`571.272.7822
`
`
`
`Paper No. 30
`Entered: June 4, 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
`Authorizing Motion to Terminate
`37 U.S.C. § 42.05
`
`
`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. The parties are authorized to use this style heading
`for the briefs authorized in this Order.
`
`
`
`IPR2019-00047
`IPR2019-00048
`IPR2019-00049
`Patent 9,154,356 B2
`
`
`By email communication of June 3, 2019, Patent Owner seeks Board
`authorization to file a Motion to Terminate in IPR2019-00047, IPR2019-
`00048, and IPR2019-00049 (the “Subject IPRs”), and to file a disclaimer of
`claim 9 of U.S. Patent No. 9,154,356 B2 in IPR2019-00048.
`Patent Owner contends that, as a consequence of the issuance of Final
`Written Decisions concerning the ’356 patent in IPR2019-00128 and
`IPR2019-00129 on May 27, 2020, Petitioner is estopped from maintaining
`the Subject IPRs except as to claim 9 in IPR2019-00048, which Patent
`Owner proposes to disclaim. Patent Owner indicates that Petitioner
`disagrees with its position and requests to file a response to any motion to
`terminate.
`We authorize Patent Owner to file a Motion to Terminate under 35
`U.S.C. § 315(e)(1) and Petitioner to file an Opposition to Patent Owner’s
`Motion to Terminate. Because the Board must issue a Final Written
`Decision in IPR2019-00047 by July 9, 2020, Patent Owner’s Motion must
`be filed no later than Wednesday, June 10, 2020, and Petitioner’s Opposition
`must be filed no later than Wednesday, June 17, 2020. The Motion and
`Opposition shall not exceed ten pages each, and no further briefing is
`authorized.
`The parties should consider addressing, at least, whether estoppel
`applies; if so, whether the Board may proceed without Peitioner; and, if so,
`whether the Board should proceed without Petitioner.
`
`2
`
`
`
`IPR2019-00047
`IPR2019-00048
`IPR2019-00049
`Patent 9,154,356 B2
`
`
`Accordingly, it is:
`ORDERED that Patent Owner is authorized to file a single Motion to
`Terminate, limited to not more than ten pages, in IPR2019-00047, IPR2019-
`00048, and IPR2019-00049 on or before Wednesday, June 10, 2020;
`FURTHER ORDERED that Petitioner may file a single Opposition to
`Patent Owner’s Motion, limited to not more than ten pages, on or before
`Wednesday, June 17, 2020; and
`FURTHER ORDERED that no additional briefing is authorized.
`
`
`
`3
`
`
`
`IPR2019-00047
`IPR2019-00048
`IPR2019-00049
`Patent 9,154,356 B2
`
`FOR PETITIONER:
`
`David Cavanaugh
`John Hobgood
`Ben Fernandez
`WILMER CUTLER PICKERING HALE
`AND DORR LLP
`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
`JONES DAY
`dcochran@jonesday.com
`mwjohnson@jonesday.com
`jmsauer@jonesday.com
`jrnightingale@jonesday.com
`dmaiorana@jonesday.com
`twritchie@jonesday.com
`
`4
`
`
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