WL 12711783, at *2 (May 1, 2015) (citing § 42.73 to explain that all
issues that could have been raised by motion are disposed of upon final judgment).
That the late procedural posture of this case leaves only certain remedies
available to Petitioner, such as judgment in its favor or a re-trial (see Paper 55 at
15), is a circumstance caused by Petitioner’s own failures. To grant Petitioner a
remedy now would reward Petitioner for waiting and doing nothing.
D. Petitioner’s Due Process Rights Were Not Violated.
Petitioner also claims that its “due process” rights were violated. Paper 55 at
10-12. Assuming arguendo that the Sawyer Letters constitute impermissible ex
parte communications, Petitioner’s claim of a due process violation fails. Petitioner
cites Stone v. FDIC, 179 F.3d 1368, 1377 (Fed. Cir. 1999), but the Stone decision is
inapposite and only proves that there was no due process violation. First, Stone deals
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with deprivation of a property right by a federal employee, which gave rise to a due
process claim. Id. at 1374, 1375. Here, there is no property right at stake on the part
of Petitioner. Even if Stone did apply here, the Federal Circuit has made clear that:
…not every ex parte communication is a procedural defect so
substantial and so likely to cause prejudice that it undermines the due
process guarantee and entitles the claimant to an entirely new
administrative proceeding. Only ex parte communications that
introduce new and material information to the deciding official will
violate the due process guarantee of notice.
Id. at 1376-77 (emphasis added) (“...the inquiry of the Board is whether the ex parte
communication is so substantial and so likely to cause prejudice...”)
As discussed above, Petitioner has pointed to no actual harm and no
prejudice. And for the reasons discussed in this brief, Stone’s requirement that the
Sawyer Letters introduce new and material information can’t be met. Stone at
1377 (“If the Board finds that an ex parte communication has not introduced new
and material information, then there is no due process violation.”). See Section
II.A.1 (explaining why the Sawyer Letters had no material information). Moreover,
as explained in Section II.C, Petitioner knew of some of the Sawyer Letters and did
nothing. Id. at 1377 (knowledge of and opportunity to respond to a communication
is relevant to whether the communication is new and material information).
Petitioner’s complaint about due process violations should be rejected.
IPR2016-01198
Apple Inc v. Voip-Pal
-16-
III. CONCLUSION
For the foregoing reasons, Patent Owner respectfully requests that the Board deny
Petitioner’s Motion for Sanctions.
Respectfully submitted,
MALEK MOSS PLLC
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