`Trials@uspto.gov
`571-272-7822 Entered: June 11, 2018
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`
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`
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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 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 for Rehearing and
`Denying Petitioner’s Motion to Limit the Petition
`37 C.F.R. § 42.71(a),(d)
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
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`I.
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`INTRODUCTION AND SUMMARY OF THE DECISION
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`
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`Kingston Technology Company, Inc. (“Petitioner”) “requests
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`rehearing [of the Final Written Decision (Paper 35, “Final Dec.”)] to address
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`the effects of the Supreme Court’s decision on SAS Inst., Inc. v. Iancu, 584
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`U.S. ___ (U.S. Apr. 24, 2018) on this trial, prior to the matter going to any
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`appeal.” Paper 40 (“Petitioner’s Request” or “Pet. Req. Reh’g”), 1. No
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`challenge of claims 2–4 was instituted in the original Institution Decision
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`(Paper 7, “Inst. Dec.”). The Final Written Decision did not include an
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`explicit conclusion as to the patentability of those claims, but did include an
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`analysis of proposed substitute claim 9, which includes the subject matter of
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`claim 4. As part of its submission, Petitioner includes a motion requesting
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`“that the Board limit the petition to exclude review of claims 2 and 3.” Id.
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`at 1. Petitioner requests that the Final Written Decision be modified to
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`include a decision with respect to the patentability of claim 4 and of claims 2
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`and 3 “to the extent [the Petition is] not limited.” Id. at 1–2.
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`
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`After considering Petitioner’s Request and the response of Patent
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`Owner Polaris Innovations Ltd. (Paper 41, “PO Resp. Req. Reh’g”), we:
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`1) grant Petitioner’s request for rehearing, 2) modify the institution decision
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`to institute on all of the challenged claims and all of the grounds presented in
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`the Petition, 3) deny Petitioner’s motion to limit the Petition, and 4) modify
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`the Final Written Decision to include our determination that Petitioner has
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`demonstrated by a preponderance of the evidence that claim 4 is
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`unpatentable and that Petitioner has not demonstrated by a preponderance of
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`the evidence that claims 2 and 3 are unpatentable.
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`2
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`Patent 6,850,414 B2
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`II. PROCEDURAL POSTURE
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`
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`Petitioner filed a Petition requesting inter partes review of claims 1–8
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`of U.S. Patent No. 6,850,414 B2 (“the ’414 patent,” Ex. 1001). Paper 2.
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`Patent Owner filed a Preliminary Response to the Petition. Paper 6. The
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`Board instituted inter partes review of claims 1 and 5–8 on the ground of
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`obviousness under 35 U.S.C. § 103(a) over Simpson. Paper 7, 23. The
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`Board did not institute a review as to dependent claims 2–4 and did not
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`institute on all grounds. Id. at 6, 23. Specifically, the instituted review did
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`not include Petitioner’s obviousness challenge of claims 1–8 based on the
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`combination of Simpson and the Intel Specification, or Petitioner’s
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`obviousness challenge of claims 1–8 based on the Intel Specification.
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`Petitioner filed a Request for Rehearing of The Board’s Institution Decision
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`on Claim 4 (Paper 11), which was denied (Paper 16).
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`
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`Petitioner filed another petition seeking inter partes review of claim 4
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`of the ’414 patent in Patent Trial and Appeal Board Case IPR2017-00974
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`(Paper 2). In that case, the Board exercised its discretion under
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`35 U.S.C. §§ 314(a) and 325(d) to not institute an inter partes review.
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`IPR2017-00974, Paper 8. Petitioner’s request for rehearing of that decision
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`was denied. IPR2017-00974, Papers 9, 11.
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`
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`In the present proceeding and subsequent to the institution decision,
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`Patent Owner filed a Motion to Amend (“MTA,” Paper 18) seeking to cancel
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`the instituted challenged claims and proposing to substitute a newly-
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`presented claim 9 for dependent claim 8. Patent Owner characterized the
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`proposed substitute claim 9 as “the same as challenged claim 8 in every
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`respect, except that it simply adds the limitations of claim 4 . . . .” MTA 1.
