Ixi Mobile (R&D) Ltd. et al v. Samsung Electronics Co., Ltd. et al

Northern District of California, cand-4:2015-cv-03752

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9 Exhibit 4 9 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE In re: Ex parte reexam of Art Unit: 3992 Patent No. 7,295,532 Examiner: Scott L. Weaver Serial No.: 90/014,119 Conf. No.: 4776 Filed: April 3, 2018 Title: SYSTEM, DEVICE AND COMPUTER READABLE MEDIUM FOR PROVIDING NETWORKING SERVICES ON A MOBILE DEVICE In re: Ex parte reexam of Art Unit: 3992 Patent No. 7,039,033 Examiner: Charles R. Craver Serial No.: 90/013,925 Conf. No.: 1027 Filed: March 24, 2017 Cert Issued: February 1, 2018 Title: SYSTEM, DEVICE AND COMPUTERREADABLE MEDIUM FOR PROVIDING A MANAGED WIRELESS NETWORK USING SHORT- RANGE RADIO SIGNALS Mail Stop Petition Commissioner for Patents P.O. Box 1450 Alexandria, VA 22313-1450 PETITION TO THE DIRECTOR UNDER 37 CFR 1.181, 1.182, AND/OR 1.183 Apple Inc. ("Apple" or "Petitioner") respectfully petitions the Director with respect to misconduct by Patent Owner ("IXI") in one ex parte reexamination that warrants the Director's supervisory authority, and an action by the CRU in a second reexamination that violated 35 U.S.C. § 307(a) and thereby allowed IXI to circumvent the estoppel provision of 37 C.F.R. § 42.73(d)(3)(i) and secure new claims without a prior art search. 37 C.F.R. §§ 1.181, 1.182, and 1.183. First, Apple respectfully petitions the Director to decline entry of new claims submitted by IXI in ex parte reexamination control no. 90/014,119 ("the '119 Reexam") of U.S. Patent No. 7,295,532 ("the '532 patent"). IXI first submitted new claims 32-63 in an amendment filed on November 26, 2018 in the '119 Reexam; IXI resubmitted these claims in a substitute response filed on February 15, 2019. IXI pursued these new claims based on a declaration from Dr. 1 9 Prasant Mohapatra, an expert who began working with Apple beginning in 2015 in support of Apple defending itself against IXI's lawsuit alleging infringement of the '532 patent. During Dr. Mohapatra's engagement with Apple, which was ongoing at the time IXI filed its November 26, 2018 amendment in the '119 Reexam, Dr. Mohapatra received Apple's confidential product information and defense strategies to IXI's lawsuit, including defense strategies to the '532 patent. In a complete breach of ethical and contractual obligations to Apple, IXI hired Apple's expert. Through IXI's action, Dr. Mohapatra was provided the opportunity to switch sides and help enhance the '532 patent, the very patent that Apple had hired Dr. Mohapatra to attack. IXI's use of Dr. Mohapatra in the '119 Reexam was a clear and egregious conflict of interest that has and will undoubtedly continue to unfairly prejudice Apple. IXI has recognized this clear violation. In short order after Apple raised Dr. Mohapatra's conduct, IXI petitioned to withdraw Dr. Mohapatra's declaration from the '119 Reexam, terminated him, hired new counsel, and, in accordance with the USPTO's petition decision of January 17, 2019, resubmitted its November 26, 2018 amendment without expert support. Subsequently, and after Apple pointed out that IXI's continued pursuit of new claims supported by Dr. Mohapatra would perpetuate the harm caused by IXI's work with Dr. Mohapatra, IXI filed a supplemental response cancelling claims 32-63. Yet, in an egregious circumvention of the USPTO's petition decision of January 17, 2019, which instructed IXI "to file a complete substitute response that is identical to" its prior response, IXI improperly used the ethical breach to take a second shot at its response. In its supplemental response, IXI presented new arguments on the rejected original claims of the '532 patent, submitted a new declaration by a new expert, submitted new evidence, and filed new claims 64-98. These actions completely frustrated the purpose of IXI's withdrawal of Dr. Mohapatra's declaration and cancellation of new claims 32-63, actions that were undoubtedly appropriate and necessary in view of the clear ethical breach. Indeed, IXI's new claims 64-98 are effectively the same as new claims 32-63 (including only minor changes from the claims submitted with Dr. Mohapatra's endorsement)(see, e.g., Exhibit Q (Chart Comparing IXI's New Claims)), and the striking similarity demonstrates the failure of IXI to address the issue. By continuing to pursue these new claims in the '119 Reexam, IXI's actions have proven ineffective in rooting out the fruit of the poisonous tree: IXI refuses to withdraw new claims that are supported by Dr. Mohapatra's analysis, and thus, are necessarily and