Petitioners’ Opposition to Patent Owner’s Motion to Terminate
`IPR2019-00047, -00048, -00049
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________________________________
`
`INTEL CORPORATION,
`Petitioner,
`
`v.
`QUALCOMM INCORPORATED,
`Patent Owner.
`_________________________________________________
`IPR2019-00047
`IPR2019-00048
`IPR2019-000491
`U.S. Patent No. 9,154,356
`____________________________________________________
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`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION TO
`TERMINATE
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`1 The Board has authorized this style heading for briefs authorized by the Order
`Authorizing Motion to Terminate. IPR2019-00047, Paper 31, at 1.
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`IPR2019-00047, -00048, -00049
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________________________________
`
`INTEL CORPORATION,
`Petitioner,
`
`v.
`QUALCOMM INCORPORATED,
`Patent Owner.
`_________________________________________________
`IPR2019-00047
`IPR2019-00048
`IPR2019-000491
`U.S. Patent No. 9,154,356
`____________________________________________________
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION TO
`TERMINATE
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`1 The Board has authorized this style heading for briefs authorized by the Order
`Authorizing Motion to Terminate. IPR2019-00047, Paper 31, at 1.
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`I.
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`Petitioners’ Opposition to Patent Owner’s Motion to Terminate
`IPR2019-00047, -00048, -00049
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`INTRODUCTION
`After the completion of briefing and the oral hearing in IPR2019-00047,
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`
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`IPR2019-00048, and IPR2019-00049 (“the instant IPRs”), Patent Owner now
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`seeks to terminate, arguing that issuance of final written decisions in a second set
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`of IPR petitions (“second-filed IPRs”), filed later in time, estops Intel from
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`maintaining the instant IPRs under 35 U.S.C. § 315(e)(1). Patent Owner’s motion
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`should be denied because the estoppel provision of § 315(e)(1) does not apply,
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`since the grounds of the instant IPRs could not “reasonably” have been raised in
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`the second-filed IPRs. Moreover, termination of the instant IPRs would not be
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`appropriate even if Petitioner were estopped under § 315(e)(1).
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`II.
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`STATEMENT OF FACTS
`Petitioner filed the instant IPRs challenging claims of U.S. Patent No.
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`9,154,356 on November 8, 2018. The following day, Petitioner filed the second-
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`filed IPRs (IPR2019-00128 and IPR2019-00129). The Board accorded a filing
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`date to the second-filed IPRs on December 4, 2019, but did not accord a filing date
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`to the instant IPRs until January 17, 2020, more than six weeks later. Both the
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`instant IPRs and the second-filed IPRs were assigned to the same panel. Because
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`of their different dates of Notices of Filing Date Accorded, the two sets of IPRs
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`were subject to significantly different pre-institution statutory deadlines for
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`briefing and institution decisions.
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`1
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`Petitioners’ Opposition to Patent Owner’s Motion to Terminate
`IPR2019-00047, -00048, -00049
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`The Board instituted the second-filed IPRs on May 29, 2019 and the instant
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`IPRs on July 9, 2019. It set procedural schedules for the two sets of proceedings
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`that included an oral hearing in the second-filed IPRs on February 27, 2020 and an
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`oral hearing in the instant IPRs on April 7, 2020. On May 27, 2020, more than six
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`weeks after the conclusion of both oral hearings, the Board issued a final written
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`decision in the second-filed IPRs, holding none of the challenged claims
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`unpatentable. The Board has not yet issued its final written decision in the instant
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`IPRs. Patent Owner has moved to terminate, arguing estoppel under § 315(e)(1).
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`III. ARGUMENT
`A. Estoppel Does Not Apply Under § 315(e)(1)
`The estoppel provision of § 315(e)(1) does not apply to the instant IPRs.
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`First, Petitioner could not reasonably have raised the grounds asserted in the
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`instant IPRs in the second-filed IPRs. Section 315(e)(1) states that the petitioner in
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`an IPR that results in a final written decision on a claim of a patent “may not
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`request or maintain a proceeding before the Office with respect to that claim on
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`any ground that the petitioner raised or reasonably could have raised during that
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`inter partes review.” (emphasis added). Here, Petitioner had already raised the
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`grounds in the instant IPRs before it filed the second-filed IPRs. Petitioner could
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`not “reasonably” have raised them for a second time the next day in the second-
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`filed IPRs. 35 U.S.C. § 325(d) authorizes rejection of just such petitions: “the
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`2
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`Petitioners’ Opposition to Patent Owner’s Motion to Terminate
`IPR2019-00047, -00048, -00049
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`Director may … reject the petition or request because, the same or substantially the
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`same prior art or arguments previously were presented to the Office.” Nor is
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`Petitioner aware of any Board rule or procedure under which it could have filed
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`exactly the same grounds in petitions filed one day later.
