`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KINGSTON TECHNOLOGY COMPANY INC.,
`Petitioner,
`
`v.
`
`POLARIS INNOVATIONS LIMITED,
`Patent Owner.
`____________
`
`Case IPR2016-01622
`Patent 6,850,414 B2
`____________
`PATENT OWNER POLARIS INNOVATIONS LIMITED’S
`NOTICE OF APPEAL
`
`
`
`
`via PTAB E2E
`Patent Trial and Appeal Board
`
`via Priority Mail Express
`Director
`Office of the General Counsel
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`via CM/ECF
`United States Court of Appeals for the Federal Circuit
`
`
`
`
`
`Please take notice, under 28 U.S.C. § 1295(a)(4)(A), 35 U.S.C. §§ 141(c),
`
`Case IPR2017-01622
`U.S. Pat. No. 6,850,414 B2
`
`
`
`142 and 319; 37 C.F.R. §§ 90.2(a)(1) & 90.3(a)(1); Fed. R. App. P. 15(a); and Fed.
`
`Cir. R. 15, subsection (a) and related Practice Note, Polaris Innovations Limited
`
`(“Patent Owner”) hereby appeals to the United States Court of Appeals for the
`
`Federal Circuit from the decision of a panel of the Patent Trial and Appeal Board
`
`(“Board”) entered September 10, 2018 (“September 10, 2018 Rehearing
`
`Decision”) (Attachment 1) denying Patent Owner’s request for rehearing of the
`
`panel’s June 11, 2018 Order (Attachment 2) modifying, inter alia, the panel’s
`
`February 5, 2018 Final Written Decision (Attachment 3), which were entered in
`
`the above-captioned inter partes review of U.S. Patent No. 6,850,414 B2 (“’414
`
`Patent”) following a Decision Granting Institution of Inter Partes Review on
`
`behalf of the Director of the United States Patent and Trademark Office
`
`(“Director”) entered by a different panel of the Board on February 15, 2017, Paper
`
`7 (“Institution Decision”) (Attachment 4).
`
`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), this notice provides that Patent
`
`Owner’s issues on appeal include at least the following:
`
`(i)
`
`The Board’s determination (Attachment 3, supra), and denial of
`
`rehearing of its determination (Attachment 5), that claims 1 and 5–8 of
`
`the ’414 Patent are unpatentable as obvious over United Kingdom Patent
`
`Application GB 2 289 573 A (“Simpson”);
`
` 1
`
`
`
`
`
`Case IPR2017-01622
`U.S. Pat. No. 6,850,414 B2
`
`(ii) The Board’s subsequent determination (Attachment 2, supra), and denial
`
`of rehearing of its determination (Attachment 1, supra), that claim 4 of
`
`the ’414 Patent is unpatentable as obvious over Simpson and the “PC
`
`SDRAM Unbuffered DIMM Specification, Rev. 1.0, Feb. 1998” (the
`
`“Intel Specification”);
`
`(iii) The Board’s determination (Attachment 3, supra), and denial of
`
`rehearing of its determination (Attachment 4, supra), that substitute claim
`
`9 is unpatentable as obvious over Simpson and the Intel Specification;
`
`(iv) The Board’s determination (Attachment 3, supra), and denial of
`
`rehearing of its determination (Attachment 4, supra), denying Patent
`
`Owner’s request to cancel claims 1 and 5–8;
`
`(v) The Board’s determination (Attachment 6) finding jurisdiction and
`
`excusing Petitioner’s late filing of a request for rehearing of the Final
`
`Written Decision;
`
`(vi) The Board’s determination (Attachment 2, supra), and denial of
`
`rehearing of its determination (Attachment 1, supra), granting rehearing
`
`of the Final Written Decision, and, without granting Patent Owner an
`
`opportunity to file briefing or evidence regarding the patentability of
`
`claim 4 under 35 U.S.C. § 313 and 37 C.F.R. § 42.120, modifying the
`
`Institution Decision on the Director’s behalf and the Final Written
`
` 2
`
`
`
`
`
`Case IPR2017-01622
`U.S. Pat. No. 6,850,414 B2
`
`Decision to include non-instituted claim 4, and finding claim 4
`
`unpatentable as obvious over Simpson and the Intel Specification;
`
`(vii) The Board’s denial on July 11, 2018 (Exhibit 2019, Attachment 7) of
`
`Patent Owner’s request to submit argument and information regarding
`
`the impact of the Director’s statements and the Federal Circuit’s decision
`
`in PGS Geophysical AS v. Iancu, 891 F.3d 1354 (Fed. Cir. 2018), on the
`
`Board’s then-pending determination (Attachment 5, supra) on
`
`Petitioner’s request to excuse a late request for rehearing of the final
`
`written decision;
`
`(viii) The insufficiency of lawful and constitutional authority for the Board’s
`
`final agency determinations adverse to Patent Owner’s patent rights;
`
`(ix) The insufficiency of lawful authority and notice for the removal of an
`
`assigned Board member from the case and replacement of the removed
`
`member and apparent reconstitution of the assigned Board panel with
`
`different membership while the case was ongoing;
`
`(x) Any further findings or determinations by the Director or the Board
`
`supporting or relating to the issues above; and
`
`(xi) All other issues decided adversely to Patent Owner or the ’414 Patent in
`
`any orders, decisions, rulings, or opinions, whether written or oral, of the
`
`Board, on its own or on another’s behalf, in this proceeding.