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`Patent Owner did not file a Response to the Petition. Subsequently,
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`Patent 6,850,414 B2
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`Petitioner filed an Opposition to Patent Owner’s Motion to Amend
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`(Paper 20), and Patent Owner filed a Reply to Petitioner’s Opposition to
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`Motion to Amend (Paper 23). Petitioner filed a Surreply to Patent Owner’s
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`Motion to Amend (Paper 28). Thereafter Patent Owner filed a Brief
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`Addressing Impact of Aqua Products v. Matal1 (Paper 30). An oral hearing
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`was held on November 14, 2017. See Paper 34 (Hearing Transcript).
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`
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`On February 5, 2018, the Board issued a Final Written Decision.
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`Paper 35. In that Decision, we determined that Petitioner had demonstrated
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`by a preponderance of the evidence that claims 1 and 5–8 of the ’414 patent
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`are unpatentable under 35 U.S.C. § 103(a) as obvious over Simpson.
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`Additionally, we determined, based on a preponderance of the evidence in
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`the entire trial record, that proposed substitute claim 9 is unpatentable, under
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`35 U.S.C. § 103(a), as obvious over Simpson and the Intel Specification.
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`Patent Owner filed, on March 7, 2018, a request for rehearing of the Final
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`Written Decision (Paper 36), which was denied on April 12, 2018
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`(Paper 37).
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`
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`On April 24, 2018, the Supreme Court held that a decision to institute
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`under 35 U.S.C. § 314 may not institute on less than all claims challenged in
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`the petition. SAS Inst., Inc. v. Iancu, 2018 WL 1914661, at *10 (U.S.
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`Apr. 24, 2018).
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`
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`On May 8, 2018, Petitioner sent to the Board and Patent Owner an
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`email stating, in pertinent part: “Pursuant to the guidance provided by the
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`Chief Judge in his recent webinar on SAS, Petitioner requests a conference
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`call to ask permission to file an out of time request for reconsideration
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`
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`1 Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017).
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`4
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`Patent 6,850,414 B2
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`seeking institution and a FWD on non-instituted claim 4 in [this] IPR.”
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`Ex. 3002. Later that same day, Patent Owner replied: “Patent Owner is
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`prepared to explain why Petitioner’s proposed request should not be
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`authorized pursuant to the guidance provided on SAS.” Id. On May 11,
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`2018, Judges Barrett and Homere participated in a conference call with the
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`parties to discuss the parties’ positions regarding Petitioner’s request. A
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`transcript of that call has been filed as Exhibit 1026.
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`
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`On May 21, 2018, we granted Petitioner’s request to excuse the
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`lateness of the filing of a request for rehearing, authorized Petitioner to file a
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`request for rehearing, authorized Patent Owner to file an opposition thereto,
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`and authorized the parties to file a Joint Motion to Limit the Petition by
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`removing specific claims and grounds upon which we did not institute
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`review in the original Decision on Institution. Paper 39, 8.
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`III. ANALYSIS OF PETITIONER’S REQUEST FOR REHEARING
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`
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`A party requesting rehearing bears the burden of showing that the
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`decision should be modified. 37 C.F.R. § 42.71(d). Petitioner argues that
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`we should modify the Final Written Decision, in light of the Supreme
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`Court’s decision in SAS Inst., Inc. v. Iancu, 2018 WL 1914661, at *10 (U.S.
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`Apr. 24, 2018), to address all of the claims challenged in the Petition. Pet.
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`Req. Reh’g 1–2. SAS issued after the Final Written Decision in this case but
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`before the expiration of the time for the parties to appeal that decision.
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`Petitioner argues that addressing the previously non-instituted claims now,
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`rather than upon a remand from an appeal, will be the more efficient result
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`and will conserve time and resources. See Req. Reh’g 5; Ex. 1026
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`(Conference Call Transcript), 4:13–5:2, 21:18–22:22.
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`
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`Patent Owner argues, inter alia, that the Board has been divested of
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`jurisdiction to grant Petitioner’s request, that Petitioner “forfeited” or waived
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`any argument against partial institution by not raising it earlier, and that
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`Petitioner’s Request fails to identify anything we misapprehended or
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`overlooked. PO Resp. Req. Reh’g 1–4. We have considered all of Patent
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`Owner’s arguments, including but not limited to these, and do not find them
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`persuasive.