wrongfully informed by 2 9 Apple's confidential information. IXI's continued pursuit of new patent claims supported by an expert privy to Apple's confidential information creates an extreme prejudice to Apple and should not be allowed. For these reasons, and as discussed in more detail below, Apple respectfully requests that the Director deny entry of all new claims submitted by IXI in the '119 Reexam and prevent IXI's circumvention of the January 17, 2019 petition decision by denying entry of IXI's improper supplemental response. Second, Apple respectfully petitions the Director to withdraw the reexamination certificate issued in ex parte reexamination control no. 90/013,925 ("the '925 Reexam") of U.S. Patent No. 7,039,033 ("the '033 patent") and remand the reexamination proceeding to the Central Reexamination Unit ("CRU") for proper consideration of the following issues. In the '925 Reexam, the examiner failed to conduct an analysis of the patentable distinction of claims added and amended during the '925 Reexam, despite the cancellation of all challenged claims of the '033 patent during a prior inter partes review of the '033 patent. 1 The estoppel provisions of 37 CFR 42.73(d)(3)(i) require the examiner to complete this analysis prior to issuance of the reexamination certificate. Without performing this analysis, the examiner cannot fulfill the statutory prerequisite for issuing a reexamination certificate that any claims added or amended during reexamination be "determined to be patentable." 2 Similarly, independent prior art searching was not conducted by the examiner before issuance of the reexamination certificate, despite the addition and amendment of several claims by IXI. Without searching for readily available and relevant prior art, the examiner again cannot fulfill the statutory prerequisite for issuing a reexamination certificate that any claims added or amended during reexamination be "determined to be patentable."3 Such a determination requires that the examiner actually search for prior art, consistent with original examination practice. Because patentable distinction was not considered and a prior art search was not performed, the new and amended claims added during the '925 Reexam were not properly "determined to be patentable" by the examiner prior to the issuance of the reexamination 1 To the extent the described actions are properly attributed to both the primary examiner and the two conferring examiners in the '925 Reexam, the term "examiner" in the present paper collectively refers to all three examiners. 2 See 35 U.S.C. § 307(a). 3 See 35 U.S.C. § 307(a). 3 9 certificate. As the relevant statute (35 U.S.C. § 307(a)) requires such a determination, the issuance of the reexamination certificate represents an improper ultra vires action by the CRU. Accordingly, Apple respectfully requests that the Director withdraw the reexamination certificate issued in the '925 Reexam and remand the proceeding to the CRU for proper consideration of these issues. The Director should correct each of these two issues. The USPTO simply cannot allow new claims to issue, and possibly be asserted against Apple, when those new claims have been informed by an expert retained by Apple and privy to Apple's confidential information. The USPTO also cannot allow new claims without meeting its statutory obligation to properly determine patentability, particularly when the patent has already been demonstrated as suspect through the IPR process. The Director's swift action is needed to prevent further harm to Apple in the '119 Reexam and to correct the harm that has already occurred in the '925 Reexam. I. Background and Related Proceedings The '532 patent issued on November 13, 2007 from an application filed August 17, 2001 and the '033 patent issued on May 2, 2006 from an application filed May 7, 2001. On October 2, 2014, IXI filed suit against Apple in the Southern District of New York alleging infringement of, among others, the '532 patent and the '033 patent. See IXI Mobile (R&D) Ltd., et al. v. Apple, Inc., Case No. 1-14-cv-07954 (S.D.N.Y 2014). This case was transferred to the Northern District of California on August 6, 2015. See id. at Paper 71; see also IXI Mobile (R&D) Ltd., et al. v. Apple, Inc., Case No. 4:15-cv-03755-HSG (N.D. Cal. 2015). Apple and Samsung jointly filed IPR Petitions on June 18, 2015 and June 19, 2015, alleging unpatentability and requesting cancellation of certain claims of the '532 patent and the '033 patent, as well as U.S. Patent No. 7,016,648.4 Apple Inc. et al. v. IXI IP, LLC, IPR2015- 01442, Paper 2 (PTAB June 19, 2015) (the "'1442 IPR"); Apple Inc. et al. v. IXI IP, LLC, IPR2015-01443, Paper 2 (PTAB June 19, 2015) (the "'1443 IPR"); Apple Inc. et al. v. IXI IP, LLC, IPR2015-01444, Paper 2 (PTAB June 19, 2015) (the "'1444 IPR"); Apple Inc. et al. v. IXI IP, LLC, IPR2015-01445, Paper 2 (PTAB June 19, 2015) (the "'1445 IPR"); Apple Inc. et al. v. IXI IP, LLC, IPR2015-01446, Paper 2 (PTAB June 19, 2015) (the "'1446 IPR"). The litigation 4 IXI voluntarily dismissed U.S. Patent No. 7,426,398 from the litigation. 