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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
`______________________
`
`Case IPR2019-00129
`Patent 9,154,356
`______________________
`
`PRELIMINARY PATENT OWNER RESPONSE TO PETITION FOR
`INTER PARTES REVIEW PURSUANT TO 37 C.F.R. § 42.107
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`
`
`
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`
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`I.
`II.
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`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`THE ’356 PATENT AND ITS PROSECUTION HISTORY ......................... 2
`A. Overview of the ’356 Patent ................................................................... 2
`B. Prosecution History of the ’356 Patent ................................................... 5
`III. CLAIM CONSTRUCTION ............................................................................ 7
`IV. THE BOARD SHOULD EXERCISE ITS DISCRETION UNDER 35
`
`U.S.C. § 325(d) TO DENY INSTITUTION ................................................... 8
`A. The Board Should Deny Ground I Because Lee Was Considered By
`
`The Patent Office During Prosecution .................................................... 8
`B. The Board Should Deny Grounds II-IV Because The Same Or
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`Substantially the Same Art Or Arguments Were Considered By The
`
`Examiner During Prosecution ............................................................... 12
`THE PETITION SHOULD BE DENIED BECAUSE IT IS CUMULATIVE
`V.
`TO IPR2019-00049 ....................................................................................... 15
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`VI. THE PETITION SHOULD BE DENIED INSTITUTION IN VIEW OF
`
`THE PARALLEL ITC PROCEEDING ........................................................ 17
`VII. CONCLUSION .............................................................................................. 22
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`
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`I.
`
`INTRODUCTION
`Intel Corporation (“Intel” or “Petitioner”) seeks review of claims 2-6 and 10
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`of U.S. Patent No. 9,154,356 (the “’356 Patent”) based on anticipation and
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`obviousness grounds that rely on the same or substantially the same references or
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`arguments previously presented to the Patent Office during examination. U.S. Patent
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`Application Publication No. 2012/0056681 (“Lee”) – the primary reference in this
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`petition – was presented to and considered by the Patent Office during prosecution
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`of the application giving rise to the ’356 Patent. But Lee was not merely disclosed
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`– Lee was discussed in detail in an International Search Report and Written Opinion
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`that rejected related claims in a PCT application as lacking novelty and
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`inventiveness. This International Search Report and Written Opinion was also
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`presented to and considered by the Patent Office, and the Examiner ultimately
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`allowed the ’356 Patent. The secondary references Petitioner relies on are the same
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`in all relevant aspects as other art presented to and considered by the Patent Office
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`during examination. Accordingly, the Board should exercise its discretion under 35
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`U.S.C. §325(d) to deny institution.
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`The Board should alternatively exercise its discretion under 35 U.S.C. §314(a)
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`to reject the Petition as redundant to another contemporaneously-filed petition
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`challenging the same claims. IPR2019-00049 challenges claims 2-8 and 11 with
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`substantially the same arguments. Petitioner makes no attempt to explain how Lee
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`1
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`
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`is more relevant than or differs from the primary references in IPR2019-00049.
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`Moreover, Petitioner relies on the same secondary reference to allegedly plug the
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`same hole in each primary reference. Thus, each ground presented in this Petition
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`is cumulative to the arguments Petitioner advances in IPR2019-00049.
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`The Board should not reward Petitioner for its redundant and cumulative
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`attacks but should instead exercise its discretion under 35 U.S.C. §§ 314(a) or 325(d)
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`to deny institution.
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`II. THE ’356 PATENT AND ITS PROSECUTION HISTORY
`A. Overview of the ’356 Patent
`The ’356 Patent, titled “Low Noise Amplifiers for Carrier Aggregation,”
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`generally relates to the design and operation of amplifiers in a wireless device
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`receiving radio frequency (RF) signals employing carrier aggregation.
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`Receiving signals that employ carrier aggregation, a communication
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`technique that Qualcomm pioneered, allows a mobile device to increase the
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`bandwidth available to a user for receiving the user’s desired content. With carrier
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`aggregation, data is split up and transmitted over multiple frequencies (carriers) to
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`create more bandwidth for the device. Carrier aggregation therefore allows more
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`data to be transmitted more quickly than traditional single-frequency methods.
