Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 34
`Date: February 6, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`INTUITIVE SURGICAL, INC.,
`Petitioner,
`
`v.
`
`ETHICON LLC,
`Patent Owner.
`____________
`
`IPR2018-01248
`Patent 8,479,969 B2
`____________
`
`
`
`Before JOSIAH C. COCKS, BENJAMIN D. M. WOOD, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`MEYERS, Administrative Patent Judge.
`
`
`
`
`
`JUDGMENT
`Final Written Decision
`Granting In Part Patent Owner’s Motion to Terminate
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 318(a)
`
`
`
`
`

`

`IPR2018-01248
`Patent 8,479,969 B2
`
`I. INTRODUCTION
`Intuitive Surgical, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
`requesting an inter partes review of claims 23–26 of U.S. Patent
`No. 8,479,969 B2 (Ex. 1001, “the ’969 patent”). After the filing of the
`Petition, Ethicon LLC (“Patent Owner”) filed a statutory disclaimer of claim
`23 (Ex. 2002) and a Preliminary Response (Paper 6) to the Petition. In our
`Decision on Institution (Paper 7, “Dec. on Inst.”), we determined that the
`information presented in the Petition and Preliminary Response established a
`reasonable likelihood that Petitioner would prevail in its challenge of claims
`24–26 of the ’969 patent as unpatentable under 35 U.S.C. § 103 and,
`accordingly, we instituted inter partes review as to those claims. See 35
`U.S.C. § 314(a) (2012).1
`During the course of trial, Patent Owner filed a Patent Owner
`Response (Paper 13, “PO Resp.”), Petitioner filed a Reply to Patent Owner
`Response (Paper 16, “Pet. Reply”), and Patent Owner filed a Sur-reply to
`Petitioner’s Reply (Paper 17, “PO Sur-reply”). A combined hearing for the
`instant IPR2018-01248 (the “’248 IPR”) and related IPR2018-01247 (the
`“’247 IPR”) and IPR2018-01254 (the “’254 IPR”) was held on October 17,
`2019, and a transcript of the hearing is included in the record. Paper 27.
`On January 13, 2020, we issued a Final Written Decision in the ’247
`IPR, concluding that Petitioner had shown by a preponderance of the
`evidence that claims 19 and 20 of the ’969 patent are unpatentable, but that
`Petitioner had not shown by a preponderance of the evidence that claims 21,
`
`
`1 In our Decision on Institution, we treated claim 23 as having never been
`part of the ’969 patent and did not institute inter partes review of this claim.
`See Dec. on Inst. 9–10.
`
`2
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`IPR2018-01248
`Patent 8,479,969 B2
`22, and 24–26 of the ’969 patent are unpatentable. See ’247 IPR, Paper 40.
`At the same time, we issued a Final Written Decision in the ’254 IPR,
`concluding that Petitioner had shown by a preponderance of the evidence
`that claims 1–10 of the ’969 patent are unpatentable, but that Petitioner had
`not shown by a preponderance of the evidence that claims 11 and 24 of the
`’969 patent are unpatentable. See ’254 IPR, Paper 43. Thus, all of the
`claims challenged in the instant ’248 IPR have been subject to review and
`addressed in a final written decision under 35 U.S.C. § 318(a).
`On January 21, 2020, Patent Owner filed an authorized motion to
`terminate the instant ’248 IPR in consideration of estoppel under 35 U.S.C.
`§ 315(e)(1) and our authority under 37 C.F.R. § 42.73(d)(1). Paper 31
`(“Motion” or “Mot.”) On January 27, 2020, Petitioner filed an authorized
`opposition to Patent Owner’s Motion. Paper 33 (“Opp.”). For the reasons
`discussed below in Section III.A., we determine that § 315(e)(1) is
`applicable with respect to Petitioner’s participation in the challenge to
`claims 24–26 of the ’969 patent, and as such, we grant Patent Owner’s
`Motion to the extent we terminate Petitioner from the ’248 IPR, but we deny
`Patent Owner’s Motion to terminate the ’248 IPR.
