Paper No. 41
`Trials@uspto.gov
`571-272-7822
`
`Entered: August 14, 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
`
`
`APPLE INC., HTC CORPORATION, and HTC AMERICA, INC.
`Petitioner,
`
`v.
`
`PARTHENON UNIFIED MEMORY ARCHITECTURE LLC,
`Patent Owner.
`
`
`Case IPR2016-01121 (Patent 5,960,464)1
`Case IPR2016-01135 (Patent 5,812,789)2,3
`
`
`
`
`
`1 IPR2017-00513 has been joined to this proceeding.
`2 IPR2017-00512 has been joined to this proceeding.
`3 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 are
`not authorized to use this style heading for any subsequent papers.
`
`
`Trials@uspto.gov
`571-272-7822
`
`Entered: August 14, 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
`
`
`APPLE INC., HTC CORPORATION, and HTC AMERICA, INC.
`Petitioner,
`
`v.
`
`PARTHENON UNIFIED MEMORY ARCHITECTURE LLC,
`Patent Owner.
`
`
`Case IPR2016-01121 (Patent 5,960,464)1
`Case IPR2016-01135 (Patent 5,812,789)2,3
`
`
`
`
`
`1 IPR2017-00513 has been joined to this proceeding.
`2 IPR2017-00512 has been joined to this proceeding.
`3 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 are
`not authorized to use this style heading for any subsequent papers.
`
`
`
`IPR2016-01114 (Patent 7,777,753 B2)
`IPR2016-01121 (Patent 5,960,464)
`IPR2016-01135 (Patent 5,812,789)
`
`Before JAMES B. ARPIN, MATTHEW R. CLEMENTS, and
`SUSAN L. C. MITCHELL, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`INTRODUCTION
`I.
`On August 11, 2017, a teleconference was held between counsel for
`Petitioner, counsel for Patent Owner, and Judges Zecher, Arpin, and Clements.
`The panel requested the call to discuss the effects of our recent Final Written
`Decisions (“FWDs”) in IPR2016-00923 and IPR2016-00924 on the ongoing
`proceedings in IPR2016-01121 and IPR2016-01135, and on the parties’
`outstanding requests for oral hearing in IPR2016-01114, IPR2016-01121, and
`IPR2016-01135. See, e.g., IPR2016-01121, Paper 7, 3 n.1. For the reasons
`discussed below, we vacate Due Date 7 and order the parties to identify other dates
`on which they are available for a hearing or hearings in these cases.
`
`BACKGROUND
`II.
`A. The ’464 patent
`
`On December 5, 2016, we instituted we instituted an inter partes review of
`claims 1, 3, 4, 7, 8, 10, 12, 13, 16, 17, and 19–23 of U.S. Patent 5,960,464 (“the
`’464 patent”) under 35 U.S.C. § 103(a) as obvious over Gulick4 and Nale5.
`IPR2016-01121, Paper 7, 18.
`
`
`4 U.S. Patent No. 5,797,028.
`5 U.S. Patent No. 5,793,385.
`
`2
`
`
`
`IPR2016-01114 (Patent 7,777,753 B2)
`IPR2016-01121 (Patent 5,960,464)
`IPR2016-01135 (Patent 5,812,789)
`
`
`On August 4, 2017, we issued a Final Written Decision in IPR2016-00924,
`in which we found claims 1–4, 7–13, 16–24, 32–36, and 40 of the ’464 patent to be
`unpatentable based on the following grounds:
`1. claims 1, 3, 4, 8–10, 12, 13, 16–21, 23, 24, 32, 33, 35, 36, and 40 of the
`’464 patent are unpatentable under § 102(b) as anticipated by
`Notarianni6;
`2. claims 7 and 22 of the ’464 patent are unpatentable under § 103(a) as
`obvious over the teachings of Notarianni;
`3. claims 2 and 11 of the ’464 patent are unpatentable under § 103(a) as
`obvious over the combined teachings of Notarianni and Moore7; and
`4. claim 34 of the ’464 patent is unpatentable under § 103(a) as obvious
`over the combined teachings of Notarianni and Rathnam8.
`Apple Inc., HTC Corporation, and HTC America, Inc., v. Parthenon Unified
`Memory Architecture LLC, Case IPR2016-00924 (PTAB Aug. 4, 2017) (Paper 39)
`(“924 FWD”).
`As a result, all of the claims, upon which we instituted in IPR2016-01121,
`have been held unpatentable in IPR2016-00924. See IPR2016-01121, Paper 7, 3
`n.1 (“If we issue a Final Written Decision in [IPR2016-00924], it will be
`appropriate to determine whether Petitioner is estopped from maintaining this
`proceeding. See 35 U.S.C. § 315(e)(1). If we determine at that time that Petitioner
`
`
`6 U.S. Patent No. 5,404,511.
`7 Gordon E. Moore, Cramming More Components onto Integrated Circuits, 38
`ELECTRONICS 114 (1965).
