Paper: 39
`Trials@uspto.gov
`571-272-7822 Entered: May 21, 2018
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KINGSTON TECHNOLOGY COMPANY, INC.,
`Petitioner,
`
`v.
`
`POLARIS INNOVATIONS LTD.,
`Patent Owner.
`____________
`
`Case IPR2016-01622
`Patent 6,850,414 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, JEAN R. HOMERE,
`and KEN B. BARRETT, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Petitioner’s Request to Excuse the Late
`Filing of a Request for Rehearing1
`37 C.F.R. §§ 42.5 and 42.71(d)
`
`
`1 Although the pertinent rules refer to a request for rehearing, we, like
`Petitioner, sometimes interchangeably use the phrase “request for
`reconsideration.”
`
`
`Trials@uspto.gov
`571-272-7822 Entered: May 21, 2018
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KINGSTON TECHNOLOGY COMPANY, INC.,
`Petitioner,
`
`v.
`
`POLARIS INNOVATIONS LTD.,
`Patent Owner.
`____________
`
`Case IPR2016-01622
`Patent 6,850,414 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, JEAN R. HOMERE,
`and KEN B. BARRETT, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Petitioner’s Request to Excuse the Late
`Filing of a Request for Rehearing1
`37 C.F.R. §§ 42.5 and 42.71(d)
`
`
`1 Although the pertinent rules refer to a request for rehearing, we, like
`Petitioner, sometimes interchangeably use the phrase “request for
`reconsideration.”
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`
`Procedural Posture
`Kingston Technology Company, Inc. (“Petitioner”) filed a Petition
`
`requesting inter partes review of claims 1–8 of U.S. Patent No. 6,850,414
`B2 (“the ’414 patent,” Ex. 1001). Paper 2. Polaris Innovations Ltd. (“Patent
`Owner”) filed a Preliminary Response to the Petition. Paper 6. The Board
`instituted inter partes review (Paper 7) of claims 1 and 5–8 on the ground of
`obviousness under 35 U.S.C. § 103(a) over Simpson. The Board did not
`institute a review as to dependent claims 2–4 and did not institute on all
`grounds. Specifically, the instituted review did not include Petitioner’s
`obviousness challenge of claims 1–8 based on the combination of Simpson
`and the Intel Specification, or Petitioner’s obviousness challenge of
`claims 1–8 based on the Intel Specification. Petitioner filed a Request for
`Rehearing of The Board’s Institution Decision on Claim 4 (Paper 11), which
`was denied (Paper 16).
`
`Petitioner filed another petition seeking inter partes review of claim 4
`of the ’414 patent in Patent Trial and Appeal Board Case IPR2017-00974
`(Paper 2). In that case, the Board exercised its discretion under
`35 U.S.C. §§ 314(a) and 325(d) to not institute an inter partes review.
`IPR2017-00974, Paper 8. Petitioner’s request for reconsideration of that
`decision was denied. IPR2017-00974, Papers 9, 11.
`
`In the present proceeding and subsequent to the institution decision,
`Patent Owner filed a Motion to Amend seeking to cancel the instituted
`challenged claims and proposing to substitute a newly-presented claim 9 for
`dependent claim 8. Paper 18. Patent Owner characterized the proposed
`substitute claim 9 as “the same as challenged claim 8 in every respect,
`except that it simply adds the limitations of claim 4 . . . .” Id. at 1. Patent
`
`2
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`Owner did not file a Response to the Petition. Subsequently, Petitioner filed
`an Opposition to Patent Owner’s Motion to Amend (Paper 20), and Patent
`Owner filed a Reply to Petitioner’s Opposition to Motion to Amend
`(Paper 23). Petitioner filed a Surreply to Patent Owner’s Motion to Amend
`(Paper 28). Thereafter Patent Owner filed a Brief Addressing Impact of
`Aqua Products v. Matal2 (Paper 30). An oral hearing was held on
`November 14, 2017. See Paper 34 (Hearing Transcript).
`
`On February 5, 2018, the Board issued a Final Written Decision
`(“FWD”). Paper 35. In that Decision, we determined that Petitioner had
`demonstrated by a preponderance of the evidence that claims 1 and 5–8 of
`the ’414 patent are unpatentable under 35 U.S.C. § 103(a) as obvious over
`Simpson. Additionally, we determined, based on a preponderance of the
`evidence in the entire trial record, that proposed substitute claim 9 is
`unpatentable, under 35 U.S.C. § 103(a), as obvious over Simpson and the
`Intel Specification. Patent Owner filed, on March 7, 2018, a request for
`rehearing of the Final Written Decision (Paper 36), which was denied on
`April 12, 2018 (Paper 37).