4 9 was stayed pending IPR on November 12, 2015. IXI Mobile (R&D) Ltd. et al v. Apple, Inc., Case No. 4:15-cv-03755-HSG, Paper 122 (ND Cal. 2015). On December 30, 2015, the PTAB instituted an IPR proceeding against all challenged claims of the '532 patent, except claim 10, and instituted an IPR proceeding against all challenged claims of the '033 patent. '1443 IPR at Paper 8, pp. 16-18, 21; '1444 IPR at Paper 8, p. 26. On December 21, 2016, the PTAB issued a final written decision in each IPR proceeding finding all instituted claims to be unpatentable. '1443 IPR at Paper 27, p. 38 ("claims 1, 4, 5, 7– 9, 12, 14–16, and 23–24 are held unpatentable."); '1444 IPR at Paper 27, p. 42 ("claims 1, 4–7, 12, 14, 15, 22, 23, 25, 28, 34, 39, 40, 42, and 46 of the '033 patent are held unpatentable."). IXI appealed the '033 patent final written decision, but did not appeal the '532 patent final written decision. See IXI IP LLC v. Apple Inc. et al., Case No. 17-1665 (Fed. Cir. 2017). On September 10, 2018, the Federal Circuit affirmed the final written decision in the '033 patent IPR proceeding. See IXI IP, LLC v. Samsung Elecs. Co., No. 17-1665, 2018 U.S. App. LEXIS 25533 (Fed Cir. Sept. 10, 2018). II. '532 Patent ('119 Reexam) A. Statement of Facts On February 13, 2015, to support its defense of IXI's litigation, Apple engaged Dr. Prasant Mohapatra to analyze the four patents asserted by IXI (the '532 patent, the '033 patent, and U.S. Patent Nos. 7,426,398 and 7,016,648) (collectively, the "IXI Patents"), to assess validity of the IXI Patents particularly in light of IXI's assertions of how Apple's products allegedly infringed the IXI Patents, and to perform various other related tasks. Exhibit B (Chuebon Declaration) at ¶¶ 3-4. Between February 2015 and March 2015, Dr. Mohapatra performed work on the IXI case for Apple. Exhibit B (Chuebon Declaration) at ¶ 14, Exhibit C (March 5, 2015 Invoice), Exhibit D (March 30, 2015 Invoice). During this time, Dr. Mohapatra helped identify and evaluate prior art relating to the IXI Patents, including the '532 patent, that Apple used for its invalidity contentions that were exchanged with IXI on March 9, 2015. Exhibit B (Chuebon Declaration) at ¶ 7. Importantly, as part of this work, Apple shared confidential information with Dr. Mohapatra, including but not limited to confidential and privileged information regarding 5 9 invalidity, claim construction, and non-infringement, including technical details related to the operation of Apple's products accused of infringing the IXI Patents. Exhibit B (Chuebon Declaration) at ¶ 6. Providing confidential information of this type to retained experts is customary practice in patent litigations handled by Simpson Thacher & Bartlett LLP to ensure experts are able to fully evaluate the relevant patents, the issues, and the case more broadly. Exhibit E (Frahn Declaration) at ¶ 4-10. On April 3, 2018, Apple filed an ex parte reexamination request challenging claims 2, 3, 6, 10, and 11 of the '532 patent. Order Granting Ex Parte Reexamination Request, Control No. 90/014,119, p. 2. Reexamination was ordered on May 23, 2018. Id. On September 25, 2018, the Office issued an Office Action rejecting claims 2, 3, 6, 10, and 11 of the '532 patent. Office Action in Ex Parte Reexamination, Control No. 90/014,119, p. 1. IXI responded to the Office Action on November 26, 2018. Exhibit R (Patent Owner Response to Reexamination Under 37 C.F.R. 1.550 With Amendment, Control No. 90/014,119). To support its response, IXI filed a declaration from Dr. Mohapatra. Id. at p. 2. Through its response, IXI submitted 32 new claims (numbered as claims 32-63) and argued for patentability of the new claims based on testimony furnished by Dr. Mohapatra through a declaration. Id. at pp. 20-23. At this time, however, Dr. Mohapatra was still bound to his engagement with Apple to assist in its defense against the '532 patent. IXI filed a petition to the Director in the '119 Reexam requesting that Dr. Mohapatra's declaration be withdrawn and that a substitute response be accepted that removed all references to Dr. Mohapatra's declaration, but maintained all of IXI's