From:
`To:
`Cc:
`
`Subject:
`Date:
`
`Oliver, Justin J.
`Precedential_Opinion_Panel_Request
`OITIPR@ruyakcherian.com; tomd@ruyakcherian.com; elizabetho@ruyakcherian.com; Marcello, Nicholas;
`Sandonato, Michael P.
`RE: Precedential Opinion Panel Request - IPR2020-01322
`Tuesday, May 11, 2021 4:10:07 PM
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`To the Board,
`
`The parties in the referenced matter have settled their dispute. Accordingly, Petitioner hereby
`requests that the pending POP request and pending request for rehearing be withdrawn so that
`parties may seek authorization to file a joint motion to terminate.
`
`Sincerely,
`Justin Oliver
`Counsel for Petitioner
`
`From: Oliver, Justin J. <JOliver@Venable.com>
`Sent: Wednesday, March 31, 2021 3:20 PM
`To: Precedential_Opinion_Panel_Request@uspto.gov
`Cc: OITIPR@ruyakcherian.com; tomd@ruyakcherian.com; elizabetho@ruyakcherian.com; Marcello,
`Nicholas <NDMarcello@Venable.com>; Sandonato, Michael P. <MSandonato@Venable.com>
`Subject: Precedential Opinion Panel Request - IPR2020-01322
`
`To the Board,
`
`By this email, Petitioner Canon Inc. (“Canon”) and the undersigned recommends review of the
`Board’s Decision Denying Institution of Inter Partes Review (“Decision”). IPR2020-01322, Paper 9
`(Mar. 1, 2021). Attached is the Request for Rehearing filed in that proceeding. The Decision merits
`review by the Precedential Opinion Panel for two reasons.
`
`First, based on my professional judgment, I believe the Decision is contrary to the following
`precedent of the Board: Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec.
`1, 2020) (precedential). Specifically, where Canon established that the Petition was based on newly
`discovered prior art (not uncovered in three earlier searches) and the Petition was filed expeditiously
`after the discovery of the new prior art, the Decision declined to consider those circumstances and
`instead ruled that expeditiousness under Fintiv Factor 3 could be measured only “with respect to
`activities in the parallel litigation.” Decision at 8-9. That position contradicts Sotera where, despite
`the petition being filed months after the filing of invalidity contentions in the parallel litigation, the
`Board relied on events outside of the litigation (e.g., the number of claims and patents at issue and
`the “nationwide shift to ‘work from home’”) in considering expeditiousness. Sotera Paper 12 at 17.
`
`IPR2020-01322
`Ex. 3003 p. 1 of 2
`
`

`

`Thus, the Decision’s refusal to consider any circumstances outside of the parallel litigation in
`connection with expeditiousness (and reasonableness) conflicts with Board precedent.
`
`Second, based on my professional judgment, I believe this case requires an answer to a precedent-
`setting questions of exceptional importance. Specifically, the Decision raises the critical question of
`whether the discovery of new prior art—including prior art uncovered after both the filing of
`responses to invalidity contentions in the parallel litigation and multiple prior searches at the outset
`of the litigation—should weigh against institution, particularly where the time to raise the new prior
`art in the parallel litigation has passed. Given that the Board’s precedent adopts estoppel
`considerations (e.g., agreeing not to raise prior art that reasonably could have been raised in the
`parallel litigation) in addressing discretionary denial, it should not follow that reliance on prior art
`unavailable in the litigation would weigh against institution—contrary to the Decision’s position in
`this proceeding. The refusal to give any consideration to the discovery of new prior art in connection
`with discretionary denial contradicts the Board’s prior guidance in Gen. Plastic Indus. Co., Ltd. v.
`Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 9, 16 (PTAB Sept. 6, 2017). It also presents a
`Catch-22 in which newly discovered prior art cannot be raised in the litigation or an IPR petition.
`
`Sincerely,
`/Justin J. Oliver/
`Attorney of Record for Petitioner Canon
`
`Justin J. Oliver, Esq.
`Venable | Fitzpatrick
`t 202.721.5423
`Venable LLP, 600 Massachusetts Avenue, NW
`Washington, DC 20001
`
`JOliver@Venable.com | www.Venable.com
`
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`
`IPR2020-01322
`Ex. 3003 p. 2 of 2
`
`