Académique Documents
Professionnel Documents
Culture Documents
_________________________
HULU, LLC,
Petitioner,
v.
Case IPR2018-01039
Patent 5,608,062
_________________________
III. ARGUMENT....................................................................................................... 2
ii
Brief of Amicus Curiae Unified Patents Inc.
IPR2018-01039
TABLE OF AUTHORITIES
Page(s)
Statutes
35 U.S.C. § 314(d)..................................................................................................... 5
Regulations
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Brief of Amicus Curiae Unified Patents Inc.
IPR2018-01039
TABLE OF AUTHORITIES (Cont’d)
Page(s)
157 Cong. Rec. S1375 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl) ......... 3, 4-5
Cases
Anacor Pharm., Inc. v. Iancu, 889 F.3d 1372, 1380 (Fed. Cir. 2018) .................... 14
Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2141 (2016) ............................. 5
Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379-
80 (Fed. Cir. 2015) ........................................................................................ 8, 11
GoPro, Inc. v. Contour IP Holding LLC, 908 F.3d 690, 692, 693 (Fed.
Cir. 2018) ....................................................................................................... 3, 10
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Brief of Amicus Curiae Unified Patents Inc.
IPR2018-01039
TABLE OF AUTHORITIES (Cont’d)
Page(s)
Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018) .............................. 6
Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1375
(Fed. Cir. 2018) .................................................................................................... 6
TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016) ............. 5-6, 13
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Brief of Amicus Curiae Unified Patents Inc.
IPR2018-01039
Page(s)
Other Materials
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Brief of Amicus Curiae Unified Patents Inc.
IPR2018-01039
(“Order”), Unified Patents Inc. (“Unified”) respectfully submits this amicus curiae
assertion of invalid patents. Unified also seeks to encourage the speedy adoption of
technology-specific deterrence.
and funds its participation in inter partes review (IPR) proceedings. To date, Unified
has filed over 155 IPR petitions. Unified has an interest in the proper functioning of
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Brief of Amicus Curiae Unified Patents Inc.
IPR2018-01039
III. ARGUMENT
At the institution stage, as with any other factual issue, an IPR petitioner
should have to present some evidence that establishes a reasonable likelihood that at
least one of the challenged claims is unpatentable, including evidence showing that
meeting its burden of production prior to institution. Any factual dispute or doubt
petition” shows “there is a reasonable likelihood that the petitioner would prevail
with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a);
see also 37 C.F.R. § 42.108(c). This “reasonable likelihood” standard applies to all
likelihood” standard has been generally interpreted to mean there is a “50/50 chance”
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Brief of Amicus Curiae Unified Patents Inc.
IPR2018-01039
that the petitioner will prevail in its challenge.1 The legislative history of the
America Invents Act (“AIA”) indicates that the statutory “reasonable likelihood”
standard was intended to “require[] the petitioner to present a prima facie case,” akin
injunction.” 157 Cong. Rec. S1375 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl).
a “printed publication.” See In re Hall, 781 F.2d 897, 898-99 (Fed. Cir. 1986). As
persons interested and ordinarily skilled in the subject matter or art exercising
reasonable diligence, can locate it.” GoPro, Inc. v. Contour IP Holding LLC, 908
F.3d 690, 693 (Fed. Cir. 2018) (citations and internal quotation marks omitted).
1
Message from Chief Judge James Donald Smith, Board of Patent Appeals and
regulations/america-invents-act-aia/message-chief-judge-james-donald-smith-
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Brief of Amicus Curiae Unified Patents Inc.
IPR2018-01039
Prior to institution, a petitioner is required by 35 U.S.C. § 314(a) to carry its
reference was publicly accessible prior to the challenged patent. See, e.g., Temporal
Power, Ltd. v. Beacon Power, LLC, IPR2015-00146, Paper 12 at 4 (PTAB June 10,
2015) (noting that Ҥ 314(a) imposes a burden on [the petitioner] to establish in its
within the meaning of § 102(b)”); Instradent USA, Inc. v. Nobel Biocare Servs. AG,
IPR2015-01786, Paper 14 at 14 (PTAB Feb. 19, 2016) (noting that “the ‘reasonable
with the plain meaning of § 314(a) and the AIA’s legislative history, a sufficient
threshold showing can be made by providing evidence of a prima facie case that a
prior art reference was publicly accessible. See 157 Cong. Rec. S1375 (daily ed.
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Brief of Amicus Curiae Unified Patents Inc.