substantive new claim arguments that were advanced in reliance upon Dr. Mohapatra's testimony. Exhibit J (IXI Petition) at p. 2 ("The Patentee submits with the instant petition a substitute response which removes any mention of the Declaration of Dr. Prasant Mohapatra and withdraws the Declaration of Dr. Prasant Mohapatra, OTH-A and the associated 6 9 CV, OTH-B"). On January 3, 2019, IXI filed a revocation and new power of attorney in the '119 Reexam, replacing the counsel that had hired Dr. Mohapatra with new reexamination counsel. Exhibit K (Revocation and New POA) at pp. 1-2. On January 4, 2019, the USPTO accepted IXI's new power of attorney. Notice of Acceptance of Power of Attorney, Control No. 90/014,119. On January 17, 2019, the USPTO provisionally granted IXI's petition. Exhibit S (Decision Granting Petition, Control No. 90/014,119 at p. 3). Specifically, the USPTO stated "Patent owner's November 26, 2018 response will not be considered by the examiner in the 90/014,119 proceeding" and "Patent owner is given a non-extendible period of 30 days from the mailing date of this decision to file a complete substitute response that is identical to the December 20, 2018 substitute response (i.e., 23 pages of remarks) and that also includes copies of the claim amendments (9 pages), Exhibit OTH-D, "Support for Proposed Amendments for '532 Patent" (34 pages), and Exhibit OTH-E, 'Comparison of Issued Claim 1 and Proposed New Independent Claims' (8 pages), as filed on November 26, 2018." Id. (emphasis in original). On February 15, 2019, IXI filed a substitute response including the new claims submitted in the amendment filed on November 26, 2018. Exhibit T (Substitute Patent Owner Response to Reexamination Under 37 C.F.R. 1.550 With Amendment, Control No. 90/014,119). IXI filed the supplemental response. Exhibit U (Supplemental Response and Amendment Under 37 CFR 1.111, Control No. 90/014,119). In the supplemental response, IXI cancelled claims 32-63, added new claims 64-98, provided 7 9 twelve pages (i.e., pages 15-26) of new arguments directed to the patentability of original claims 10 and 11, submitted a new expert declaration (Exhibit OTH-F, Rule 132 Declaration of Dr. Samir Soliman), and submitted hundreds of pages of new evidence (Exhibits OTH-F (appendices), OTH-I, OTH-J, OTH-K, OTH-L, OTH-M, and OTH-N). Id. B. Dr. Mohapatra's Work With IXI Was a Clear Ethical Violation In assessing expert conflicts, the USPTO applies a two-prong test to determine (1) whether it is objectively reasonable for Apple to believe that it had a confidential relationship with Dr. Mohapatra; and (2) whether Apple disclosed confidential information to Dr. Mohapatra that is relevant to the current proceeding. See Fujifilm Corp. v. Sony Corp., IPR2017-01267, Paper 9 at p. 2 (PTAB 2017) citing Lacroix v. BIC Corp., 339 F. Supp. 2d 196, 199–200 (D. Mass. 2004); IPR2017-01267, Mot. 2 (quoting "a two-part test to determine whether a side- switching expert must be disqualified," as discussed in Space Sys./Loral v. Martin Marietta Corp., 1995 U.S. Dist. LEXIS 22305, *6 (N.D. Cal. 1995)). Both prongs are clearly satisfied. As to the first prong, Apple is objectively reasonable in its belief that it had a confidential relationship with Dr. Mohapatra. Indeed, Apple's engagement with Dr. Mohapatra was confidential. Exhibit B (Chuebon Declaration) at ¶¶ 3-4. As to the second prong, Apple disclosed privileged and confidential information to Dr. Mohapatra that is relevant to the current proceeding. Exhibit B (Chuebon Declaration) at ¶ 6. Pursuant to Dr. Mohapatra's engagement with Apple, Gregory T. Chuebon (formerly of Simpson Thacher & Bartlett LLP)5 was the point of contact for Dr. Mohapatra when he conducted his work in support of Apple. Exhibit B (Chuebon Declaration) at ¶ 5. During the course of Dr. Mohapatra's engagement, Mr. Chuebon disclosed confidential information to him pertaining to a number of matters, including: • Sensitive confidential and technical information about the operation Apple's accused products; • Privileged information concerning theories as to why those products did not infringe the IXI Patents; 5 Mr. Chuebon left Simpson Thacher & Bartlett LLP on July 27, 2018 and is currently employed at Dechert LLP. 8 9 • Privileged information concerning theories about the construction of claim terms in the IXI Patents; and • Privileged information concerning the validity or invalidity of claims of the IXI Patents. Exhibit B (Chuebon Declaration) at ¶ 6. During the course of Dr. Mohapatra's ongoing engagement, enabled by the knowledge conveyed through this disclosure, Dr. Mohapatra conducted