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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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`KINGSTON TECHNOLOGY COMPANY, INC.,
`Petitioner
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`v.
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`POLARIS INNOVATIONS LTD.,
`Patent Owner
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`Case IPR2016-01622
`Patent No. 6,850,414 B2
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`PETITIONER’S REQUEST FOR REHEARING
`& MOTION TO LIMIT THE PETITION
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`Pursuant to 37 C.F.R. §§ 42.5, 42.71(d), and the Board’s May 21, 2018 written
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`Case IPR2016-01622
`Patent 6,850,414 B2
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`order granting permission to file this motion, Petitioner Kingston Technology
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`Company, Inc. (“Petitioner” or “Kingston”) requests rehearing to address the effects
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`of the Supreme Court’s decision on SAS Inst., Inc. v. Iancu, 584 U.S. ___ (U.S. Apr.
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`24, 2018) on this trial, prior to the matter going to any appeal.
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`I.
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`Petitioner’s Motion to Limit and Request for Rehearing
`In Paper 39, the Board authorized the filing of a “Joint Motion to Limit the
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`Petition by removing specific claims and grounds upon which we did not institute
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`review in the original Decision on Institution.” Paper 39 at 8. Petitioner requested
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`that Patent Owner join a motion to remove claims 2 and 3 from the Petition. Patent
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`Owner opposes. Thus, Kingston moves (at least on its own) that the Board limit the
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`petition to exclude review of claims 2 and 3. To the extent that the Board decides
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`that it is required to institute claims 2 and 3 in order to institute on claim 4, Petitioner
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`requests institution on all claims and grounds in its original Petition. See Ex. 1029
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`at 6:3-17, 23:17-24:5. However, Kingston disclaims any challenge to claims 2 and
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`3 and therefore presents no briefing on them here.
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`Under SAS, the Board must issue a Final Written Decision that addresses
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`Claim 4 on the ground of Simpson in view of the Intel Specification (or alternatively
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`all grounds and claims if the motion to limit is denied). The Supreme Court held in
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`SAS that the Board may not institute on less than the set of challenged claims. SAS,
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`1
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`Case IPR2016-01622
`Patent 6,850,414 B2
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`584 U.S. ___ at *9 (stating that Ҥ318(a) categorically commands the Board to
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`address in its final written decision ‘any patent claim challenged by the petitioner.’”).
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`As the grounds related to claim 4 were not addressed in the FWD, Petitioner requests
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`that the Board reconsider its final written decision and provide a supplemental FWD
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`that addresses claim 4 (and 2-3 to the extent not limited).
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`II. The Board Can Render a FWD on Claim 4 Without Further Briefing
`This case is atypical because although the Board did not originally institute
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`claim 4, the Board has already adjudicated the additional limitation of dependent
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`claim 4 (the “height limitation”). This is because the Patent Owner re-injected the
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`height limitation of claim 4 back into the proceeding through its own voluntary
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`decision to file a motion to amend. See Paper 35 at 21 (“Regardless as to the reasons
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`underlying Patent Owner’s actions, it is because of those actions that the height
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`limitation of claim 4 is again involved in this proceeding.”). The parties had full
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`opportunity for briefing and oral argument as to the patentability of the height
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`limitation, and the Board rendered a FWD that the height limitation in combination
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`with claim 1 (and even the added material from claim 8) was not patentable.
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`There are no due process concerns in the Board rendering a decision on the
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`height limitation. Patent Owner was permitted to argue for the patentability of the
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`height limitation in its motion to amend, then again in its reply to the motion (Papers
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`18 & 23). Patent Owner was then permitted to argue for the patentability of the
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`2
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`Patent 6,850,414 B2
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`height limitation during the Hearing. Through each of these stages, Patent Owner
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`made a strategic choice to focus its arguments for patentability mainly on several
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`misconceptions rather than on substance.1 Notably, these misconceptions were not
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`affected by SAS, but instead arise where Petitioner relied on the wrong portion of
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`the IPR statutes. See FWD, Paper 35, at 16-19. As the Board previously noted,
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`Patent Owner was fully advised that the Board had not found the patentability of
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`claim 4. FWD, Paper 35 at 19 (“In denying that request for reconsideration, we
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`confirmed “[i]n neither decision [denying institution as to claim 4] did the Board
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`determine affirmatively that claim 4 is patentable over the prior art asserted in the
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`respective petitions.” IPR2017-00974, Paper 9, 5. Accordingly, Patent Owner’s
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`reliance on those prior decisions is misplaced”). SAS did not change any of this.
