Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 27
`Entered: February 22, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`PARTHENON UNIFIED MEMORY ARCHITECTURE LLC,
`Patent Owner.
`____________
`
`Cases
`IPR2016-01114 (Patent 7,777,753)
`IPR2016-01118 (Patent 7,321,368)
`IPR2016-01134 (Patent 7,542,045)1
`____________
`
`Before MICHAEL R. ZECHER, JAMES B. ARPIN,
`SUSAN L. C. MITCHELL, and MATTHEW R. CLEMENTS,
`Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`
`ORDER TO SHOW CAUSE
`Conduct of the Proceedings
`37 C.F.R. § 42.5(a)
`
`
`
`
`
`
`1 This Order addresses an issue that is identical in all three cases. We,
`therefore, exercise our discretion to issue one Order to be filed in each case.
`The parties, however, are not authorized to use this style heading in any
`subsequent papers.
`
`
`571-272-7822
`
`
`Paper No. 27
`Entered: February 22, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`PARTHENON UNIFIED MEMORY ARCHITECTURE LLC,
`Patent Owner.
`____________
`
`Cases
`IPR2016-01114 (Patent 7,777,753)
`IPR2016-01118 (Patent 7,321,368)
`IPR2016-01134 (Patent 7,542,045)1
`____________
`
`Before MICHAEL R. ZECHER, JAMES B. ARPIN,
`SUSAN L. C. MITCHELL, and MATTHEW R. CLEMENTS,
`Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`
`ORDER TO SHOW CAUSE
`Conduct of the Proceedings
`37 C.F.R. § 42.5(a)
`
`
`
`
`
`
`1 This Order addresses an issue that is identical in all three cases. We,
`therefore, exercise our discretion to issue one Order to be filed in each case.
`The parties, however, are not authorized to use this style heading in any
`subsequent papers.
`
`
`
`IPR2016-01114 (Patent 7,777,753)
`IPR2016-01118 (Patent 7,321,368)
`IPR2016-01134 (Patent 7,542,045)
`
`
`
`
`
`INTRODUCTION
`I.
`In December 2016, we instituted an inter partes review of certain
`claims (“the instituted claims”) of the patents at issue in each of the above-
`named proceedings in early December. IPR2016-01114, Paper 7; IPR2016-
`01118, Paper 8; IPR2016-01134, Paper 7. In January 2017, we issued Final
`Written Decisions in earlier-filed proceedings involving the same patents in
`which many of the instituted claims were held unpatentable. HTC
`Corporation v. Parthenon Unified Memory Architecture LLC, Case
`IPR2015-01500 (PTAB Jan. 4, 2017) (Paper 54) (“1500 FWD”); HTC
`Corporation v. Parthenon Unified Memory Architecture LLC, Case
`IPR2015-01501 (PTAB Jan. 4, 2017) (Paper 53) (“1501 FWD”); HTC
`Corporation v. Parthenon Unified Memory Architecture LLC, Case
`IPR2015-01502 (PTAB Jan. 4, 2017) (Paper 52) (“1502 FWD”). Neither
`party to the earlier-filed proceedings filed a Request for Rehearing in any of
`those proceedings. As a result, we now order the parties in these
`proceedings to show cause why we should not terminate these proceedings
`as to the claims held unpatentable in those Final Written Decisions.
`
`
`BACKGROUND
`II.
`A. The ’368 patent
`On December 5, 2016, we instituted an inter partes review of certain
`claims of U.S. Patent 7,321,368 B2 (“the ’368 patent”) on the following
`grounds:
`
`
`
`2
`
`
`
`
`
`IPR2016-01114 (Patent 7,777,753)
`IPR2016-01118 (Patent 7,321,368)
`IPR2016-01134 (Patent 7,542,045)
`
`
`1. Claims 1, 7, 13, 15, 18, 20, 24, and 25 under 35 U.S.C. § 103(a) as
`obvious over Bowes,2 Datasheet,3 and Artieri4; and
`2. Claims 17 and 23 under 35 U.S.C. § 103(a) as obvious over
`Bowes, Datasheet, Artieri, and Gove5.
`IPR2016-01118, Paper 8, 23.