`
`On April 24, 2018, the Supreme Court held that a decision to institute
`under 35 U.S.C. § 314 may not institute on less than all claims challenged in
`the petition. SAS Inst., Inc. v. Iancu, 2018 WL 1914661, at *10 (U.S.
`Apr. 24, 2018).
`
`On May 8, 2018, Petitioner sent to the Board and Patent Owner an
`email stating, in pertinent part: “Pursuant to the guidance provided by the
`Chief Judge in his recent webinar on SAS, Petitioner requests a conference
`
`
`2 Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017).
`
`3
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`call to ask permission to file an out of time request for reconsideration
`seeking institution and a FWD on non-instituted claim 4 in [this] IPR.”
`Ex. 3002. Later that same day, Patent Owner replied: “Patent Owner is
`prepared to explain why Petitioner’s proposed request should not be
`authorized pursuant to the guidance provided on SAS.” Id.
`Conference Call
`On May 11, 2018, Judges Barrett and Homere participated in a
`
`conference call with the parties to discuss the parties’ positions regarding
`Petitioner’s request. A transcript of that call has been filed as Exhibit 1026
`(“Call Tr.”). The following summary of the conference call is for context
`and is not intended to be all-encompassing, and should not be interpreted as
`a determination on any issue discussed during the call unless such a
`determination is expressly stated in this order.
`
`On the call, Petitioner acknowledged that the deadline to file a request
`for reconsideration has passed. Call Tr. 4:13–15, 22:15–23:3. Petitioner
`argued that we should allow it to file a late request for reconsideration in
`light of the recent Supreme Court ruling in SAS, that it has not waived any
`SAS issue, and that the most efficient path forward is to address any impact
`of SAS on this case prior to an appeal to the Federal Circuit. Id. at 4:3–2,
`21:18–22:7
`
`Petitioner indicated that it only would seek reconsideration regarding
`the grounds that apply to dependent claim 4, notwithstanding that claims 2
`and 3 also were the subject of the petition but not included in the original
`institution decision. Id. at 6:5–8; but see id. (stating that Petitioner would
`not oppose expanding the case further if that is viewed as necessary to avoid
`any barrier to the application of SAS). Petitioner argued that the Board, in
`
`4
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`addressing the patentability of Patent Owner’s proposed substitute claim 9,
`“has essentially rendered a decision on Claim 4.” Id. at 5:5–13. Thus,
`Petitioner also indicated that it would not be seeking to file additional
`briefing or evidence regarding the patentability of claim 4, and argued that
`Patent Owner has had a full and fair opportunity to address the merits
`through the motion to amend briefing and oral argument. Id. at 5:5–22,
`27:17–28:6. Petitioner argued that it was Patent Owner’s actions associated
`with the motion to amend that resulted in the record being further developed,
`that the record demonstrates that the subject matter of claim 4 is
`unpatentable, and that it would not be the proper outcome for the Board to
`ignore the record developed after the institution decision. Id. at 20:5–19,
`32:13:–33:18.
`
`Patent Owner asserted that there already is in this case an appealable
`final written decision and that no order adding claim 4 to the trial has been
`entered, and thus there is no pending trial. Id. at 6:22–9:8; see also id.
`at 13:8–15:14 (Patent Owner discussing whether the Board has jurisdiction
`over the case after the expiration of the time to request reconsideration and
`before the filing of a notice of appeal). Patent Owner argued that Petitioner
`failed to preserve the SAS issue and therefore has waived any challenge to a
`partial institution. Id. at 10:20–11:14. Patent Owner further argued that,
`should we go forward on claim 4, we should limit our consideration to
`Petitioner’s pre-institution arguments and evidence, which, according to
`Patent Owner, “the Board has already considered and rejected many times.”
`Id. at 15:16–19:17; see id. at 29:8–12; id. at 28:17–20 (“the proper procedure
`would be to hold petitioner to what it filed in its petition and to expunge all
`post-petition filings”). Patent Owner also asserted that it has not had an
`
`5
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`adequate opportunity to respond to the merits of claim 4, contending that
`there is no basis for imparting its arguments regarding the motion to amend
`to claim 4, id. at 30:11–16, and argued that the record is one sided because
`Patent Owner submitted only two pages of argument following institution,
`id. at 35:2–14; see also id. at 25:3–8 (“we filed only two pages of
`evidence-free argument on these issues”). Patent Owner argued that it
`should have an opportunity to file at least a patent owner response. Id.
