Case IPR2016-01622
`Patent 6,850,414
`Attorney Docket No. 160831-002USIPR
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`KINGSTON TECHNOLOGY COMPANY, INC.,
`
`Petitioner
`
`v.
`
`POLARIS INNOVATIONS LTD.,
`
`Patent Owner
`____________
`
`Case IPR2016-01622
`Patent 6,850,414 B2
`____________
`
`
`PATENT OWNER’S RESPONSE
`TO PETITIONER’S OUT OF TIME (i) REQUEST
`FOR REHEARING OF FINAL WRITTEN DECISION
`AND (ii) MOTION TO LIMIT THE PETITION
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`
`
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`
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`
`
`Patent 6,850,414
`Attorney Docket No. 160831-002USIPR
`
`
`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
`____________
`
`
`PATENT OWNER’S RESPONSE
`TO PETITIONER’S OUT OF TIME (i) REQUEST
`FOR REHEARING OF FINAL WRITTEN DECISION
`AND (ii) MOTION TO LIMIT THE PETITION
`
`
`
`
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`TABLE OF CONTENTS
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`Page
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`I.
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`II.
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`THE BOARD LACKS JURISDICTION TO RE-OPEN THIS
`CASE. .............................................................................................................. 2
`
`PETITIONER CHOSE NOT TO RAISE A TIMELY SAS
`ARGUMENT. ................................................................................................. 2
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`III. EVEN IF INSTITUTION WERE APPROPRIATE,
`PETITIONER IS LIMITED TO WHAT WAS RAISED BY THE
`PETITION. ..................................................................................................... 5
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`IV. SAS DID NOT CHANGE THE CONTROLLING LAW UNDER
`WHICH THE PANEL PROPERLY DENIED INSTITUTION ON
`GROUNDS 2-3. .............................................................................................. 8
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`V.
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`PETITIONER’S MOTION TO LIMIT IS UNAUTHORIZED. ............ 10
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`
`
` i
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`
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`COURT DECISIONS
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`TABLE OF AUTHORITIES
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`Page(s)
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`Confed. Tribes v. United States, 177 Ct. Cl. 184, 191 (1966) ................................... 2
`
`Corus Staal BV v. United States, 502 F.3d 1370 (Fed. Cir. 2007) ............................ 4
`
`Curtis Publ’g, Inc. Butts, 351 F.2d 702 (5th Cir. 1965) ............................................ 3
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`GTNX, Inc. v. INTTRA, Inc., 789 F.3d 1309 (Fed. Cir. 2015) ................................... 3
`
`Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356 (Fed. Cir, 2016) ............... 6, 9, 10
`
`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359
`(Fed. Cir. 2016) ..................................................................................................... 5
`
`Lingamfelter v. Kappos, 513 Fed. Appx. 934 (Fed. Cir. 2012) (nonprecedential) .... 3
`
`Return Mail, Inc. v. USPS, 868 F.3d 1350 (Fed. Cir. 2017) ...................................... 3
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`SAS Inst., Inc. v. ComplementSoft, LLC, 825 F.3d 1341 (Fed. Cir. 2016),
`vacated and remanded sub nom. SAS Inst., Inc. v. Iancu,
`138 S. Ct. 1348 (2018) ......................................................................................4, 8
`
`SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018) ................................. 1, 3, 4, 8, 9, 10
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`Synopsys Inc. v. Mentor Graphics Corp., 814 F.3d 1309 (Fed. Cir. 2016) ...........4, 9
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`Wasica Fin. GmbH v. Continental Automotive Sys., Inc., 853 F.3d 1272
`(Fed. Cir. 2017) ..................................................................................................... 5
`
`AGENCY DECISIONS
`
`Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM2012-00003,
`Paper 8 (PTAB Oct. 25, 2012) (representative decision) ..................................... 5
`
`SAS Inst., Inc. v. ComplementSoft, LLC, IPR2013-00226,
`Paper 40 (PTAB Nov. 10, 2014), affirmed in relevant part,
`814 F.3d 1309 (Fed. Cir. 2016), vacated and remanded,
`138 S. Ct. 1348 (2018) .......................................................................................... 4
`
` ii
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`
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`Toyota Motor Corp. v. Am. Vehicular Scis. LLC, IPR2013-00424,
`Paper 50 (PTAB Jan. 12, 2015) ............................................................................ 6
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`STATUTES