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`
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`As to jurisdiction, Patent Owner impliedly argues that the expiration
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`of the time to file a request for rehearing without prior authorization renders
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`the judgment final and divests the Board of jurisdiction over the proceeding.
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`Id. at 2 (citing 37 C.F.R. § 42.71(d)(2)). Patent Owner, in its analysis, fails
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`to acknowledge that 37 C.F.R. § 90.3 establishes the deadline for the filing
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`of an appeal, not the rule regarding the timing of a request for
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`reconsideration. That deadline was reset by Patent Owner’s request for
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`rehearing (Paper 36) to sixty-three days from the denial of that request
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`(Paper 37) on April 12, 2018. As of this time, we understand that neither
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`party has filed a notice of appeal. See Ex. 1026 (Conference Call
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`Transcript), 8:19–22 (Patent Owner’s counsel stating: “It’s already been an
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`appealable decision in this case, but the deadline is ticking set by the
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`director. And, frankly, a notice of appeal could already have been filed.”).
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`We have jurisdiction to reconsider our Final Written Decision in light of
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`SAS.
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`
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`We do not find Patent Owner’s waiver argument to be persuasive, and
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`we decline to reject the Request for Reconsideration based on an alleged
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`waiver or forfeiture. As for Patent Owner’s argument that the Request fails
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`to identify anything we misapprehended or overlooked, we deem
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`Patent 6,850,414 B2
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`Petitioner’s SAS–based argument to constitute an adequate allegation that we
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`erred by limiting the scope of the instituted trial.
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`
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`In light of SAS and in consideration of expediency and of the
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`conservation of resources, we grant Petitioner’s Request for Rehearing.
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`Accordingly, we now reconsider our issuance of a Final Written Decision
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`addressing the patentability of less than all the claims challenged in the
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`Petition.
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`IV. MODIFICATION OF THE INSTITUTION DECISION
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`
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`As mentioned, the Board, in the original Institution Decision, did not
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`institute a review as to dependent claims 2–4 and did not institute on all
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`grounds. On April 24, 2018, the Supreme Court, held that a decision to
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`institute under 35 U.S.C. § 314 may not institute on less than all claims
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`challenged in the petition. SAS Inst., Inc. v. Iancu, 2018 WL 1914661, at
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`*10 (U.S. Apr. 24, 2018). In our Decision on Institution, we determined that
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`Petitioner demonstrated a reasonable likelihood that it would establish that at
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`least one of the challenged claims of the ’414 patent is unpatentable.
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`Paper 7, 23. We modify our institution decision to institute on all of the
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`challenged claims and all of the grounds presented in the Petition. See
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`Guidance on the Impact of SAS on AIA Trial Proceedings (April 26, 2018),
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`available at https://www.uspto.gov/patents-application-process/patent-trial-
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`and-appeal-board/trials/guidance-impact-sas-aia-trial.
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`V.
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`
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` ANALYSIS OF PETITIONER’S MOTION TO LIMIT THE PETITION
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`In our Order of May 21, 2018, we noted that “Petitioner primarily is
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`requesting the institution of and a final written decision regarding originally
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`non-instituted claim 4,” and we asked the parties to indicate clearly their
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`Patent 6,850,414 B2
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`respective position with regard to originally non-instituted claims 2 and 3.
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`Paper 39, 7. We also suggested that the parties consider, for example, filing
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`a request for partial adverse judgment concerning some of the originally
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`non-instituted claims or filing a Joint Motion to Limit the Petition by
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`removing specific claims and grounds upon which we did not institute
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`review in the original Decision on Institution. Id. No such joint motion was
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`filed, and Petitioner represents that Patent Owner indicated that it opposes
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`removing claims 2 and 3 from the Petition and of “exclude[ing] review of
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`claims 2 and 3.” Pet. Req. Reh’g 1; see PO Resp. Req. Reh’g (Patent Owner
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`arguing that Petitioner’s “unilateral” motion is unauthorized).
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`
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`Petitioner’s motion is little more than a prayer for relief. See Pet. Req.