`We have jurisdiction under 35 U.S.C. § 6. Petitioner bears the burden
`of proving unpatentability of the challenged claims, and the burden of
`persuasion never shifts to Patent Owner. To prevail, Petitioner must prove
`unpatentability by a preponderance of the evidence. See 35 U.S.C. § 316(e);
`37 C.F.R. § 42.1(d) (2017).
`This decision is a Final Written Decision under 35 U.S.C. § 318(a) as
`to the patentability of claims 24–26 of the ’969 patent. For the reasons
`discussed below, we conclude that Petitioner must be terminated from this
`
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`IPR2018-01248
`Patent 8,479,969 B2
`proceeding. We also hold that neither Petitioner, nor the record as a whole,
`has demonstrated by a preponderance of the evidence that claims 24–26 of
`the ’969 patent are unpatentable under §§ 102(e) or 103(a).
`
`II. BACKGROUND
`A. The ’969 Patent
`The ’969 patent issued July 9, 2013 from an application filed February
`9, 2012, and claims priority, as a continuation, to an application filed May
`27, 2011, which claims priority, as a continuation-in-part, to an application
`filed January 10, 2007. Ex. 1001, codes (45), (22), (63).2 The ’969 patent is
`titled “Drive Interface for Operably Coupling a Manipulatable Surgical Tool
`to a Robot,” and generally relates to endoscopic surgical instruments. Id. at
`code (54), 1:54–57. The ’969 patent summarizes its disclosure as
`encompassing a surgical instrument “for use with a robotic system that has a
`control unit and a shaft portion,” which together with an electrically
`conductive elongated member, “transmit[s] control motions from the robotic
`system to an end effector.” Id. at code (57). Figure 26 of the ’969 patent is
`reproduced below:
`
`
`
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`IPR2018-01248
`Patent 8,479,969 B2
`Figure 26 depicts “a perspective view of a surgical tool embodiment
`of the present invention.” Id. at 5:19–20. Figure 26 illustrates surgical tool
`1200 with end effector 2012, elongated shaft assembly 2008, and
`articulation joint 2011. Id. at 24:66–25:5. The ’969 patent describes that
`surgical tool 1200 is coupled to a robotic manipulator (not shown) by tool
`mounting portion 1300. Id. at 25:5–7.
`Figure 31 of the ’969 patent is reproduced below:
`
`
`Figure 31 depicts “a partial bottom perspective view of the surgical
`tool embodiment of FIG. 26.” Id. at 5:27–28. Figure 31 illustrates that
`“tool mounting portion 1300 includes a tool mounting plate 1302 that
`operably supports a plurality of (four are shown in FIG. 31) rotatable body
`portions, driven discs or elements 1304, that each include a pair of pins 1306
`that extend from a surface of the driven element 1304.” Id. at 25:11–16.
`Figure 31 further depicts that “[i]nterface 1230 includes an adaptor portion
`
`
`2 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35
`U.S.C. § 100 et seq. effective on March 16, 2013. Because the ’969 patent
`issued from an application filed before March 16, 2013, we apply the pre-
`AIA versions of the statutory bases for unpatentability.
`
`5
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`IPR2018-01248
`Patent 8,479,969 B2
`1240 that is configured to mountingly engage the mounting plate 1302.” Id.
`at 25:19–22. The ‘969 patent describes that “adapter portion 1240 generally
`includes a tool side 1244 and a holder side 1246.” Id. at 25:30–31.
`Figure 27 of the ’969 patent is reproduced below:
`
`
`Figure 27 depicts “an exploded assembly view of an adapter and tool
`holder arrangement for attaching various surgical tool embodiments to a
`robotic system.” Id. at 5:21–23. More particularly, Figure 27 illustrates that
`tool drive assembly 1010 “is operatively coupled to a master controller
`1001.” Id. at 24:62–66.
`
`
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`IPR2018-01248
`Patent 8,479,969 B2
`
`B. The Challenged Claims
`Petitioner challenges claims 24–26 of the ’969 patent. Claims 25–26
`
`ultimately depend from claim 24. Claim 24 is illustrative and is reproduced
`below.