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`35 U.S.C. § 316(a)(8) ................................................................................................. 7
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`35 U.S.C. § 318 .......................................................................................................... 9
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`35 U.S.C. § 318(a) ............................................................................................ 2, 3, 8
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`REGULATIONS AND RULEMAKING
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`37 C.F.R. § 11.301 ..................................................................................................... 4
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`37 C.F.R. § 42.108 .............................................................................................. 9, 10
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`37 C.F.R. § 42.108(a) ................................................................................................. 3
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`37 C.F.R. § 42.23(b) .................................................................................................. 6
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`37 C.F.R. § 42.71(d) .................................................................................................. 1
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`37 C.F.R. § 42.71(d)(2) .............................................................................................. 2
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`Changes to Implement Inter Partes Review Proceedings et al.,
`77 Fed. Reg. 48,680 (Aug. 14, 2012) ................................................................... 6
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`Trial Practice Guide, 77 Fed. Reg. 48,756 (Aug. 14, 2012) ...................................... 6
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` iii
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`EXHIBIT LIST
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`Exhibit 2001
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`Exhibit 2002
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`Exhibit 2003
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`Exhibit 2004
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`Cara Garretson. “More DRAM vendors involved in Justice
`Department probe.” IDG News Service July 21, 2002.
`Computer World, Inc. November 21, 2016.
`“Error Correction Code in SoC FPGA-Based Memory
`Systems.” Altera Corporation April 2012.
`“133 MHz PC SDRAM 64-Bit Non-ECC/Parity 144 Pin
`UNBUFFERED SO-DIMM SPECIFICATION.” Intel, Revision
`1.0C. August 2000
`“PC SDRAM Serial Presence Detect (SPD) Specification.”
`Intel, Revision 1.2B. November 1999.
`Exhibit 2005 Declaration of Nathan Nobu Lowenstein in support of Motion
`for Admission Pro Hac Vice
`Institution Decision, Amerigen Pharms. Ltd. v. Shire LLC,
`IPR2015-02009, Paper 8 (PTAB Apr. 18, 2016)
`Patent Owner’s Motion To Amend, Amerigen Pharms. Ltd. v.
`Shire LLC, IPR2015-02009, Paper 14 (PTAB Jul. 18, 2016)
`Petitioner’s Opposition To Motion To Amend, Amerigen
`Pharms. Ltd. v. Shire LLC, IPR2015-02009, Paper 17 (PTAB
`Oct. 18, 2016)
`Patent Owner Reply To Petitioner’s Opposition, Amerigen
`Pharms. Ltd. v. Shire LLC, IPR2015-02009, Paper 21 (PTAB
`Nov. 17, 2016)
`Petitioner’s Request For Oral Argument, Amerigen Pharms.
`Ltd. v. Shire LLC, IPR2015-02009, Paper 27 (PTAB Dec. 9,
`2017)
`Final Written Decision, Amerigen Pharms. Ltd. v. Shire LLC,
`IPR2015-02009, Paper 38 (PTAB Mar. 31, 2017)
`Exhibit 2012 Deposition Transcript Of Vivek Subramanian (Apr. 19, 2017)
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`Exhibit 2006
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`Exhibit 2007
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`Exhibit 2008
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`Exhibit 2009
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`Exhibit 2010
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`Exhibit 2011
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`Exhibit 2013
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`Exhibit 2014
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`Exhibit 1 To Deposition Transcript Of Vivek Subramanian
`(Apr. 19, 2017)
`Transcript of October 5, 2017 Conference Call
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`Exhibit 2015
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`[expunged]
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` iv
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`As authorized by the Board (Paper 39), Patent Owner Polaris Innovations
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`Limited hereby responds to Petitioner’s out of time request for rehearing of the
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`Board’s Final Written Decision (“FWD”) and Motion to Limit the Petition.
