In the Eastern District of Texas, Apple already has a federal judge "puzzled by [its] hot-then-cold positions." And its lobbyists advocating the devaluation of SEPs and opposing the demonopolization of app distribution claim to represent 5,000 small app developers but on their website just list about three dozen companies, roughly half of which are service providers and only a very few of which have actually published apps.
No reasonable person would claim that Apple doesn't have the right to advocate its positions. But it should maintain a certain minimum quality standard for the points it makes--be it in policy debates or in litigation.
On Thursday (June 23), Ericsson filed its opposition to an Apple motion in the investigation of Ericsson's third ITC complaint (one of two non-SEP cases; interestingly, the SEP case was just reassigned to ALJ Moore).
Rarely have I seen an opposition brief that exposed the shortcomings of the related motion as clearly as this one. The ITC is known for its speedy adjudication of complaints, and that's why the parties to an investigation have to respect deadlines. Sometimes respondents are allowed to add prior art references belatedly, but the standard is "good cause." The way Apple's June 14 motion tries to meet that standard with respect to 13 pages from an IEEE document titled Handoff in Hybrid Mobile Data Networks (a prior art reference named "Pahlavan" after its author) is remarkable:
Apple says its army of lawyers "inadvertently did note cite Pahlavan" in Apple's May 13 notice of prior art.
Apple can't deny that it knew the Pahlavan document long before May 13: its PTAB IPR petition targeting the same patent (U.S. Patent 8,792,454 on "secure and seamless WAN-LAN roaming") was filed six weeks earlier--on April 1--and listed it as Exhibit 1011:
There is a dispute--and it may be legitimate per se--between Ericsson and Apple over the priority date. As Apple notes, "the ’454 patent claims priority to a non-provisional application filed on July 21, 2004, and a provisional application filed on July 22, 2003." Apple is within its rights to take the position that "the provisional application does not describe the purported invention of the ’454 patent." According to Apple, "the provisional application from 2003 does not mention a mobile device connected to an internal network monitoring signal strength, let alone one that detects when such signal strength is below a threshold and then transitions to the external network based on that signal strength." If that was both true and relevant (I have no opinion on that for now), the priority date would indeed be the July 2004--not 2003--one.
With a 2004 priority date, the Pahlaven prior art reference might not be first choice: some younger material might then work better. In the case of the earlier (2003) date, Pahlaven now appears to be relevant to Apple's invalidity defense.
But it's crazy to argue that Ericsson took the position that 2003 is the correct prioriy date "for the first time in its May 12, 2022 supplemental interrogatory responses." That's because Ericsson's relevant ITC complaint, which was filed in January, states the following in its paragraph 17:
"The ’454 patent issued from Application No. 13/554,711, filed on July 20, 2012, and claiming priority to non-provisional Application No. 10/895,411, filed on July 21, 2004, and provisional Application No. 60/488,809, filed on July 22, 2003." (emphases added)
So what Apple describes as a new position taken by Ericsson for the first time on May 12 was in reality merely consistent with what Ericsson wrote almost four months earlier in its complaint.
If under that set of circumstances the ITC concluded that Apple has shown "good cause" for an amended notice of prior art, other parties would also have to be granted leave to amend their prior art notices, in which case the deadline for presenting prior art would be much less meaningful.
Ericsson's lawyers believe "Apple’s omission of Pahlavan from its NOPA and from its invalidity contentions until now appears to be gamesmanship, rather than a clerical mistake." The reason they believe Apple did so is that under the Fintiv rule governing discretionary denials, the PTAB can reject a petition just based on an overlap between the petition and the invalidity contentions in the parallel infringement litigation. Ericsson doesn't believe in coincidence here because Apple's notice of prior art to the ITC contained--with respect to just this one patent--70 prior art references, only six (less than 10%) of which are underlying Apple's IPR petition. "By presenting Pahlavan to the PTAB and not including Pahlavan in its NOPA or invalidity contentions, Apple created a scenario in which the six prior art references being considered by the PTAB, if it decided to institute an IPR, would not be identical and therefore not completely 'overlap' within with the list of prior art being considered at the ITC," Ericsson says.
Given that Apple had to be particularly selective about the prior art references used in its PTAB petition, it's a safe assumption that Pahlaven always seemed important to Apple, which makes a clerical error unlikely.
The opposition brief argues that granting Apple's motion would be prejudicial to Ericsson:
"The injection of newly disclosed prior art and previously undisclosed invalidity contentions now, almost a month after the [Notice of Prior Art] deadline and long after the Markman proceedings, unfairly disadvantages Ericsson and would encourage avalanche and ambush, i.e., providing the patentee with a list of 70 references in the NOPA while holding back the primary reference that the patent challenger actually intends to rely on for invalidity."
In the Eastern District of Texas, Judge Gilstrap took issue with "Apple's hot-then-cold positions" (note the plural). The Pahlaven prior art reference is now a case of "cold-then-hot positions." I just don't understand why Apple makes that demonstrably false claim about Ericsson's position on the priority date. Ericsson's ITC complaint left no doubt about that one.
