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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner,
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`v.
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`PINN, INC,
`Patent Owner.
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`Case IPR2020-01668
`Patent 9,807,491
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`MOTION TO DISMISS PETITION FOR INTER PARTES REVIEW
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`Proceeding No.: IPR2020-01668
`Attorney Docket: 39521-0091IP2
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`I.
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`INTRODUCTION
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`On March 16, 2021, the Board authorized Apple Inc. (“Petitioner” or
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`“Apple”) to file a motion to dismiss each of its pending petitions for inter partes
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`review of U.S. Patent Nos. 10,455,066 (“the ’066 Patent”) and 9,807,491 (“the
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`’491 Patent”), and thereby terminate IPR2021-00220, IPR2021-00221, and
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`IPR2020-01668.
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`The instant petition is meritorious, and demonstrates the unpatentability of
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`the challenged claims of the ’491 Patent. Nevertheless, Apple requests that the
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`Board dismiss the instant petition and terminate IPR2020-01668 to preserve the
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`Board’s and parties’ resources and promote a speedy and inexpensive resolution to
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`this dispute.1 IPR2020-01668 is in its preliminary phase, and the Board has not yet
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`reached the merits by issuing a decision on institution. Petitioner and Patent
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`Owner have met and conferred, and Patent Owner does not oppose the relief
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`requested in this motion. Petitioner now so moves.
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`II. BACKGROUND
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`The instant petition is one of two petitions challenging the ’491 Patent filed
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`by Apple, the first having been filed on June 11, 2020 as IPR2020-00999.
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`1 Petitioner is concurrently filing motions to dismiss its IPR2021-00220 and
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`IPR2021-00221 petitions.
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`2
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`Proceeding No.: IPR2020-01668
`Attorney Docket: 39521-0091IP2
`On December 8, 2020, the Board issued a decision on the IPR2020-00999
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`petition in which it recognized that “the parties’ arguments and evidence suggests
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`there is a reasonable likelihood that Petitioner would prevail with respect to at least
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`one of the claims challenged”; nevertheless, the Board exercised its discretion to
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`deny institution of that petition, having determined “that instituting an inter partes
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`review would be an inefficient use of Board resources.” IPR2020-00999 Pap. 15,
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`19-20.
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`On December 29, 2020, Patent Owner filed its preliminary response in
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`IPR2020-01668, urging the Board to exercise its discretion to deny the instant
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`petition. The Board has not yet issued a decision on institution of IPR2020-01668.
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`III. ARGUMENTS
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`Consistent with 37. C.F.R. § 42.71(a) and the Board’s precedent allowing
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`petitioners to withdraw petitions pre-institution, good cause exists to dismiss the
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`instant petition and terminate IPR2020-01668. See, e.g., Intel Corp. v. Tela
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`Innovations, Inc., IPR2019-01257 Pap. 16, 3 (PTAB Jan. 2, 2020)(granting
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`petitioner’s unopposed motion to dismiss “to promote efficiency and minimize
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`unnecessary costs”); Samsung Electronics Co. et al. v. Nvidia Corp., IPR2015-
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`01270 Pap. 11, 3-4 (PTAB Dec. 9, 2015) (granting petitioner’s motion to dismiss
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`despite opposition by patent owner, “to promote efficiency and minimize
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`unnecessary costs”).
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`3
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`Proceeding No.: IPR2020-01668
`Attorney Docket: 39521-0091IP2
`The instant proceeding is in its preliminary stage and a decision on
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`institution is not due until March 29, 2021. The Board has undoubtedly expended
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`some resources on initial review of the instant petition, but it would nevertheless
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`be appropriate to grant Petitioner’s unopposed motion to dismiss the instant
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`petition and terminate IPR2020-01668 at this early juncture, to preserve the
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`Board’s and parties’ resources and promote a speedy and inexpensive resolution to
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`this dispute. See Samsung, IPR2015-01270 Pap. 11, 3.
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`Moreover, Patent Owner served its complaint alleging infringement of the
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`’491 Patent more than one year ago, and Petitioner is therefore barred from filing
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`another petition for inter partes review with respect to the ’491 Patent. The
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`withdrawal of the instant petition does not prejudice Patent Owner, which does not
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`oppose the relief requested in this motion.
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`IV. CONCLUSION
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`Petitioner respectfully requests that the Board dismiss the instant petition
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`and terminate IPR2020-01668.
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`4
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`Date: March 18, 2021
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`Fish & Richardson P.C.
`Telephone: (202) 783-5070
`Facsimile: (877) 769-7945
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`Proceeding No.: IPR2020-01668
`Attorney Docket: 39521-0091IP2
` Respectfully submitted,
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`/Andrew B. Patrick/
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`W. Karl Renner, Reg. No. 41,265
`Kim Leung, Reg. No. 64,399
`Usman Khan, Reg. No. 70,439
`Andrew B. Patrick, Reg. No. 63,471
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`5
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`Proceeding No.: IPR2020-01668
`Attorney Docket: 39521-0091IP2
`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.8(b), the undersigned certifies that on March 18,
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`2021 a complete and entire copy of this Petitioner’s Motion to Dismiss was
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`provided via email to the Patent Owner by serving the correspondence email
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`addresses of record as follows:
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`Cabrach Connor
`CONNOR KUDLAC LEE PLLC
`609 Castle Ridge Road, Suite 450
`Austin, Texas 78746
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`Carder W. Brooks, David A. Skeels
`WHITAKER CHALK SWINDLE & SCHWARTZ PLLC
`301 Commerce Street, Suite 3500
`Fort Worth, Texas 76102-4135
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`John R. Kasha
`Kasha Law LLC
`14532 Dufief Mill Road
`North Potomac, MD 20878
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`Email: cab@connorkudlaclee.com
`cbrooks@whitakerchalk.com
`dskeels@whitakerchalk.com
`john.kasha@kashalaw.com
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`/Edward G. Faeth/
`Edward G. Faeth
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`(202) 626-46420
`6
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