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`In all of the cases on which the Patent Owner relies, the petitioner filed its
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`estopped petitions either later than or at the same time as the petitions giving rise to
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`the estoppel. And none of the cases upon which Patent Owner relies is
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`precedential. In Kingston Technology Co. v. Spex Technologies, Inc., the second
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`filed petition was filed months after the first. IPR2018-01002, Paper 12 (Nov. 6,
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`2018) (“Kingston”). Similarly, in Facebook, Inc. v. Uniloc USA, Inc. and Apple
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`Inc. v. Papst Licensing GmbH & Co., the issued final written decision was the
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`result of an earlier filed petition, even though the estopped party did not join the
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`earlier filed IPR until after it filed its own separate petition. See Facebook, Inc. v.
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`Uniloc USA, Inc., IPR2017-01427, Paper 30 (May 29, 2018); Apple Inc. v. Uniloc
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`Luxembourg S.A., IPR2017-00225, Paper 29 (May 23, 2018); Apple Inc. v. Papst
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`Licensing GMBH, IPR2016-01860, Paper 28 (Jan. 10, 2018) (“Papst”); Canon Inc.
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`v. Pabst Licensing GmbH & Co., IPR2016-01212, Paper 32 (Dec. 11, 2017).
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`Finally, in Intuitive Surgical, Inc. v. Ethicon LLC, the petition giving rise to
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`estoppel was filed simultaneously with the estopped petition. IPR2018-01248,
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`Paper 34, at 10-11 (Feb. 6, 2020) (“Intuitive Surgical”). Thus, in all of those
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`3
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`Petitioners’ Opposition to Patent Owner’s Motion to Terminate
`IPR2019-00047, -00048, -00049
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`proceedings, the petitioner could “reasonably” have raised the estopped grounds at
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`the time that it filed the other IPRs—but elected not to do so. See Papst, IPR2016-
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`01860, Paper 28 at 6 (emphasizing the importance of Apple’s choice as to the
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`timing and manner in which it raised the grounds it did). But here, at the time
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`Petitioner filed the second-filed IPRs, it could not reasonably have raised the
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`grounds in the instant IPRs, which were already pending before the Board. Thus,
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`the predicate for creating estoppel under § 315(e)(1)—that petitioner raised or
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`reasonably could have raised the ground during its other IPR proceeding—is not
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`satisfied.
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`Second, prior Board decisions recognize that “simultaneously” filed IPR
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`petitions do not give rise to an estoppel under 35 U.S.C. § 315(e)(1). In SK Hynix
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`Inc. v. Netlist, Inc., IPR2018-00364, Paper 32, at 9 (Aug. 5, 2019) (“SK Hynix”),
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`the Board explained that given the word limits on petitions, “whether grounds are
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`raised in one petition or more than one petition on the same day will not have
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`estoppel effect on other grounds raised in a petition filed the same day.” (emphasis
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`added). See also Kingston, IPR2018-01002, Paper 12 at 8-9. Under the logic of
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`that rule, petitions filed one day apart should likewise not be subject to estoppel.
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`The same concerns regarding word count that the Board recognized in SK Hynix
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`apply equally. Similarly, Petitioner faced the same concerns regarding groupings
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`of grounds, filing logistics, and efficiency with respect to multiple petitions.
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`4
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`Petitioners’ Opposition to Patent Owner’s Motion to Terminate
`IPR2019-00047, -00048, -00049
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`Ultimately, filing three petitions in the morning and two petitions at night on the
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`same day involves the same degree of simultaneity as filing three petitions one day
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`and the other two the following day (as was done here).
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`Patent Owner points to Intuitive Surgical, IPR2018-01248, Paper 34, to
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`argue that the “simultaneous filing” rule does not exist. See Mot. at 4. But
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`Intuitive Surgical is non-precedential and its statements about the applicability of §
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`315(e)(1) conflict with SK Hynix and Kingston. Moreover, in Intuitive Surgical,
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`the Board found that petitioner’s additional petitions were estopped because
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`petitioner made the strategic choice not to seek consolidation of its multiple IPRs,
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`even though the Board had set all of the IPRs for a single oral hearing. IPR2018-
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`01248, Paper 34, at 12. Unlike in Intuitive Surgical, Petitioner had no practical
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`option to seek consolidation here. Although Petitioner filed its petitions just one
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`day apart from one another, the Board’s Notices of Filing Date Accorded for the
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`instant IPRs were mailed six weeks later than for the second-filed IPRs. Given the
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`very different resulting procedural schedules and oral hearing dates, consolidation
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`was neither realistically possible nor reasonable.
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`B.
