Trials@uspto.gov
`571-272-7822
`
`Paper No. 32
`Entered: August 25, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`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
`
`Before MICHAEL R. ZECHER, JAMES B. ARPIN, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`ORDER TO SHOW CAUSE
`Conduct of the Proceedings
`37 C.F.R. § 42.5(a)
`
`1 Case IPR2017-00513 has been joined to this proceeding.
`2 Case IPR2017-00512 has been joined to this proceeding.
`3
` This Order addresses an issue that is identical in both 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.
`
`
`571-272-7822
`
`Paper No. 32
`Entered: August 25, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`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
`
`Before MICHAEL R. ZECHER, JAMES B. ARPIN, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`ORDER TO SHOW CAUSE
`Conduct of the Proceedings
`37 C.F.R. § 42.5(a)
`
`1 Case IPR2017-00513 has been joined to this proceeding.
`2 Case IPR2017-00512 has been joined to this proceeding.
`3
` This Order addresses an issue that is identical in both 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.
`
`
`
`IPR2016-01121 (Patent 5,960,464)
`IPR2016-01135 (Patent 5,812,789)
`
`
`I.
`
`INTRODUCTION
`
`In December 2016, we instituted an inter partes review of certain claims
`
`(“the instituted claims”) of the patents at issue in each of the above-named
`
`proceedings. IPR2016-001121, Paper 7; IPR2016-01135, Paper 7.
`
`In August 2017, we issued Final Written Decisions in earlier-filed
`
`proceedings involving the same patents in which many of the instituted claims
`
`were held unpatentable. 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”); 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”).
`
`On August 23, 2017, Patent Owner contacted the Board to confirm that it
`
`will not file a Request for Rehearing of the 923 FWD or of the 924 FWD.
`
`As a result, we now order the parties in these proceedings to show cause
`
`why we should not terminate these proceedings as to the claims held unpatentable
`
`in those earlier Final Written Decisions
`
`II.
`
`BACKGROUND
`
`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 Nale.5
`
`IPR2016-01121, Paper 7, 18.
`
`
`4 U.S. Patent No. 5,797,028.
`5 U.S. Patent No. 5,793,385.
`
`2
`
`
`
`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
`
`Notarianni;6
`
`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 Moore;7 and
`
`4. Claim 34 of the ’464 patent is unpatentable under § 103(a) as obvious
`
`over the combined teachings of Notarianni and Rathnam.8
`
`924 FWD, 35.
`
`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
`
`is estopped, we may terminate this proceeding and vacate this Decision on
`
`Institution.”).
`
`
`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
`
`
`
`IPR2016-01121 (Patent 5,960,464)
`IPR2016-01135 (Patent 5,812,789)
`
`
`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 Thomas;11
`
`2. Claims 6 and 8 as unpatentable under § 103(a) over the combination of
`
`Bowes, TMS, Thomas, and Gove;12
`
`3. Claim 7 as unpatentable under § 103(a) over the combination of Bowes,
`
`TMS, Thomas, and Ran;13 and
`
`4. Claim 11 as unpatentable under § 103(a) over the combination of Bowes,
`
`TMS, Thomas, and Celi.14
`
`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:
`
`1. Claims 1, 3, 5, 11, and 13 of the ’789 patent are unpatentable under
`
`§ 102(e) as anticipated by Lambrecht;15
`
`
`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.
`15 U.S. Patent No. 5,682,484.
`
`4
`
`
`
`IPR2016-01121 (Patent 5,960,464)
`IPR2016-01135 (Patent 5,812,789)
`
`
`2. Claim 4 of the ’789 patent is unpatentable under § 103(a) as obvious over
`
`the combined teachings of Lambrecht and Artieri;16 and
`
`3. Claim 6 of the ’789 patent is unpatentable under § 103(a) as obvious over
`
`the combined teachings of Lambrecht and Moore.
`
`923 FWD, 44.
`
`As a result, all but claims 2, 7, 8, 12, and 14 at issue 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.”).
`
`
`
`III. DISCUSSION
`
`The rules governing AIA inter partes proceedings, including those
`
`pertaining to institution, are “construed to secure the just, speedy, and inexpensive
`
`resolution of every proceeding.” 37 C.F.R. § 42.1(b); accord 35 U.S.C. § 316(b)
`
`(regulations for AIA inter partes proceedings take into account “the efficient
`
`administration of the Office” and “the ability of the Office to timely complete
`
`[instituted] proceedings”). Moreover, we have discretion not to institute or to
`
`terminate a review for reasons of administrative expediency. See 35 U.S.C.
