`Tel: 571-272-7822
`
`
`
`
` Paper 7
`Entered: April 20, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MAXELL, LTD.,
`Patent Owner.
`
`
`IPR2020-00200 (Patent 10,084,991 B2)
` IPR2020-00202 (Patent 10,212,586 B2)1
`
`
`
`
`Before MICHAEL R. ZECHER, KEVIN C. TROCK, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`TROCK, Administrative Patent Judge.
`
`
`
`ORDER
`Authorizing Reply and Sur-reply
`37 C.F.R. § 42.5(a)
`
`On December 19, 2019, Apple Inc. (Petitioner) filed a Petition for
`inter partes review of claims 1–5 and 8–12 of U.S. Patent No. 10,084,991
`B2 in IPR2020-00200 and claims 1, 2, 6, 7, 9, 10, 13, 14, and 16–18 of U.S.
`
`
`1 The parties are not authorized to use this caption in any filings.
`
`
`
`IPR2020-00200 (Patent 10,084,991 B2)
`IPR2020-00202 (Patent 10,212,586 B2)
`Patent No. 10,212,586 B2 in IPR2020-00202. Paper 1 (“Pet.”).2 Maxell,
`Ltd. (Patent Owner) filed Preliminary Responses to the Petitions on April
`16, 2020. Paper 6 (“Prelim. Resp.”). Patent Owner argues, among other
`things, that the Board should exercise its discretion under 35 U.S.C. § 314(a)
`to deny institution of an inter partes review because Petitioner’s
`unpatentability arguments will be resolved in a co-pending district court
`action between the parties that will conclude “long before” a final written
`decision will issue in this proceeding. Prelim. Resp. 2; see id. at 2–24.
`According to Patent Owner, “[t]here has been significant time and resources
`invested by both the Court and the parties in the District Court Action.” Id.
`at 11. For example, Patent Owner states that the district court conducted a
`four-hour Markman claim construction hearing and issued a 57-page
`Markman order, “with a detailed discussion of a number of disputed claim
`terms and phrases.” Id. at 11 (citing Exs. 2005, 2006).
`The Petition addresses the Board’s discretion to deny institution under
`§ 314(a) and also refers to the district court action. Pet. 6. The Preliminary
`Response and accompanying evidence, however, make clear that the district
`court action has progressed since the time the Petition was filed. See Prelim.
`Resp. 2–21; Exs. 2006 (Claim Construction Memorandum and Order).
`Under the circumstances presented here, the panel would benefit from
`additional briefing by the parties regarding whether we should use our
`discretion to deny institution under 35 U.S.C. § 314(a). See 37 C.F.R.
`§ 42.5(a) (authorizing Board to “enter non-final orders to administer the
`proceeding”). Recently, in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper
`11 (PTAB Mar. 20, 2020) (“Fintiv”), the Board discussed potential
`
`
`2 All citations are to IPR2020-00200 unless otherwise noted.
`
`2
`
`
`
`IPR2020-00200 (Patent 10,084,991 B2)
`IPR2020-00202 (Patent 10,212,586 B2)
`applications of NHK Spring Co., Ltd. v. Intri-Plex Technologies, Inc.,
`IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential) (“NHK”), as
`well as a number of other cases dealing with discretionary denial under
`§ 314(a). Fintiv identifies a non-exclusive list of factors parties may
`consider addressing, particularly where there is a related, parallel district
`court action and whether such action provides any basis for discretionary
`denial under NHK. Fintiv at 5–16. Those factors include:
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`3. investment in the parallel proceeding by the court and the
`parties;
`4. overlap between issues raised in the petition and in the
`parallel proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`Id. at 5–6. While we recognize that Patent Owner addressed these factors in
`the Preliminary Response (see Prelim. Resp. 5–21), we note that the Fintiv
`decision was not issued until after the Petition was filed in this case. We
`therefore ask the parties to further discuss the Fintiv factors in supplemental
`briefing.
`Accordingly, it is
`ORDERED that Petitioner may file a reply brief of no more than
`10 pages by April 27, 2020, addressing the Fintiv factors as set forth above;
`and
`
`3
`
`
`
`IPR2020-00200 (Patent 10,084,991 B2)
`IPR2020-00202 (Patent 10,212,586 B2)
`FURTHER ORDERED that Patent Owner may file a sur-reply of no
`more than 10 pages by May 4, 2020, addressing only the issues raised in
`Petitioner’s reply.
`
`
`
`PETITIONER:
`
`Adam P. Seitz
`Paul R. Hart
`Jennifer C. Bailey
`Robin A. Snader
`ERISE IP, P.A.
`adam.seitz@eriseip.com
`paul.hart@eriseip.com
`jennifer.bailey@eriseip.com
`robin.snader@eriseip.com
`
`
`
`PATENT OWNER:
`
`Robert G. Pluta
`Amanda S. Bonner
`Luiz Miranda
`James A. Fussell
`Saqib J. Siddiqui
`MAYER BROWN LLP
`rpluta@mayerbrown.com
`asbonner@mayerbrown.com
`lmiranda@mayerbrown.com
`jfussell@mayerbrown.com
`ssiddiqui@mayerbrown.com
`
`
`4
`
`
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