`24. A surgical tool for use with a robotic system that has a tool
`drive assembly that is operatively coupled to a control unit of the
`robotic system that is operable by inputs from an operator and is
`configured to provide at least one rotary output motion to at least
`one rotatable body portion supported on the tool drive assembly,
`said surgical tool comprising:
`a surgical end effector comprising at least one component
`portion that is selectively movable between first and
`second positions relative to at least one other
`component portion thereof in response to control
`motions applied to said selectively movable component
`portion;
`an elongated shaft assembly defining a longitudinal tool
`axis and comprising:
` a distal spine portion operably coupled to said end
`effector; and
` a proximal spine portion pivotally coupled to said distal
`spine portion at an articulation joint to facilitate
`articulation of said surgical end effector about an
`articulation axis that is substantially transverse to said
`longitudinal tool axis; and
` at least one gear-driven portion that is in operable
`communication with said at least one selectively
`movable component portion of said surgical end
`effector and wherein said surgical
`tool further
`comprises:
`to a
` a
`tool mounting portion operably coupled
`proximal[3] end of said proximal spine portion, said
`tool mounting portion being configured to operably
`
`3 A Certificate of Correction, mailed January 23, 2018, deleted the term
`“distal” here in claim 24 of the ’969 patent, and inserted in its place the term
`“proximal.” Ex. 1002, 686.
`
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`IPR2018-01248
`Patent 8,479,969 B2
`interface with the tool drive assembly when coupled
`thereto, said tool mounting portion comprising:
` a driven element rotatably supported on said tool
`mounting portion and configured
`for driving
`engagement with a corresponding one of the at least
`one rotatable body portions of the tool drive assembly
`to receive corresponding rotary output motions
`therefrom; and
`a transmission assembly in operable engagement with said
`driven element and in meshing engagement with a
`corresponding one of said at least one gear-driven
`portions to apply actuation motions thereto to cause
`said corresponding one of said at least one gear driven
`portions to apply at least one control motion to said
`selectively movable component.
`Id. at 95:35–96:14.
`
`C. Related Proceedings
`The parties indicate that the ’969 patent is involved in: Ethicon LLC
`v. Intuitive Surgical, Inc., No. 1:17-cv-00871 in the United States District
`Court for the District of Delaware (“the Delaware litigation”).4 Pet. 7; Paper
`4, 2.
`
`Petitioner is also challenging the ’969 patent as well as other related
`patents in the following proceedings before the Board: (1) Case No.
`IPR2018-00933 (the ’601 patent); (2) Case No. IPR2018-00934 (the ’058
`patent); (3) Case No. IPR2018-00938 (the ’874 patent); (4) Case Nos.
`IPR2018-01247 and IPR2018-01254 (the ’969 patent); (5) Case No.
`IPR2018-00936 (the ’658 patent); (6) Case No. IPR2018-01703 (the ’431
`
`4 Patent Owner contends that U.S. Patent Nos. 9,585,658 B2 (“the ’658
`patent”), 8,616,431 B2 (“the ’431 patent”), 9,113,874 B2 (“the ’874
`patent”), 9,113,874 B2 (“the ’874 patent”), 9,084,601 B2 (“the ’601
`patent”), and 8,998,058 B2 (“the ’058 patent”) are also asserted in the
`Delaware litigation. Paper 4, 2.
`
`8
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`IPR2018-01248
`Patent 8,479,969 B2
`patent); and (7) Case No. IPR2019-00880 (U.S. Patent No. 7,490,749).
`Paper 4, 2.
`
`D. Real Parties in Interest
`Petitioner identifies itself as the only real party in interest. Pet. 1.
`Patent Owner identifies itself as a real party in interest. Paper 4, 2. Patent
`Owner indicates that it is “an indirect subsidiary of Johnson & Johnson.” Id.