`
` 3
`
`
`
`In accordance with Federal Circuit Rule 15, and its related Practice Note,
`
`Case IPR2017-01622
`U.S. Pat. No. 6,850,414 B2
`
`
`
`Patent Owner attaches to this Notice of Appeal copies of the decisions from which
`
`review is sought. Concurrently with the present submission, Patent Owner is filing
`
`a copy of this Notice of Appeal with the Director, and a copy of the same along
`
`with the required docketing fee with the Clerk of the United States Court of
`
`Appeals for the Federal Circuit.
`
`
`
`Respectfully submitted,
`
` /
`
` Kenneth J. Weatherwax /
`
`
`Kenneth J. Weatherwax, USPTO Reg. No. 54,528
`LOWENSTEIN & WEATHERWAX LLP
`1880 Century Park East, Suite 815
`Los Angeles, California 90067
`Telephone: (310) 307-4500
`Facsimile:
`(310) 307-4509
`
`Matthew D. Powers
`TENSEGRITY LAW GROUP, LLP
`555 Twin Dolphin Drive, Suite 650
`Redwood Shores, CA 94065
`Telephone: (650) 802-6000
`Facsimile: (650) 802-6001
`
`
`Date: November 13, 2018
`
`
`
` 4
`
`
`
`
`
`Case IPR2016-01622
`U.S. Pat. No. 6,850,414 B2
`
`CERTIFICATE OF FILING
`The undersigned hereby certifies that, in addition to being electronically
`
`filed through PTAB E2E, a copy of the above-captioned PATENT OWNER
`
`POLARIS INNOVATIONS LIMITED’S NOTICE OF APPEAL, together with an
`
`attached copy of the decisions for which review is sought, is being filed by Priority
`
`Mail Express with the Director on the date below at the following address:
`
`Andrei Iancu, Director
`Office of the General Counsel
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`The undersigned also hereby certifies that a true and correct copy of the
`
`above-captioned PATENT OWNER POLARIS INNOVATIONS LIMITED’S
`
`NOTICE OF APPEAL, together with an attached copy of the decisions for which
`
`review is sought and the filing fee, are being filed via CM/ECF with the Clerk’s
`
`Office of the U.S. Court of Appeals for the Federal Circuit on the date below.
`
`Respectfully submitted,
`LOWENSTEIN & WEATHERWAX LLP
`/ Kenneth J. Weatherwax /
`Kenneth J. Weatherwax, Reg. No. 54,528
`
`Date: November 13, 2018
`
`
`
`
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that the above-captioned PATENT
`
`OWNER POLARIS INNOVATIONS LTD.’S NOTICE OF APPEAL, together
`
`with an attached copy of the decisions for which review is sought, was served upon
`
`Petitioner Kingston Technology Company Inc. on the date stated below by
`
`electronic service, by agreement between the parties, at the following addresses:
`
`
`
`
`David Hoffman
`Martha Hopkins
`
`
`
`
`IPR37307-0007IP1@fr.com
`IPR@sjclawpc.com
`
`Respectfully submitted,
`
`/ Keith Moore /
`
`Date: November 13, 2018
`
`
`
`
`
`
`
`Attachment 1
`
`Case IPR2016-01622
`Notice of Appeal
`Attachment 1
`
`
`
`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.
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`Case IPR2016-01622
`Notice of Appeal
`Attachment 1
`
`
`
`INTRODUCTION
`I.
