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