From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Attachments:
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`Dear Sir:
`
`Bridget Smith <smith@lowensteinweatherwax.com>
`Wednesday, February 19, 2020 10:50 PM
`Precedential_Opinion_Panel_Request
`Yung-Hoon.Ha@wilmerhale.com; Theodoros.Konstantakopoulos@wilmerhale.com;
`Tim.Cho@wilmerhale.com; Calvin.Walden@wilmerhale.com; Bridget Smith; Kenneth
`Weatherwax; Nathan Lowenstein; Jason Linger; Patrick Maloney
`IPR2019-01198, IPR2019-01199, IPR2019-1200 // Recommendation for Precedential
`Opinion Panel Review
`IPR2019-01200 Patent Owner's Request For Rehearing.pdf; IPR2019-01198 Patent
`Owner's Request For Rehearing.pdf; IPR2019-01199 Patent Owner's Request For
`Rehearing.pdf
`
`VLSI Technology, LLC, Patent Owner in IPR2019-01198, IPR2019-01199, and IPR2019-1200,
`recommends Precedential Opinion Panel review of the Decisions on Institution in those
`proceedings. The Decisions on Institution collectively instituted three parallel IPR proceedings on a
`total of only four claims of one patent, where no priority was contested.
`
`Patent Owner respectfully recommends these Decisions on Institution for Precedential Opinion Panel
`review because, in instituting review on all three of these parallel petitions, the Board departed from
`the instructions in the USPTO's Trial Practice Guide, July 2019 Update (“July 2019 TPG Update”),
`which states (at 26) that, “based on prior experience, the Board finds it unlikely that circumstances
`will arise where three or more petitions by a petitioner with respect to a particular patent will be
`appropriate.” In the Decisions on Institution, the Board found it “significant” that the three petitions
`“were filed in June 2019, before the July 2019 TPG Update was published,” so, it found, “Petitioner
`made its decision on how to draft its petitions and divide the independent claims among different
`petitions before the Board’s guidance that it is unlikely that three or more petitions by a petitioner with
`respect to a particular patent will be appropriate” and “was not on notice yet as to the Board’s
`guidance that three or more petitions directed to a single patent is disfavored.” E.g., IPR2019-01200,
`Paper 19, 11-12. In this regard, the Decisions on Institution disregarded the statements in the July
`2019 TPG Update applying its guidance to parallel petitions filed both before and after the Update
`issued. The decisions are also in conflict with many other Board panel decisions on this issue,
`creating a deepening split on the Board.
`
`This recommendation for Precedential Opinion Panel review accompanies requests for rehearing filed
`with the Board in each proceeding. Patent Owner believes that these requests for rehearing satisfy
`the requirements of 37 C.F.R. § 42.71(d), including the due dates set forth therein.
`
`Based on my professional judgment, I believe that the Board panel decisions are contrary to the July
`2019 TPG Update. In addition, based on my professional judgment, I believe these cases require an
`answer to one or more precedent-setting questions of exceptional importance, namely: Does the July
`2019 Update apply to all parallel petitions, including those filed before the July 2019 TPG Update was
`promulgated?
`
`/Bridget A. Smith/
`ATTORNEY OF RECORD FOR VLSI TECHNOLOGY, LLC
`
`1
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`IPR2019-01198, -01199, -01200
`Ex. 3002 p. 1 of 2
`
`

`

`Bridget Smith | Lowenstein & Weatherwax LLP 
`1880 Century Park East, Suite 815 
`Los Angeles, California 90067 
`Office: 310.307.4511 
`
`IPR2019-01198, -01199, -01200
`Ex. 3002 p. 1 of 2
`
`2
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`