UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Case No. IPR2019-00048
`Patent No. 9,154,356
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Intel Corporation,
`Petitioner,
`v.
`Qualcomm Incorporated,
`Patent Owner
`
`
`
`
`
`Case No: IPR2019-00048
`U.S. Patent No. 9,154,356
`
`
`
`
`
`PATENT OWNER’S MOTION TO TERMINATE
`
`
`
`
`
`
`
`Case No. IPR2019-00048
`Patent No. 9,154,356
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Intel Corporation,
`Petitioner,
`v.
`Qualcomm Incorporated,
`Patent Owner
`
`
`
`
`
`Case No: IPR2019-00048
`U.S. Patent No. 9,154,356
`
`
`
`
`
`PATENT OWNER’S MOTION TO TERMINATE
`
`
`
`
`
`
`
`TABLE OF CONTENTS
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`
`Page
`
`
`Introduction ..................................................................................................... 1
`I.
`Statement of Facts ........................................................................................... 1
`II.
`III. Argument ........................................................................................................ 2
`A.
`Petitioner Is Estopped From Maintaining The Instant IPRs ................ 2
`B.
`Patent Owner Disclaimed Claim 9, Thus There Are No
`Remaining Claims In Dispute In The Instant IPRs .............................. 6
`In The Interest Of Providing A Just, Speedy, and Inexpensive
`Resolution, The Instant IPRs Should Be Terminated .......................... 6
`IV. Conclusion .................................................................................................... 10
`
`C.
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`
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`-i-
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`CASES
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`TABLE OF AUTHORITIES
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`Page
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`Apple Inc. v. Papst Licensing GmbH & Co., KG,
`IPR2016-01860, Paper 28 (Jan. 10, 2018) .................................................... 4, 8, 9
`
`Facebook, Inc. v. Uniloc USA, Inc.,
`IPR2017-01427, Paper 30 (May 29, 2018) ........................................................... 4
`
`Intuitive Surgical, Inc. v. Ethicon LLC,
`IPR2018-01248, Paper 34 (Feb. 6, 2020) ................................................. 3, 4, 5, 7
`
`Kingston Tech. Co., Inc. v. Spex Techs., Inc.,
`IPR2018-01002, Paper 12 (Nov. 6, 2018) ............................................................ 3
`
`Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc.,
`839 F.3d 1382 (Fed. Cir. 2016) ............................................................................ 6
`
`SK Hynix Inc. v. Netlist, Inc.,
`IPR2018-00364, Paper 32 (Aug. 5, 2019) ........................................................ 7, 8
`
`
`
`STATUTES
`
`35 U.S.C. § 315(e)(1) ......................................................................................... 1, 2, 5
`
`35 U.S.C. § 317(a) ..................................................................................................... 7
`
`
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`OTHER AUTHORITIES
`
`37 C.F.R. § 1.321(a) ................................................................................................... 6
`
`37 C.F.R. § 42.1(b) .................................................................................................... 8
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`i
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`Case No. IPR2019-00048
`Patent No. 9,154,356
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`37 C.F.R § 42.2 .......................................................................................................... 9
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`37 C.F.R. § 42.72 ....................................................................................................... 6
`
`PTAB TRIAL PRACTICE GUIDE UPDATE (July 2019) ............................................ 9, 10
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`
`
`ii
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`
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`I.
`
`Introduction
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`Case No. IPR2019-00048
`Patent No. 9,154,356
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`Patent Owner requests that the Board terminate IPR2019-00047, IPR2019-
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`00048, and IPR2019-00049 (“the instant IPRs”).1 As a result of final written
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`decisions that address claims Petitioner challenged in IPR2019-00128 and
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`IPR2019-00129 (“the related IPRs”), Petitioner is statutorily estopped under 35
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`U.S.C. § 315(e)(1) from maintaining the instant IPRs because Petitioner reasonably
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`could have raised the grounds in the related IPRs.
`
`Claim 9 in the 00048 IPR is the only claim not covered by the final written
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`decisions in the related IPRs. To resolve Petitioner’s challenge to this claim,
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`Patent Owner filed a statutory disclaimer of claim 9.