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`For example, even if the Petition been rejected in full, Patent Owner it would not
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`have any weight on the patentability of those claims as the institution standard 35
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`U.S.C. 314 is different than the standard for rendering decisions on patentability
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`under 35 U.S.C. 318
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`While Patent Owner’s strategy was ultimately unsuccessful, Patent Owner
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`was never denied the full and fair opportunity to argue for the patentability of the
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`height limitation in whatever way it chose. Given that, if as per the guidance in SAS,
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`1 Patent Owner did substantively argue patentability though. See Paper 23 at 10-11.
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`3
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`Case IPR2016-01622
`Patent 6,850,414 B2
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`the Board chooses to institute on claim 4, it can immediately render a FWD on claim
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`4 finding the claim unpatentable for the same reasons that it found claim 9
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`unpatentable.2 Indeed, it is axiomatic that claim 4 cannot be patentable if claim 9
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`was not.
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`III. There is No Waiver as to Claim 4
`Patent Owner was incorrect on the conference call to argue that Kingston
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`failed to preserve the SAS issue. See Paper 39 at 5. After the Board’s institution
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`decision, the scope of the trial was set, and the non-instituted claims were out of the
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`case. It would have been futile (and in contravention of the Board’s order) to
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`continue arguing claim 4 when it had not been instituted. Nor could Kingston have
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`properly urged a SAS type argument in its request for rehearing, as it was not the
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`then current law and it had not been in the Petition. Indeed, prior to the SAS decision,
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`the first opportunity Kingston would have had to challenge the non-institution of a
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`2 If the Board denies Petitioner’s Motion to Limit, Patent Owner should be given the
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`option to provide supplemental briefing on claims 2 and 3 (if PO desires it) as those
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`claims were not in the Motion to Amend. Moreover, while Patent Owner already
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`had multiple chances to argue the height limitation, Petitioner would not oppose
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`additional briefing on it if the Board believed it warranted. In either case, Petitioner
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`requests a reply to any additional briefing, as Petitioner retains the ultimate burden.
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`4
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`Patent 6,850,414 B2
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`claim based on the SAS rationale would be on appeal, which has not yet occurred.
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`Although Petitioner can certainly raise the SAS issue on appeal and seek remand to
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`the Board for a decision on claim 4, as stated on the call, Petitioner believes that it
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`is far more efficient for the Board to grant rehearing and issue a FWD for claim 4.3
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`IV. There is No Basis in Law to Permit Patent Owner a “Re-Do”
`There is no basis in law for Patent Owner’s request that the Board expunge all
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`of the Motion to Amend briefing and argument at the hearing if the Board follows
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`the guidance of SAS and institutes on claim 4. Although SAS is perhaps the most
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`disruptive change of law in the post-AIA era, it is hardly the first time that a change
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`in the law has occurred after a judgment has been rendered. For example, in Bryant
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`v. Merit Sys. Prot. Bd. (“MSPB”), after unsuccessfully arguing hostile work place
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`claims, Appellants sought to argue constructive discharge claims that they had
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`chosen to omit but could have been argued earlier. 878 F.3d 1320 (Fed. Cir. 2017).
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`Appellants argued that a change in the MSPB’s interpretation of its rules justified
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`the second case. The MSPB denied the second bite at the apple as barred by res
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`judicata and collateral estoppel, and the Federal Circuit agreed. See 878 F.3d at
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`1327–28 (Fed. Cir. 2017) (“Simply put, the change-of-law exception does not save
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`3 Petitioner respectfully askes the Board to make its ruling on this rehearing request
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`quickly. The appellate deadline is June 14th unless the Board orders re-hearing.
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`5
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`Case IPR2016-01622
`Patent 6,850,414 B2
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`Petitioners from their deliberate choice of action.”) As the Federal Circuit explained,
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`“[t]his case does not present a situation in which pursuing a certain course of action
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`was unavailable or otherwise futile under the then-controlling precedent.” Id. at
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`1327 citing Blonder-Tongue Labs., Inc. v. Univ. of Ill. Found., 402 U.S. 313, 350,
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`91 S.Ct. 1434, 28 L.Ed.2d 788 (1971)).
