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` Paper No. 37
`Entered: September 15, 2017
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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., HTC CORPORATION and
`HTC AMERICA, INC.,
`Petitioners,
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`v.
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`PARTHENON UNIFIED MEMORY ARCHITECTURE LLC,
`Patent Owner
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`———————
`
`Case IPR2016-011351
`Patent 5,812,789
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`———————
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`
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`PETITIONERS HTC CORPORATION AND HTC AMERICA, INC.’S
`RESPONSE TO ORDER TO SHOW CAUSE
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`1 Case IPR2017-00512 has been joined with this proceeding.
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`IPR2016-01135
`Patent 5,812,789
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`Petitioners HTC Corporation and HTC America, Inc. (collectively, “HTC”)
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`respectfully submit this response to the Board’s Order to Show Cause (“OSC”)
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`(Paper 32). For the reasons set forth herein, the Board should not terminate this
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`proceeding, or vacate the institution decision.
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`The OSC cites as possible support for the partial termination of this
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`proceeding and the vacatur of the HTC Institution Decision (Paper 27) 35 U.S.C.
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`§§ 314(a) and 318(a). Paper 32 at 6. Neither provides support for termination
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`here.
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`Section 318(a) does not authorize termination. To the contrary, it requires
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`the Board to issue a final written decision (“FWD”) unless the IPR is “dismissed
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`under this chapter.” See 35 U.S.C. § 318(a) (“If an inter partes review is instituted
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`and not dismissed under this chapter, the Patent Trial and Appeal Board shall issue
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`a final written decision ...”) (emphasis added). That section therefore does not
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`mandate, authorize or empower the actions the OSC envisions. Indeed,
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`interpreting a provision requiring a FWD to be issued absent dismissal as
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`providing authority for dismissal so as to avoid issuing a FWD would turn the
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`statutory language on its head.
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`The OSC also cites § 318(a) in raising the question of whether the Board
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`“may ‘issue a final written decision with respect to the patentability of any patent
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`challenged by the petitioner’ (emphasis added), if we have determined previously
`1
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`IPR2016-01135
`Patent 5,812,789
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`that the claim is unpatentable and issued a final written decision to that effect.’”
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`Paper 32 at 6. The OSC does not explain the Board’s thinking on this question,
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`though it may be the notion that once the Board makes a decision as to the
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`“patentability” of a claim in one proceeding, that same issue is foreclosed to the
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`Board in any other proceeding. If that is the Board’s concern, HTC respectfully
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`disagrees. Certainly nothing in the language of § 318(a), or any other provision
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`HTC is aware of, provides support for such a limitation on the Board’s authority.
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`Indeed, the AIA creates standing to file an IPR petition in any member of the
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`public other than the patentee (and those who are estopped), which strongly
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`suggests that Congress did not intend to limit the Board’s work to one FWD per
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`patent claim. Put simply, under the statutory framework enacted by Congress, at
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`least until the patentability of a claim is finally determined and all appeal rights
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`exhausted, the Board should apply its regular practices to each petition that is filed.
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`See Int’l Business Machines Corp. v. Intellectual Ventures II LLC, IPR2015-
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`01322, Paper 22 at 2 (April 6, 2016) (finding that only after “the time period has
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`elapsed for appeal of [FWD]” . . . “all of the challenged claims in this [IPR] are
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`unpatentable”). Here, since Patent Owner’s time to appeal the 923 FWD has not
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`expired, Section 318(a) cannot provide grounds for termination.
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`The OSC also cites § 314(a) and Medtronic, Inc. v. Robert Bosch Healthcare
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`Systems, Inc., 839 F.3d 1382, 1385 (Fed. Cir. 2016) in support of the Board’s
`2
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`IPR2016-01135
`Patent 5,812,789
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`discretion to decline or reconsider institution. Paper No. 32 at 5-6. Discretion, of
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`course, is not unlimited, Martin v. Franklin Capital Corp., 546 U.S. 132, 139
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`(2005) (“Discretion is not whim, and limiting discretion according to legal
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`standards helps promote the basic principle of justice that like cases should be
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`decided alike.”), and HTC respectfully asserts that termination here would not be
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`an appropriate use of any Board discretion for several reasons.
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`First, the question here is not simply a “reconsideration” of the institution
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`decision, as in Medtronic, because the operative fact at issue here – the issuance of
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`a FWD in IPR2016-00923 -- did not exist at the time this proceeding was
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`instituted. In Medtronic, for example, the operative fact that called for
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`reconsideration of the institution decision was the existence of a real party in
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`interest not identified in the petition. See 839 F.3d at 1383-84. That fact existed at
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`the time of institution, but was not known to the Board until after institution, so
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`reconsideration was clearly warranted.