`
`E. Evidence Relied Upon
`Petitioner relies on the following references in asserting that claims
`24–26 of the ’969 patent are unpatentable:
`Reference
`U.S. Patent No. 8,545,515, issued Oct. 1, 2013 (“Prisco”)
`U.S. Patent No. 6,817,974, issued Nov. 16, 2004 (“Cooper”)
`U.S. Patent No. 6,699,235, issued Mar. 2, 2004 (“Wallace”)
`U.S. Patent No. 6,331,181, issued Dec. 18, 2001 (“Tierney”)
`
`Exhibit No.
`1006
`1007
`1008
`1009
`
`F. Instituted Grounds of Unpatentability
`We instituted review of claims 24–26 of the ’969 patent based on the
`following asserted grounds of unpatentability. Pet. 8–87.
`Claims Challenged
`35. U.S.C. §
`References
`24–26
`102(e)
`24–26
`103(a)
`24–26
`103(a)
`25, 26
`103(a)
`
`Prisco
`Prisco and Cooper
`Prisco, Cooper, Tierney
`Prisco, Cooper, Wallace,
`Tierney
`
`In support of its asserted grounds of unpatentability, Petitioner relies
`on the testimony of its expert witness, Dr. Bryan Knodel. Ex. 1003. In
`support of its response, Patent Owner relies on the testimony of its expert
`
`9
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`

`IPR2018-01248
`Patent 8,479,969 B2
`witness, Dr. Shorya Awtar. Ex. 2021. Dr. Knodel was cross-examined. See
`Ex. 2022 (deposition transcript of Dr. Bryan Knodel).
`
`III. ANALYSIS
`
`A. Patent Owner’s Motion to Terminate
`1. Whether Estoppel Applies
`According to 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.
`We determine that the estoppel provision in § 315(e)(1) applies to
`Petitioner with respect to claims 24–26 of the ’969 patent5 in the instant
`’248 IPR. Petitioner has obtained a final written decision on claims 24–26
`of ’969 patent – all of the claims being challenged in the ’248 IPR. See ’247
`IPR, Paper 40;’254 IPR, Paper 43. Thus, pursuant to § 315(e)(1), Petitioner
`cannot “request or maintain a proceeding before the Office with respect to”
`claims 24–26 “on any ground” that Petitioner “raised or reasonably could
`have raised during” the ’247 IPR and ’254 IPR.
`Petitioner argues that “[t]here is no basis to dismiss the proceeding
`because all three petitions challenging the ’969 Patent were filed on the
`
`5 On June 14, 2018, Petitioner filed three petitions requesting three separate
`inter partes reviews of certain claims of the ’969 patent. A Notice Of Filing
`Date Accorded To Petition was entered on July 17, 2018 for the ’247 and
`’254 IPRs. See ’247 IPR, Paper 5; ’254 IPR, Paper 5. However, a Notice Of
`Filing Date Accorded To Petition was entered on August 9, 2018 for the
`’248 IPR. ’248 IPR, Paper 5.
`
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`IPR2018-01248
`Patent 8,479,969 B2
`same day, and would have been filed as a single petition, but for the word
`count limit imposed by 37 C.F.R. § 42.24.” Opp. 1. Petitioner contends that
`it could not have “reasonably raised” the grounds of unpatentability asserted
`against the ’969 patent in the ’248 Petition in a single petition because “[t]he
`’969 Patent has 28 claims, and Petitioner had 14 grounds of unpatentability
`to raise.” Id. at 5–8. Consequently, Petitioner argues that it had to break up
`its grounds across three petitions “solely because of the word count limit
`imposed by regulation.” Id. at 5. Petitioner’s argument is not persuasive.
`At the outset, we note that Petitioner has not challenged all 28 claims
`of the ’969 patent, but instead chose to challenge 19 claims of the ’969
`patent, including disclaimed claim 23.6 And, other than asserting “it was not
`reasonably possible to raise all 14 grounds in a single petition” (Opp. 5),
`Petitioner has not provided any persuasive explanation as to why our word
`count limits required Petitioner to break up its asserted grounds across three
`petitions in the manner presented.