`The Board Should Proceed to Final Written Decision Even If It
`Finds that Petitioner Is Estopped
`Even if the Petitioner were estopped, the Board should proceed to a final
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`written decision. The Board has repeatedly held that “the estoppel provisions of 35
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`U.S.C. § 315(e)(1) do not apply to the Board.” Intuitive Surgical, IPR2018-01248,
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`5
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`Petitioners’ Opposition to Patent Owner’s Motion to Terminate
`IPR2019-00047, -00048, -00049
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`Paper 34 at 16; Apple Inc. v. Smartflash LLC, CBM2015-00015, Paper 49 at 5-6.
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`Instead, the Board has “discretion whether or not to terminate once estoppel is
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`found,” “continuing a proceeding without [the estopped] petitioner.” SK Hynix,
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`IPR2018-00364, Paper 32 at 11.
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`Given the late stage of the proceedings and the fully developed record in the
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`instant IPRs, termination would not be appropriate, and the Board should issue a
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`final written decision. The case has been fully briefed and argued; therefore, “it is
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`in the interests of the public as well as the integrity of the patent system, that the
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`panel issue a final written decision based on the merits of the case.” Intuitive
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`Surgical, IPR2018-01248, Paper 34 at 18 (proceeding to final written decision
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`where motion to terminate was filed after the oral hearing). As noted in Intuitive
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`Surgical, § 317 “lays out the [Board’s] discretion in a situation analogous to the
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`one here,” providing that “[i]f no petitioner remains in the inter partes review, the
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`Office may terminate the review or proceed to a final written decision.” Paper 34
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`at 16-17 (emphasis added). This discretion is a fundamental part of the IPR
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`process, which, “helps protect the public’s ‘paramount interest in seeing that patent
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`monopolies ... are kept within their legitimate scope.’” Cuozzo Speed Techs., LLC
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`v. Lee, 136 S. Ct. 2131, 2144 (2016).
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`The final written decisions in the second-filed IPRs found none of the
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`challenged claims unpatentable. Unlike the Papst decision, in which the first final
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`6
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`Petitioners’ Opposition to Patent Owner’s Motion to Terminate
`IPR2019-00047, -00048, -00049
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`written decision found all challenged claims unpatentable, in cases like the instant
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`IPRs in which earlier final written decisions found no claims unpatentable or had
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`mixed findings, it has been the Board’s practice to continue to a final written
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`decision in a pending IPR. Compare Papst, IPR2016-01860, Paper 28, n.10
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`(characterizing subsequent final written decision for claims already held
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`unpatentable as “advisory decision”) with Intuitive Surgical, IPR2018-01248,
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`Paper 34, at 16-18 (exercising discretion to proceed to final written decision in
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`case in which prior final written decision held some claims not unpatentable);
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`Apple Inc. v. Universal Secure Registry, LLC, IPR2018-00813, Paper 46 (Oct. 8,
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`2019) (final written decision finding some claims unpatentable that were found not
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`unpatentable in earlier final written decision).
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`Patent Owner’s suggestion that Intuitive Surgical and SK Hynix misread the
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`statute regarding the Board’s discretion to proceed to final written decision is
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`unavailing. See Mot. at 7. Section 315(e)(1) states “[t]he petitioner in an inter
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`partes review of a claim in a patent under this chapter that results in a final written
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`decision under section 318(a), … may not request or maintain a proceeding before
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`the Office” (emphasis added). Section 315(e)(1) says nothing about the authority
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`of the Board to maintain such a proceeding. To the contrary, §315(d) expressly
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`leaves the decision of whether to terminate under such circumstances at the
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`Board’s discretion: “if another proceeding … involving the patent is before the
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`7
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`Petitioners’ Opposition to Patent Owner’s Motion to Terminate
`IPR2019-00047, -00048, -00049
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`Office, the Director may determine the manner in which the inter partes review …
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`may proceed, including providing for … termination of any such … proceeding.”
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`And the Federal Circuit has held that language in § 325(e)(1)2 that is virtually
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`identical to the language in § 315(e)(1) “by its terms does not prohibit the Board
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`from reaching decisions. It limits only certain (requesting or maintaining) actions
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`by a petitioner.” Progressive Cas. Ins. Co. v. Liberty Mut. Ins. Co., 625 F. App’x
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`552, 555–56 (Fed. Cir. 2015) (nonprecedential).
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`Patent Owner should not be able evade review of the challenged claims,
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`especially given that the instant IPRs present different grounds. The instant IPRs
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`present grounds that invalidate Patent Owner’s claims even under the claim
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`construction that the Board adopted in the second-filed IPRs. As just one example,
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`the Uehara reference (-0047 IPR) anticipates claims 1, 11, 17, and 18 of the ’356
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`patent even under the construction of “carrier aggregation” as “simultaneous
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`operation on multiple carriers that are combined as a single virtual channel to
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`provide higher bandwidth,” IPR2019-00128, Paper 30 at 26. Section X.A.I.d of
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`the IPR2019-00047 Petition (at pages 50-53) explained in detail how Uehara
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`discloses carrier aggregation even under narrower interpretations, including
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`2 “The estoppel provisions of 35 U.S.C. § 325(e)(1) … are effectively the same as
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`those of § 315(e)(1).” Intuitive Surgical, IPR2018-01248, Paper 34, at 17 n.12.