`On July 11, 2018, Polaris Innovations Ltd. (“Patent Owner”) filed a
`
`Request for Rehearing (Paper 44, “Request” or “Req. Reh’g”) of our Order
`of June 11, 2018 (Paper 42). Concurrent with its Request for Rehearing,
`Patent Owner filed Exhibits 2016–2020. Those exhibits are papers filed in
`the United States Court of Appeals for the Federal Circuit and an email
`exchange regarding Patent Owner’s request to brief the impact on this case
`of PGS Geophysical AS v. Iancu, 891 F.3d 1354 (Fed. Cir. June 7, 2018).
`
`For the reasons provided below, Patent Owner’s Request for
`Rehearing is denied.
`
`II. PROCEDURAL POSTURE
`Petitioner filed a Petition requesting inter partes review of claims 1–8
`
`of U.S. Patent No. 6,850,414 B2 (“the ’414 patent,” Ex. 1001). Paper 2.
`Patent Owner filed a Preliminary Response to the Petition. Paper 6. The
`Board instituted inter partes review of claims 1 and 5–8 on the ground of
`obviousness under 35 U.S.C. § 103(a) over Simpson. Paper 7, 23. The
`Board did not institute a review as to dependent claims 2–4 and did not
`institute on all grounds. Id. at 6, 23. Petitioner filed a Request for
`Rehearing of The Board’s Institution Decision on Claim 4 (Paper 11), which
`was denied (Paper 16).
`
`Subsequent to the institution decision, Patent Owner filed a Motion to
`Amend (“MTA,” Paper 18) seeking to cancel the instituted challenged
`claims and proposing to substitute a newly-presented claim 9 for dependent
`claim 8. Patent Owner characterized the proposed substitute claim 9 as “the
`same as challenged claim 8 in every respect, except that it simply adds the
`limitations of claim 4 . . . .” MTA 1. Patent Owner did not file a
`
`Case IPR2016-01622
`Notice of Appeal
`Attachment 1
`
`
`
`“Response” to the Petition. Subsequently, Petitioner filed an Opposition to
`Patent Owner’s Motion to Amend (Paper 20), and Patent Owner filed a
`Reply to Petitioner’s Opposition to Motion to Amend (Paper 23). Petitioner
`filed a Surreply to Patent Owner’s Motion to Amend (Paper 28). Thereafter
`Patent Owner filed a Brief Addressing Impact of Aqua Products v. Matal1
`(Paper 30). An oral hearing was held on November 14, 2017. See Paper 34
`(Hearing Transcript).
`
`On February 5, 2018, the Board issued a Final Written Decision.
`Paper 35. In that Decision, we determined that Petitioner had demonstrated
`by a preponderance of the evidence that claims 1 and 5–8 of the ’414 patent
`are unpatentable under 35 U.S.C. § 103(a) as obvious over Simpson.
`Additionally, we determined, based on a preponderance of the evidence in
`the entire trial record, that proposed substitute claim 9 is unpatentable, under
`35 U.S.C. § 103(a), as obvious over Simpson and the Intel Specification.
`Patent Owner filed, on March 7, 2018, a request for rehearing of the Final
`Written Decision (Paper 36), which was denied on April 12, 2018
`(Paper 37).
`
`On April 24, 2018, the Supreme Court held that a decision to institute
`under 35 U.S.C. § 314 may not institute on less than all claims challenged in
`the petition. SAS Inst., Inc. v. Iancu, 138 S.Ct. 1348, 1352–54 (2018).
`
`On May 8, 2018, Petitioner sent to the Board and Patent Owner an
`email stating, in pertinent part: “Pursuant to the guidance provided by the
`Chief Judge in his recent webinar on SAS, Petitioner requests a conference
`call to ask permission to file an out of time request for reconsideration
`
`1 Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017).
`
`Case IPR2016-01622
`Notice of Appeal
`Attachment 1
`
`
`
`seeking institution and a FWD on non-instituted claim 4 in [this] IPR.”
`Ex. 3002. Later that same day, Patent Owner replied: “Patent Owner is
`prepared to explain why Petitioner’s proposed request should not be
`authorized pursuant to the guidance provided on SAS.” Id. On May 11,
`2018, Judges Barrett and Homere participated in a conference call with the
`parties to discuss the parties’ positions regarding Petitioner’s request. A
`transcript of that call has been filed as Exhibit 1026.