`8 Selliah Rathnam & Gert Slavenburg, An Architectural Overview of the
`Programmable Multimedia Processor, TM-1, 1996 IEEE PROC. COMPCON ’96,
`at 319.
`
`3
`
`
`
`IPR2016-01114 (Patent 7,777,753 B2)
`IPR2016-01121 (Patent 5,960,464)
`IPR2016-01135 (Patent 5,812,789)
`
`is estopped, we may terminate this proceeding and vacate this Decision on
`Institution.”).
` Patent Owner, however, has until September 4, 2017, to file a request for
`rehearing of that decision. 37 C.F.R. § 42.71.
`
`B. The ’789 patent
`
`On December 6, 2016, we instituted an inter partes review of claims 1–8
`and 11–14 of U.S. Patent 5,812,789 (“the ’789 patent”) on the following grounds:
`1. Claims 1–5 and 12–14 as unpatentable under § 103(a) over the
`combination of Bowes9, TMS10, and Thomas11;
`2. Claims 6 and 8 as unpatentable under § 103(a) over the combination of
`Bowes, TMS, Thomas, and Gove12;
`3. Claim 7 as unpatentable under § 103(a) over the combination of Bowes,
`TMS, Thomas, and Ran13; and
`4. Claim 11 as unpatentable under § 103(a) over the combination of Bowes,
`TMS, Thomas, and Celi14.
`IPR2016-01135, Paper 7, 28–29.
`On August 4, 2017, we issued a Final Written Decision in IPR2016-00923,
`in which we found claims 1, 3–6, 11, and 13 of the ’789 patent to be unpatentable
`based on the following grounds:
`
`
`9 U.S. Patent No. 5,546,547.
`10 TMS320C8x System-Level Synopsis, Literature Ref. No. SPRU113B, Texas
`Instruments, Inc. (Sept. 1995).
`11 U.S. Patent No. 5,001,625.
`12 Robert J. Gove, The MVP: A Highly-Integrated Video Compression Chip, IEEE
`(1994).
`13 U.S. Patent No. 5,768,533.
`14 U.S. Patent No. 5,742,797.
`
`4
`
`
`
`IPR2016-01114 (Patent 7,777,753 B2)
`IPR2016-01121 (Patent 5,960,464)
`IPR2016-01135 (Patent 5,812,789)
`
`
`1. claims 1, 3, 5, 11, and 13 of the ’789 patent are unpatentable under §
`102(e) as anticipated by Lambrecht15;
`2. claim 4 of the ’789 patent is unpatentable under § 103(a) as obvious over
`the combined teachings of Lambrecht and Artieri16; and
`3. claim 6 of the ’789 patent is unpatentable under § 103(a) as obvious over
`the combined teachings of Lambrecht and Moore.
`Apple Inc., HTC Corporation, and HTC America, Inc., v. Parthenon Unified
`Memory Architecture LLC, Case IPR2016-00923 (PTAB Aug. 4, 2017) (Paper 39)
`(“923 FWD”).
`As a result, all but claims 2, 7, 8, 12, and 14 in IPR2016-01135 have been
`held unpatentable in IPR2016-00923. See IPR2016-01135, Paper 7, 3 n.1 (“If we
`issue a Final Written Decision in [IPR2016-00924], it will be appropriate to
`determine whether [Petitioner] is estopped from maintaining this proceeding. See
`35 U.S.C. § 315(e)(1). If we determine at that time that [Petitioner] is estopped
`with respect to claims 1, 3–6, 11, and 13, because claim 1 is the sole independent
`claim under review, we terminate this proceeding with respect to claims 2, 7, 8, 12,
`and 14 and, if appropriate, vacate this Decision on Institution.”).
` Patent Owner, however, has until September 4, 2017, to file a request for
`rehearing of that decision. 37 C.F.R. § 42.71.
`
`
`III. DISCUSSION
`Oral argument in these cases is scheduled for September 5, 2017. See, e.g.,
`IPR2016-01114, Paper 15. Both parties requested oral argument. See, e.g.,
`
`
`15 U.S. Patent No. 5,682,484.
`16 U.S. Patent No. 5,579,052.
`
`5
`
`
`
`IPR2016-01114 (Patent 7,777,753 B2)
`IPR2016-01121 (Patent 5,960,464)
`IPR2016-01135 (Patent 5,812,789)
`
`IPR2016-01114, Papers 37, 38. There is a question, however, of whether
`Petitioner may argue the claims challenged in IPR2016-01121 and a subset of
`claims challenged in IPR2016-01135 in light of the 923 FWD and 924 FWD.
`Specifically, under 35 U.S.C. § 315(e)(1),
`[t]he petitioner in an inter partes review of a claim in a patent under this
`chapter that results in a final written decision under section 318(a), or
`the real party in interest or privy of the petitioner, may not request or
`maintain a proceeding before the Office with respect to that claim on
`any ground that the petitioner raised or reasonably could have raised
`during that inter partes review.