`
`§ 314(a) (authorizing institution of an inter partes review under particular
`
`circumstances, but not requiring institution under any circumstances); see also
`
`
`16 U.S. Patent No. 5,579,052.
`
`5
`
`
`
`IPR2016-01121 (Patent 5,960,464)
`IPR2016-01135 (Patent 5,812,789)
`
`Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc., 839 F.3d 1382, 1385
`
`(Fed. Cir. 2016) (“But [35 U.S.C.] § 318(a) contemplates that a proceeding can be
`
`‘dismissed’ after it is instituted, and, as our prior cases have held, ‘administrative
`
`agencies possess inherent authority to reconsider their decisions, subject to certain
`
`limitations, regardless of whether they possess explicit statutory authority to do
`
`so.’” (citations omitted)).
`
`Initially, we note that, pursuant to 35 U.S.C. § 318(a), it is not clear that we
`
`may “issue a final written decision with respect to the patentability of any patent
`
`claim challenged by the petitioner” (emphasis added), if we have determined
`
`previously that that claim is unpatentable and issued a final written decision to that
`
`effect. As noted above, we have determined that all of the claims instituted upon
`
`in IPR2016-01121 and all of the claims instituted upon in IPR2016-01135, except
`
`claims 2, 7, 8, 12, and 14, are unpatentable, and rehearing of those determinations
`
`has not been requested. As a result, proceeding to a final written decision as to all
`
`the claims at issue in IPR2016-01121 and as to claims 1, 3–6, 11, and 13 at issue in
`
`IPR2016-01135 is potentially duplicative and, therefore, an inefficient use of our
`
`time and resources. Further, to the extent that challenged claims have been
`
`determined to be unpatentable, maintaining serial proceedings challenging claims
`
`that we have previously determined to be unpatentable may burden Petitioner’s and
`
`Patent Owner’s resources unnecessarily. Thus, the parties are ordered to show
`
`cause why IPR2016-01121 should not be terminated and the Decision to Institute
`
`in that proceeding vacated, and why IPR2016-01135 should not be terminated only
`
`as to claims 1, 3–6, 11, and 13 and the Decision to Institute with respect to claims
`
`1, 3–6, 11, and 13 in that proceeding vacated.
`
`
`
`6
`
`
`
`IPR2016-01121 (Patent 5,960,464)
`IPR2016-01135 (Patent 5,812,789)
`
`
`For the reasons given, it is:
`
`ORDER
`
`ORDERED that, in IPR2016-01121, each of the parties shall file, no later
`
`than one week from entry of this Order, a paper not to exceed five pages in length
`
`showing cause why IPR2016-01121 should not be terminated, and the Decision to
`
`Institute in that proceeding vacated; and
`
`FURTHER ORDERED that, in IPR2016-01135, each of the parties shall
`
`file, no later than one week from entry of this Order, a paper not to exceed five
`
`pages in length showing cause why IPR2016-01135 should not be terminated only
`
`as to claims 1, 3–6, 11, and 13, and the Decision to Institute with respect to claims
`
`1, 3–6, 11, and 13 in that proceeding vacated
`
`
`
`
`
`7
`
`
`
`IPR2016-01121 (Patent 5,960,464)
`IPR2016-01135 (Patent 5,812,789)
`
`For PETITIONER:
`
`Andrew S. Ehmke
`David W. O’Brien
`Michael S. Parsons
`Haynes and Boone, LLP
`andy.ehmke.ipr@haynesboone.com
`david.obrien.ipr@haynesboone.com
`michael.parsons.ipr@haynesboone.com
`
`
`David L. Alberti
`Feinberg Day Alberti & Thompson LLP
`dalberti@feinday.com
`
`
`For PATENT OWNER:
`
`Masood Anjom
`Scott Clark
`Amir Alavi
`Michael McBride
`Ahmad, Zavitsanos, Anaipakos, Alavi & Mensing P.C.
`manjom@azalaw.com
`sclark@azalaw.com
`aalavi@azalaw.com
`mmcbride@azalaw.com
`
`Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
`
`8
`
`
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