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`However, a typical mobile device is not always receiving RF signals employing
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`carrier aggregation. For example, sometimes a mobile device may receive RF
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`2
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`signals on a single carrier, and at other times it receives no RF signals at all. One
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`aspect of the invention of the ’356 Patent is a receiver design that offers the
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`flexibility of activating circuitry to receive a signal employing carrier aggregation
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`when needed and deactivating that circuitry when it is not needed. By allowing
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`flexibility of circuit components between carrier aggregation and non-carrier-
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`aggregation modes, a mobile device can conserve power when less bandwidth is
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`needed, and provide increased bandwidth to the user when desired.
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`Aspects of the ’356 Patent may be found in the RF transceiver of mobile
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`devices. The RF transceiver is a component that receives radio-frequency (RF)
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`signals transmitted over the air (which can be at frequencies in the MHz to GHz
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`ranges) and converts the RF signals to baseband signals that can be provided to
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`digital circuitry for processing, for example, to recover user data. The RF transceiver
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`is connected to the antenna that receives the RF signals through RF front-end
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`circuitry, which prepares the received signals for conversion to baseband signals,
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`such as by filtering the signals.
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`The ’356 Patent’s claims are directed to an RF receiver (for example, within
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`an RF transceiver) with two amplifiers that separately amplify a common input RF
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`signal, where each of the two amplifiers can be independently enabled or disabled.
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`By independently controlling the amplifier stages, the amplifier stages may be
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`enabled or disabled as needed for carrier aggregation operation. For example, the
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`3
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`two amplifiers may be enabled in carrier aggregation mode. Alternatively, one of
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`the amplifiers may be enabled and the other disabled in non-carrier-aggregation
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`mode.
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`By allowing the flexibility to disable an amplifier stage when it is not needed
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`for carrier aggregation, the invention of the ’356 Patent reduces power consumption
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`in the RF transceiver and extends battery life for the mobile device. Furthermore,
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`by sharing a common RF input signal between both amplifier stages, the invention
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`of the ’356 Patent reduces the number of connections needed in the RF transceiver,
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`which in turn reduces the size of the transceiver and of the mobile device, and
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`reduces the number of components required for multiple modes of operation.
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`Claim 1 illustrates an exemplary embodiment of the ’356 Patent’s inventions:
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`1. An apparatus comprising:
`a first amplifier stage configured to be independently
`enabled or disabled, the first amplifier stage further
`configured to receive and amplify an input radio frequency
`(RF) signal and provide a first output RF signal to a first
`load circuit when the first amplifier stage is enabled, the
`input RF signal employing carrier aggregation comprising
`transmissions sent on multiple carriers at different
`frequencies to a wireless device, the first output RF signal
`including at least a first carrier of the multiple carriers; and
`a second amplifier stage configured to be independently
`enabled or disabled, the second amplifier stage further
`configured to receive and amplify the input RF signal and
`provide a second output RF signal to a second load circuit
`when the second amplifier stage is enabled, the second
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`4
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`
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`output RF signal including at least a second carrier of the
`multiple carriers different than the first carrier.
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`Ex. 1401 at 20:43-61.
`
`B.
`Prosecution History of the ’356 Patent
`The ’356 Patent issued from U.S. Patent Application No. 13/590,423 (the
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`“’423 Application”), filed August 21, 2012, and claims priority to U.S. Provisional
`
`Application No. 61/652,064, filed May 25, 2012. Ex. 1301. The ’423 Application
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`underwent a lengthy and comprehensive examination, spanning five rejections and
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`advisory actions, two requests for continued examination, and hundreds of cited
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`references, including multiple 3rd Generation Partnership Project (“3GPP”)
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`standards/articles and an International Search Report (“ISR”) and Written Opinion.
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`The challenged claims all depend from independent claim 1. The first office
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`action issued November 14, 2013, and rejected independent claim 1, among other
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`claims, as obvious over U.S. Patent No. 7,751,513 (“Eisenhut”). Ex. 1312 at 3-5.
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`To overcome the rejection, Applicant amended claim 1 as follows:
`
`1. An apparatus comprising:
`a first amplifier stage configured to receive and amplify an
`input radio frequency (RF) signal and provide a first
`output RF signal to a first load circuit when the first
`amplifier stage is enabled, the input RF signal comprising
`transmissions sent on multiple carriers at different
`frequencies to a wireless device, the first output RF signal
`including at least a first carrier of the multiple carriers; and
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`
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`5
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`
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`a second amplifier stage configured to receive and amplify
`the input RF signal and provide a second output RF signal
`to a second load circuit when the second amplifier stage is
`enabled, the second output RF signal including at least a
`second carrier of the multiple carriers different than the
`first carrier.
