Trials@uspto.gov
`571.272.7822
`
`
`
`Paper No. 34
`Date: July 6, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTEL CORPORATION,
`Petitioner
`
`v.
`
`QUALCOMM INCORPORATED,
`Patent Owner.
`____________
`
` IPR2019-000471
` IPR2019-000481
` IPR2019-000491
`Patent 9,154,356 B2
`____________
`
`
`Before MICHELLE N. WORMMEESTER, SCOTT B. HOWARD, and
`AARON W. MOORE, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`ORDER
`Denying Motion to Terminate
`37 C.F.R. § 42.5
`
`
`1 This Order addresses an issue that is identical in each of the above
`identified cases. Accordingly, we exercise our discretion to issue one order
`to be filed in each case.
`
`
`571.272.7822
`
`
`
`Paper No. 34
`Date: July 6, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTEL CORPORATION,
`Petitioner
`
`v.
`
`QUALCOMM INCORPORATED,
`Patent Owner.
`____________
`
` IPR2019-000471
` IPR2019-000481
` IPR2019-000491
`Patent 9,154,356 B2
`____________
`
`
`Before MICHELLE N. WORMMEESTER, SCOTT B. HOWARD, and
`AARON W. MOORE, Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`ORDER
`Denying Motion to Terminate
`37 C.F.R. § 42.5
`
`
`1 This Order addresses an issue that is identical in each of the above
`identified cases. Accordingly, we exercise our discretion to issue one order
`to be filed in each case.
`
`
`
`IPR2019-00047
`IPR2019-00048
`IPR2019-00049
`Patent 9,154,356 B2
`
`
`Background
`
`Petitioner filed IPR2019-00047 on November 8, 2018, presenting
`
`challenges to certain claims of U.S. Patent No. 9,154,356 B2 (the “’356
`
`patent”) in which Uehara was the primary reference. Petitioner also filed
`
`IPR2019-00048 and IPR2019-00049 on November 8, 2018, presenting
`
`challenges to certain claims of the ’356 patent in which Xiong was the
`
`primary reference. The next day, November 9, 2018, Petitioner filed
`
`IPR2019-00128 and IPR2019-00129, presenting challenges to certain claims
`
`of the ’356 patent in which Lee was the primary reference.
`
`On December 4, 2018, the Board issued notices establishing
`
`November 9, 2018 as the filing date for the 00128 and 00129 petitions. See
`
`IPR2019-00128, Paper 6; IPR2019-00128, Paper 6. On January 17, 2019,
`
`the Board issued notices establishing November 8, 2018 as the filing date for
`
`the 00047 and 00048 petitions. See IPR2019-00047, Paper 6; IPR2019-
`
`00048, Paper 6. On January 25, 2019, the Board issued a notice establishing
`
`November 8, 2018 as the filing date for the 00049 petition. See IPR2019-
`
`00049, Paper 6.
`
`The 00128 and 00129 IPRs were instituted on May 29, 2019. See,
`
`e.g., IPR2019-00128, Paper 9. The 00047 IPR was instituted on July 9,
`
`2019. See, e.g., IPR2019-00047, Paper 8. We found the 00047 petition not
`
`redundant of the other petitions because it relied on different art and
`
`arguments. See id. at 9–10. The 00048 and 00049 IPRs were instituted on
`
`July 10, 2019. See, e.g., IPR2019-00048, Paper 8. We found those petitions
`
`not redundant or cumulative of the others because they “present[ed] both
`
`2
`
`
`
`IPR2019-00047
`IPR2019-00048
`IPR2019-00049
`Patent 9,154,356 B2
`
`different primary references and a fundamentally different theory of
`
`unpatentability.” Id. at 10.
`
`Because the filing date notices for the November 8, 2020 petitions
`
`(the “Earlier IPRs”) were issued more than a month after the November 9,
`
`2020 petitions (the “Later IPRs”), the schedules for Earlier IPRs lagged
`
`those of Later IPRs, and Final Written Decisions in the Later IPRs issued on
`
`May 27, 2020, while the statutory deadlines to complete the Earlier IPRs fall
`
`on July 9, 2020 and July 10, 2020.
`
`By email communication of June 3, 2019, Patent Owner sought Board
`
`authorization to file a Motion to Terminate the Earlier IPRs. We authorized
`
`the filing (see Paper 312), Patent Owner filed a Motion to Terminate (Paper
`
`32, the “Motion”), and Petitioner filed an Opposition to the Motion to
`
`Terminate (Paper 33, “Opp.”).