`Estoppel is invoked under § 315(e)(1) as to “a claim in a patent” that
`“results in a final written decision under” § 318(a). That is, estoppel is
`applied only on a claim-by-claim basis. Here, it was Petitioner’s affirmative
`choice to challenge independent claim 24 across each of the ’247 IPR, the
`’248 IPR, and the ’254 IPR.7 It was also Petitioner’s choice to challenge at
`least one of claims 24–26 in each of the ’247 IPR and the ’248 IPR. “[T]he
`
`
`6 The ’247 IPR challenges claims 19–26 (’247 IPR, Paper 2, 5), the ’248 IPR
`challenges claims 23–26 (’248 IPR, Paper 2, 8), and the ’254 IPR challenges
`claims 1–11 and 24 (’254 IPR, Paper 2, 7).
`7 Petitioner also challenges claims 25 and 26, which depend from claim 24,
`in the ’247 IPR and ’248 IPR.
`
`11
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`IPR2018-01248
`Patent 8,479,969 B2
`petitioner is master of its complaint.” SAS Inst. Inc. v. Iancu, 138 S. Ct.
`1348, 1355 (2018). With those choices, however, comes the consequences
`of § 315(e)(1). And, as Patent Owner points out, Petitioner
`could have sought consolidation of the three proceedings
`pursuant to 37 C.F.R. § 42.122(a), or otherwise asked the Board
`to synchronize schedules of the three IPRs to avoid the issuance
`of staggered decisions. Petitioner did not do this and allowed the
`-1248 proceeding to go forward on a different schedule.
`Mot. 6; cf. Comcast Cable Commc’ns, LLC v. Rovi Guides, Inc., IPR2017-
`00939, Paper 13 at 2–3 (PTAB Oct. 13, 2017) (“Petitioner contacted the
`Board to indicate that Patent Owner (Rovi Guides, Inc.) agreed that the two
`proceedings should be coordinated such that a final written decision issues
`on the same day in the two proceedings, and Petitioner requested that we do
`so.”). Yet, Petitioner opted not to make any request for consolidation of the
`proceedings despite the varying schedules as between (1) the ’248 IPR and
`(2) the ’247 and the ’254 IPRs. The requests by the parties for consolidated
`oral argument in those three proceedings was a matter of logistical
`convenience for the parties and the panel, and did not constitute a formal
`request that the entirety of the separate proceedings been consolidated into a
`single proceeding.8
`
`
`8 In an Order, issued September 4, 2019, the Board “consolidate[d] hearings
`for IPR2018-01247, -01248, and -01254 into a single hearing on October 17,
`2019.” ’248 IPR, Paper 19, 2; ’247 IPR, Paper 29, 2; ’254 IPR, Paper 32, 2.
`This consolidation was made at Petitioner’s request. See, e.g., ’248 IPR,
`Paper 19, 2 (“Petitioner states that ‘[g]iven the overlapping issues, Petitioner
`submits consolidation of all three hearings into a single hearing would make
`the most sense and be both efficient and practical.’”). On August 23, 2019,
`Petitioner submitted a Request for Oral Argument in the instant ’248 IPR to
`be consolidated with the oral argument for the ’247 IPR and the ’254 IPR
`“[g]iven the overlapping subject matter and the common patent.” ’248 IPR,
`12
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`IPR2018-01248
`Patent 8,479,969 B2
`Petitioner also argues that “estoppel does not apply if multiple
`petitions are simultaneously filed.” Opp. 6. Relying on the non-
`precedential Board decisions in SK Hynix Inc. v. Netlist Inc., IPR2018-
`00364, Paper 32 at 6 (PTAB Aug. 5, 2019) and Kingston Technology Co.,
`Inc. v. SPEX Technologies, Inc., IPR2018-01002, Paper 12 at 9 (PTAB Nov.
`6, 2018), Petitioner asserts that “SK Hynix and Kingston both distinguished
`simultaneous filing from serial filings, with only the latter implicating the
`estoppel statute.” Opp. 6. We disagree.