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`Reh’g 1 (“Patent Owner opposes [removing claims 2 and 3 from the
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`Petition]. Thus, Kingston moves (at least on its own) that the Board limit
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`the petition to exclude review of claims 2 and 3.”). Petitioner offers no
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`persuasive argument as to why we should now allow Petitioner—in the face
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`of opposition from Patent Owner—to withdraw claims 2 and 3 from
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`consideration and thereby to avoid a Final Written Decision on Petitioner’s
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`patentability challenges to those claims.
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`
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`We deny Petitioner’s motion to limit the Petition.
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`VI. MODIFICATION OF THE FINAL WRITTEN DECISION
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`A. Claims 2 and 3
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`Claims 2 and 3 each depend directly from independent claim 1, which
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`recites “[a]n electronic printed circuit board configuration.” Ex. 1001, 7:24,
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`8:4–19. Dependent claim 2 pertains to the position of the error correction
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`chip relative to a semiconductor memory on the circuit board. Id. at 8:4–8.
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`Dependent claim 3 pertains to the height of the circuit board as a function of
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`8
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`IPR2016-01622
`Patent 6,850,414 B2
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`the dimensions of the error correction chip and the circuit board’s contact
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`strip. Id. at 8:10–19.
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`
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`The Petition challenges dependent claims 2 and 3 on three
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`obviousness grounds—1) over Simpson alone, 2) over Simpson and the Intel
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`Specification, and 3) over the Intel Specification alone. Pet. 8–9. Patent
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`Owner filed a Preliminary Response presenting arguments specifically
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`directed to claims 2 and 3. See, e.g., Prelim. Resp. 34–38.
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`
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`In the original Institution Decision, we considered the arguments by
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`both parties concerning claims 2 and 3, and we determined that Petitioner
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`had not met its burden as to those claims. Regarding Petitioner’s challenge
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`of claims 2 and 3 as being obvious over Simpson, we determined that
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`“Petitioner has not explained sufficiently why a person of ordinary skill in
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`the art would have modified Simpson . . . [and] on the record before us, we
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`are not persuaded that Petitioner has provided an articulated reasoning with
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`some rational underpinning to support the legal conclusion of obviousness.”
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`Inst. Dec. 16; see id. (noting that Petitioner, for claim 3, relied on the same
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`proposed modification as for claim 2). For similar reasons—and specifically
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`due to a lack of adequate articulated reasoning to combine or modify the
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`references—we determined that Petitioner had not established a reasonable
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`likelihood of prevailing on the other two asserted grounds. See id. at 17–18,
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`20–22.
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`
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`Petitioner Kingston now affirmatively states that “Kingston disclaims
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`any challenge to claims 2 and 3 and therefore presents no briefing on them
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`here.” Pet. Req. Reh’g 1; cf. PO Resp. Req. Reh’g 10 (arguing that we must
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`find claims 2 and 3 not unpatentable based on this disclaimer).
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`In light of Petitioner’s disclaimer of any challenge to claims 2 and 3
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`and for the reasons set forth in the Institution Decision, we determine that
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`Petitioner has not shown by a preponderance of the evidence that dependent
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`claims 2 and 3 are unpatentable. We modify the Final Written Decision
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`accordingly.
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`B. Claim 4
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`
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`Claim 4 depends directly from independent claim 12 and pertains to
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`the height of the circuit board of claim 1. Specifically, claim 4 recites: “The
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`printed circuit board according to claim 1, wherein: said printed circuit
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`board has a height of 1 to 1.2 inches perpendicular to said contact strip.”
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`Ex. 1001, 8:20–21.
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`
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`As discussed in the Final Written Decision, a trial was not originally
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`instituted as to claim 4 primarily because we determined Petitioner had not
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`provided in the Petition an adequate articulation of a reason to combine or
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`modify the references. Final Written Decision 16–19. Nonetheless, claim 4
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`and its subject matter have been discussed repeatedly throughout the trial.
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`After the original Institution Decision and at a relatively early stage of this
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`proceeding, Patent Owner moved to amend by proposing substitute claim 9.
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`MTA (Paper 18) 2. As characterized by Patent Owner, that proposed
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`substitute claim 9 is “the same as challenged [dependent] claim 8 in every
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`respect, except that it simply adds the limitations of claim 4 . . . .” MTA 1.