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`Ex. 1313 at 2. Applicant additionally included arguments that Eisenhut does not
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`teach or suggest at least the elements added by amendment. Id. at 7-9.
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`The Patent Office then issued a final office action on April 18, 2014, rejecting
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`claim 1 (among others) as anticipated by U.S. Patent No. 7,317,894 (“Hirose”). Ex.
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`1314 at 3-5. In response, Applicant amended claim 1 to recite “the input RF signal
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`employing carrier aggregation comprising transmissions sent on multiple carriers at
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`different frequencies to a wireless device.” Ex. 1315 at 2. Applicant further argued
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`that Hirose did not utilize an input RF signal employing carrier aggregation. Id. at
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`7-9.
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`The Patent Office then issued an advisory action indicating that the claim
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`amendments raised new issues that would require additional searching. Ex. 2001.
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`Accordingly, on July 17, 2014, Applicant filed a request for continued examination
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`(“RCE”) that included the aforementioned amendment and arguments. Ex. 2002.
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`The Patent Office next issued a non-final office action on August 1, 2014,
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`rejecting claim 1 as anticipated by U.S. Patent No. 8,442,473 (“Kaukovuori”). Ex.
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`1316 at 3-5. In response, Applicant presented numerous arguments that Kaukovuori
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`6
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`does not teach or suggest “[a first amplifier stage configured to ... amplify/
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`amplifying ... with a first amplifier stage] ... when the first amplifier stage is
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`enabled ... and [a second amplifier stage configured to ... amplify/ amplifying ... with
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`a second amplifier stage] ... when the second amplifier stage is enabled,” as recited
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`in claim 1. Ex. 1317 at 7-9.
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`On December 26, 2014, the Patent Office issued a second final office action,
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`again rejecting claim 1 as anticipated by Kaukovuori. Ex. 1318 at 7-9. After an
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`Examiner Interview discussing possible claim amendments, Applicant amended
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`independent claim 1 to recite that the first amplifier stage is configured to “be
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`independently enabled or disabled . . .” and the second amplifier stage is configured
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`to “be independently enabled or disabled . . . .” Exs. 1319; 1320 at 2. In light of this
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`amendment, the Examiner allowed claim 1. Ex. 1321 at 6.
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`Prior to paying the issue fee, Applicant filed a second request for continued
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`examination in order to permit the Patent Office to consider additional prior art
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`disclosed in an Information Disclosure Statement. Ex. 2003. After reviewing the
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`references, the Examiner again issued a Notice of Allowance, and the ’423
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`Application issued on October 6, 2015 as the ’356 Patent. Ex. 1322.
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`III. CLAIM CONSTRUCTION
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`37 C.F.R. 42.100(b) states that claims must be given their broadest reasonable
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`interpretation in light of the specification (“BRI standard”). Patent Owner submits
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`7
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`that no terms must be construed at this stage in the proceeding, and that the Board
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`should deny institution under any claim construction it adopts. Patent Owner
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`reserves the right to put forth constructions of particular claim terms and to rebut
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`constructions proffered in the petition as relevant to the patentability of the claims
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`should trial be instituted.
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`IV. THE BOARD SHOULD EXERCISE ITS DISCRETION UNDER
`35 U.S.C. § 325(d) TO DENY INSTITUTION
`A. The Board Should Deny Ground I Because Lee Was Considered
`By The Patent Office During Prosecution
`Ground I of the Petition asks the Board to reconsider the Lee reference, which
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`
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`was already considered by the Patent Office during prosecution. Petitioner asserts
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`in Ground I that claims 2-6 and 10 are anticipated by Lee. The Board should exercise
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`its discretion under 35 U.S.C. § 325(d) to deny Ground I because the Patent Office
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`previously allowed these claims over the very same art now being rehashed by
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`Petitioner.
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`
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`Not only did the Examiner consider the Lee reference during examination (as
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`indicated by his initials on an IDS), he also considered an ISR and Written Opinion
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`of the International Searching Authority that provided a detailed discussion of how
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`Lee allegedly reads on the claims. The ISR and Written Opinion found that the
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`relevant claims in the related PCT application lacked novelty and inventiveness over
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`8
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`Lee. This ISR and Written Opinion was cited to the Patent Office and fully
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`considered, as indicated by the Examiner’s initials.