`We decline to follow the dicta Petitioner cites to in the Board’s non-
`precedential decisions in SK Hynix and Kingston.9 Instead, we find that a
`reasonable reading of § 315(e)(1) does not limit estoppel from attaching to
`multiple petitions, on a claim-by-claim basis, that are simultaneously filed.
`Here, § 315(e)(1) mandates that
`[t]he petitioner in an inter partes review of a claim in a
`patent . . . that results in a final written decision under section
`318(a) . . . may not request or maintain a proceeding before the
`Office with respect to that claim on any ground that the petitioner
`
`Paper 18, 1. On September 12, 2019, Patent Owner submitted its Request
`for Oral Argument for the “single, consolidated oral hearing on October 17,
`2019.” ’248 IPR, Paper 20, 1. Accordingly, a consolidated oral argument
`for the ’247 IPR, the ’248 IPR, and the ’254 IPR was held on October 17,
`2019. An oral argument for IPR2018-01703 involving Petitioner and Patent
`Owner was also held at the same time.
`9 We disagree with Petitioner that the panel in SK Hynix relies on the Federal
`Circuit decision in Progressive Casualty Insurance Co. v. Liberty Mutual
`Insurance Co., 625 F. App’x 552 (Fed. Cir. 2015) (“Progressive”) “for the
`proposition that events occurring on the same day are considered
`simultaneous.” Opp. 6–7. Instead, we find the Progressive decision stands
`for the proposition that 35 U.S.C. § 315(e)(1) “does not prohibit the Board
`from reaching decisions. It limits only certain (requesting or maintaining)
`actions by a petitioner.” Progressive, 625 F. App’x at 555–56.
`
`13
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`raised or reasonably could have raised during that inter partes
`review.
`35 U.S.C. § 315(e)(1) (emphases added). We find the plain language of this
`statute explicitly prohibits a petitioner from “request[ing] or maintain[ing] a
`proceeding” with respect to “a claim in a patent” that has received a final
`written decision “with respect to that claim on any ground that the petitioner
`raised or reasonably could have raised during that inter partes review.”
`There is no indication that the statute attempts to delineate between multiple
`petitions that are simultaneously filed or multiple petitions that are filed in
`some serial fashion, and Petitioner provides no persuasive authority to the
`contrary. Thus, we determine that under its plain language, § 315(e)(1) can
`reasonably apply to multiple petitions even if they are simultaneously filed.
`See Conn. Nat’l Bank v. Germain, 503 U.S. 249, 254 (1992) (“[C]ourts must
`presume that a legislature says in a statute what it means and means in a
`statute what it says there . . . when the words of a statute are unambiguous,
`then . . . the judicial inquiry is complete.”). Consequently, we determine that
`Petitioner is estopped from “maintain[ing] a proceeding” with respect to
`claims 24–26 of the ’969 patent.
`Alternatively, Petitioner argues that we should “ignore the realities of
`what a Petitioner could reasonably raise in a single petition given the strict
`word could limits imposed by 37 CFR § 42.24” and consider all three
`petitions to be one single petition, and as such, estoppel should not apply.
`Opp. 8. Petitioner’s argument is without merit. As discussed above,
`Petitioner had the opportunity to contact the Board during the pendency of
`the ’247 IPR, ’248 IPR, and ’254 IPR and ask that the three independent
`petitions be consolidated into a single inter partes review prior to the
`issuance of final written decisions in the ’247 IPR and ’254 IPR. See 37
`
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`Patent 8,479,969 B2
`C.F.R. § 42.122(a) (“Where another matter involving the patent is before the
`Office, the Board may during the pendency of the inter partes review enter
`any appropriate order regarding the additional matter including providing for
`the stay, transfer, consolidation, or termination of any such matter.”).
`Petitioner did not avail itself of that opportunity.
`Petitioner further argues that even if estoppel applies, Petitioner is
`simply “waiting for the FWD,” and not “maintain[ing] a proceeding” in
`contravention of § 315(e)(1). Opp. 9. According to Petitioner, “estoppel
`does not apply to this proceeding because the Petitioner has no further role
`in advance of issuance of the FWD.” Id.
