`571-272-7822
`
`
`Paper 32
`Entered: March 17, 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.
`____________
`
`Case IPR2016-01114
`Patent 7,777,753 B2
`____________
`
`
`Before JAMES B. ARPIN, MATTHEW R. CLEMENTS, and
`SUSAN L. C. MITCHELL, Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`
`
`DECISION
`Partial Termination of Inter Partes Review
` 37 C.F.R. § 42.72
`
`
`
`IPR2016-01114
`Patent 7,777,753 B2
`
`BACKGROUND
`Apple Inc. (“Petitioner”) filed a Petition requesting an inter partes
`review of claims 1, 2, 4, 7–10, and 12 (“the challenged claims”) of U.S.
`Patent No. 7,777,753 B2 (Ex. 1001, “the ’753 patent”). Paper 2. On
`December 7, 2016, we instituted trial for all of the challenged claims of the
`’753 Patent. Paper 7. Subsequently, in a separate proceeding involving the
`’753 patent, we issued a Final Written Decision pursuant to 35 U.S.C.
`§ 318(a) determining claims 1–4 of the ’753 patent to be unpatentable. HTC
`Corp. v. Parthenon Unified Memory Architecture LLC, Case IPR2015-
`01501, slip op. at 37 (PTAB January 4, 2017) (Paper 53). On February 22,
`2017, we issued an Order to Show Cause why the instant proceeding should
`not be terminated with respect to claims 1, 2, and 4 in view of the
`determination that claims 1–4 of the ’753 patent are unpatentable. Paper 27,
`2. After a conference call with the parties on February 27, 2017, we issued
`an Order authorizing the parties to file a Joint Motion to Terminate the
`instant proceeding with respect to claims 1, 2, and 4 in lieu of a response to
`the Order to Show Cause. Paper 28, 3. On March 10, 2017, the parties filed
`a Joint Motion to Partially Terminate the instant proceeding. Paper 31.
`In their Joint Motion to Partially Terminate, the parties indicate that
`the time period has lapsed for appealing the Final Written Decision in HTC
`Corporation v. Parthenon Unified Memory Architecture LLC, Case
`IPR2015-01501, to the U.S. Court of Appeals for the Federal Circuit. See
`
`
`
`
`2
`
`
`
`IPR2016-01114
`Patent 7,777,753 B2
`Paper 31, 1. Therefore, three of the challenged claims in the instant inter
`partes review, i.e., claims 1, 2, and 4 of the ’753 patent, are unpatentable.1
`The particular facts before us indicate that it is appropriate to
`terminate this inter partes review. See 37 C.F.R. § 42.72. We already have
`determined that claims 1–4 of the ’753 patent are unpatentable, and,
`therefore, any decision we might reach in the instant proceeding regarding
`the patentability of these claims would be moot and purely advisory. See
`Paper 31, 2 (“Because the Director must issue the certificate, this proceeding
`as to claims 1, 2, and 4 is now moot and should be terminated as to claims 1,
`2, and 4, but only as to such claims. Claims (7-10 and 12) continue to be
`challenged in the present inter partes review, and that challenge is not
`rendered moot.”). Furthermore, rendering a Final Written Decision in the
`instant proceeding would not promote securing the just, speedy, and
`inexpensive resolution of every proceeding or the efficient utilization of the
`Board’s limited resources. See 37 C.F.R. § 42.1(b).
`
`
`
`1 In addition, Parthenon Unified Memory Architecture (“Patent Owner”) did
`not file a Patent Owner Response or a Motion to Amend in the instant
`proceeding with respect to claims 1, 2, or 4 of the ’753 patent. See Paper 31,
`1; see also Paper 29, 2 (“The Board held that claims 1–4 are unpatentable in
`IPR2015-01501. Therefore, this response is directed to an analysis of
`grounds 3–6 of the above Instituted Grounds.”). In the Scheduling Order for
`the instant proceeding, “[t]he patent owner [was] cautioned that any
`arguments for patentability not raised and fully briefed in the response will
`be deemed waived.” Paper 8, 3.
`
`
`
`3
`
`
`
`IPR2016-01114
`Patent 7,777,753 B2
`
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that we grant the parties’ Joint Motion to Partially
`Terminate and, as a result, we terminate this inter partes review as moot
`with respect to claims 1, 2, and 4 of the ’753 patent.
`
`For PETITIONER:
`
`David W. O’Brien
`Andrew Ehmke
`HAYNES & BOONE, LLP
`David.obrien.ipr@haynesboone.com
`Andy.ehmke.ipr@haynesboone.com
`
`For PATENT OWNER:
`
`Masood Anjom
`Scott Clark
`AHMAD, ZAVITSANOS, ANAIPAKOS, ALAVI & MENSING P.C.
`manjom@azalaw.com
`sclark@azalaw.com
`
`
`
`
`
`
`
`
`
`4
`
`
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