`at 40:4–15.
`
`The parties requested that, should we authorize the filing of a request
`for reconsideration, they each be allowed ten pages of briefing and a week to
`file the respective brief. Id. at 5–14.
`Discussion
`Typically, a request for rehearing must be filed within thirty days of a
`
`final written decision. 37 C.F.R. § 42.71(d). This, however, is not a typical
`case. The Supreme Court’s decision in SAS was issued after the close of the
`thirty-day window for filing a request for rehearing but before the expiration
`of the time to file an appeal. See 37 C.F.R. § 90.3(a), (b) (a decision on a
`timely request for rehearing resets the time for appeal to no later than
`sixty-three days after that decision). We treat Petitioner’s email of May 9,
`2018, and the parties’ conference call of May 11, 2018, as Petitioner’s
`request to excuse the lateness of filing a request for rehearing. Having heard
`from both parties on the matter, we determine that, on the facts of this case
`and in light of the timing of SAS, the lateness of Petitioner’s request should
`be excused. See 37 C.F.R. § 42.5 (“A late action will be excused on a
`showing of good cause or upon a Board decision that consideration on the
`merits would be in the interests of justice.”). Accordingly, we authorize
`
`6
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`Petitioner to file a request for rehearing. We also authorize Patent Owner to
`file an opposition. Petitioner’s brief must address how SAS impacts this
`proceeding.
`
`We note that Petitioner primarily is requesting the institution of and a
`final written decision regarding originally non-instituted claim 4. As noted,
`that claim is not the only non-instituted claim. Each party’s brief should
`indicate clearly its position with regard to claims 2 and 3 and all grounds
`presented in the Petition. The parties may wish to consider, for example,
`filing a request for partial adverse judgment concerning some of the
`originally non-instituted claims and grounds or filing a Joint Motion to Limit
`the Petition by removing specific claims and grounds upon which we did not
`institute review in the original Decision on Institution.
`
`Additionally, the parties’ briefs should address whether there is any
`reason, such as due process concerns, why, after receiving the parties’
`submissions regarding Petitioner’s request for rehearing, the Board should
`not proceed immediately to final written decision on the remaining claims
`and grounds without further briefing.
`
`Lastly, Petitioner requested, if we allow briefing, we “put a note in
`that order, since we are reopening the record, so at least the clock would
`reset and there wouldn’t be an argument that we somehow waived a notice
`of appeal window.” Id. at 47:19–48:4. We are not, at this time, reopening
`the record. To the extent either party is concerned with waiver, it should
`carefully review the pertinent statutes, regulations, and caselaw, and take
`whatever action it deems appropriate. See, e.g., 37 C.F.R. § 90.3.
`
`7
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`For the foregoing reasons, it is
`
`ORDERED that Petitioner’s request to excuse the lateness of the
`
`filing of a request for rehearing is granted;
`
`FURTHER ORDERED that Petitioner is authorized to file a request
`for rehearing within seven (7) days of this Order, with the request being no
`longer than ten (10) pages;
`
`FURTHER ORDERED that Patent Owner is authorized to file an
`opposition to Petitioner’s request for rehearing no later than seven (7) days
`after the filing of Petitioner’s request, with the opposition being no longer
`than ten (10) pages; and
`FURTHER ORDERED that the parties are authorized to file, within
`seven (7) days of this Order, a Joint Motion to Limit the Petition by
`removing specific claims and grounds upon which we did not institute
`review in the original Decision on Institution; and
`FURTHER ORDERED that no further briefing is authorized at this
`
`time.
`
`
`
`
`8
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`For PETITIONER:
`David Hoffman
`FISH & RICHARDSON P.C.
`hoffman@fr.com
`
`Martha Hopkins
`LAW OFFICES OF S. J. CHRISTINE YANG
`mhopkins@sjclawpc.com
`
`
`
`For PATENT OWNER:
`Kenneth Weatherwax
`LOWENSTEIN & WEATHERWAX LLP
`weatherwax@lowensteinweatherwax.com
`
`
`
`9
`
`
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