`
`Patent Owner’s Arguments
`
`Patent Owner argues that Petitioner is estopped from maintaining the
`
`the Earlier IPRs with respect to claims addressed in the Later IPRs by
`
`35 U.S.C. § 315(e)(1), which provides that
`
`[t]he petitioner in an inter partes review of a claim in a patent under
`this chapter that results in a final written decision . . . 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.
`
`Motion 2–3. According to Patent Owner, “Petitioner may not remain a party
`
`with respect to these claims and must be terminated from the proceedings.”
`
`Id. at 3. Patent Owner argues that because “Petitioner filed the [Earlier
`
`
`2 The record citations in the rest of this decision are to IPR2018-00048.
`
`3
`
`
`
`IPR2019-00047
`IPR2019-00048
`IPR2019-00049
`Patent 9,154,356 B2
`
`IPRs] before filing the [Later IPRs] . . . there can be no dispute that
`
`Petitioner had discovered the prior art supporting the grounds in the [Earlier
`
`IPRs], and therefore reasonably could have included those grounds in the
`
`[Later IPRs].” Id. at 3–4. In other words, Patent Owner argues that
`
`Petitioner is estopped because it could have raised the Uehara and Xiong
`
`grounds that are the subject of the Earlier IPRs as additional grounds in the
`
`Later IPRs that are based on Lee.
`
`Patent Owner has also filed a disclaimer of the only claim in the
`
`Earlier IPRs not addressed in the final decisions in the Later IPRs (see Ex.
`
`2031) and asserts that the “disclaimer resolves the dispute as to all instituted
`
`claims in each of the [Earlier IPRs],” such that “Petitioner has no further
`
`challenges remaining for the Board to address.” Motion 6.
`
`Patent Owner acknowledges that “[t]he Board has previously held that
`
`it has discretion to continue an IPR even after terminating the petitioner due
`
`to estoppel” but argues that “because the estoppel provision does not
`
`expressly authorize the Board to proceed without a Petitioner, the statute
`
`should be read to mean the [Earlier IPRs] must be terminated.” Motion 7.
`
`Patent Owner further argues that “[e]ven if this panel determines that
`
`it has discretion to proceed, the [Earlier IPRs] should be terminated” because
`
`“the task of completing three additional final written decisions would be an
`
`inefficient use of the patent system” and would not promote “the just,
`
`speedy, and inexpensive resolution of every proceeding,” that “[f]ollowing
`
`Petitioner’s termination due to estoppel, there is no longer a contested case
`
`for the Board to resolve,” and that “parallel petitions challenging the same
`
`patent are disfavored.” Id. at 8–9.
`
`4
`
`
`
`IPR2019-00047
`IPR2019-00048
`IPR2019-00049
`Patent 9,154,356 B2
`
`
`Petitioner’s Arguments
`
`Petitioner argues that because it had already raised the Uehara and
`
`Xiong grounds in the Earlier IPRs, it “could not ‘reasonably’ have raised
`
`them for a second time the next day in the [Later IPRs].” Opp. 2. Petitioner
`
`contends that Section 325(d) “authorizes rejection of just such petitions” and
`
`that it is not aware of any Board rule or procedure under which it could have
`
`filed exactly the same grounds in petitions filed one day later. Id. at 2–3.
`
`Petitioner points out that “[i]n all of the cases on which the Patent
`
`Owner relies, the petitioner filed its estopped petitions either later than or at
`
`the same time as the petitions giving rise to the estoppel” and “none of the
`
`cases upon which Patent Owner relies is precedential.” Opp. 3.
`
`Petitioner also argues that “prior Board decisions recognize that
`
`‘simultaneously’ filed IPR petitions do not give rise to an estoppel under 35
`
`U.S.C. § 315(e)(1)” and that “[u]nder the logic of that rule, petitions filed
`
`one day apart should likewise not be subject to estoppel.” Opp. 4.
`
`Petitioner further argues that “[e]ven if the Petitioner were estopped,
`
`the Board should proceed to a final written decision” because the Board has
`
`discretion to do so and “[g]iven the late stage of the proceedings and the
`
`fully developed record in the [Earlier IPRs], termination would not be
`
`appropriate.” Opp. 5–6.
`
`5
`
`
`
`IPR2019-00047
`IPR2019-00048
`IPR2019-00049
`Patent 9,154,356 B2
`
`
`Our Analysis
`
`We conclude that, in these unusual circumstances, Petitioner is not
`
`estopped from continuing to maintain the Earlier IPRs. Estoppel applies
`
`only to grounds “that the petitioner raised or reasonably could have raised”
`
`during a concluded IPR. 35 U.S.C. § 315(e)(1) (emphasis added). Because
`
`the Uehara and Xiong grounds had been presented to the Board in the Earlier
`
`IPRs filed the day before the Later IPRs, we find that they could not
`
`“reasonably” have been rasied in the Later IPRs.