specific prior art searches pertaining to the '532 patent, as well as two patents addressing similar technology, U.S. Patent Nos. 7,016,648 and 7,039,033, to identify prior art references that could bear upon the validity of these patents. Exhibit B (Chuebon Declaration) at ¶ 7. Mr. Chuebon's exchange of confidential information with Dr. Mohapatra occurred during "approximately a half-dozen in-depth discussions with Dr. Mohapatra." Exhibit B (Chuebon Declaration) at ¶ 8. Mr. Chuebon never released or terminated Dr. Mohapatra from his engagement, and, indeed, on March 14, 2018, sent an email to Casey R. Hull of Thomson Reuters Expert Witness Services ("TREWS"), the expert witness service Dr. Mohapatra had used to represent himself in the engagement with Apple, to confirm that Apple's engagement with Dr. Mohapatra was still ongoing. Exhibit B (Chuebon Declaration) at ¶¶ 11-13; . Through this engagement, Apple disclosed confidential information to Dr. Mohapatra that is relevant to the current proceeding. Indeed, as discussed above, Dr. Mohapatra received confidential information related to Apple's defense of IXI's assertion of the '532 patent. This confidential information is undoubtedly relevant to the reexamination of the same patent, including IXI's defense of the original claims of the '532 patent and IXI's pursuit of new claims. Indeed, claim 10 of the '532 patent was asserted in IXI's litigation against Apple and subsequently directly supported by Dr. Mohapatra's declaration in the '119 Reexam. Furthermore, using an expert privy to the technical operation of Apple's devices to support the addition of claims to a patent IXI asserts Apple infringes creates extreme prejudice to Apple's defense in that litigation – especially should IXI attempt to add those new claims to the litigation thereafter. Having received Apple's confidential information relevant to the '532 patent, Dr. Mohapatra's decision to switch sides to support IXI in the '119 Reexam was a clear and direct violation of his ethical and contractual obligations to Apple. 9 9 As Mr. Chuebon explains and Apple's engagement letter quite clearly specifies, Dr. Mohapatra was hired and assisted Apple with its defense of all of the IXI patents. 10 9 And, Dr. Mohapatra did receive confidential information. Specifically, Mr. Chuebon provides detailed testimony explaining the confidential information furnished to Dr. Mohapatra as part of his engagement with Apple. Exhibit B (Chuebon Declaration) at ¶ 6. Mr. Chuebon no longer works for Simpson Thacher & Bartlett LLP and is no longer representing Apple against IXI. Exhibit B (Chuebon Declaration) at ¶ 15. Thus, Mr. Chuebon is a neutral witness and has no incentive to provide untruthful testimony. Additionally, Mr. Chuebon is corroborated by testimony from Harrison J. Frahn IV from Simpson Thacher & Bartlett LLP and Jeremy J. Monaldo from Fish & Richardson P.C. During the course of Dr. Mohapatra's ongoing engagement, Mr. Frahn was aware that Dr. Mohapatra came to possess Apple's privileged and confidential information. Exhibit E (Frahn Declaration) at ¶ 5. As Mr. Frahn explains, it was common practice in patent litigations handled by Simpson 11 9 Thacher & Bartlett LLP to provide confidential and strategic information about a plaintiff's infringement assertions and the operation of the accused products to expert witnesses, even if the expert witnesses were primarily tasked with assessing the validity of the patents asserted in the relevant case. Exhibit E (Frahn Declaration) at ¶¶ 6-7. For example, even if an expert's work was focused on an invalidity analysis, Mr. Frahn explains that he and his team deem it important for the expert to understand and thus to receive technical information about the operation of accused products, information concerning theories as to why those products do not infringe the relevant patents, and information concerning theories about the construction of claim terms in the relevant patents. Exhibit E (Frahn Declaration) at ¶ 8. This confidential information is considered by Mr. Frahn to inform the invalidity analysis and the type of prior art that would be helpful to defending the client in the litigation. Exhibit E (Frahn Declaration) at ¶ 9. Mr. Frahn supervised Mr. Chuebon's work in the IXI case and Mr. Frahn had reason to believe that Mr. Chuebon handled communications with Dr. Mohapatra according to these customary practices, providing Apple's confidential information to Dr. Mohapatra to inform his assessment of the IXI patents. Exhibit E (Frahn Declaration) at ¶ 10. Further, testimony from Mr. Monaldo corroborates Mr. Chuebon's