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`
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`It is well established that the Board can exercise its discretion under Section
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`325(d) to deny institution of a petition based on art that was considered during
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`prosecution. Neil Ziegman, N.P.Z., Inc. v. Carlis G. Stephens, IPR2015-01860,
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`Paper 11 at 10 (PTAB Feb. 24, 2016) (denying institution under Section 325(d)
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`based on a prior-art reference considered by the Office during prosecution); Prism
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`Pharma Co., Ltd. v. Choongwae Pharma Corp., IPR2014-00315, Paper 14 at 12-13
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`(PTAB July 8, 2014) (same).
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`
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`During prosecution of the ’356 Patent, Qualcomm submitted an IDS listing
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`Lee. Ex. 2004. The Examiner subsequently considered Lee and provided his initials
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`on a signed and dated “List of References cited by applicant and considered by
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`Examiner.” Id. That is enough to show that the Office previously considered Lee
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`for purposes of Section 325(d). See, e.g., R.J. Reynolds Vapor Co. v. Fontem
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`Holdings 1 B.V., IPR2017-00626, Paper 7 at 12 (PTAB Sept. 27, 2018) (denying
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`institution under Section 325(d) and finding that references listed on IDS were
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`previously considered by the examiner); Clim-A-Tech Ind., Inc. v. William A. Ebert,
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`IPR2017-01863, Paper 13 at 18-19 (PTAB Feb. 12, 2018) (relying on §325(d) as an
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`additional basis to deny institution of anticipatory ground where the reference was
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`cited in an IDS but not applied by the examiner as a basis for rejection). There is no
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`9
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`question that the Examiner considered the Lee reference relied on by Petitioner and
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`allowed the claims over it. In fact, Lee is listed on the face of the ’356 Patent.
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`In addition to considering the Lee reference itself, the Examiner also
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`considered the ISR and Written Opinion of the International Searching Authority,
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`which provided a detailed description of how Lee allegedly reads on the claims. Ex.
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`2005. The Lee reference was one of only four references cited in the ISR and Written
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`Opinion – far from being buried in a stack of references listed on an IDS. The
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`Examiner considered these documents and initialed, signed, and dated the IDS
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`listing them. Ex. 2004. In allowing the claims of the ’356 Patent, the Examiner thus
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`considered the ISR and Written Opinion and their discussion of Lee and allowed the
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`claims over this reference. Id.
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`
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`In evaluating whether to deny institution on the basis of Section 325(d), the
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`Board considers the following list of factors set forth in Becton Dickinson & Co. v.
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`B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17-18 (PTAB Dec. 15, 2017)
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`(informative):
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`1. the similarities and material differences between the asserted art
`and the prior art involved during examination;
`2. the cumulative nature of the asserted art and the prior art
`evaluated during examination;
`3. the extent to which the asserted art was evaluated during
`examination;
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`10
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`4. the extent of the overlap between the arguments made during
`examination and the manner in which a petitioner relies on the prior art
`or a patent owner distinguishes the prior art;
`5. whether a petitioner has pointed out sufficiently how the Office
`erred in evaluating the asserted prior art; and
`6. the extent to which additional evidence and facts presented in
`the petition warrant reconsideration of the prior art or arguments.
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`
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`Here, the Becton Dickinson factors support denying institution. As to factor
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`1, it is beyond dispute that the Lee reference, relied on by Petitioner, is the very same
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`art considered by the Patent Office during prosecution. This factor thus weighs
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`strongly in favor of non-institution. For factor 2, given that it is the same reference
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`evaluated during prosecution, there is no question that Lee is cumulative, and this
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`factor likewise weighs in favor of Patent Owner.
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`
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`Factor 3 also supports non-institution. Not only did the Examiner review and
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`initial an IDS indicating his consideration of the Lee reference, he also considered
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`the ISR and Written Opinion that provided a detailed discussion of how Lee
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`allegedly reads on the claims. The ISR and Written Opinion from a corresponding
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`PCT application are especially relevant to the prosecution of a pending patent
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`application. Further, the Lee reference was one of only four references that were
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`considered in the ISR and Written Opinion, and the relevant PCT claims were
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`identical to the originally filed claims in the ’423 Application. Compare Ex. 2006
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`to Ex. 2007. Under these circumstances, it is unreasonable to think that the Examiner
`11
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`would not properly consider the ISR and Written Opinion and the Lee reference cited
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`and discussed therein, which provided the Examiner with an independent evaluation
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`of Lee. Factor 3 thus weighs in favor of non-institution.