`
`We do not agree with Patent Owner that Petitioner “reasonably” could
`
`have raised the Uehara and Xiong grounds in the Later IPRs for the simple
`
`reason that Petitioner had already raised those grounds before the Board.
`
`Patent Owner does not explain why it would have been reasonable for the
`
`same petitioner to include the exact same grounds in two petitions
`
`challenging the same patent filed on successive days.
`
`We further conclude that a competent practitioner would have been
`
`aware that a second petition from the same petitioner presenting exactly the
`
`same art and arguments may have been denied under 35 U.S.C. § 325(d),
`
`which provides that the Director may reject a petition because “the same or
`
`substantially the same prior art or arguments previously were presented to
`
`the Office.” Although the language of § 325(d) is permissive, our decisions
`
`make clear that a second petition from the same petitioner raising the same
`
`grounds likely would have been denied absent some compelling additional
`
`considerations, which Patent Owner has not identified. See, e.g., Medtronic,
`
`Inc., v. Nuvasive, Inc., IPR2014-00487, Paper 8 at 6–7 (PTAB Sept. 11,
`
`2014) (informative) (denying institution where the Petition presented “the
`
`6
`
`
`
`IPR2019-00047
`IPR2019-00048
`IPR2019-00049
`Patent 9,154,356 B2
`
`same prior art previously presented in the [earlier petition], and the proposed
`
`challenges to the claims are nearly identical to the proposed challenges in
`
`the [earlier petition]”); Unified Patents, Inc., v. PersonalWeb Technologies,
`
`LLC, et al., IPR2014-00702, Paper 13 at 8–9 (July 24, 2014) (informative)
`
`(denying petition where “the same or substantially the same prior art and
`
`arguments were presented” in earlier petitions); see also General Plastic
`
`Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at
`
`16 (Sept. 6, 2017) (listing factors to be considered when determining
`
`whether to deny a second petition in view of an earlier petition, including
`
`“whether the same petitioner previously filed a petition directed to the same
`
`claims of the same patent”). Thus, even if it would have made some sense to
`
`also include the Uehara and Xiong grounds in the Later IPRs, it would not
`
`have been “reasonable” to actually do it, because it likely would have meant
`
`denial of that petition.
`
`Moreover, a denial of the second petition would have meant denial of
`
`the grounds based on Lee, because the Supreme Court in SAS Inst., Inc. v.
`
`Iancu, 138 S. Ct. 1348 (2018), held that the Board may not go forward on
`
`only some grounds presented in a petition. See id. at 1353 (“The agency
`
`cannot curate the claims at issue but must decide them all.”). We conclude
`
`that it would have been unreasonable to add completely redundant grounds
`
`to a second petition, where addition of the redundant grounds might have
`
`resulted in review of the non-redundant grounds being denied.
`
`For these reasons, we find that the Uehara and Xiong grounds could
`
`not “reasonably” have been raised in the Later IPRs, and that Petitioner is,
`
`therefore, not estopped under 35 U.S.C. § 315(e)(1).
`
`7
`
`
`
`IPR2019-00047
`IPR2019-00048
`IPR2019-00049
`Patent 9,154,356 B2
`
`
`We do not reach the questions of whether we could or should have
`
`proceeded to final decisions in the Earlier IPRs without Petitioner.
`
`Accordingly, it is ORDERED that Patent Owner’s Motion to
`
`Terminate is denied.
`
`8
`
`
`
`IPR2019-00047
`IPR2019-00048
`IPR2019-00049
`Patent 9,154,356 B2
`
`FOR PETITIONER:
`
`David Cavanaugh
`John Hobgood
`Ben Fernandez
`david.cavanaugh@wilmerhale.com
`john.hobgood@wilmerhale.com
`ben.fernandez@wilmerhale.com
`
`FOR PATENT OWNER:
`
`David B. Cochran
`Matthew W. Johnson
`Joseph M. Sauer
`Joshua R. Nightingale
`David M. Maiorana
`Thomas W. Ritchie
`William E. Devitt
`dcochran@jonesday.com
`mwjohnson@jonesday.com
`jmsauer@jonesday.com
`jrnightingale@jonesday.com
`dmaiorana@jonesday.com
`twritchie@jonesday.com
`wdevitt@jonesday.com
`
`9
`
`
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