`On January 4, 2017, we issued a Final Written Decision in IPR2015-
`01500, in which we found claims 1–3, 5, 7, 13–15, 17–21, and 23–25 of the
`’368 patent to be unpatentable based on the following grounds:
`1. Claims 1, 5, 7, 13, 15, 18, 20, 24, and 25 under 35 U.S.C. § 103(a)
`as obvious over Bowes and MPEG6; and
`2. Claims 17, 19, and 23 under 35 U.S.C. § 103(a) as obvious over
`Bowes, MPEG, and Rathnam7; and
`3. Claims 2, 3, 14, and 21 under 35 U.S.C. § 103(a) as obvious over
`Bowes, MPEG, and Stearns8.
`
`
`2 U.S. Patent No. 5,546,547.
`3 AT&T DSP3210 Digital Signal Processor, The Multimedia Solution, Data
`Sheet, March 1993.
`4 EP 0 626 653 A1.
`5 Robert J. Gove, “The MVP: A Highly-Integrated Video Compression
`Chip,” Proceedings of the IEEE Data Compression Conference (DCC ‘94),
`pp. 215–224 (March 29–31, 1994).
`6 International Organization for Standardization, “ISO/IEC 11172-2:
`Information technology—Coding of moving pictures and associated audio
`for digital storage media at up to about 1,5 Mbit/s—Part 2: Video,” (1st ed.
`Aug. 1, 1993).
`7 S. Rathnam et al., “An Architectural Overview of the Programmable
`Multimedia Processor, TM-1,” PROC. COMPCON, IEEE Computer Society
`Press, Los Alamitos, CA, 1996, pp. 319–326 (1996).
`8 U.S. Patent No. 5,774,676.
`
`
`
`3
`
`
`
`
`
`IPR2016-01114 (Patent 7,777,753)
`IPR2016-01118 (Patent 7,321,368)
`IPR2016-01134 (Patent 7,542,045)
`
`
`1500 FWD 7, 28. Neither party to IPR2015-01500 filed a request for
`rehearing within thirty days of entry of that decision. 37 C.F.R. § 42.71.
`As a result, all of the claims instituted upon in IPR2016-01118 have
`been held unpatentable in IPR2015-01500. See IPR2016-01118, Paper 8, 3
`n.1 (“If we issue a Final Written Decision in [IPR2015-01500], the panel
`shall determine whether it is appropriate to maintain this proceeding against
`all or some of the claims, upon which review is instituted, or to terminate
`this proceeding and vacate this Decision on Institution.”).
`
`
`B. The ’753 patent
`On December 7, 2016, we instituted an inter partes review of certain
`claims of U.S. Patent 7,777,753 B2 (“the ’753 patent”) on the following
`grounds:
`1. Claims 1 and 2 are unpatentable under 35 U.S.C. § 103(a) as
`obvious over Bowes, Datasheet, Artieri, and Arimilli9;
`2. Claim 4 is unpatentable under 35 U.S.C. § 103(a) as obvious over
`Bowes, Datasheet, Artieri, Arimilli, and Shanley10;
`3. Claim 7 is unpatentable under 35 U.S.C. § 103(a) as obvious over
`Bowes, Datasheet, Artieri, and Christiansen11;
`4. Claims 8 and 10 are unpatentable under 35 U.S.C. § 103(a) as
`obvious over Bowes, Datasheet, Artieri, Christiansen, and Arimilli;
`
`
`9 U.S. Patent No. 6,029,217.
`10 T. Shanley et al., “PCI System Architecture,” Addison-Wesley Publ’g Co.
`(3rd ed. Feb. 1995).
`11 U.S. Patent No. 5,787,264.
`
`
`
`4
`
`
`
`
`
`IPR2016-01114 (Patent 7,777,753)
`IPR2016-01118 (Patent 7,321,368)
`IPR2016-01134 (Patent 7,542,045)
`
`
`5. Claim 9 is unpatentable under 35 U.S.C. § 103(a) as obvious over
`Bowes, Datasheet, Artieri, Christiansen, and Shanley; and
`6. Claim 12 is unpatentable under 35 U.S.C. § 103(a) as obvious over
`Bowes, Datasheet, Artieri, Christiansen, and Gove.