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`8
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`Petitioners’ Opposition to Patent Owner’s Motion to Terminate
`IPR2019-00047, -00048, -00049
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`pointing to paragraph 47 of Uehara, which describes its input RF signal as
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`simultaneous operation on multiple carriers that are combined as a single virtual
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`channel: “The RF signal may include two channels encoded around two different
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`carrier frequencies (i.e., dual carriers), for example.” IPR2019-00047, Paper 3, at
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`51 (emphasis added) (quoting language from Ex. 1003-Uehara, at ¶47). Uehara
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`teaches dual carriers combined as a single virtual channel, and describes the
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`subsequent mixers 304, 305 each with its own local oscillator signal for separately
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`downconverting each of the dual carriers from the single signal to reconstruct the
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`original data. Id. The -00047 Petition explains that this increases bandwidth. Id.
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`The -00047 Petition further explains that this use of an RF signal with dual-carrier
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`encoding allows simultaneous operation by “driving [of] two output paths
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`simultaneously.” Id. (quoting Ex. 1003-Uehara, at ¶33). See also IPR2019-00047,
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`Paper 19, at 17-18; IPR2019-00047, Paper 30, at 13:2-11, 63:5-21. Final written
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`decisions in the instant IPRs would thus result in claims being cancelled.
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`Finally, basic fairness weighs heavily in favor of the Board exercising its
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`discretion to issue final written decisions. Petitioner filed the instant IPRs first,
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`setting forth grounds on which it wished to pursue IPR challenges. For reasons
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`wholly outside of Petitioner’s control, no Notice of Filing Date Accorded was
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`mailed for ten weeks. In the meantime (and again for reasons wholly outside of
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`Petitioner’s control), the Board first mailed Notices of Filing Date Accorded for
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`9
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`Petitioners’ Opposition to Patent Owner’s Motion to Terminate
`IPR2019-00047, -00048, -00049
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`the second-filed IPRs. Both the instant IPRs and the second-filed IPRs were
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`assigned to the same panel, which instituted both the instant IPRs and the second-
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`filed IPRs—but did so 6 weeks apart. That same panel also set the instant IPRs on
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`a different post-institution procedural schedule than the second-filed IPRs, with a
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`6-weeks later hearing date. The panel never suggested at institution or otherwise
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`that it planned not to reach the instant IPRs because of the different dates of
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`Notices of Filing Date Accorded. Instead, the parties and the Board proceeded for
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`a year to litigate the instant IPRs all the way through a 3-hour oral hearing on April
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`7, 2020. More than seven weeks after that hearing, the Board issued its final
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`written decisions in the second-filed IPRs, but elected not to issue final written
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`decisions in the instant IPRs simultaneously, even though the record was long
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`closed and it could have done so. Under these circumstances, where the delay in
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`issuing final written decisions in the instant IPRs is due solely to actions of the
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`Board and not to any strategy or actions of Petitioner, it would be fundamentally
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`unjust for the Board to discretionarily terminate as Patent Owner proposes.
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`IV. CONCLUSION
`Based on the foregoing, the Petitioner requests that the Board deny Patent
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`Owner’s motion to terminate and instead reach a final written decision.
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`Dated: June 17, 2020
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`
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`Respectfully submitted,
`/Benjamin S. Fernandez/
`Benjamin S. Fernandez, Reg. No. 55,172
`10
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`Petitioners’ Opposition to Patent Owner’s Motion to Terminate
`IPR2019-00047, -00048, -00049
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`CERTIFICATE OF SERVICE
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`I hereby certify that on June 17, 2020, I caused a true and correct copy of
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`the foregoing materials:
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` Petitioner’s Opposition to Patent Owner’s Motion to Terminate
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`to be served via electronic mail on the following correspondents of record as
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`listed in Patent Owners’ Mandatory Notices:
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`David B. Cochran (dcochran@jonesday.com)
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`Matthew W. Johnson (mwjohnson@jonesday.com)
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`Joseph M. Sauer (jmsauer@jonesday.com)
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`Joshua R. Nightingale (jrnightingale@jonesday.com)
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`David M. Maiorana (dmaiorana@jonesday.com)
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`Thomas W. Ritchie (twritchie@jonesday.com)
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`William E. Devitt (wdevitt@jonesday.com)
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`/Benjamin S. Fernandez/
`Benjamin S. Fernandez
`Registration No. 55,172
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`11
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