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`Similarly here, Patent Owner could and did argue their claim for patentability
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`on the merits, and it would not have been futile (at least as a matter of law—though
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`the facts for patentability were clearly against them) to have argued the merits.
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`Moreover, as a motion to amend is a wholly optional procedure that Patent Owner
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`moved the Board to undertake, there is no rational argument that it would have been
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`futile for Patent Owner to defend its instituted claims on the merits and not move to
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`amend. Indeed, most Patent Owners do not elect to file motions to amend. Beyond
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`this, the decision in SAS contains no substantive discussion of motions to amend and
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`did not change the standards at all – making it wholly agnostic to any decision to
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`amend. Patent Owner’s choice to amend did not even involve non-instituted claim
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`4 but rather a new proposed claim 9 which was narrower than claim 4 – making it
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`even more removed from the decision to move to amend. A decision on a different
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`legal issue and a different claim is not a legitimate basis for a Patent Owner to be
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`granted a “re-do.”
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`6
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`The Board’s decision in related trials 2017-01676, 680, and 689, which Patent
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`Patent 6,850,414 B2
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`Owner raised on the Board telephone call, does not change this conclusion. In these
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`IPRs, due date 1 occurred one day before the SAS decision. 2017-01676, Paper 17.
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`There had been no responsive briefing to the motion to amend and the Board had
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`not yet considered the motion – much less rendered a FWD. If the Board (in that
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`trial) had not issued its order, the Patent Owner would have been required to file a
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`new response and MTA on the SAS claims and the Board would have been required
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`to handle twice as many filings. Given the early stage of the case, it clearly made
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`the most sense to restart at due date 1 and that is what the Board chose to do. This
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`enabled a single set of pleadings to govern the trial. That situation is wholly different
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`from the present case where the substantive questions of patentability have already
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`been fully argued and a FWD has been issued. Restarting at due date 1 would
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`complicate rather than simplify this trial in view of the previous briefing and FWD.
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`V.
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`Section 318 Requires a Decision on Patentability
`Granting Patent Owner’s request to strike all of the motion to amend briefing
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`and argument and then render a decision on claim 4 that matches the original
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`institution decision is also not a viable option. 35 U.S.C. § 318 requires that the
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`Board issue a FWD “with respect to the patentability…” of the challenged claims.
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`In other words, the Board is required to affirmatively state in its decision whether
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`claim 4 is patentable or not. In this case, however, the Board has already weighted
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`7
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`Case IPR2016-01622
`Patent 6,850,414 B2
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`the evidence and determined that nothing in claim 4 is patentable. Thus, if the Board
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`were to adopt Patent Owner’s suggestion, it would be required to issue a decision
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`that its own prior FWD shows to be incorrect. The simple fact is that claim 4 is not
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`patentable (and moreover, over the same combination of art asserted by Petitioner
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`in its Petition, see infra). It is the PTO’s responsibility to ensure that the public is
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`not burdened by improper monopolies. It would be wrong for the Board to permit a
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`claim that has been found unpatentable (and not reversed) to be revived simply
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`because Patent Owner now wishes that it had not chosen to re-inject the claimed
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`subject matter into this trial.
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`VI. The Board’s Basis for Invalidity Can Be Found in the Petition
`Although it would be wrong for the Board to expunge all of the briefing and
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`argument related to Patent Owner’s motion to amend, the reasons for unpatentability
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`of the height limitation are also found in the original petition. Indeed, the FWD with
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`regard to claim 9 is in a very sense the final reconsideration of a ground originally
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`put forth in the Petition for claim 4. In particular, as noted above, the decision of
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`unpatentability for proposed claim 9 was based on Simpson in view of the Intel
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`Specification. That same ground was presented for claim 4 in the Petition. As such,
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`the Board need not consider any ground not presented in the Petition to render a
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`decision on claim 4.