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`As to factor 4, the Office did not issue a rejection over Lee, so this factor is
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`not applicable and thus favors neither party.
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`
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`As to factors 5 and 6, the Petitioner, having the burden of proof, has made no
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`attempt to demonstrate any error by the Patent Office or any other reason why
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`reconsideration might be warranted. In fact, Petitioner includes no discussion of
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`Section 325(d) or the Becton Dickenson factors. Petitioner thus asks the Board to
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`second guess the Office’s previous determination that the claims are patentable over
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`Lee without providing any reason why the Board should re-evaluate that art. Factors
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`5 and 6 therefore also weigh in favor of non-institution.
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`
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`For at least these reasons, the Board should exercise its discretion to deny
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`institution of Ground I under 35 U.S.C. § 325(d).
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`B.
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`The Board Should Deny Grounds II-IV Because The Same Or
`Substantially the Same Art Or Arguments Were Considered By
`The Examiner During Prosecution
`The Board should exercise its discretion under 35 U.S.C. § 325(d) to deny
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`
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`institution of Grounds II-IV. As described above, the Patent Office considered
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`primary reference Lee during examination. Claims 2-6 and 10 each depend from
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`independent claim 1, which the Patent Office allowed over the primary reference
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`12
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`Lee. Grounds II-IV allege that the combination of Lee and Youssef1 (claim 10), Lee
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`and the Feasibility Study2 (claims 2-6), and Lee, Youssef, and Feasibility Study
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`(claim 10) render obvious claims 2-6 and 10 of the ’356 Patent.
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`
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`Petitioner’s reliance on additional secondary references for dependent claims
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`2-6 and 10 is immaterial because the claims depend from a claim that the Patent
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`Office allowed over the primary reference – Lee. Moreover, the Feasibility Study
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`represents the same or substantially the same art or arguments previously considered
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`by the Office. The Feasibility Study is a technical report describing aspirations for
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`future wireless standards released by 3GPP. One of those aspirations is to make it
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`“possible to configure a [user equipment] to aggregate a different number of
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`component carriers originating from the same [base station] and of possibly different
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`bandwidths in the [uplink] and the [downlink]” communication paths. This technical
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`report contains no design concepts for circuitry to support its described operating
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`modes.
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`
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`The Feasibility Study is substantially the same art as 3GPP TS 36.101 v11.0.0
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`(“36.101 Specification”), a reference the Patent Office considered during
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`examination. Petitioner relies on the Feasibility study as disclosing the claim 1
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`1 “Digitally-Controlled RF Passive Attenuator in 65 nm CMOS for Mobile
`TV Tuner ICs,” by Ahmed Youssef and James Haslett
`2 Feasibility Study for Further Advancements for E-UTRA (LTE-Advanced)
`(3GPP TR 36.912 version 9.1.0 Release 9)
`
`
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`13
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`
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`limitation “an input RF signal employing carrier aggregation.” In all relevant
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`aspects, the 36.101 Specification considered by the Patent Office during examination
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`is the same as the Feasibility Study. In fact, the 36.101 Specification and the
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`Feasibility Study both describe the E-UTRA network, which supports carrier
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`aggregation. For example, the Feasibility Study describes potential advancements
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`to the E-UTRA network – a network fully described in the 36.101 Specification.
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`Carrier aggregation is not an advancement proposed by the Feasibility Study because
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`carrier aggregation was already fully supported by the E-UTRA network described
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`in the 36.101 Specification. In fact, the 36.101 Specification defines “carrier
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`aggregation” as “[a]ggregation of two or more component carriers in order to support
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`wider
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`transmission bandwidths,” and references “carrier aggregation” or
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`abbreviation “CA” more than 150 times.
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`
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`Petitioner’s argument that the Feasibility Study is somehow more relevant
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`than the 36.101 Specification because it allegedly teaches a receiver architecture
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`mischaracterizes the reference and has no merit. First, the Feasibility Study does not
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`teach the use of any particular receiver architecture – it vaguely describes several
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`possible high-level receiver configurations that might be used with the potential
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`advancements to E-UTRA. Second, Petitioner relies on the Feasibility Study for the
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`claim limitation “an input RF signal employing carrier aggregation,” which does not
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`itself recite a specific architecture. Petitioner’s reliance on the Feasibility Study thus
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`14
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`adds nothing relevant to the claims of the ’356 Patent beyond what is described in
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`the 36.101 Specification already considered by the Examiner.