testimony. In April 2015, Mr. Monaldo, serving as Apple's IPR counsel, considered Dr. Mohapatra as a potential expert to support Apple's planned Inter Partes Review petitions against the IXI Patents, in view of the fact that Apple was working at the time with Dr. Mohapatra to support its defenses in a related district court action involving the IXI Patents and that, through this work, Dr. Mohapatra had familiarity with the case and the IXI Patents. Exhibit N (Monaldo Declaration) at ¶ 2. In connection with that evaluation, Mr. Monaldo became aware that Dr. Mohapatra had access to Apple's confidential information and litigation strategies adverse to IXI and, ultimately, Dr. Mohapatra was not engaged as an expert for the Inter Partes Review petitions by Apple or its co- petitioner Samsung. Exhibit N (Monaldo Declaration) at ¶¶ 3-4. Through corroboration from Mr. Frahn and Mr. Monaldo, Mr. Chuebon provides credible, corroborated testimony from a disinterested third party that clearly establishes that Dr. Mohapatra received Apple's confidential information. Mr. Chuebon's testimony must be credited over the interested and self-serving denial of Dr. Mohapatra. Finally, the seriousness of Dr. Mohapatra's ethical and contractual breaches is evident from IXI's course of conduct, including the remedial steps IXI rapidly took to (i) terminate Dr. 12 9 Mohapatra and replace Brooks Kushman (IXI's former reexamination counsel), (ii) petition to withdraw Dr. Mohapatra's declaration and to scrub citations to it, and (iii) cancel the new claims addressed in Dr. Mohapatra's declaration. Simply put, Dr. Mohapatra's decision to discard Apple and switch to IXI's side in defending the '532 patent was a serious ethical violation that has, and will continue to, unduly prejudice Apple. C. Relief Requested For IXI's and Dr. Mohapatra's Ethical Violation With the ethical violation being clear, the only question that remains is what relief should be granted to Apple. As discussed above, IXI purports to have taken sufficient remedial actions by withdrawing Dr. Mohapatra's declaration, replacing its counsel, and cancelling new claims 32-63. Although these actions are warranted, IXI completely frustrated the purpose of these actions through its supplemental response, where IXI essentially resubmitted its new claims with only minor changes. Indeed, the slight variation in IXI's most recent new claims (64-98) relative to the earlier-furnished Dr. Mohapatra-approved new claims (32-63) is demonstrated by the attached comparison of IXI's claims 32, 42, and 50 to claims 64, 82, and 85, respectively. Exhibit Q (Chart Comparing IXI's New Claims). For example, compare IXI's earlier submission of claim 32 to IXI's more recent submission of claim 64, where IXI merely added trivial language (added "programmable," "configured"), moved language around (moved "having a cellular network address"), fixed an issue the examiner raised by adding in the language of claim 2 to prevent its amendment from being considered broadening ("said plurality of data packets includes an internet Protocol ("IP") packet"), broadened claim language (changed "watch" to "wearable device"), and reworded features (changed "wherein the watch is programmed over the wireless local area network and the one or more cellular networks" to "enable programming of the wearable device over the wireless local area network by at least one manager server connected to the hand-held cellular telephone"6). Id. at pp. 1-3. IXI has clearly 6 Note that the concept of programming by a manager server was not introduced in this claim set and was a focus of the claim set analyzed by Dr. Mohapatra. See, e.g., claim 50 ("wherein the 13 9 attempted to make claims 64-98 appear different than cancelled claims 32-63, but inspection of the new claims reveals that the claims are largely the same and, in effect, represent a resubmission by IXI of the claims improperly supported by Dr. Mohapatra. The harm suffered by Apple through Dr. Mohapatra's influence and analysis of the new claims pursued by IXI is not cured by adding minor claim language, moving claim features around, broadening claim features, and performing minor rewording. Indeed, because IXI possessed information learned from Dr. Mohapatra, including his endorsement of new claims 32-63, IXI's most recent new claims are necessarily informed by the fruit of this poisonous tree. By continuing to pursue new claims supported by Dr. Mohapatra's analysis, IXI continues to perpetuate the harm to Apple caused by this serious ethical breach. It is not possible for Dr. Mohapatra to have separated in his mind Apple's confidential