`
`On May 21, 2018, we granted Petitioner’s request to excuse the
`lateness of the filing of a request for rehearing, authorized Petitioner to file a
`request for rehearing, authorized Patent Owner to file an opposition thereto,
`and authorized the parties to file a Joint Motion to Limit the Petition by
`removing specific claims and grounds upon which we did not institute
`review in the original Decision on Institution. Paper 39, 8.
`
`On May 29, 2018, Petitioner filed a request for reconsideration,
`arguing that, in light of the SAS decision, we must issue a final written
`decision, before any appeal of this case, addressing the originally
`non-instituted claims, and particularly claim 4. Paper 40, 1–2. Petitioner
`further argued that we could proceed immediately to a final written decision
`regarding claim 4 because Patent Owner voluntarily placed the subject
`matter of claim 4 at issue via the Motion to Amend and because the parties
`had full opportunity to brief and argue the patentability of that subject
`matter. Id. at 2.
`
`Patent Owner filed a response to Petitioner’s request for
`reconsideration. Paper 41. Patent Owner argued, inter alia, that the Board
`had been divested of jurisdiction and therefore could not grant Petitioner’s
`request and that Petitioner had waived any argument regarding SAS by not
`
`Case IPR2016-01622
`Notice of Appeal
`Attachment 1
`
`
`
`raising the issue earlier. See id. at 2–3. Patent Owner also argued that, if we
`were to institute a review of claim 4, we must constrain that review to the
`arguments made in the Petition and not consider Petitioner’s arguments
`made in opposition to Patent Owner’s Motion to Amend (which, we note,
`included the subject matter of claim 4). Id. at 5–7.
`
`In our Order of June 11, 2018 (Paper 42)—which is the subject of
`Patent Owner’s present request for reconsideration—we, inter alia, granted
`Petitioner’s request for reconsideration, modified the institution decision to
`include all of the claims challenged in the Petition, determined that both
`parties had fully addressed the subject matter of claim 4, and determined
`that, for reasons set forth in the Final Written Decision, Petitioner had
`demonstrated that claim 4 is unpatentable, but had not demonstrated that
`claims 2 and 3 are unpatentable. See Paper 42, 10–14.
`
`III. ANALYSIS
`A party requesting rehearing bears the burden of showing that the
`
`decision should be modified. 37 C.F.R. § 42.71(d). “The request must
`specifically identify all matters the party believes the Board misapprehended
`or overlooked, and the place where each matter was previously addressed in
`a motion, an opposition, or a reply.” Id. When rehearing a decision on a
`petition, we review the decision for an abuse of discretion. 37 C.F.R.
`§ 42.71(c).
`
`Patent Owner requests reconsideration of our decision to include, in
`light of the SAS decision, a review of dependent claim 4. Req. Reh’g 1.
`Patent Owner argues that we should have deemed Petitioner to have waived
`a request for SAS-based relief. Id. at 1–12. Patent Owner further requests,
`should we not exclude claim 4 from review, “that the Board reconsider its
`
`Case IPR2016-01622
`Notice of Appeal
`Attachment 1
`
`
`
`order that claim 4 is unpatentable, withdraw that order, and authorize Patent
`Owner to file a response to the Petition with respect to the instituted ground
`of review of claim 4.” Id. at 1; see id. at 12–15. Lastly, Patent Owner
`argues that there is good cause to add to the record Exhibits 2016–2019 (and
`presumably Exhibit 2020). Id. at 15.
`
`A. Arguments Regarding Petitioner’s Purported Waiver of a SAS Challenge
`
`Patent Owner argues that Petitioner should have sought SAS-based
`relief prior to the issuance of the SAS decision, and that Petitioner has
`waived a challenge to partial institution. See Req. Reh’g 1–2. Patent Owner
`asserts that we did not consider the Director’s position on waiver as set forth
`in briefing in PGS Geophysical AS v. Iancu, Nos. 2016-2470, -2472, -2474
`(Fed. Cir. 2018) and in Polaris Industries Inc. v. Arctic Cat, Inc.,
`Nos. 2017-1870, -1871, 724 (Fed. Cir. 2018) (Mem.). Id. at 3, 6–7.2
`According to Patent Owner, applying the Director’s position to the facts of
`this case demand that we deem Petitioner to have waived SAS-based relief
`and any challenge to partial institution. Id. at 7–8. Patent Owner also argues
`that the decision in PGS supports its position. Id. at 7–8.