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`Proposed substitute claim 9 is the combination of the limitations of
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`
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`2 A trial was instituted as to the Petitioner’s challenge of independent
`claim 1 and Patent Owner opted to not file a Patent Owner Response to the
`Petition. Final Written Decision 11. We have determined that Petitioner
`had proven the unpatentability of independent claim 1. Id. at 11–14, 27.
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`10
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`IPR2016-01622
`Patent 6,850,414 B2
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`independent claim 1, which define the printed circuit board configuration,
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`with the addition of the circuit board width of dependent claim 8 and the
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`addition of the circuit board height of dependent claim 4. Thus, claim 4 is
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`broader than proposed substitute claim 9 in that claim 4 recites a height
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`limitation but not a width limitation. By proposing the substitute claim,
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`Patent Owner placed at issue the patentability of the subject matter of
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`claim 4. The arguments in the Motion to Amend clearly reflect Patent
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`Owner’s belief that the inclusion of the subject of claim 4 (the height
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`limitation) in the proposed substitute claim is that which rendered the
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`proposed substitute claim patentable. See MTA 3–4. The Motion to Amend
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`refers to claim 4 explicitly or its height limitation at least a dozen times. See
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`MTA 1–4. Thus, there can be no question that Patent Owner was on notice
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`at least as early as its filing of the Motion to Amend that the subject matter
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`of claim 4 would be an issue for trial.
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`
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`Patent Owner was given many opportunities to address the
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`patentability of the subject matter of the proposed substitute claim 9,
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`including the opportunity to respond to Petitioner’s challenges, which
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`necessarily involved addressing the subject matter of claim 4. For example,
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`Patent Owner filed a reply to Petitioner’s opposition to the motion to amend,
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`where Petitioner specifically addressed claim 4 and its subject matter. See
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`Paper 20, 1–14 (Petitioner’s Opposition); id. at 9 (“Therefore, substitute
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`claim 9 (and indeed original claim 4) of the ’414 Patent are not patentable
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`under 35 § U.S.C. 103.”); Paper 23, 3 (Patent Owner’s Response to
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`Petitioner’s Opposition, arguing incorrectly that the limitation of claim 4 is
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`“a limitation the Board has already repeatedly found was not in the
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`references raised by Petitioner.”). Patent Owner opted to utilize much of its
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`opportunities by making procedural arguments, although it did make some
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`substantive arguments primarily directed to limitations of the underlying
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`independent claim 1. See, e.g., Paper 23, 9 (arguing that Petitioner failed to
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`show the unpatentability of claim 4 earlier and should not be allowed to
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`challenge the subject matter of claim 4 after the Decision on Institution); id.
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`at 10–12 (arguing, inter alia, the “individually connected” limitation of
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`claim 1). In addition to briefing, Patent Owner had the opportunity to
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`address the subject matter of claim 4 at the oral argument. See, e.g., Paper
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`34 (hearing transcript), 86:19–87:2 (Counsel for Patent Owner: “But you
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`could also say that [the proposed substitute claim is] identical to claim 4
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`except that it adds an additional limitation that was already found in claim 8.
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`In other words, it is like a narrowed claim 4, and claim 4 was already denied
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`institution.”); id. at 87:22–88:9.
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`
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`We are not persuaded by Patent Owner’s argument that it never had
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`the opportunity to respond to the institution of a trial on claim 4. PO Resp.
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`Req. Reh’g 7. It was Patent Owner’s actions that placed the subject matter
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`of claim 4 at issue in the trial after we initially denied a review of that claim.
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`Thus, it is Patent Owner that, in some sense, instituted a review of the
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`subject matter of claim 4. As discussed above, that review began at a
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`relatively early stage of the trial and Patent Owner had several opportunities
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`to respond to Petitioner’s arguments after placing the subject matter of
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`claim 4 again before us for review.
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`We agree with Petitioner that this case is atypical and that, on the
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`record developed during trial, we may proceed to a final decision as to the
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`patentability of claim 4 without the need for further briefing. Pet. Req.