information from his work with IXI, and his awareness of Apple confidential information necessarily infected the work he did for IXI, which extends to new claims 64-98 submitted in IXI's supplemental response. Particularly troubling is Dr. Mohapatra's analysis supporting the alleged patentability of these new claims when IXI has asserted the '532 patent against Apple and Dr. Mohapatra had earlier learned Apple's confidential information and had earlier become aware of Apple's litigation strategy related to IXI's accusations of infringement of that same patent. In other words, Dr. Mohapatra influenced claims IXI may seek to assert against Apple in litigation after having been made aware of Apple's litigation strategy on that exact patent. Furthermore, Dr. Mohapatra's declaration testimony was developed for and in collaboration with IXI counsel, necessarily revealing Apple confidential information or conclusions drawn by Dr. Mohapatra based on the same, and with IXI necessarily benefitting from those conclusions. As such, IXI's new claims were unquestionably informed by the confidential information Dr. Mohapatra secured from Apple and Apple would face extreme prejudice if these new claims were allowed to issue. IXI should not be given the opportunity to pursue new patent claims to potentially assert against Apple having the benefit of Apple's own confidential information. To avoid extreme prejudice, Apple seeks intervention by the Director to deny entry of IXI's requested new claims of the '532 patent. wireless device is configured for programming by a manager server over the wireless local area network and the cellular network.") 14 9 Making matters worse, IXI also used the ethical breach as an opportunity to take another shot at its response to the four grounds of rejections the Examiner levied against original claims 10 and 11 based on Apple's reexamination request. Specifically, IXI's supplemental response added twelve pages of new arguments against these rejections, added hundreds of pages of new evidence, and added a new expert declaration. None of these actions were authorized by the USPTO's decision to grant IXI's requested relief of "a substitute response which removes any mention of the Declaration of Dr. Prasant Mohapatra and withdraws the Declaration of Dr. Prasant Mohapatra, OTH-A and the associated CV, OTH-B" where the "remainder of the response is otherwise identical to the timely Response to the Non-Final Action filed on November 26, 2018." Exhibit J (IXI Petition) at p. 2 (emphasis added). By filing new arguments, new evidence, and a new expert declaration, IXI seeks to circumvent the USPTO's petition decision. In fact, the supplemental response violates the provisions of the provisional decision and violates 37 CFR § 1.111(a)(2), which sets forth the conditions the Office uses in assessing when the "Office may enter a supplemental reply" – none of which come close to contemplating the new arguments and evidence IXI provided in its supplemental response. And, the supplemental response is late, coming after the due date set forth in the Petition Decision of January 17, 2019 and almost three months after the due date for response to the September 25, 2018 Office Action. IXI's blatant disregard for the rules should not be allowed, and IXI should not be rewarded with new arguments and evidence because Apple raised an ethical violation with IXI's first response. Thus, in addition to declining entry of the new claims IXI has pursued in the '119 Reexam, the Director should deny entry of the new arguments and evidence IXI put forward in the supplemental response. III. '033 Patent ('925 Reexam) A. Statement of Facts Just three months after the PTAB issued its final written decision in the '033 patent IPR and while the appeal was pending, IXI filed a request for ex parte reexamination of claims 48 and 56 of the '033 patent. The reexamination request presented amendments to claims 48 and 56, along with a significant number of newly-presented claims (57-129).7 Exhibit F (Excerpts 7 IXI did not seek to add or amend claims during the IPR proceedings. 