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`Here, at the time this proceeding was instituted the FWD in IPR2016-00923
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`had not issued, and it was not known for sure whether it would issue or what it
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`would say. This distinction is important because the filing of an IPR petition is a
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`non-trivial matter, particularly where (as here) there exists parallel litigation on the
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`patent at issue. It takes a good amount of attorney time and expense to prepare,
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`file and litigate a viable IPR petition, and the act of doing so almost always creates
`3
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`IPR2016-01135
`Patent 5,812,789
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`at least the possibility of effects on any parallel litigation. HTC respectfully asserts
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`that placing the uncertainty of the possibility of a FWD in a different proceeding
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`“pulling the rug out” from a petitioner’s efforts would be bad policy. A petitioner
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`who does everything right – files the petition in time, names the correct real parties
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`in interest, advances the right evidence and argument, etc. – should be given a
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`FWD.
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`Moreover, here, reliance on any discretion to terminate is particularly
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`unwarranted because of the prejudice it would visit upon HTC and the limited
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`additional work this proceeding would require of the Board. HTC has invested
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`time and money in these proceedings and their outcome may have substantial
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`effects on its ongoing dispute with Patent Owner. All of that may be wasted if the
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`Board terminates and vacates.
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`Further, the panel assigned to this proceeding is already familiar with the
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`patent and technology at issue here and, as usual in these proceedings, the issues to
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`be decided have been rendered down to only a few that will remain regardless of
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`whether the Board partially terminates. Because the remaining claims depend
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`from claim 1 – which was found unpatentable in the 923 FWD – the Board would
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`still have to evaluate the prior art against claim 1 to decide the patentability of the
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`remaining claims. Indeed, the Board may need to do little else because Patent
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`Owner has raised no issue as to those claims other than that raised as to clam 1.
`4
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`IPR2016-01135
`Patent 5,812,789
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`See Paper 24 at 5-13.
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`Accordingly, for the reasons set forth herein, the Board should not terminate
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`this proceeding, or vacate the institution decision.2
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`2 The OSC also references a footnote in the Apple Institution Decision (Paper 7)
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`regarding a potential estoppel issue under Section 315(e)(1) against Apple. Paper
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`32 at 3. No like notice was contained in the HTC Institution Decision. See Paper
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`27. Nor does the OSC identify an estoppel issue for which a response is required
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`here. Accordingly, should the Board seek to terminate HTC pursuant to §
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`315(e)(1), HTC requests an opportunity to respond on that issue. See 5 U.S.C. §
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`554. Without prejudice to that request, HTC notes that as a subsequent petitioner
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`joined to the earlier proceeding (IPR2016-00923), HTC was differently situated
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`than Apple (the original petitioner in that proceeding) with respect to what grounds
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`it “raised or reasonably could have raised during the trial” of IPR2016-00923.
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`More specifically, in view of the Board’s practice of permitting joinder of
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`subsequently filed petitions only where substantially identical grounds and
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`evidence are advanced in the subsequent petition, HTC could not have reasonably
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`raised the grounds asserted in IPR2016-01135 in IPR2016-00923, and is therefore
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`not estopped from maintaining those grounds in this proceeding under § 315(e)(1).
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`5
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`IPR2016-01135
`Patent 5,812,789
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`Dated: September 15, 2017
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`Respectfully Submitted,
`
`/Joseph A. Micallef/
`Joseph A. Micallef
`Registration No. 39,772
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
`Attorney for Petitioners
`HTC Corporation and HTC
`America, Inc.
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`6
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`IPR2016-01135
`Patent 5,812,789
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that on this 15th day of
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`September, 2017, I caused to be served a true and correct copy of the foregoing and
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`any accompanying exhibits via electronic mail on the following counsel:
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`Counsel for Patent Owner
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`Masood Anjom, manjom@azalaw.com
`Amir Alavi, aalavi@azalaw.com
`Scott Clark, sclark@azalaw.comMichael McBride, mmcbride@azalaw.com
`Justin Chen, jchen@azalaw.comGregory J. Gonsalves,
`gonsalves@gonsalveslawfirm.com
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`Counsel for Petitioner Apple Inc.
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`Andrew S. Ehmke, andy.ehmke.ipr@haynesboone.com
`David W. O’Brien, david.obrien.ipr@haynesboone.com
`Michael S. Parsons, michael.parsons.ipr@haynesboone.com
`Adam C. Fowles, adam.fowles.ipr@haynesboone.com
`David L. Alberti, dalberti@feinday.com
`Yakov Zolotorev, yzolotorev@feinday.com
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`Dated: September 15, 2017
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`Respectfully Submitted,
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`/Joseph A. Micallef/
`Joseph A. Micallef
`Registration No. 39,772
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
`Attorney for Petitioners
`HTC Corporation and HTC
`America, Inc.
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`7
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