`In light of this statute, the question arises whether arguing the claims addressed in
`the 923 FWD and 924 FWD would be “maintain[ing]” a proceeding with respect to
`claims on a ground that Petitioner reasonably could have raised in IPR2016-00923
`or IPR2016-00924, respectively.
`During the call, we asked each party for its view on whether Petitioner
`should be allowed at the hearing to argue, in IPR2016-01121, the unpatentability
`of claims that were addressed in the 924 FWD and, in IPR2016-01135, the
`unpatentability of claims that were addressed in the 923 FWD. Patent Owner,
`noting that it may have pending requests for rehearing of the 923 FWD and 924
`FWD at the time of the hearing, did not necessarily object to Petitioner arguing
`those claims. Petitioner indicated, however, that estoppel is not warranted because
`it could not have raised reasonably the grounds asserted in the petitions for
`IPR2016-01121 and IPR2016-01135, and, even if we determine that it could have,
`estoppel is not warranted at least for claims 2, 7, 8, 12, and 14 in IPR2016-01135
`because those claims have not been addressed in a final written decision.
`
`6
`
`
`
`IPR2016-01114 (Patent 7,777,753 B2)
`IPR2016-01121 (Patent 5,960,464)
`IPR2016-01135 (Patent 5,812,789)
`
`
`The estoppel provision in § 315(e)(1) is effective when a review “results in a
`final written decision”—regardless of the substance of that decision—and, if we
`find that Petitioner reasonably could have raised the later challenges in the earlier
`proceedings, we may not have a choice but to terminate IPR2016-01121 and
`partially terminate IPR2016-01134 before we decide requests for rehearing, if any,
`of our 923 FWD and 924 FWD. Nevertheless, if we find that Petitioner could not
`reasonably have raised the later challenges in the earlier proceedings, it may be
`appropriate to assess any rehearing request(s), before determining whether we must
`terminate or partially terminate the proceeding because we already have found the
`challenged claims unpatentable. 35 U.S.C. § 318(a) (“If an inter partes review is
`instituted and not dismissed under this chapter, the Patent Trial and Appeal Board
`shall issue a final written decision with respect to the patentability of any patent
`claim challenged by the petitioner . . . .”); see 35 U.S.C. § 316(b). Because Patent
`Owner has until September 4, 2017, to file its requests for rehearing, and because
`we would not be able to decide any such requests prior to the hearing in these cases
`currently scheduled for September 5, 2017, we vacate Due Date 7 in these cases,
`and order the parties to meet and confer regarding availability for a later hearing on
`a day preferably during September 18–22, 2017, or, if need be, after October 2,
`2017. As discussed on the call, the parties should email trials@uspto.gov no later
`than August 18, 2017, with a list of multiple days when all necessary counsel are
`available for a hearing. The panel then will assess its availability and the
`availability of hearing rooms in Alexandria, VA; Denver, CO; and San Jose, CA,
`and will set a new date for Due Date 7.
`
`
`7
`
`
`
`IPR2016-01114 (Patent 7,777,753 B2)
`IPR2016-01121 (Patent 5,960,464)
`IPR2016-01135 (Patent 5,812,789)
`
`
`ORDER
`
`For the reasons given, it is:
`ORDERED that Due Date 7 is vacated and the hearing scheduled for
`September 5, 2017, is postponed until further notice; and
`FURTHER ORDERED that the parties meet and confer regarding their
`mutual availability, and email trials@uspto.gov no later than August 18, 2017,
`with a list of multiple days when all necessary counsel are available for a hearing.
`
`
`
`8
`
`
`
`IPR2016-01114 (Patent 7,777,753 B2)
`IPR2016-01121 (Patent 5,960,464)
`IPR2016-01135 (Patent 5,812,789)
`
`For PETITIONER:
`Andrew S. Ehmke
`David W. O’Brien
`Michael S. Parsons
`Raghav Bajaj
`Kelly Gehrke Lyle
`Haynes and Boone, LLP
`andy.ehmke.ipr@haynesboone.com
`david.obrien.ipr@haynesboone.com
`michael.parsons.ipr@haynesboone.com
`raghav.bajaj.ipr@haynesboone.com
`kelly.lyle@haynesboone.com
`
`David L. Alberti
`Yakov Zolotorev
`Feinberg Day Alberti & Thompson LLP
`dalberti@feinday.com
`yzolotorev@feinday.com
`
`For PATENT OWNER:
`Masood Anjom
`Scott Clark
`Amir Alavi
`Michael McBride
`Justin Chen
`Ahmad, Zavitsanos, Anaipakos, Alavi & Mensing P.C.
`manjom@azalaw.com
`sclark@azalaw.com
`aalavi@azalaw.com
`mmcbride@azalaw.com
`jchen@azalaw.com
`
`
`Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
`
`9
`
`
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