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`8
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`However, the foundation for the unpatentability of claim 4 in the Petition runs
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`Case IPR2016-01622
`Patent 6,850,414 B2
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`deeper than the ground alone. First, claim 4 is a dependent claim from claim 1 (as
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`was proposed claim 9). In the FWD decision, the Board relied on the “challenge
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`thereto in the Petition” for each of the elements of claim 4 that come from claim 1.
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`Paper 35 at 23.
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`For the height limitation itself, the Board’s ultimate rationale for finding the
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`height limitation unpatentable is fully supported by the Petition, and, indeed, the
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`original Petitioner’s expert declaration (Ex. 1006) is cited as a basis for support in
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`the FWD. Paper 35 at 24 (citing to Ex. 1006 at ¶39 which addresses “market
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`constraints for the designs of printed circuit boards”); see also Paper 35 at 25 (relying
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`on Ex. 1006 at ¶¶ 37-41 as support for there being a reasonable expectation of
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`success in combining Simpson with the Intel Specification). Elsewhere, the FWD
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`also cited to Ex. 1006 at ¶106-107, which addressed standardization of printed circuit
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`board dimensions prior to the ’414 patent. Id. at 24. While the MTA briefing
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`ultimately provided additional examples, such as Karabatsos, of this standardization,
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`the Board’s ultimate rationale finds solid support in the original Petition. Moreover,
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`as the Board noted, Patent Owner itself “does not ascribe any criticality to the
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`claimed height range and does not dispute that that range was known in the art.” Id.
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`These admissions by Patent Owner further bolster the Board’s ultimate decision on
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`the height limitation and as party admissions stand on their own evidentiary footing.
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`9
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`Lastly, to the extent that the Board was to expunge all of the previous motion
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`Case IPR2016-01622
`Patent 6,850,414 B2
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`to amend briefing and related argument, Petitioner requests and should be entitled
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`to file briefing responsive to the institution decision. While the parties were
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`provided full and fair opportunity to brief and argue for the patentability of claim 4
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`in the current record, if that briefing and argument are expunged, Petitioner would
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`need a full and fair opportunity to argue the unpatentability of claim 4 (including
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`argument at an oral hearing). The fact that Petitioner previously sought rehearing or
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`filed a follow-on petition does not change this conclusion. The FWD was the first
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`instance that the Board considered the patentability of the height limitation. Paper
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`35 at 17. Petitioner is entitled to brief / argue the merits of patentability on claim 4.4
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`For each of the reasons set forth above, Petitioner requests that the Board
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`reopen the record, institute claim 4 pursuant to the SAS decision, grant Petitioner’s
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`motion to limit, and render a FWD finding claim 4 unpatentable in view of the
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`record. In the alternative, if the Board denies the motion to limit, Petitioner requests
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`institution of all grounds and claims in the Petition and asks the Board to set a
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`briefing schedule for this matter.
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`4 Petitioner believes that the MTA briefing and the FWD are clearly relevant to the
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`patentability of claim 4 and, if they are expunged, would seek permission to file them
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`as supplemental information and argue them at the hearing once claim 4 is instituted.
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`Date: May 29, 2018
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`Case IPR2016-01622
`Patent 6,850,414 B2
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`Respectfully submitted,
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` /David Hoffman/
`David Hoffman, Reg. No. 54,174
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`T: 512-226-8154
`T: 202-783-2331
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`Martha Hopkins, Reg. No. 46,277
`Law Office of S.J. Christine Young
`17220 Newhope Street
`Suites 101-102
`Fountain Valley, CA 92708
`T: 714-641-4022
`F: 714-641-2082
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`Counsel for Petitioner
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`CERTIFICATE OF SERVICE
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`Case IPR2016-01622
`Patent 6,850,414 B2
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`Pursuant to 37 CFR § 42.6(e)(4), the undersigned certifies that on May 29,
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`2018, a complete and entire copy of this Petitioner’s Request for Rehearing &
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`Motion to Limit the Petition was provided via email to the Patent Owner by
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`serving the correspondence email address of record as follows:
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`Kenneth J. Weatherwax
`LOWENSTEIN & WEATHERWAX LLP
`1880 Century Park East, Suite 815
`Los Angeles, CA 90067
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`PolarInnovs_IPRs@lowensteinweatherwax.com
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`/Edward G. Faeth/
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`Edward G. Faeth
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`(202) 626-6420
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`12
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