15 9 from '925 Reexam File History), pp. 154-220, 272-292. IXI argued in the reexamination request that the amended and new claims were patentable over the prior art combinations presented in the IPR proceeding, contending that the PTAB's decision in the IPR was incorrect based on additional evidence and arguments. Id. at pp. 160-161 ("The PTAB's conclusion is incorrect for at least two reasons that were not originally presented in Patent Owner's response"). The CRU subsequently found that a substantial new question of patentability was raised "over issued claims 48-56," and ordered a reexamination proceeding "on the basis of the claims as amended" and added by IXI's request. Id. at 143. On September 7, 2017, the examiner issued a non-final Office Action that rejected claims 48-87, 90, 92-94, 97, 105, 107-109, and 115-129 under 35 USC 112 and that confirmed the patentability of new claims 88, 89, 91, 95, 96, 98-104, 106 and 110-114. See id. at pp. 97-130. The examiner did not raise any prior art rejections and only considered the prior art provided by IXI in its request and the prior art originally considered during prosecution of the '033 patent. Id. For example, in confirming the patentability of claim 104, the examiner explained: While the combination of Marchand, Nurmann, Vilander and JINI discloses a handheld device creating a short-distance network with a terminal and provides software components for doing so, Marchand, Nurmann, Vilander and JINI do not disclose a network management component including a disconnect terminal function that forces disconnection from a specific terminal, nor do they disclose 802.11 communications. Other references asserted by the Requestor/Patent Owner in the instant reexamination proceeding do not disclose these features either. References of record in the original prosecution disclose 802.x communication (see, for example, US Pat 6,763,012 to Lord), however such fails to further disclose using such in the network with the features claimed. Claims 106 and 110-114 are patentable based on a dependence on claim 104. Id. at pp. 122-123 (emphasis added). On October 10, 2017, IXI filed an amendment that cancelled or amended claims subject to the 35 USC 112 rejections raised in the Office Action of September 7, 2017. Id. at pp. 23-96. In response to IXI's amendment, the examiner, on December 5, 2017, issued a Notice of Intent to Issue Ex Parte Reexamination Certificate confirming the patentability of amended claim 56 and new claims 57-124. Id. at pp. 9-22. Here again, the examiner confirmed consideration of only the prior art provided by IXI in its request and the prior art originally considered during prosecution of the '033 patent. Id. For example, in confirming the patentability of claim 112, 16 9 the examiner explained that this limited universe of prior art did not disclose a personal area network ("PAN"), a touchscreen or GUI: While the combination of Marchand, Nurmann, Vilander and JINI discloses a handheld device creating a short-distance network with a terminal and provides software components for doing so, Marchand, Nurmann, Vilander and JINI do not disclose specifically a PAN, nor do they disclose 802.11 communications, a touchscreen or GUI. Other references asserted by the Requestor/Patent Owner in the instant reexamination proceeding do not disclose these features either. References of record in the original prosecution disclose 802.x communication (see, for example, US Pat 6,763,012 to Lord), however such fails to further disclose using such in the network with the features claimed. Newly-numbered claims 113- 122 are patentable based on a dependence on claim 112. Id. at pp. 16-17 (emphasis added). The examiner thus considered only the prior art references provided by IXI with its reexamination request and those identified during original prosecution when confirming the patentability of the new and amended claims. See id. at pp. 20, 153 (search notes indicating no new search performed); pp. 8-19, 121-123 (confirming patentability of new and amended claims over only the art provided by IXI and the art from the '033 file history). Notably, as shown in the below search notes, the examiner did not perform an additional search for prior art teaching these additional features. Id. (showing "CPC – SEARCHED", "CPC COMBINATION SETS – SEARCHED," and "US CLASSIFICATION SEARCHED" left completely blank). 17 9 Additionally, the record is without any indication that the examiner compared the new and amended claims against the previously-cancelled claims to determine whether a patentable distinction exists between the two claim sets, as required by 37 CFR 42.73(d)(3)(i). B. The CRU's Issuance of Amended and New Claims in the '925 Reexam did not Comply with Statutory Requirements After losing the IPR involving the '033 patent, IXI itself requested reexamination of that patent to seek new claims and argue that the PTAB's decision was incorrect. Through these actions, IXI circumvented the estoppel provision of 37 C.F.R. § 42.73(d)(3)(1), which precludes a patent owner "from taking action inconsistent with the adverse judgment, including obtaining 18