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`
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`Petitioner relies on Youssef to teach the claim 10 limitation of “an attenuation
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`circuit coupled to the first and second amplifier stages and configured to receive the
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`input RF signal.” As described above, claim 10 depends from claim 1, which the
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`Patent Office allowed over Lee. Youssef is not relied on to cure the deficiencies of
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`Lee, and does not change the Board’s § 325(d) analysis with respect to independent
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`claim 1.
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`For at least these reasons, the Board should exercise its discretion to deny
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`institution of Ground II-IV under 35 U.S.C. § 325(d).
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`V. THE PETITION SHOULD BE DENIED BECAUSE
`CUMULATIVE TO IPR2019-00049
`Petitioner challenges overlapping claims with redundant references and
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`IT
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`IS
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`arguments across two petitions. The Board should exercise its discretion under 35
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`U.S.C. § 314(a) to deny Petitioner’s serial attacks on the same claims of the ’356
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`Patent.
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`
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`Petitioner presently challenges claims 2-6 and 10 of the ’356 Patent across
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`four grounds: 1) claims 2-6 are anticipated by Lee; 2) claim 10 is obvious over Lee
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`in view of Youssef; 3) claims 2-6 are obvious over Lee in view of the Feasibility
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`Study; and 4) claim 10 is obvious over Lee in view of Youssef and further in view
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`15
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`
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`of the Feasibility Study. Separately, Petitioner filed a redundant petition challenging
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`the same or substantially the same sets of claims. IPR2019-00049 challenges claims
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`2-8 and 11 across two grounds: 1) claims 2-8 and 11 are obvious over “A Scalable
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`6-to-18 GHz Concurrent Dual-Band Quad-Beam Phased-Array Receiver in CMOS,”
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`by Sanggeun Jeon, Yu-Jiu Wang, Hua Wang, Florian Bohn, Arun Natarajan, Aydin
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`Babakhani, and Ali Hajimiri (“Jeon”) in view of U.S. Patent Application Publication
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`No. 2010/0237947 (“Xiong”); and 2) claims 2-8 and 11 are obvious over Jeon in
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`view of Xiong and further in view of the Feasibility Study.
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`
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`Pre-SAS, it was not only appropriate for the Board to deny institution of
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`redundant grounds, it was commonplace. See, e.g., Toyota Motor Corp. v. American
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`Vehicular Sciences LLC, IPR2013-00423, 2014 WL 2507979, Paper 14 (PTAB Jan.
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`13, 2014); Broadcom Corp. v. Telefonaktiebolaget L. M. Ericsson, IPR2013-00602,
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`Paper 27 (PTAB Mar. 10, 2014); Harmonic, Inc. v. Avid Technology, Inc., IPR2013-
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`00252, Paper 12 (PTAB Sept. 25, 2013). Post-SAS, it remains appropriate for the
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`Board to exercise its discretion under 35 U.S.C. §314(a) to deny redundant petitions.
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`Here, Petitioner challenges dependent claims 2-6 in two separate petitions and four
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`different invalidity grounds. Petitioner thus challenges nearly overlapping sets of
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`claims with grounds that are substantially the same as each other and applied in the
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`same manner.
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`16
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`Additionally, the petitions all rely on the Feasibility Study as a back-up to the
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`primary references. The Feasibility Study is cited for the same argument in each
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`petition – that it teaches “an input RF signal employing carrier aggregation.” Thus,
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`the combination of Lee and Feasibility Study, and Jeon, Xiong, and Feasibility Study
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`are cumulative to one another. The remaining grounds involve insignificant
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`secondary references that are relied on for the same duplicative arguments already
`
`made. See Tomtom, Inc. v. Blackbird Tech, LLC, IPR2017-02025, 2018 WL
`
`1308390, at *7 (PTAB Mar. 12, 2018) (denying institution of a petition challenging
`
`the same claims with different prior art combinations because the arguments were
`
`substantially the same).
`
`
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`For these reasons, the Board should exercise its discretion under 35 U.S.C. §
`
`314(a) to reject Petitioner’s attempt to attack the same claims across two petitions
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`with substantially the same arguments.
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`VI. THE PETITION SHOULD BE DENIED INSTITUTION
`IN VIEW OF THE PARALLEL ITC PROCEEDING
`35 U.S.C. §314(a) provides the Director with discretion to deny a petition.
