Trials@uspto.gov
`571.272.7822
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` Paper 38
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` Date: October 29, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`KINGSTON TECHNOLOGY COMPANY, INC.,
`Petitioner,
`
`v.
`
`POLARIS INNOVATIONS LIMITED,
`Patent Owner.
`____________
`IPR2016-01621
`Patent 6,438,057 B2
`____________
`
`
`Before SCOTT R. BOALICK, Chief Administrative Patent Judge.
`
`BOALICK, Chief Administrative Patent Judge.
`
`
`ORDER
`On September 15, 2021, the United States Court of Appeals for the Federal
`Circuit issued an order in the appeal of IPR2016-01621 remanding the case to the
`Office “for the limited purpose of allowing the parties to seek further action by the
`Director.” Polaris Innovations Ltd. v. Kingston Technology Co., No. 2018-1768,
`ECF No. 136, at 2 (Sept. 15, 2021).
`On October 13, 2021, Polaris Innovations Limited (“Patent Owner”) sent an
`email to the Board requesting to file, in agreement with Petitioner Kingston
`Technology Company, Inc., inter alia, a motion to terminate the proceeding.
`
`

`

`IPR2016-01621
`Patent 6,438,057 B2
`
`Ex. 3002.1 Patent Owner’s email states that the United States Supreme Court’s
`decision in United States v. Arthrex, Inc., 141 S. Ct. 1970 (2021), “establishes it is
`unconstitutional for the Board’s final written decision under § 318(a), without
`more, to constitute the Office’s final determination deciding the merits under the
`AIA.” Id. Patent Owner represents that the time to seek Director review has not
`expired this case and “submits that the Office has not yet finally decided the merits
`and the Director may terminate [this] review[] without a final decision of the
`Office under § 317(a) upon the joint request of petitioner and patent owner.” Id.
`Under 35 U.S.C. § 317(a), “[i]f no petitioner remains in the inter partes
`review, the Office may terminate the review or proceed to a final written decision
`under section 318(a).” The Board already has proceeded to a final written decision
`in this case and, therefore, under the plain language of the statute, a motion to
`terminate without a final written decision is not available under § 317(a).2 Instead,
`the appropriate course of action on remand is to allow Patent Owner to request
`Director review consistent with the Office’s interim guidance.3 Patent Owner may
`file a request for Director review within 14 days of this Order. If Patent Owner
`
`
`1 Patent Owner’s email also references IPR2016-01622 and IPR2017-00116.
`Patent Owner, however, subsequently requested Director review in those cases.
`IPR2016-01622, Ex. 3100; IPR2017-00116, Ex. 3100.
`2 The Federal Circuit’s limited remand order denied a motion to vacate the Board’s
`final written decision that Patent Owner filed in the appeal. See Polaris, No. 2018-
`1768, ECF No. 136, at 2 (Sept. 15, 2021) (“Polaris’s motion to vacate the final
`written decision is denied.”).
`3 See USPTO implementation of an interim Director review process following
`Arthrex, https://www.uspto.gov/patents/patent-trial-and-appeal-board/procedures/
`uspto-implementation-interim-director-review; see also Arthrex Q&As,
`https://www.uspto.gov/patents/patent-trial-and-appeal-board/procedures/arthrex-
`qas (updated July 20, 2021) (setting forth more details about the interim Director
`review process).
`
`
`
`2
`
`

`

`IPR2016-01621
`Patent 6,438,057 B2
`
`does not file a request for Director review within the allotted time, then the Board’s
`final written decision will remain the final agency decision.
`Accordingly, it is:
`ORDERED that Patent Owner’s request to file a motion to terminate is
`denied;
`FURTHER ORDERED that Patent Owner shall have 14 days to file a
`request for Director review; and
`FURTHER ORDERED that the Board’s final written decision will remain
`the final agency decision if Patent Owner does not file a request for Director
`review within 14 days.
`
`
`For PETITIONER:
`David Hoffman
`FISH & RICHARDSON P.C.
`hoffman@fr.com
`IPR37307-0007IP1@fr.com
`
`Martha Hopkins
`LAW OFFICES OF S.J. CHRISTINE YANG
`mhopkins@sjckawpc.com
`IPR@sjclawpc.com
`
`For PATENT OWNER:
`
`Kenneth Weatherwax
`Nathan Lowenstein
`Parham Hendifar
`LOWENSTEIN & WEATHERWAX LLP
`weatherwax@lowensteinweatherwax.com
`lowenstein@lowensteinweatherwax.com
`hendifar@lowensteinweatherwax.com
`
`
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`3
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