IPR2018-01039
Mar. 8, 2011). Any requirement beyond this would heighten the standard for
institution, contradicting the statute and the Office’s own regulations. See 35 U.S.C.
appealable under 35 U.S.C. § 314(d), the Supreme Court has warned that the statute
does not “enable the agency to act outside its statutory limits.” Cuozzo Speed Techs.,
The Federal Circuit has clarified that the reasonable likelihood standard for
institution (see 35 U.S.C. § 314(a)) is lower than the standard required to prove
2
This reasoning applies equally to post-grant reviews (“PGRs”) and covered
business method reviews (“CBMs”), except that the threshold showing required for
should not exceed the “more likely than not” standard applicable at the institution
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IPR2018-01039
trial.” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016); see also
Apr. 2, 2018) (“We note our determination regarding the sufficiency of Petitioner’s
evidence is for purposes of this [Institution] Decision only and does not signify that
under the preponderance standard applicable at the Final Written Decision stage with
Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1375 (Fed. Cir.
2018) (citing Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018)).
However, a petitioner needs to meet this burden of persuasion during inter partes
review, not at the institution stage. See 35 U.S.C. § 316(e) (“In an inter partes review
instituted under this chapter, the petitioner shall have the burden of proving a
added). After institution of trial, a petitioner may have to present additional evidence
with any disputed factual issue. But at the institution stage, a petitioner should not
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IPR2018-01039
be required to produce more than a threshold showing that an asserted reference
U.S.C. § 314(a). It has led to perverse results—where the petitions relying on widely
on an overly exacting pre-institution standard. See, e.g., Hulu, LLC v. Sound View
that an asserted textbook reference was not shown to be a printed publication despite
record evidence indicating the textbook’s copyright date and the textbook publisher
as the copyright owner); TRW Automotive US LLC v. Magna Elecs. Inc., IPR2015-
00960, Paper 9 at 17-19 (PTAB Oct. 5, 2015) (finding that an IEEE publication
publication).3 Congress did not intend, and the Board should not require, definitive
3
Contrast TRW Automotive with Ericsson, Inc. v. Intellectual Ventures I LLC,
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IPR2018-01039
C. Petitioner Only Needs to Provide Evidence Sufficient to Make a
Threshold Showing for Printed Publication Qualification at the
Institution Stage
To meet the “reasonable likelihood” threshold for institution, a petitioner has
the initial burden of production of some evidence in its petition that an asserted
Graphics, Inc., 800 F.3d 1375, 1379 (Fed. Cir. 2015) (holding that a petitioner has
the initial burden of going forward with evidence that an asserted reference is prior
art against the challenged patent). Anything higher risks wildly divergent panel-
specific results. In some decisions, for example, a copyright notice by itself has been
“reasonable likelihood” threshold for institution. See, e.g., Arista Networks, Inc. v.
Cisco Sys. Inc., IPR2016-00244, Paper 10 at 19 (PTAB May 25, 2016) (“We note .
accepted as prima facie evidence of publication. . . . Thus, on this record and for
take Official Notice that members in the scientific and technical communities who
both publish and engage in research rely on the information published on the
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purposes of this decision, we are persuaded that the presence of a copyright notice,
of the critical date to meet the ‘reasonable likelihood’ threshold for institution.”);
FLIR Sys., Inc. v. Leak Surveys, Inc., IPR2014-00411, Paper 9 at 19 (PTAB Sept. 5,
2014) (“On the record before us, we are persuaded that the Copyright notice prima
facie establishes a prior art date of 2002.”). In others, that same notice was deemed
insufficient. See, e.g., TRW Automotive US LLC v. Magna Elecs. Inc., IPR2015-
00960, Paper 9 at 17-19 (PTAB Oct. 5, 2015) (finding that a copyright notice of “©
2004 IEEE” was insufficient to show that an asserted reference qualified as a printed
publication because “[t]he purpose of a copyright notice is, simply, to put a reader
on notice that a claim has been made that the work is copyrighted”).
the reference and how it became publicly accessible. For example, when an asserted
that the asserted reference is a standard textbook has been held to be sufficient
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Paper 14 at 26-27 (PTAB Dec. 4, 2018) (determining at institution that a reference
is a prior art printed publication based on the copyright notice, other information
catalogs at trade shows prior to the critical date was held to provide a threshold
showing that the sales catalog is a prior art printed publication. See GoPro, Inc. v.
Contour IP Holding LLC, 908 F.3d 690, 692 (Fed. Cir. 2018) (discussing that
4
See also CIM Maint. Inc. v. P&RO Sols. Grp., Inc., IPR2017-00516, Paper 8 at 19
(PTAB June 22, 2017) (determining that a copyright date in conjunction with an
accessibility as of the reference’s copyright date); Shenzhen Zhiyi Tech. Co. Ltd. v.
that an article published in the New York Times was sufficient to make a threshold
Paper 6 at 9-10 (PTAB Sept. 5, 2018) (determining that the copyright date of
publication obtained by the declarant before the filing date of the challenged patent
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IPR2018-01039
Much of this is unnecessary, though, and has resulted in much legal waste on
all sides due to procedural creep, where individual panels have denied institution
where others might have instituted, or patent owners have taken additional
depositions and had to sift through excessive evidence on an issue not in dispute.