`
`
`
`See 35 U.S.C. §314(a). When determining whether to exercise this discretion, the
`
`Director must “consider the effect of any such regulation [under this section] on the
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`economy, the integrity of the patent system, the efficient administration of the
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`Office, and the ability of the Office to timely complete proceedings instituted under
`
`this chapter.” 35 U.S.C. §316(b). The Board’s decisions and its Trial Practice Guide
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`
`
`17
`
`
`
`provide guidance for when it is appropriate to deny a petition, including when there
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`are “events in other proceedings related to the same patent, either at the Office, in
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`district courts, or the ITC.” Trial Practice Guide, pg. 10. See also NHK Spring Co.
`
`v. Intri-Plex Tech., Inc., IPR2018-00752, Paper 8 at 20 (PTAB Sept. 12, 2018). In
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`NHK Spring Co., the Board found circumstances warranting denial under § 314(a)
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`where a petitioner asserted the same prior art in a parallel district court proceeding
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`nearing its final stages with expert discovery ending within two months, and trial set
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`to begin in six months (well before a final written decision would issue from the
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`Board). IPR2018-00752, Paper 8 at 20 (“instituting a trial under the facts and
`
`circumstances here would be an inefficient use of Board resources … and
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`inconsistent with ‘an objective of the AIA … to provide an effective and efficient
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`alternative to district court litigation.”)
`
`
`
`The instant facts justify the Board exercising its §314(a) discretion to deny
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`institution. Patent Owner filed a District Court Complaint against real-party-in-
`
`interest Apple on November 29, 2017. A Scheduling Order in the District Court
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`case issued March 8, 2018, and set a trial date of October 21, 2019. Ex. 2008. Patent
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`Owner filed an ITC Complaint on November 30, 2017.3 Petitioner had knowledge
`
`
`3 Though Petitioner Intel was not a named respondent in the ITC matter,
`Intel filed a Statement on the Public Interest on December 14, 2017 urging the ITC
`to deny Patent Owner’s request for an exclusion order. Ex. 2009 (Intel’s Public
`Interest Statement). Moreover, IPR real-party-in-interest Apple is a named
`respondent in the ITC matter. Ex. 2010.
`
`
`
`18
`
`
`
`of and actively participated in the ITC investigation no later than December 14,
`
`2017. The Scheduling Order in the ITC investigation issued February 14, 2018, and
`
`set a hearing date of September 17 through September 21, 2018. The Scheduling
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`Order also set deadlines to serve invalidity contentions (April 16, 2018), initial
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`expert reports (May 1, 2018), rebuttal expert reports (May 18, 2018), and a Final
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`Determination target date (January 22, 2019).4 Ex. 2011.
`
`
`
`Petitioner here relies on the same primary reference on which it relies in the
`
`ITC investigation. That reference, Lee, was identified no later than April 16, 2018,
`
`when Apple served the invalidity contentions. With full knowledge of the schedule
`
`in the ITC investigation, Petitioner made the strategic decision to wait nearly seven
`
`months after serving full invalidity contentions before filing its serial attack on the
`
`validity of the ’356 Patent. Thus, before even filing the Petition, Petitioner already
`
`received the benefit of full expert briefing, and a full ITC hearing, on the underlying
`
`issues raised in this Petition.
`
`
`
`The Board has previously found lesser facts weigh in favor of denying
`
`institution. In NHK Spring Co., the Board denied institution where the parallel
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`district court case was scheduled to go to trial approximately seven months after the
`
`institution decision. There, like here, the petitioner relied on the same prior art and
`
`
`4 In view of the recent government shutdown, the Initial Determination and
`Final Determination Target Dates have been postponed until March 26, 2019 and
`July 26, 2019 respectively. Ex. 2012.
`
`
`
`19
`
`
`
`the parallel proceeding will resolve the same issues before any trial on the petition
`
`concludes. The Board held that “instituting a trial under the facts and circumstances
`
`here would be an inefficient use of Board resources.” NHK Spring Co., Case
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`IPR2018-00752 at *19-20.
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`
`
`By filing the Petition so late, Petitioner and Apple seek to re-litigate an issue
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`that has already been fully litigated in a different forum and will be decided in the
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`ITC and the District Court well before the Board can reach a final written decision.
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`With the Final Determination due July 26, 2019, the ITC investigation will be
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`complete around the same time the Board’s institution decision is due. Critically,
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`the ITC investigation will have had the opportunity
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