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`IPR2018-00082
`U.S. Patent No. 6,088,802
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`
`
`
`WESTERN DIGITAL CORPORATION,
`Petitioner,
`
`
`v.
`
`
`SPEX TECHNOLOGIES, INC.,
`Patent Owner.
`
`
`
`Patent No. 6,088,802
`Filing Date: June 4, 1997
`Issue Date: July 11, 2000
`Title: PERIPHERAL DEVICE WITH INTEGRATED SECURITY
`FUNCTIONALITY
`
`
`
`__________________________________________________________________
`
`SPEX TECHNOLOGIES, INC.’S
`REQUEST FOR REHEARING
`
`Case No. IPR2018-00082
`______________________________________________________________________________
`
`
`
`
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`
`
`
`IPR2018-00082
`U.S. Patent No. 6,088,802
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`TABLE OF CONTENTS
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`Page(s)
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`INTRODUCTION ........................................................................................... 1
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`
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`I.
`
`II.
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`LEGAL STANDARD FOR REHEARING .................................................... 1
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`III. THE BOARD SHOULD EXERCISE ITS DISCRETION TO
`DENY INSTITUTION .................................................................................... 1
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`IV. CONCLUSION ................................................................................................ 3
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`
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`i
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`I.
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`INTRODUCTION
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`On April 25, 2018, the Board issued a decision instituting inter partes
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`review (“IPR”) of claims 1-2, 6-7, 11-12, 23-25, and 38-39 (the “Challenged
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`Claims”) of U.S. Patent No. 6,088,802 (Ex. 1001, “the ’802 Patent”). For the
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`reasons presented herein and pursuant to 37 C.F.R. § 42.71, Patent Owner
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`respectfully requests reconsideration and denial of the petition in its entirety.
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`II. LEGAL STANDARD FOR REHEARING
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`When rehearing a decision on institution, a panel will review the decision for
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`an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a
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`decision is based on an erroneous interpretation of law, if a factual finding is not
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`supported by substantial evidence, or if the decision represents an unreasonable
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`judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393
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`F.3d 1277, 1281 (Fed. Cir. 2005).
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`III. THE BOARD SHOULD EXERCISE ITS DISCRETION TO
`DENY INSTITUTION
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`On April 24, 2018, the U.S. Supreme Court ruled that the PTAB must
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`institute (or deny) a petition for inter partes review on all challenged claims. SAS
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`Institute Inc. v. Iancu, __ U.S. __, 2018 WL 1914661 (Apr. 24, 2018). In
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`interpreting this all-or-nothing approach, the Board instituted this IPR on all claims
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`despite finding that Petitioner had shown that only claims 38 and 39 had a
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`1
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`IPR2018-00082
`U.S. Patent No. 6,088,802
`reasonable likelihood of success. However, for at least the reasons set forth below,
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`
`
`Patent Owner respectfully submits that the Board should have exercised its
`
`discretion to deny institution.
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`Petitioner no longer holds any real interest or stake in seeking invalidity of
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`claims 38 and 39, rendering this IPR a waste of time and judicial resources.
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`Petitioner filed this petition based on claims asserted the district court case SPEX
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`Technologies, Inc. v. Western Digital Corporation, et al., No. 8:16-cv-01799 (C.D.
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`Cal. Filed Sept. 28, 2016). See, e.g., Ex. 2001 at 23 (showing that asserted claims
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`1-2, 6-7, 11-12, 23-25, and 38-39 of the ’802 patent correspond directly to the
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`Challenged Claims). Petitioner did not challenge any claims which were not
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`asserted in the district court case. In its institution decision, the Board ruled that
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`Petitioner failed to meet its burden of showing a reasonable likelihood that claims
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`1-2, 6-7, 11-12, and 23-25 were unpatentable. Paper 11 at 2. . The Board
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`instituted this IPR because Petitioner satisfied its burden for institution on claims
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`38 and 39 only. However, Petitioner does not have a stake in seeking invalidity of
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`these claims. Patent Owner no longer asserts claims 38 and 39 in the district court
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`case. It is clear that Petitioner would not have challenged claims 38 and 39 if it
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`filed its petition today.
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`2
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`IPR2018-00082
`U.S. Patent No. 6,088,802
`The Board’s recent guidance on post-SAS procedures supports denial. On
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`April 30, 2018, the USPTO held a “Chat with the Chief on SAS” webinar1 in
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`which Chief Judge David Ruschke, Vice Chief Judge Tim Fink, and Vice Chief
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`Judge Scott Weidenfeller provided guidance regarding the implications of SAS on
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`IPR proceedings. In response to a stakeholder’s question, the judges advised that
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`the Board could revisit an institution decision and exercise its discretion to deny
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`institution where the Petitioner failed to meet its burden of showing a reasonable
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`likelihood on a majority of claims. Such is the case here.
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`Because Petitioner has no real interest or stake in the outcome of non-
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`asserted claims 38 and 39, judicial economy favors denial. Considering all the
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`circumstances, denial would avoid the unnecessary consumption of judicial
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`resources and help the Board secure the “just, speedy, and inexpensive resolution
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`of every proceeding.” 37 C.F.R. § 42.1(b).
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`IV. CONCLUSION
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`For the foregoing reasons, Patent Owner respectfully requests that the Board
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`deny institution of the Petition in its entirety.
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`
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`Dated: May 9, 2018
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`Respectfully submitted,
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`/Peter Lambrianakos/
`
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`1 https://www.uspto.gov/sites/default/files/documents/chat_with_chief_sas_5.3.18.pdf
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`Peter Lambrianakos (Reg. No. 58,279)
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`3
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`IPR2018-00082
`U.S. Patent No. 6,088,802
`Lead Counsel for Patent Owner
`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`Tel: 212-209-4800
`Fax: 212-209-4801
`Email: plambrianakos@brownrudnick.com
`
`Vincent J. Rubino, III (Reg. No. 68,594)
`Enrique W. Iturralde (Reg. No. 72,883)
`Back-up Counsel for Patent Owner
`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`Telephone: 212-209-4800
`Facsimile: 212-209-4801
`Email: vrubino@brownrudnick.com
`Email: eiturralde@brownrudnick.com
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`4
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`IPR2018-00082
`U.S. Patent No. 6,088,802
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`CERTIFICATE OF SERVICE
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`A copy of SPEX TECHNOLOGIES, INC.’S REQUEST FOR
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`REHEARING has been served on Petitioner’s counsel of record at the
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`correspondence of the Petitioner as follows:
`
`Brian Buroker
`Gibson, Dunn & Crutcher LLP
`1050 Connecticut Avenue, N.W.
`Washington, D.C. 20036-5306
`bburoker@gibsondunn.com
`
`Blair Silver
`Gibson, Dunn & Crutcher LLP
`1050 Connecticut Avenue, N.W.
`Washington, D.C. 20036-5306
`bsilver@gibsondunn.com
`
`Rustin Mangum
`Gibson, Dunn & Crutcher LLP
`3161 Michelson Dr.
`Irvine, CA 92612-4412
`rmangum@gibsondunn.com
`
`May 9, 2018
`
`
`
`
`
`By:
`
`/Peter Lambrianakos /
`
`Peter Lambrianakos (Reg. No. 58,279)
`Lead Counsel for Patent Owner
`Brown Rudnick LLP
`7 Times Square
`New York, NY 10036
`Tel: 212-209-4800
`Fax: 212-209-4801
`Email: plambrianakos@brownrudnick.com
`
`
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