`
`Patent Owner’s reliance on PGS Geophysical is misplaced. That case
`involved “transition issues” pertaining to the treatment of cases that are on
`appeal at the Federal Circuit after the issuance of the SAS decision but that
`arose from the Board under pre-SAS practice. PGS Geophysical, 891 F.3d at
`1360. In PGS, our reviewing court determined that it had jurisdiction over
`the appeal resulting from a partial institution. See id. at 1360–61. The court
`
`2 Decisions issued as PGS Geophysical AS v. Iancu, 891 F.3d 1354 (Fed.
`Cir. 2018) and Polaris Indus. Inc. v. Arctic Cat, Inc., 724 Fed. Appx. 948
`(Fed. Cir. May 30, 2018) (Mem.).
`
`Case IPR2016-01622
`Notice of Appeal
`Attachment 1
`
`
`
`noted that no party sought at any time SAS-based relief. Id. at 1359
`(“Neither PGS nor the Director asks for any SAS-based action—whether to
`block our deciding the appeal on the instituted claims and grounds or to
`revive the ‘non-instituted’ claims or grounds. Nor has a request for
`SAS-based relief been filed by WesternGeco, which settled with PGS and
`withdrew from the appeals long ago.”); see also id. at 1362 (with emphasis
`added) (“Even if the Board could be said to have acted “ultra vires” in
`refusing to institute reviews of some claims and grounds—and then
`proceeding to merits decisions concerning the claims and grounds included
`in the instituted reviews—the Board’s error is waivable, not one we are
`required to notice and act on in the absence of an appropriate request for
`relief on that basis.”).
`
`In contrast, the subject case has not been appealed to the Federal
`Circuit, Petitioner sought SAS-based relief from the Board prior to any party
`filing a notice of appeal and prior to the expiration of the time for doing so,
`and the case remains before the Board for consideration, in the first instance,
`of the parties’ arguments regarding SAS-based relief.
`
`Patent Owner’s reliance on the Office’s briefing in appeals before the
`Federal Circuit similarly is misplaced. As noted, no party argued for
`SAS-based relief in PGS, thus, the Office’s statement that “[n]either Patent
`Owner, PGS Geophysical AS, nor Petitioner, WesternGeco LLC, preserved
`an objection to the Patent Trial and Appeal Board’s (‘Board’) partial
`institution” (Ex. 2016, 2), is not inconsistent with our decision in the present
`case where Petitioner raised an objection to partial institution with the Board
`prior to appeal. Likewise, the Office’s position in PGS that “a party
`generally may not challenge an agency decision on a basis that was not
`
`Case IPR2016-01622
`Notice of Appeal
`Attachment 1
`
`
`
`presented to the agency” (Ex. 2018, 8) is not inconsistent with our
`determination in this case where Petitioner presented to the agency, prior to
`an appeal, a challenge to our partial institution decision and a request for
`SAS-based relief. In Polaris, the Office made a similar statement. Ex. 2020,
`8 (“Under general administrative law principles, a party may not challenge
`an agency decision on a basis that was not presented to the agency in the
`first instance.”). In that regard, the Office identified a request for rehearing
`after final written decision as a juncture where Polaris might have had the
`opportunity to raise the partial institution issue. Id. In this case, Petitioner
`raised the partial institution issue via such a request for reconsideration after
`the Final Written Decision.
`
`Additionally, the Federal Circuit’s decision on the Polaris SAS-based
`relief issue supports the correctness of our determination of no waiver here.
`
`We further conclude that Polaris did not waive its right to
`seek remand by not arguing against partial institution before the
`Board. Precedent holds that a party does not waive an
`argument that arises from a significant change in law during the
`pendency of an appeal. . . . Prior to the Supreme Court’s
`decision in SAS, any attempt to argue against partial institution
`would have been futile under the Board’s regulations and our
`precedent. . . . Polaris’s failure to challenge the Board’s partial
`institution before the Supreme Court’s issuance of SAS is
`therefore excused.
`Polaris Indus. Inc. v. Arctic Cat, Inc., 724 F. App’x 948, 949–50 (Fed. Cir.
`2018) (Mem.) (non-precedential) (citations omitted)
`
`Patent Owner has not identified any matter that we misapprehended or
`overlooked concerning a purported waiver of SAS-based relief.