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`Although requests for rehearing generally “must specifically
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`identify all
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`matters . . . the Board misapprehended or overlooked, and the place where each
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`matter was previously addressed” in the record, 37 C.F.R. § 42.71(d), Petitioner
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`identifies nothing “the Board misapprehended or overlooked”: its request is based
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`solely on the issuance of the Supreme Court’s decision in SAS Institute v. Iancu,
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`which struck down the subset-of-claims provision of the Board rule governing
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`“partial institution.” 138 S. Ct. 1348, 1354, 1360.
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`Petitioner’s request should be denied. Petitioner forfeited its argument that
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`the FWD must address non-instituted petitioned challenges, because it never timely
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`raised that argument despite being well aware of the pending SAS case. Even if the
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`SAS issue were not forfeited and trial were to be re-opened and expanded in scope,
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`binding law requires that trial on the challenged claims be limited to bases,
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`rationales, and reasoning raised in the Petition, not arguments raised post-
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`institution in connection with the motion to amend. Finally, SAS itself can only at
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`most be a basis to require “full institution” as to all claims: binding law continues
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`to hold that it was fully lawful to deny institution on the uninstituted grounds.
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`For these reasons and those below, Petitioner’s request should be rejected.
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`1
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`
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`I. THE BOARD LACKS JURISDICTION TO RE-OPEN THIS CASE.
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`It is undisputed that Petitioner did not timely raise this request before the
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`time for requesting rehearing under the regulations expired. § 42.71(d)(2); Paper
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`39 at 4. That failure divested the Board of jurisdiction to grant Petitioner’s request.
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`Agency rules that set “time limits within which a motion for rehearing and
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`reconsideration must be made . . . set a period within which the parties must decide
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`whether or not they wish to avail themselves any longer of the jurisdiction of that
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`particular court or administrative agency.” Confed. Tribes v. United States, 177 Ct.
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`Cl. 184, 191 (1966). “This prevents a judicial or quasi-judicial body from reaching
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`out, after a case has left its jurisdiction, and pulling it back in by modifying or
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`reconsidering its decision.” Id. Here, those time limits passed, so the Board’s
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`“judgment [is] final and it ha[s] been divested of jurisdiction.” Id.
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`Petitioner had ample time to seek rehearing on this issue. See infra § II. It
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`did not. It points to no rule purporting to grant the Board continuing jurisdiction.
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`The Board may not “reac[h] out, after [this] case has left its jurisdiction, and pul[l]
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`it back in by modifying or reconsidering its decision” at Petitioner’s behest. Id.
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`II.
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`PETITIONER CHOSE NOT TO RAISE A TIMELY SAS ARGUMENT.
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`Throughout trial, Petitioner could have argued that 35 U.S.C. § 318(a)
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`required the Board to institute on all challenges in the Petition or none. Petitioner
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`could have made that argument in the Petition, in its request for rehearing of the
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`2
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`Board’s partial institution decision, at the hearing, or in a timely request for
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`rehearing of the FWD. Through each of these stages, Petitioner made a strategic
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`choice to not challenge the rules or the Board’s compliance with § 318(a). Nothing
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`excuses Petitioner from the consequences of that intentional strategy.
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`To preserve an SAS challenge to the Board’s partial institution, Petitioner
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`had to timely raise the issue before the Board. This is not like an unwaivable
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`challenge to the Board’s authority to hear a case, as in Oil States, or GTNX, Inc. v.
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`INTTRA, Inc., 789 F.3d 1309 (Fed. Cir. 2015). This is a challenge to “an agency’s
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`interpretation of” a statute, 35 U.S.C. § 318(a), as allowing promulgation of the
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`fewer-than-all-claims rule in 37 C.F.R. § 42.108(a). SAS, 138 S. Ct. at 1358. But
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`“‘failure to raise a particular question of statutory construction before an agency
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`constitutes waiver of the argument’” in such circumstances. Return Mail, Inc. v.
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`USPS, 868 F.3d 1350, 1365 (Fed. Cir. 2017) (citation omitted); accord
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`Lingamfelter v. Kappos, 513 Fed. Appx. 934, 938 (Fed. Cir. 2012) (party to inter
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`partes reexamination waived statutory challenge to examiner’s action by failing to
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`timely raise statute before examiner). A change of law does not change this result
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`if the party should have been “fully aware . . . that the . . . questions it now argues
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`had been . . . , and were still being, vigorously asserted in” other cases. Curtis
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`Publ’g, Inc. Butts, 351 F.2d 702, 710 (5th Cir. 1965).