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`Because there are no disputed issues remaining, the Board should terminate
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`the instant IPRs. Doing so would be appropriate, given the Board’s objective to
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`deliver a “just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R.
`
`§42.1(b).
`
`II.
`
`Statement of Facts
`
`Petitioner filed five IPR petitions challenging U.S. Patent No. 9,154,356
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`(“the ’356 Patent”). The three instant IPRs were filed on November 8, 2018. The
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`two related IPRs were filed one day later on November 9, 2018. The five IPRs
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`proceeded under separate scheduling orders—one schedule track for the instant
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`1 Patent Owner filed identical Motions To Terminate in each of the instant IPRs.
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`
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`1
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`
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`IPRs (Paper 9) and a different schedule track for the related IPRs (Paper 10).
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`Case No. IPR2019-00048
`Patent No. 9,154,356
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`On May 27, 2020, the Board issued final written decisions in the two related
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`IPRs, which collectively address claims 1 through 8, 10, 11, 17 and 18 of the ’356
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`Patent. IPR2019-00128, Paper 35; IPR2019-00129, Paper 36. The Board has not
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`yet issued final written decisions in the instant IPRs, which include one or more
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`challenges to these same claims—claims 1, 7, 8, 10, 11, 17, and 18 in IPR2019-
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`00047; claims 1, 10, 17, and 18 in IPR2019-00048; and claims 2 through 8, and 11
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`in IPR2019-00049.
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`Only one remaining instituted claim—claim 9 in the 00048 IPR—was not
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`addressed by the final written decisions in the related IPRs. Prior to filing this
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`Motion, Patent Owner filed a statutory disclaimer of claim 9 to resolve the
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`challenge to this claim. Ex. 2031.
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`III. Argument
`A.
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`Petitioner Is Estopped From Maintaining The Instant IPRs
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`Petitioner is estopped from maintaining the instant IPRs with respect to
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`claims 1 through 8, 10, 11, 17 and 18. Section 315(e)(1) is the estoppel provision
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`that governs proceedings before the Board:
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`The 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) . . . may not request or maintain a proceeding before the Office
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`2
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`with respect to that claim on any ground that the petitioner raised or
`reasonably could have raised during that inter partes review.
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`Case No. IPR2019-00048
`Patent No. 9,154,356
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`35 U.S.C. § 315(e)(1).
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`Estoppel attached under this provision on May 27, 2020, when Petitioner
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`received final written decisions under section 318(a) in the related IPRs addressing
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`its challenges to claims 1 through 8, 10, 11, 17 and 18 of the ’356 Patent. Because
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`the instant IPRs also include challenges to each of these claims, Petitioner may not
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`maintain the instant IPRs with respect to these claims. Id. As a result, Petitioner
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`may not remain a party with respect to these claims and must be terminated from
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`the proceedings. Intuitive Surgical, Inc. v. Ethicon LLC, No. IPR2018-01248,
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`Paper 34 at 15–16 (Feb. 6, 2020) (terminating Petitioner because “maintaining a
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`proceeding is satisfied simply by Petitioner remaining a party”).
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`The phrase “any ground that the petitioner . . . reasonably could have raised
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`during that inter partes review” in the statute has been interpreted by the Board to
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`mean “any grounds that the petitioner reasonably could have included in a petition.”
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`Kingston Tech. Co., Inc. v. Spex Techs., Inc., IPR2018-01002, Paper 12 at 7 (Nov.
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`6, 2018) (citing Facebook, Inc. v. Uniloc USA, Inc., IPR2017-01427, Paper 30 at 4
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`(May 29, 2018) (A ground “reasonably could have been raised” if it includes prior
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`art that a “skilled searcher conducting a diligent search reasonably could have been
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`expected to discover.”)). Here, Petitioner filed the instant IPRs before filing the
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`3
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`related IPRs, so there can be no dispute that Petitioner had discovered the prior art
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`Patent No. 9,154,356
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`supporting the grounds in the instant IPRs, and therefore reasonably could have
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`included those grounds in the related IPRs.