`IPR2016-01114, Paper 7, 42.
`On January 4, 2017, we issued a Final Written Decision in IPR2015-
`01501, in which we found claims 1–4 of the ’753 patent to be unpatentable
`based on the following grounds:
`1. Claims 1 and 2 under 35 U.S.C. § 103(a) as obvious over Bowes
`and MPEG; and
`2. Claim 3 under 35 U.S.C. § 103(a) as obvious over Bowes, MPEG,
`and Stearns; and
`3. Claim 4 under 35 U.S.C. § 103(a) as obvious over Bowes, MPEG,
`MPEG, and Shanley.
`1501 FWD 3, 37. Neither party to IPR2015-01501 filed a request for
`rehearing within thirty days of entry of that decision. 37 C.F.R. § 42.71.
`As a result, some of the claims instituted upon in IPR2016-01114 (i.e.,
`claims 1–4) have been held unpatentable, but others (i.e., claims 7–10 and
`12) have not been held unpatentable. See IPR2016-01114, Paper 7, 3 n.1
`(“Upon issuance of a Final Written Decision in [IPR2015-01501], the panel
`shall determine whether it is appropriate to maintain this proceeding against
`all or some of the claims, upon which review is instituted, or to terminate
`this proceeding and vacate this Decision on Institution.”).
`
`
`
`
`5
`
`
`
`IPR2016-01114 (Patent 7,777,753)
`IPR2016-01118 (Patent 7,321,368)
`IPR2016-01134 (Patent 7,542,045)
`
`
`
`
`
`C. The ’045 patent
`On December 8, 2016, we instituted an inter partes review of certain
`claims of U.S. Patent 7,542,045 B2 (“the ’045 patent”) on the following
`grounds:
`1. Claims 1, 4, 5, 7, 10, 12, 16, and 17 under 35 U.S.C. § 103(a) as
`obvious over Bowes, Datasheet, and Artieri; and
`2. Claims 9 and 15 under 35 U.S.C. § 103(a) as obvious over Bowes,
`Datasheet, Artieri, and Gove.
`IPR2016-01134, Paper 7, 32.
`On January 4, 2017, we issued a Final Written Decision in IPR2015-
`01502, in which we found claims 1, 2, 4–7, 9, 10, 12, 13, and 15–17 of the
`’045 patent to be unpatentable based on the following grounds:
`1. Claims 1, 4, 5, 7, 10, 12, 16, and 17 under 35 U.S.C. § 103(a) as
`obvious over Bowes and MPEG; and
`2. Claims 9 and 15 under 35 U.S.C. § 103(a) as obvious over Bowes,
`MPEG, and Rathnam; and
`3. Claims 2, 6, and 13 under 35 U.S.C. § 103(a) as obvious over
`Bowes, MPEG, and Stearns.
`1502 FWD 3, 37. Neither party to IPR2015-01502 filed a request for
`rehearing within thirty days of entry of that decision. 37 C.F.R. § 42.71.
`As a result, all of the claims instituted upon in IPR2016-01134 have
`been held unpatentable. See IPR2016-01134, Paper 7, 3 n.1 (“Upon
`issuance of a Final Written Decision in [IPR2015-01502], the panel shall
`determine whether it is appropriate to maintain this proceeding against any
`
`
`
`6
`
`
`
`IPR2016-01114 (Patent 7,777,753)
`IPR2016-01118 (Patent 7,321,368)
`IPR2016-01134 (Patent 7,542,045)
`
`
`of the claims, upon which review is instituted, or to terminate this
`proceeding and vacate this Decision on Institution.”).