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`It is incontestable that Petitioner should have known of its need to preserve
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`3
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`this issue. When the Petition was filed, the SAS petitioner had already raised,
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`briefed, and appealed this issue, and the Federal Circuit had published at least two
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`decisions on it. SAS Inst., Inc. v. ComplementSoft, LLC, 825 F.3d 1341 (Fed. Cir.
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`2016); Synopsys Inc. v. Mentor Graphics Corp., 814 F.3d 1309 (Fed. Cir. 2016).
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`By the time the Board issued its institution decision, the SAS petitioner had already
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`filed a petition for certiorari. SAS, pet. for cert. filed (Jan. 31, 2017). Yet
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`Petitioner never raised the issue. True, the Supreme Court had not yet actually
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`decided SAS. But that did not stop the petitioner in SAS from timely presenting the
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`Board with the exact statutory challenge to the partial institution rule it would
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`eventually win. See SAS Inst., Inc. v. ComplementSoft, LLC, IPR2013-00226,
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`Paper 39 at 3-5, Paper 40 at 2 (P.T.A.B. Nov. 10, 2014).
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`Therefore, if Petitioner wanted to take advantage of the law possibly turning
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`in its favor, it needed to timely “set forth its factual and legal arguments” to the
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`Board, so as to “at least provid[e] the agency an opportunity to set forth its position
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`in a manner that would facilitate judicial review.” Corus Staal BV v. United States,
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`502 F.3d 1370, 1379-81 (Fed. Cir. 2007); see 37 C.F.R. § 11.301 (expressly
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`permitting Office practitioners to assert “a good-faith argument for . . . reversal of
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`existing law”). That’s exactly what the petitioner in SAS did.
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`Unlike the SAS petitioner, Petitioner made the choice to forgo such
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`arguments. The consequence of that choice, as the authorities show, is forfeiture.
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`4
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`III. EVEN IF INSTITUTION WERE APPROPRIATE, PETITIONER IS
`LIMITED TO WHAT WAS RAISED BY THE PETITION.
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`Even if institution of the uninstituted claims/grounds were appropriate,
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`Petitioner’s case is limited to the arguments and evidence it raised in the Petition.
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`As the Federal Circuit has held, it remains “of the utmost importance that
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`petitions in . . . IPR proceedings adhere to the requirement that the initial petition
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`identify with particularity the evidence that supports the grounds for the challenge
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`to each claim,” and that “the expedited nature of IPRs brings with it an obligation
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`for petitioners to make their case in their petition to institute.” Intelligent Bio-
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`Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016)
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`(emphases added). Petitioners may not “cure the petition’s deficiencies in [their]
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`subsequent briefing,” nor make any “arguments [that] amount to an entirely new
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`theory of prima facie obviousness absent from the petition” against the challenged
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`claims. Wasica Fin. GmbH v. Continental Automotive Sys., Inc., 853 F.3d 1272,
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`1286-87 (Fed. Cir. 2017). The Board’s rulings are in accord. See, e.g., Liberty
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`Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM2012-00003, Paper 8 at 10 (PTAB
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`Oct. 25, 2012) (representative decision) (“[W]e will address only the basis,
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`rationale, and reasoning put forth by the Petitioner in the petition . . . .”).
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`Petitioner identifies no legal support for its contention that it may bring in
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`new arguments and evidence from an opposition to a motion to amend as a part of
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`its case-in-chief against the challenged claims. This notion is not only unproven, it
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`5
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`is demonstrably false. “During the institution phase, the Board establishes
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`parameters that confine the proceeding during the merits phase,” and “‘[a]ny . . .
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`issue not included in the authorization for review is not part of the review.’”
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`Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367-68 (Fed. Cir, 2016)
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`(quoting Changes to Implement Inter Partes Review Proceedings, 77 Fed. Reg.
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`48,680, 48,689 (Aug. 14, 2012)). In addition to this authority, the Board’s rules
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`and practices make clear that new arguments may not even be raised in a reply to a
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`patent owner response. See 37 C.F.R. § 42.23(b); see Toyota Motor Corp. v. Am.