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`Reh’g 2. We do not find persuasive Patent Owner’s argument that we
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`should consider nothing in the record other than the argument and evidence
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`submitted with the Petition. See PO Resp. Req. Reh’g 5–7; see also
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`Ex. 1026 (Conference Call Transcript), 28:15–22 (proposing that all
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`post-institution filings be expunged). The post-institution evidence and
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`arguments pertaining to the subject matter of claim 4 came into the record as
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`a direct result of Patent Owner reintroducing that subject matter into the
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`trial, not as a unilateral attempt by Petitioner to shore up the Petition. We
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`similarly do not find persuasive Patent Owner’s argument that we should
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`limit our consideration to a single ground that is different than the ground
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`upon which Petitioner demonstrated the unpatentability of the proposed
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`amended claim 9. PO Resp. Req. Reh’g 8–10. We consider the entirety of
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`the record in evaluating the patentability of claim 4.
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`
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`In the Final Written Decision, “we determine[d], based on a
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`preponderance of the evidence in the entire trial record, that proposed
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`substitute claim 9 is unpatentable, under 35 U.S.C. § 103(a), as obvious over
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`Simpson and the Intel Specification.” Final Written Decision 27. In
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`arriving at that determination, we necessarily analyzed the patentability of
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`the subject matter of dependent claim 4, which, as mentioned, is broader in
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`scope than that of proposed substitute claim 9. See id. at 11–14
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`(patentability of the underlying independent claim 1); id. at 21–27
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`(patentability of proposed substitute claim 9, including a specific analysis of
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`the height limitation of claim 4 beginning on page 24). Although we did not
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`identify explicitly claim 4 as unpatentable in the conclusion or order of the
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`Final Written Decision, we, nonetheless, effectively ruled on the
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`patentability of that claim. See Pet. Req. Reh’g 2.
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`We determine, for the reasons set forth in the Final Written Decision,
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`that Petitioner has shown by a preponderance of the evidence that claim 4 is
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`unpatentable as obvious over Simpson and the Intel Specification.3 We
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`modify the Final Written Decision accordingly.
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`VII. CONCLUSION
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`
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`We determine, on the facts of this case and because Petitioner seeks
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`SAS-based action, that it is appropriate for us to reconsider our Final Written
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`Decision and to modify that decision so as to explicitly address the
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`patentability of all claims challenged in the patent. Therefore, with respect
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`to claims 2–4 of the ’414 patent, we modify the conclusion in our Final
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`Written Decision as follows: 1) Petitioner has not demonstrated by a
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`preponderance of the evidence that claims 2 and 3 of the ’414 patent are
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`unpatentable under any ground asserted in the Petition; and 2) Petitioner has
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`demonstrated by a preponderance of the evidence that claim 4 of the ’414
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`patent is unpatentable, under 35 U.S.C. § 103(a), as obvious over Simpson
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`and the Intel Specification.
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`VIII. ORDER
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`For the foregoing reasons, it is
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`ORDERED that Petitioner’s request for rehearing is granted;
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`FURTHER ORDERED that our institution decision is modified to
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`include review of all challenged claims and all grounds presented in the
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`Petition;
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`3 Because this determination is dispositive, we do not reach any other ground
`asserted against claim 4.
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`
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`FURTHER ORDERED that Petitioner’s Motion to Limit the Petition
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`is denied;
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`FURTHER ORDERED that claims 2 and 3 of the ’414 patent have
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`not been proven to be unpatentable;
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`FURTHER ORDERED that claim 4 of the ’414 patent is
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`unpatentable;
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`FURTHER ORDERED that the Final Written Decision is modified to
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`include the analysis set forth above regarding the patentability of claims 2–4.
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`15
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`IPR2016-01622
`Patent 6,850,414 B2
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`For PETITIONER:
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`David Hoffman
`FISH & RICHARDSON P.C.
`hoffman@fr.com
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`Martha Hopkins
`LAW OFFICES OF S. J. CHRISTINE YANG
`mhopkins@sjclawpc.com
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`For PATENT OWNER:
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`Kenneth Weatherwax
`Nathan Lowenstein
`LOWENSTEIN & WEATHERWAX LLP
`weatherwax@lowensteinweatherwax.com
`lowenstein@lowensteinweatherwax.com
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