`We determine that “maintain[ing] a proceeding” is satisfied simply by
`Petitioner remaining a party to the ’248 IPR proceeding.10 That
`determination follows from recognition that even in the later stage of this
`IPR, as a party to the ’248 IPR, Petitioner may still take action in the
`proceeding. For example, as party to the ’248 IPR, in the event of any final
`written decision, Petitioner would still be able to request a rehearing (see 37
`C.F.R. § 42.71(d) (“[A] party dissatisfied with a decision may file a single
`request for rehearing without prior authorization from the Board.”)), request
`an adverse judgment (37 C.F.R. § 42.73(b)(4)), or seek settlement prior to
`any final written decision (35 U.S.C. § 317; 37 C.F.R. § 42.74).
`We conclude that in light of the circumstances present here and in
`view of 35 U.S.C. § 315(e)(1), Petitioner cannot maintain a proceeding with
`respect to claims 24–26 of the ’969 patent, which are the only claims
`
`
`10 The definition of “maintain” is “to continue to have; to keep in existence,
`or not allow to become less.” https://dictionary.cambridge.org/us/
`dictionary/english/maintain.
`
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`IPR2018-01248
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`challenged in the ’248 IPR. Accordingly, Petitioner cannot remain a party in
`’248 IPR, and we must terminate Petitioner from the proceeding.
`
`2. Whether to Terminate the Proceeding as a Whole
`According to Patent Owner, “[t]he only way to give effect to
`§ 315(e)(1)’s statutory dictate that ‘the petitioner’ ‘may not request or
`maintain a proceeding’ is by terminating this proceeding.” Mot. 8. Patent
`Owner argues that “[e]ven if the Board determines that it has discretion to
`proceed to a final written decision if no petitioner remains in an inter partes
`review, the Board should exercise that discretion to terminate this IPR
`without issuing a final written decision.” Id. at 10. To support its argument,
`Patent Owner points out that (1) “Petitioner has already had multiple
`opportunities to invalidate” claims 24–26 of the ’969 patent, and
`(2) Petitioner has been aware that the ’248 IPR “was operating on a different
`schedule than the -1247 and -1254 proceedings, and never sought to
`consolidate the proceedings pursuant.” Id. Patent Owner also argues that
`“draft[ing] a third final written decision in this proceeding—which Petitioner
`is already estopped from maintaining—would be an inefficient use of the
`patent system, and does not promote ‘the just, speedy, and inexpensive
`resolution of every proceeding.’” Id. (quoting 37 C.F.R. §42.1(b)).
`In response, Petitioner argues that “even if estoppel were to apply to
`this situation, estoppel applies to petitioner and not to the Board,” and as
`such, the Board has “discretion to proceed and issue a FWD.” Opp. 9–10
`(citing 35 U.S.C. § 317(a)).
`We agree with Petitioner that the estoppel provisions of 35 U.S.C.
`§ 315(e)(1) do not apply to the Board. Although § 317 is generally titled
`“Settlement,” that section lays out the discretion enjoyed by the Board in a
`
`16
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`IPR2018-01248
`Patent 8,479,969 B2
`situation analogous to the one here. In particular § 317(a) provides that, “[i]f
`no petitioner remains in the inter partes review, the Office may terminate the
`review or proceed to a final written decision under section 318(a).” There is
`seemingly no dispute between the parties that the panel has discretion based
`on the circumstances present here to either terminate the proceeding or
`proceed to a final written decision. Mot. 9–10; Opp. 9–10. Rather, the
`disagreement between the parties lies in which direction we should exercise
`our discretion. Other panels of the Board have considered whether
`termination is the best course of action under circumstances similar to those
`rising here. For instance, in Apple Inc., v. Smartflash LLC, CBM2015-
`00015 (Paper 49) (PTAB Nov. 4, 2015)11, a panel declined to contemplate
`termination of multiple post-grant proceedings (covered business method
`proceedings) even when a Petitioner was found to be subject to estoppel
`provisions under 35 U.S.C. § 325(e)(1).12 That was so because the
`proceedings were “in the late stages” and there was a “public interest” in
`resolving the issues raised in those proceedings because the record was
`“fully developed.” Apple Inc., Paper 49 at 5–6. The “late stages” and “fully
`developed” status of those proceedings was prior to oral argument. Here,
`oral argument has already occurred, and thus the instant proceeding is in an
`even later stage and the record is at least as fully developed as in the Apple
`Inc. proceeding.