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`Vehicular Scis. LLC, IPR2013-00424, Paper 50 at 21 (PTAB Jan. 12, 2015) (“A
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`reply affords the Petitioner an opportunity to refute arguments and evidence
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`advanced by the Patent Owner, not an opportunity to cure deficiencies in its
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`Petition . . . Replies that raise new issues or belatedly present evidence will not be
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`considered.”); Trial Prac. Guide, 77 Fed. Reg. 48,756, 48,767 (Aug. 14, 2012)
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`(“While replies help crystalize issues for decision, a reply that raises a new issue or
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`belatedly presents evidence will not be considered and may be returned.”)
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`Significantly, these rules do not ignore the possibility of a motion to amend:
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`they expressly take its possible presence into account and emphasize that it does
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`not change this rule. See Trial Prac. Guide, 77 Fed. Reg. at 48,767 (“Examples of
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`indications that a new issue has been raised in a reply include new evidence
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`necessary to make out a prima facie case for the patentability or unpatentability of
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`6
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`an original or proposed substitute claim, and new evidence that could have been
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`presented in a prior filing.”) (emphasis added). The notion that one cannot add
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`new arguments and evidence against challenged claims via a reply, but may do so
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`in a response to a motion to amend, is not only unsubstantiated, it is absurd.
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`Thus, the arguments and evidence supporting an obviousness case had to be
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`presented in the petition. As a corollary, new arguments and evidence cannot be
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`raised after that. Yet, with no legal support provided, the Petitioner suggests that
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`an exception should be carved out for new arguments and evidence raised for the
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`first time—and only—in an opposition to a motion to amend. That runs contrary
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`to the entire scheme of IPRs requiring petitioners to make their case in the petition.
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`If the Board decides to re-institute this case for trial, it should, in accord with
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`the law above, limit Petitioner to the arguments and evidence raised in the Petition.
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`If, however, the Board decides to institute on claims on which it did not
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`previously institute, and determines that the evidence and arguments in the current
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`record raised against the proposed claim may be used against challenged claims,
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`then Patent Owner requests it be permitted its statutory right, per § 316(a)(8), to
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`file a response to the new institution decision. Patent Owner chose to file a MTA,
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`and to not file a Response, in justified reliance on the Board’s partial institution.
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`Patent Owner has never had the opportunity to respond to institution on the
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`remaining claims, and, under both the statute and due process, is entitled to do so.
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`7
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`IV.
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`SAS DID NOT CHANGE THE CONTROLLING LAW UNDER WHICH
`THE PANEL PROPERLY DENIED INSTITUTION ON GROUNDS 2-3.
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`Finally, even if Petitioner’s SAS argument were preserved, it cannot require
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`the Board, on the basis of SAS, to institute on the two fully denied grounds. It can
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`only require the Board to institute trial on the denied claims.1 The Board’s denial
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`of Grounds 2 and 3 was fully consistent with binding law that SAS left undisturbed.
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`Petitioner asserts that “[u]nder SAS, the Board must issue a Final Written
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`Decision that addresses Claim 4 on the ground of Simpson in view of the Intel
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`Specification.” PRR 1. That is not correct. The Board denied institution on the
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`“ground of Simpson in view of the Intel Specification”—Ground 2 of the Petition.
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`DI 6, 23. SAS decided only that a petitioner “is entitled to a final written decision
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`addressing all of the claims it has challenged.” 138 S. Ct. at 1360. But SAS did
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`not purport to hold that a petitioner is entitled to a final written decision addressing
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`all of the grounds it raised against those claims.2 Therefore, prior binding law on
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`that question consistent with SAS’s reasoning continues to apply. That authority
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`1 Furthermore, Petitioner did not timely raise a statutory or rules challenge to
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`the partial institution on a subset of grounds, so it failed to preserve that issue, too.
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`2 The SAS petitioner never challenged, in the Board or in Court, the Board’s
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`institution on a subset of its petitioned grounds—only the claims. SAS, IPR2013-
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`00226, Papers 9 at 3, 39 at 3-5; id., 625 F.3d at 1352; id., 138 S. Ct. at 1352-53.