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`Petitioner disagrees with Patent Owner’s position but has not yet provided
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`the basis for its opposition. Petitioner may argue that estoppel should not apply for
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`several reasons, but each such reason has already been rejected by the Board in
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`other matters.
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`First, Petitioner cannot argue that estoppel does not apply to the instant IPRs
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`because they are earlier-filed petitions. The estoppel provision does not “delineate
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`between multiple petitions that are simultaneously filed or multiple petitions that
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`are filed in some serial fashion.” Intuitive Surgical, Paper 34 at 14 (estopping
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`petitioner with respect to a petition filed the same day as the petition that resulted
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`in a final written decision). As is the case here, estoppel attached to an earlier-filed
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`petition in Apple Inc. v. Papst Licensing GmbH & Co., KG. IPR2016-01860,
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`Paper 28 at 5–7 (Jan. 10, 2018). In Apple, the petitioner disputed that estoppel
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`would result from final written decisions in IPRs filed three months after the
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`earlier filed petition. But the Board rejected petitioner’s argument that it could not
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`have raised the earlier-filed grounds in the subsequent petitions by explaining that
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`“the choice of what ground to raise or not to raise is that of the petitioner.” Id. at 6.
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`Estoppel applied because the grounds in the earlier-filed petition were available to
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`4
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`the petitioner, and thus “could have [been] raised” in the subsequently filed
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`petitions. Id. at 7; accord Facebook, Paper 30 at 4–5 (May 29, 2018) (finding
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`estoppel applied to petitioner’s IPR filed one month before the IPR that resulted in
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`a final written decision).
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`Second, Petitioner cannot argue that it should be excused from estoppel
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`because it was the Board’s scheduling orders that put these IPRs on separate
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`schedule tracks. The Board has previously rejected this argument in other IPRs
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`and should do so here too. As was the case here, “Petitioner had the opportunity to
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`contact the Board during the pendency of the [IPRs] and ask that the . . . petitions
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`be consolidated into a single inter partes review prior to the issuance of final
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`written decisions . . . . Petitioner did not avail itself of that opportunity.” Intuitive
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`Surgical, Paper 34 at 14–15.
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`Third, the Board’s rule limiting the number of words in a petition does not
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`provide Petitioner with an argument to avoid estoppel either. Indeed, the Board
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`rejected that very argument in Intuitive Surgical, where the petitioner contended
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`that the word limit required three petitions to present 14 grounds challenging 19
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`claims. Intuitive Surgical, Paper 34 at 10–11. Here by comparison, Petitioner
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`presented 19 grounds in more petitions (5 petitions) while challenging even fewer
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`claims (13 claims). Moreover, the plain language of the statute does not
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`contemplate exceptions based on the Board’s rules, including its rules specifying
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`5
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`word count limits. 35 U.S.C. § 315(e)(1).
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`Case No. IPR2019-00048
`Patent No. 9,154,356
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`The statute prohibits Petitioner from maintaining the instant IPRs with
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`respect to claims 1 through 8, 10, 11, 17 and 18. Petitioner must be terminated
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`from the instant IPRs.
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`B.
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`Patent Owner Disclaimed Claim 9, Thus There Are No Remaining
`Claims In Dispute In The Instant IPRs
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`Patent Owner has disclaimed the only remaining non-estopped claim, which
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`is instituted claim 9 of the 00048 IPR. A copy of the statutory disclaimer that was
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`filed with the Patent Office pursuant to 37 C.F.R. § 1.321(a) is presented here as
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`Exhibit 2031 in the 00048 IPR.
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`In conjunction with Petitioner’s estoppel, this disclaimer resolves the dispute
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`as to all instituted claims in each of the instant IPRs. Petitioner has no further
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`challenges remaining for the Board to address in the instant IPRs.
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`C.
`
`In The Interest Of Providing A Just, Speedy, and Inexpensive
`Resolution, The Instant IPRs Should Be Terminated
`
`The Board has authority to terminate the instant IPRs “without rendering a
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`final decision.” 37 C.F.R. § 42.72; accord Medtronic, Inc. v. Robert Bosch
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`Healthcare Sys., Inc., 839 F.3d 1382, 1385 (Fed. Cir. 2016) (explaining that
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`“§ 318(a) contemplates that a proceeding can be ‘dismissed’ after it is instituted”).