If a petitioner satisfies its initial burden of production, the burden then shifts
to the patent owner to produce evidence or otherwise show that the asserted reference
is not a printed publication. See generally Dynamic Drinkware, 800 F.3d at 1379-
shifting burden, the allocation of which depends on where in the process of trial the
issue arises.”) (citation and internal quotation marks omitted). If a patent owner
of production shifts back to the petitioner. See generally Dynamic Drinkware, 800
F.3d at 1379-80.
disputed issues of fact are appropriate for instituted proceedings, not institution
5
Attorney argument in a preliminary response should not be given greater weight
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decisions. Instituting trials to address those disputes where the merits of the grounds
are otherwise met would “secure the just, speedy, and inexpensive resolution.” 37
the validity of patents in district court. 77 Fed. Reg. at 48,680 (Aug. 14, 2012).
Denying institution over a material factual dispute frustrates the purpose and intent
of AIA trials, increases costs for parties who cannot appeal them, and then must
return to litigate the validity of patents in district court, if they can still afford to.
As long as a basic burden of production has been met by either side on the
standard should apply to all issues at the institution stage, even in the presence of
factual disputes by the parties on the issue. Applying any other standard risks
The Board should permit the parties to develop the evidentiary record in an
instituted proceeding, rather than deny institution without the benefit of a full record
that could be developed during trial. See Genzyme Therapeutic Prods. Ltd. P’ship
v. Biomarin Pharm. Inc., 825 F.3d 1360, 1367 (Fed. Cir. 2016) (explaining that
“[t]he purpose of the trial in an inter partes review proceeding is to give the parties
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IPR2018-01039
D. The Board Should Permit New Evidence on Printed Publication
Qualification After Petitioner Meets the Institution Threshold
If a petitioner meets its threshold burden at the institution stage of showing a
address the sufficiency of the evidence during an instituted trial, including permitting
reference as a printed publication. Indeed, many panels have adopted that approach.
See Genzyme, 825 F.3d at 1366-67. The Board can then determine on a full
ensuing trial. See TriVascular, 812 F.3d at 1068 (“the Board is not bound by any
findings made in its Institution Decision. . . . . The Board is free to change its view
of the merits after further development of the record, and should do so if convinced
its initial inclinations were wrong.”). For example, in Nautilus, Inc. v. Icon Health
& Fitness Inc., the Board held that the petitioner did not demonstrate that an asserted
institution decision that the petitioner had made a sufficient threshold showing of
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IPR2018-01039
public accessibility of that reference. IPR2017-01363, Paper 33 at 10-20 (PTAB
Nov. 28, 2018). That is the just result based on a full evidentiary record.
reference, the parties should be able to present evidence and arguments during the
proceeding. The Federal Circuit has explained that “the introduction of new
evidence in the course of the trial is to be expected in inter partes review and, as
long as the opposing party is given notice of the evidence and an opportunity to
respond to it, the introduction of such evidence is perfectly permissible under the
see also Anacor Pharm., Inc. v. Iancu, 889 F.3d 1372, 1380 (Fed. Cir. 2018) (noting
there is “no blanket prohibition against the introduction of new evidence during an
inter partes review proceeding”). A patent owner can present evidence and
among other things, in a reply. See Trial Practice Guide Update at 14 (Aug. 2018);
37 C.F.R. § 42.23(b). And a patent owner may file a sur-reply to address any
(Aug. 2018). After institution, the parties should be given the opportunity to develop
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the record, and each party has sufficient notice of any new evidence and an
opportunity to respond to it during the trial. See Genzyme, 825 F.3d at 1366.
The Office’s trial rules also provide opportunities for a petitioner to introduce
an asserted reference. See, e.g., Mylan Pharm. Inc. v. Bristol-Myers Squibb Co.,
IV. CONCLUSION
Under the plain language of the statute, a petitioner at institution need only
present some evidence sufficient to show that there is a reasonable likelihood that
Respectfully submitted,
Dated: May 1, 2019 /Jonathan R. Bowser/
Jonathan R. Bowser (Reg. No. 54,574)
Jonathan Stroud (Reg. No. 72,518)
Jung S. Hahm (Reg. No. 48,333)
Robert Jain
UNIFIED PATENTS INC.
Email: jbowser@unifiedpatents.com
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Brief of Amicus Curiae Unified Patents Inc.
IPR2018-01039
CERTIFICATE OF SERVICE
May 1, 2019, a complete and entire copy of the foregoing Brief of Amicus Curiae
Unified Patents Inc. in Support of Neither Party was provided via email to the
Petitioner:
Patent Owner:
SVI_IPRs@lowensteinweatherwax.com
Kenneth J. Weatherwax (weatherwax@lowensteinweatherwax.com)
Edward Hsieh (hsieh@lowensteinweatherwax.com)
Parham Hendifar (hendifar@lowensteinweatherwax.com)
Nathan Lowenstein (lowenstein@lowensteinweatherwax.com)