`
`
`11 Beyond CBM2015-00015, the referenced Paper in Apple Inc. additionally
`concerns the following proceedings: (1) CBM2015-00016; (2) CBM2015-
`00018; and (3) CBM2014-00194.
`12 The estoppel provisions of 35 U.S.C. § 325(e)(1) (which apply in covered
`business method proceedings) are effectively the same as those of
`§ 315(e)(1) (which apply in inter partes review proceedings).
`
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`IPR2018-01248
`Patent 8,479,969 B2
`As noted above, Patent Owner contends that it would be “an
`inefficient use of the patent system” for the Board to produce a “third final
`written decision in this proceeding” because such decision “does not
`promote ‘the just, speedy and inexpensive resolution of every proceeding.’”
`Opp. 10 (quoting 37 C.F.R. § 42.1(b)). The difficulty with Patent Owner’s
`position, however, is that the parties’ briefing on this matter did not
`conclude until approximately eleven (11) days prior to the statutory due date
`on February 7, 2020. As such, the effort by the panel in producing such a
`decision has been completed. We do not view it as an “inefficient” result to
`provide the parties, and the public as a whole, the benefit of the panel’s
`efforts in deciding the merits of this proceeding.
`In light of the record at hand, we conclude that given the very late
`stage of this proceeding and the robust development of the record, it is in the
`interests of the public as well as the integrity of the patent system, that the
`panel issue a final written decision based on the merits of the case.
`Accordingly, we do not exercise our discretion to terminate this proceeding.
`Our analysis in that respect follows.
`
`B. Claim Construction
`In an inter partes review filed before November 13, 2018, such as this
`one, a claim in an unexpired patent shall be given its broadest reasonable
`construction in light of the specification of the patent in which it appears.13
`
`
`13 This Petition was filed before the effective date of the amendment to 37
`C.F.R. § 42.100 that changed the claim construction standard applied in inter
`partes reviews. Changes to the Claim Construction Standard for Interpreting
`Claims in Trial Proceedings Before the Patent Trial and Appeal Board, 83
`Fed. Reg. 51,340 (Oct. 11, 2018) (amending 37 C.F.R. § 42.100(b) effective
`November 13, 2018) (now codified at 37 C.F.R. § 42.100(b) (2019)). Thus,
`18
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`IPR2018-01248
`Patent 8,479,969 B2
`37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
`2144–46 (2016) (upholding the use of the broadest reasonable interpretation
`standard). Consistent with the broadest reasonable construction, claim terms
`are presumed to have their ordinary and customary meaning as understood
`by a person of ordinary skill in the art in the context of the entire patent
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007). The presumption may be overcome by providing a definition of the
`term in the specification with reasonable clarity, deliberateness, and
`precision. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the
`absence of such a definition, limitations are not to be read from the
`specification into the claims. See In re Van Geuns, 988 F.2d 1181, 1184
`(Fed. Cir. 1993). Only those terms that are in controversy need be
`construed, and only to the extent necessary to resolve the controversy. Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999);
`see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
`1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter
`partes review).
`Here, neither Petitioner nor Patent Owner identifies terms for
`construction or provides any proposed constructions. Pet. 28–29; PO Resp.
`11; see generally Pet. Reply. Instead, the parties agree that the challenged
`claims of the ’969 patent should be construed according to their broadest
`reasonable interpretation. Pet. 12; PO Resp. 28–29. We determine that no
`claim term needs express interpretation. See Vivid Techs., 200 F.3d at 803
`(“[O]nly those terms need be