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`8
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`includes Harmonic v. Avid Technology, supra, which upheld the “subset-of-
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`grounds” provision of 37 C.F.R. § 42.108 against statutory challenge. Critically,
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`the Federal Circuit found that § 42.108’s subset-of-grounds provision is based on
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`different authority than that which SAS rejected for the subset-of-claims provision.
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`Harmonic analyzed the “the subset-of-grounds provision” and held that “it is
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`clear that the Board may choose to institute some grounds and not institute others
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`as part of its comprehensive institution decision” under the statute. 815 F.3d at
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`1368. But the Court did not liken this question to the subset-of-claims question
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`later decided in SAS (which had been before the lower Court before, in Synopsys,
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`814 F.3d 1309). On the contrary, the Court carefully and in detail distinguished
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`the two provisions’ statutory authority, and found that they relied on two different
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`parts of the statute. Harmonic, 815 F.3d at 1366-68. The Court explained—and
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`the Supreme Court later agreed—that the subset-of-claims question is governed by
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`the statute for final written decisions, i.e., 35 U.S.C. § 318. Id.; accord SAS, 138 S.
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`Ct. at 1354. In contrast, however, the subset-of-grounds question is governed not
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`by § 318, but by the statutory provisions governing the institution decision. Id. at
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`1367. Therefore, even if all claims are instituted, it is perfectly acceptable under
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`the IPR statute that, “[u]nder the PTO’s regulations, grounds not instituted never
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`become part of the merits phase of the IPR proceeding.” Id. at 1368.
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`Because this binding precedent expressly distinguishes the statutory subset-
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`9
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`of-grounds question from the statutory subset-of-claims question, these holdings
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`survived SAS. They confirm that the Office’s subset-of-grounds rule in § 42.108
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`continues to govern. Under that rule the Board was permitted to authorize review
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`in this case to proceed “on all or some of the grounds of unpatentability asserted
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`for each claim.” See Harmonic, 815 F.3d at 1368. Therefore, SAS is not a valid
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`basis to find that the Board “must,” PRR 1, institute on Ground 2. The most SAS
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`can require that the Board “must” do here is institute on all uninstituted claims.
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`The sole instituted ground, Ground 1, was petitioned against all challenged
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`claims. DI 6, 23. Accordingly, that Ground may address all claims, and SAS
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`requires no more than institution on all challenged claims as to Ground 1.
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`V.
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`PETITIONER’S MOTION TO LIMIT IS UNAUTHORIZED.
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`The Order that authorized Petitioner’s out of time rehearing request further
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`authorized a Joint Motion to Limit the Petition. Paper 39 at 8. The Board did not
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`authorize unilateral motions. Petitioner’s motion is, therefore, unauthorized.
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`Importantly, Petitioner unequivocally “disclaims any challenge to claims 2
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`and 3,” even if its Motion is denied. Id. It follows that, if the Board does institute
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`on claims 2 and 3, it must, based on this disclaimer, not find them unpatentable.
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`For the above reasons, Petitioner’s request should be denied. If trial is
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`reopened, the Board may not find challenged claims unpatentable based on
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`arguments or evidence that were not raised in the Petition.
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`10
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`Date: June 5, 2018
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`Respectfully submitted,
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`____/ Kenneth J. Weatherwax /_________
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`Kenneth J. Weatherwax, Reg. No. 54,528
`Lowenstein & Weatherwax LLP
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`11
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`Case IPR2016-01622
`Patent 6,850,414
`Attorney Docket No. 160831-002USIPR
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the following documents were served
`by electronic service, by agreement between the parties, on the date signed below:
`
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`PATENT OWNER’S RESPONSE
`TO PETITIONER’S OUT OF TIME (i) REQUEST
`FOR REHEARING OF FINAL WRITTEN DECISION
`AND (ii) MOTION TO LIMIT THE PETITION
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`The names and address of the parties being served are as follows:
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`IPR37307-0007IP1@fr.com (David Hoffman)
`IPR@sjclawpc.com (Martha Hopkins)
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`Respectfully submitted,
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` / Keith Moore /
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`Date: June 5, 2018
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