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`Paper No.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_____________________
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`APPLE INC.,
`Petitioner,
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`v.
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`PARTHENON UNIFIED MEMORY ARCHITECTURE LLC,
`Patent Owner
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`_____________________
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`Case IPR2016-01114
`Patent No. 7,777,753
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`_____________________
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`JOINT MOTION TO PARTIALLY TERMINATE UNDER 37 C.F.R. § 42.72
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`Joint Motion to Partially Terminate
`IPR2016-01114 (Patent No. 7,777,753)
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`Petitioner Apple Inc., (“Apple”) and Patent Owner Parthenon Unified
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`Memory Architecture LLC (“PUMA”) (collectively, the “Parties”), pursuant to the
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`authorization provided by the Board’s Order – Conduct of the Proceedings entered
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`March 1, 2017 (Paper 28), 35 U.S.C. § 315(d) and 37 C.F.R. § 42.72, jointly
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`request termination of this inter partes review only as to claims 1, 2, and 4. The
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`instant motion is filed in lieu of a response to the Board’s Order to Show Cause
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`issued February 22, 2017. Ex. 1026, 14:8-13.
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`1. Statement of Facts
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`On May 31, 2016, Petitioner filed a Petition requesting inter partes review
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`of claims 1, 2, 4, 7-10, and 12 of U.S. Patent No. 7,777,753 (“the ’753 Patent”)
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`(IPR2016-01114). On December 7, 2016, the Board instituted inter partes review
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`as to all challenged claims (Paper 7). DUE DATE 1 (March 9, 2017) has passed
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`and Patent Owner certifies that it has not filed (and will not file) a Response
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`contesting the instituted grounds as to claim 1, 2, or 4 of the ’753 Patent.
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`Claims 1-4 of the ’753 Patent were held unpatentable in the Final Written
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`Decision in HTC Corp. v. Parthenon Unified Memory Architecture LLC, Case
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`IPR2015-01501 (PTAB Jan. 4, 2017) (Paper 53) (“1501 FWD”). Patent Owner
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`confirmed that it did not intend to appeal the 1501 FWD (Ex. 1026, 8:23-25), the
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`time for such appeal expired March 8, 2017, and Patent Owner hereby certifies that
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`no Notice of Appeal has been or will be filed relative to the 1501 FWD.
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`-1-
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`2. Relief Requested
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`Joint Motion to Partially Terminate
`IPR2016-01114 (Patent No. 7,777,753)
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`Relative to the 1501 FWD, Patent Owner’s time for noticing an appeal to the
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`Court of Appeals for the Federal Circuit expired March 8, 2017, and Patent Owner
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`certifies that it has not filed (and will not file) a notice of appeal of the 1501 FWD.
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`35 USC §§ 141-142, 319; 37 CFR § 90.3. Thus, because a final written decision
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`determining challenged claims 1, 2, and 4 to be unpatentable has issued, and
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`because the time for appeal has expired, pursuant to 35 USC § 318, “the Director
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`shall issue and publish a certificate canceling” claims 1, 2, and 4 of the ’753
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`Patent. 35 USC § 318(a, b). When that certificate issues in due course based on
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`the now-final determination of the 1501 FWD, claims 1, 2, and 4 will no longer be
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`patent claims of the ’753 Patent and, relative to this proceeding, the Board will no
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`longer be able to issue a “final written decision with respect to the patentability of
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`[] patent claim[s 1, 2 or 4] challenged by the petitioner.” 35 USC § 318(a)
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`(emphasis added). Because the Director must issue the certificate, this proceeding
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`as to claims 1, 2, and 4 is now moot and should be terminated as to claims 1, 2, and
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`4, but only as to such claims. Claims (7-10 and 12) continue to be challenged in the
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`present inter partes review, and that challenge is not rendered moot.
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`The Board has previously followed this very course of action, terminating-
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`in-part an inter partes review as moot where that review challenged claims that
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`were finally determined to be unpatentable in a previously-issued final written
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`-2-
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`Joint Motion to Partially Terminate
`IPR2016-01114 (Patent No. 7,777,753)
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`decision. See International Business Machines Corp. v. Intellectual Ventures II
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`LLC, Case IPR2015-01323 (PTAB Apr. 7, 2016) (Paper 22). The Board based its
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`decision (in part) on the additional fact that the time for appeal of the earlier final
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`written decision had lapsed. The same course of action is appropriate here, as
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`Patent Owner’s time for appeal of the 1501 FWD has expired and claims 1, 2, and
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`4 challenged in the instant proceeding have been finally determined to be
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`unpatentable. The Board’s authority to terminate can be found in 35 USC § 315(d).
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`For avoidance of doubt, Petitioner respectfully submits that vacating the
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`Decision to Institute is not appropriate. See Ex. 1026, 10:3-12:4. The Board has
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`previously vacated an institution decision in very limited circumstances (e.g., no
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`jurisdiction to review patent, defective petition, or misapprehension of claim
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`dependency). None of those circumstances exist here, and accordingly, Petitioner
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`respectfully submits that, while termination-in-part of this proceeding as moot is
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`appropriate for the reasons set forth above, vacating the present Decision to
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`Institute (even in-part) is not warranted.
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`Because challenged claims 1, 2, and 4 have already been finally determined
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`to be unpatentable, any decision the Board might reach in this proceeding
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`regarding those claims would be moot and purely advisory. The Parties therefore
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`respectfully request that the Board partially terminate the present proceeding, but
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`only as to claims 1, 2, and 4, for which the present proceeding is now moot.
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`-3-
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`Respectfully submitted,
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`Joint Motion to Partially Terminate
`IPR2016-01114 (Patent No. 7,777,753)
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`Masood Anjom
`Registration No. 62,167
`Counsel for Patent Owner
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`/David W. OBrien/
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`David W. O’Brien
`Registration No. 40,107
`Counsel for Petitioner
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`Dated: March 10, 2017
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`-4-
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`Joint Motion to Partially Terminate
`IPR2016-01114 (Patent No. 7,777,753)
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a), this is to certify that I
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`caused to be served a true and correct copy of the foregoing “Joint Motion to
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`Partially Terminate” as detailed below:
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`Date of service March 10, 2017
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`Manner of service Electronic Mail to: manjom@azalaw.com
`aalavi@azalaw.com; sclark@azalaw.com; and
`mmcbride@azalaw.com
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`Documents served Joint Motion to Partially Terminate
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`Masood Anjom
`Amir Alavi
`Scott Clark
`Michael McBride
`AHMAD, ZAVITSANOS, ANAIPAKOS, ALAVI &
`MENSING P.C.
`1221 McKinney, Suite 2500
`Houston, TX 77010
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`Persons served
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`/David W. OBrien/
`David W. O’Brien
`Registration No. 40,107
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`-5-
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