`
`
`
`
`III. DISCUSSION
`The rules governing AIA inter partes proceedings, including those
`pertaining to institution, are “construed to secure the just, speedy, and
`inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b); accord
`35 U.S.C. § 316(b) (regulations for AIA inter partes proceedings take into
`account “the efficient administration of the Office” and “the ability of the
`Office to timely complete [instituted] proceedings”). Moreover, we have
`discretion not to institute or to terminate a review for reasons of
`administrative expediency. See 35 U.S.C. § 314(a) (authorizing institution
`of an inter partes review under particular circumstances, but not requiring
`institution under any circumstances); see also Medtronic, Inc. v. Robert
`Bosch Healthcare Sys., Inc., 839 F.3d 1382, 1385 (Fed. Cir. 2016) (“But [35
`U.S.C.] § 318(a) contemplates that a proceeding can be ‘dismissed’ after it is
`instituted, and, as our prior cases have held, ‘administrative agencies possess
`inherent authority to reconsider their decisions, subject to certain limitations,
`regardless of whether they possess explicit statutory authority to do so.’”
`(citations omitted)).
`Initially, we note that, pursuant to 35 U.S.C. § 318(a), it is not clear
`that we may “issue a final written decision with respect to the patentability
`of any patent claim challenged by the petitioner” (emphasis added), if we
`have determined previously that that claim is unpatentable and issued a final
`written decision to that effect. As noted above, we have determined that all
`
`
`
`7
`
`
`
`
`
`IPR2016-01114 (Patent 7,777,753)
`IPR2016-01118 (Patent 7,321,368)
`IPR2016-01134 (Patent 7,542,045)
`
`
`of the claims instituted upon in IPR2016-01118, all of the claims instituted
`upon in IPR2016-01134, and all of the claims instituted upon in IPR2016-
`01114, except claims 7–10 and 12, are unpatentable, and rehearing of those
`determinations has not been requested. Moreover, those determinations of
`unpatentability are, like the grounds upon which we instituted in these
`proceedings, based upon obviousness over Bowes in combination with other
`prior art references. As a result, proceeding to a final written decision in
`IPR2016-01118 and IPR2016-01134, and as to claims 1–4 in IPR2016-
`01114 is potentially duplicative and, therefore, an inefficient use of our time
`and resources. Further, to the extent that challenged claims have been
`determined to be unpatentable, maintaining serial proceedings challenging
`claims that we have previously determined to be unpatentable may burden
`Petitioner’s and Patent Owner’s resources unnecessarily. Thus, the parties
`are ordered to show cause why IPR2016-01118 and IPR2016-01134 should
`not be terminated and the Decisions to Institute in those proceedings
`vacated, and why IPR2016-01114 should not be terminated only as to claims
`1–4 and the Decision to Institute with respect to claim 1–4 in that proceeding
`vacated.
`
`
`
`
`8
`
`
`
`IPR2016-01114 (Patent 7,777,753)
`IPR2016-01118 (Patent 7,321,368)
`IPR2016-01134 (Patent 7,542,045)
`
`
`
`
`
`IV. ORDER
`
`Accordingly, it is
`ORDERED that, in IPR2016-01114, each of the parties shall file, no
`later than one week from this Order, a paper not to exceed five pages in
`length showing cause why IPR2016-01114 should not be terminated only as
`to claims 1–4, and the Decision to Institute with respect to claims 1–4 in that
`proceeding vacated;
`FURTHER ORDERED that, in IPR2016-01118, each of the parties
`shall file, no later than one week from this Order, a paper not to exceed five
`pages in length showing cause why IPR2016-01118 should not be
`terminated, and the Decision to Institute in that proceeding vacated; and
`FURTHER ORDERED that, in IPR2016-01134, each of the parties
`shall file, no later than one week from this Order, a paper not to exceed five
`pages in length showing cause why IPR2016-01134 should not be
`terminated, and the Decision to Institute in that proceeding vacated.
`
`
`
`9
`
`
`
`
`
`IPR2016-01114 (Patent 7,777,753)
`IPR2016-01118 (Patent 7,321,368)
`IPR2016-01134 (Patent 7,542,045)
`
`
`For PETITIONER:
`Andrew S. Ehmke
`David W. O’Brien
`Haynes and Boone, LLP
`andy.ehmke.ipr@haynesboone.com
`david.obrien.ipr@haynesboone.com
`
`For PATENT OWNER:
`
`Massod Anjom
`Scott Clark
`Ahmad, Zavitsanos, Anaipakos, Alavi & Mensing P.C.
`manjom@azalaw.com
`sclark@azalaw.com
`
`
`
`10
`
`
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