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`It is appropriate to do so here. No Petitioner remains in the instant IPRs with a
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`6
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`valid challenge to be resolved.2
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`Patent No. 9,154,356
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`The Board has previously held that it has discretion to continue an IPR even
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`after terminating the petitioner due to estoppel. See, e.g., Intuitive Surgical, Paper
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`34 at 16–17; see also SK Hynix Inc. v. Netlist, Inc., IPR2018-00364, Paper 32 at 11
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`(Aug. 5, 2019). But that determination was improperly derived from the language
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`of an unrelated provision of the statute, section 317(a), which expressly sets forth
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`the option to “terminate the review or proceed to a final written decision” as a
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`consequence of a request for termination pursuant to settlement. Intuitive Surgical,
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`Paper 34 at 16–17 (citing 35 U.S.C. § 317(a)). Section 315(e) does not include
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`similar language. Accordingly, because the estoppel provision does not expressly
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`authorize the Board to proceed without a Petitioner, the statute should be read to
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`mean the instant IPRs must be terminated.
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`Furthermore, terminating the Petitioner for estoppel reasons and then
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`subsequently rendering a final written decision based on grounds put forth by that
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`same Petitioner would effectively render the estoppel provision a nullity. In that
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`2 In addition, there is no litigation pending involving the ’356 Patent that would
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`benefit from continuing the instant IPRs. The previously pending matters
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`regarding the ’356 Patent have been dismissed with prejudice. Case No. 3:17-cv-
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`02398 (S.D. Cal.); ITC Investigation No. 337-ITC-1093.
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`7
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`
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`event, the Petitioner would continue to receive the benefit of the Board’s decision
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`Case No. IPR2019-00048
`Patent No. 9,154,356
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`in a proceeding from which it is estopped and from which it is no longer a party.
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`That is contrary to the intent of the statute, which prohibits the Petitioner from
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`receiving subsequent final written decisions with respect to the same claims.3
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`Even if this panel determines that it has discretion to proceed, the instant
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`IPRs should be terminated. First, the task of completing three additional final
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`written decisions would be an inefficient use of the patent system, and does not
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`promote “the just, speedy, and inexpensive resolution of every proceeding.” 37
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`C.F.R. §42.1(b). Reaching a final written decision requires the Board to “expend
`
`substantial resources” “based on all the discovery and briefing.” SK Hynix, Paper
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`32 at 12 (terminating IPR at “late stage” where all briefing was complete). For
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`example in Apple, the Board conserved its resources by terminating an IPR due to
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`petitioner estoppel rather than proceed to a final written decision even though the
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`parties had already completed their briefing on the issues. Apple, Inc., Paper 28 at
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`7–8. The Board rejected the petitioner’s argument that not terminating the IPR and
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`3 Assuming Petitioner is estopped, the Board should reject any argument from
`
`Petitioner that the Board should proceed to a final written decision. Because an
`
`estopped Petitioner may not maintain a proceeding, Petitioner also should not be
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`heard to argue that those same proceedings should continue in its absence.
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`
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`8
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`
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`issuing a final written decision at that late stage of the case was a mere “copy and
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`Case No. IPR2019-00048
`Patent No. 9,154,356
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`paste” job, stating:
`
`The careful review of the record we undertake in developing final
`written decisions, however imperceptible it may seem to Petitioner, is
`performed in light of the papers and evidence submitted in this
`proceeding—not on whether a similar claim or similar disputes have
`been addressed in a related proceeding.
`
`Apple Inc., Paper 28 at 8 (terminating IPR). Likewise, termination of the instant
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`IPRs will conserve any further expenditure of the Board’s resources and provide
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`for a “just, speedy, and inexpensive resolution” of the instant IPRs.
