`571-272-7822
`
`
`
`
`
`
`
`Paper 13
`Entered: March 19, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`PINN, INC.,
`Patent Owner.
`
`IPR2020-01668
`Patent 9,807,491 B2
`
`
`
`
`
`
`
`
`
`Before JAMESON LEE, KARL D. EASTHOM, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`PETTIGREW, Administrative Patent Judge.
`
`DECISION
`Dismissal Prior to Institution of Trial
`35 U.S.C. § 314
`
`On March 18, 2021, with Board authorization, Petitioner, Apple Inc.,
`filed a Motion to Dismiss the Petition in this proceeding. Paper 12 (“Mot.”).
`Petitioner represents that Patent Owner, Pinn, Inc., does not oppose the relief
`requested in the motion. Mot. 2.
`As Petitioner points out, the instant Petition (Paper 3, “Pet.”) is the
`second petition filed by Petitioner challenging claims of U.S. Patent
`
`
`
`
`
`IPR2020-01668
`Patent 9,807,491 B2
`No. 9,807, 491 B2 (“the ’491 patent”). Mot. 2. In the earlier proceeding,
`IPR2020-00999, the Board exercised its discretion to deny institution under
`35 U.S.C. § 314(a), having determined “that instituting an inter partes
`review would be an inefficient use of Board resources” in view of the related
`district court proceeding involving the ’491 patent. Apple Inc. v. Pinn, Inc.,
`IPR2020-00999, Paper 15 at 20 (PTAB Dec. 8, 2020); see Mot. 3. That
`district court proceeding remains pending. See, e.g., Pet. 75; Paper 8, 2
`(Patent Owner’s Mandatory Notices).
`Petitioner submits that dismissal of the Petition is appropriate because
`this proceeding is in a preliminary stage and the Board has not issued a
`decision on institution, which is due on March 29, 2021. Mot. 4. Although
`“[t]he Board has undoubtedly expended some resources on initial review of
`the instant Petition,” Petitioner contends it nevertheless would be
`appropriate to dismiss the Petition “to preserve the Board’s and parties’
`resources and promote a speedy and inexpensive resolution to this dispute.”
`Id. Petitioner also notes that it is barred from filing another petition for
`review of the ’491 patent because Patent Owner served its complaint
`alleging infringement of the ’491 patent more than one year ago. Id. Thus,
`Petitioner asserts, dismissal of the Petition does not prejudice Patent Owner.
`Id.
`
`Under 37 C.F.R. § 42.71(a), “[t]he Board may take up petitions or
`motions for decisions in any order, [and] may grant, deny, or dismiss any
`petition or motion.” This proceeding is at an early stage, and although the
`Board has expended some resources, under the circumstances presented here
`
`2
`
`
`
`IPR2020-01668
`Patent 9,807,491 B2
`we are persuaded it is appropriate to dismiss the Petition and terminate the
`proceeding to promote efficiency and minimize unnecessary costs.
`This paper does not constitute a final written decision pursuant to
`35 U.S.C. § 318(a).
`
`Accordingly, it is
`ORDERED that Petitioner’s Motion to Dismiss is granted; and
`FURTHER ORDERED that the Petition is dismissed and the
`proceeding is terminated.
`
`
`
`3
`
`
`
`IPR2020-01668
`Patent 9,807,491 B2
`PETITIONER:
`
`W. Karl Renner
`Kim Leung
`Usman Khan
`Andrew B. Patrick
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`leung@fr.com
`khan@fr.com
`patrick@fr.com
`
`
`PATENT OWNER:
`
`Cabrach Connor
`CONNOR KUDLAC LEE PLLC
`cab@connorkudlaclee.com
`
`Carder W. Brooks
`David A. Skeels
`WHITAKER CHALK SWINDLE & SCHWARTZ PLLC
`cbrooks@whitakerchalk.com
`dskeels@whitakerchalk.com
`
`John. R. Kasha
`KASHA LAW LLC
`john.kasha@kashalaw.com
`
`
`4
`
`
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