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`Second, an IPR trial is adjudicated by the Board as a “contested case”
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`between a petitioner and a patent owner. 37 C.F.R § 42.2. Following Petitioner’s
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`termination due to estoppel, there is no longer a contested case for the Board to
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`resolve. Furthermore, the Board should not expend its resources addressing
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`patentability arguments that were presented by a party that is now being dismissed
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`from these IPRs.
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`Third, the instant IPRs should be terminated because parallel petitions
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`challenging the same patent are disfavored. Shortly after the instant IPRs were
`
`instituted, the Board issued guidance stating that except for certain “rare”
`
`circumstances, “one petition should be sufficient to challenge the claims of a patent
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`in most situations.” PTAB TRIAL PRACTICE GUIDE UPDATE, 26 (July 2019). In
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`
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`9
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`
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`addition, the Board has found it “unlikely that circumstances will arise where three
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`Case No. IPR2019-00048
`Patent No. 9,154,356
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`or more petitions by a petitioner with respect to a particular patent will be
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`appropriate.” Id. The circumstances here, which require the Board to address
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`three additional petitions beyond the two already decided, are well beyond that
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`which the Board deems “appropriate.” This rationale is further support that the
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`instant IPRs should be terminated in the interest of a just, speedy, and inexpensive
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`resolution.
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`IV. Conclusion
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`As explained above, the Board should find Petitioner is estopped from
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`maintaining the instant IPRs with respect to claims 1 through 8, 10, 11, 17 and 18.
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`Furthermore, following Patent Owner’s statutory disclaimer of claim 9, there are
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`no remaining disputed issues. Accordingly, in the interest of a just, speedy, and
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`inexpensive resolution, the Board should terminate the instant IPRs without
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`reaching a final written decision.
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`10
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`Case No. IPR2019-00048
`Patent No. 9,154,356
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`Respectfully submitted,
`
`/Thomas W. Ritchie/
`
`David B. Cochran (Reg. No. 39,142)
`Joseph M. Sauer (Reg. No. 47,919)
`David M. Maiorana (Reg. No. 41,449)
`JONES DAY
`901 Lakeside Ave.
`Cleveland, OH 44114
`
`Matthew W. Johnson (Reg. No. 59,108)
`Joshua R. Nightingale (Reg. No. 67,865)
`JONES DAY
`500 Grant Street, Suite 4500
`Pittsburgh, PA 15219
`
`Thomas W. Ritchie (Reg. No. 65,505)
`William E. Devitt (Admitted pro hac vice)
`JONES DAY
`77 W. Wacker Dr.
`Chicago, IL 60601
`
`Dated: June 10, 2020
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`11
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`Case No. IPR2019-00048
`Patent No. 9,154,356
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on June 10,
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`2020, a complete and entire copy of PATENT OWNER’S MOTION TO
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`TERMINATE has been served in its entirety by e-mail on the following addresses
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`of record for Petitioner:
`
`Lead Counsel:
`David L. Cavanaugh
`Reg. No. 36,476
`David.Cavanaugh@wilmerhale.c
`om
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`Postal and Hand-Delivery
`Address:
`Wilmer Cutler Pickering Hale
`and Dorr LLP
`1875 Pennsylvania Ave., NW
`Washington, DC 20006
`Telephone: (202) 663-6000
`Fax: (202) 663-6363
`
`
`Dated: June 10, 2020
`
`Backup Counsel:
`John V. Hobgood
`Reg. No. 61,540
`John.Hobgood@wilmerhale.com
`
`Benjamin S. Fernandez
`Reg. No. 55,172
`Ben.Fernandez@wilmerhale.com
`
`Gregory T. Lantier
`Gregory.Lantier@wilmerhale.com
`
`Postal and Hand-Delivery Address:
`Wilmer Cutler Pickering Hale and Dorr LLP
`1875 Pennsylvania Ave., NW
`Washington, DC 20006
`Telephone: (202) 663-6000
`Fax: (202) 663-6363
`
`Respectfully submitted,
`
`
`/Thomas W. Ritchie/
`Thomas W. Ritchie (Reg. No. 65,505)
`Jones Day
`77 W. Wacker Drive
`Chicago, IL 60601
`(312) 782-3939
`twritchie@jonesday.com
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`12
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