`
`Case IPR2016-01622
`Notice of Appeal
`Attachment 1
`
`
`
`B. The Request to Respond Regarding Claim 4
`Patent Owner requests that—in light of our modification of the
`
`institution decision after SAS in order to render a final written decision on all
`the challenged claims—it be authorized to file now a response to the Petition
`regarding claim 4. Req. Reh’g 12 (citing 35 U.S.C. § 316(a)(8)). We
`addressed Patent Owner’s arguments in this regard at pages 10–12 of the
`June 11, 2018, Order (Paper 42), and Patent Owner does not identify any
`matter in that regard that we misapprehended or overlooked.
`
`Although not captioned as a “Response,” Patent Owner did file, at a
`relatively early stage of the trial and after our Decision on Institution
`(Paper 7), a Motion to Amend in response to the Petition, and Patent Owner,
`in that motion, addressed claim 4. MTA (Paper 18); see, e.g., id. at 1
`(referring to the challenge to claim 4 in the Petition and asserting that “the
`substitute claim is the same as challenged claim 8 in every respect, except
`that it simply adds the limitations of claim 4, which the Board has already
`repeatedly determined has not been shown by Petitioner in this case to have
`a reasonable likelihood of being unpatentable.”); id. at 4 (“Every limitation
`of the substitute claim already appears in claim 4 or claim 8, and as just
`discussed, the limitation that already appears in claim 4 has already been
`found to not have been shown by Petitioner in this case to be disclosed or
`suggested by the prior art.”). By reinjecting into this case the limitation of
`dependent claim 4, Patent Owner agreed to a review of that claim, thereby
`effectively instituting a review of that claim. It primarily is Petitioner’s
`arguments and evidence in opposition to Patent Owner’s Motion to Amend
`that established the unpatentability of the subject matter of claim 4. See
`Order of June 11, 2018 (Paper 42) 13–14; Final Written Decision (Paper 35)
`
`Case IPR2016-01622
`Notice of Appeal
`Attachment 1
`
`
`
`21–27. In other words, the pertinent portion of the record primarily is that
`developed after Patent Owner effectively agreed to a review of the subject
`matter of claim 4 via the Motion to Amend. As discussed in the Order of
`June 11, 2018 (Paper 42) at pages 11–12, Patent Owner was on notice and
`had ample opportunity to address Petitioner’s arguments and evidence
`directed to the subject matter of claim 4. Further, in light of Patent Owner’s
`assertion that the Petition and the record as developed at the time of our
`Institution Decision does not demonstrate the unpatentability of claim 4 (see,
`e.g., Paper 23, 9), we fail to see—and Patent Owner has not indicated—why
`a response to the Petition is now necessary or what more remains to be said.
`
`IV. EXHIBITS 2016–2020
`Patent Owner filed Exhibit 2016–2020 concurrently with its Request
`
`for Rehearing. According to Patent Owner, “[t]hese exhibits are public
`orders (Ex. 2017), public briefs (Exs. 2016 & 2018), or emails between the
`Board and the parties (Ex. 2019).” Req. Reh’g 15; see also Ex. 2020
`(another paper filed in the United States Court of Appeals For The Federal
`Circuit). The filing of these Exhibits, which were not in the record at the
`time of the Order that is the subject of the present Request for Rehearing,
`was not authorized and Patent Owner has not shown good cause for
`admitting the exhibits now. See Office Patent Trial Practice Guide, 77 Fed.
`Reg. 48,756, 48,768 (Aug. 14, 2012) (“Evidence not already of record at the
`time of the decision will not be admitted [with a Rehearing Request] absent
`a showing of good cause.”). Nonetheless, we will allow the exhibits to
`remain in the record in order to have a complete record for any appeal in this
`case.
`
`Case IPR2016-01622
`Notice of Appeal
`Attachment 1
`
`
`
`V. ORDER
`For the foregoing reasons, it is
`ORDERED that Patent Owner’s Request for Rehearing is denied.
`
`
`
`
`
`PETITIONER:
`David Hoffman
`hoffman@fr.com
`
`Martha Hopkins
`mhopkins@sjclawpc.com
`
`
`
`PATENT OWNER:
`Kenneth Weatherwax
`weatherwax@lowensteinweatherwax.com
`
`
`
`Case IPR2016-01622
`Notice of Appeal
`Attachment 1
`
`
`
`
`Attachment 2
`
`Case IPR2016-01622
`Notice of Appeal
`Attachment 2
`
`
`
` Paper: 42
`Trials@uspto.gov
`571-272-7822 Entered: June 11, 2018
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KINGSTON TECHNOLOGY COMPANY, INC.,
`Petitioner,
`
`v.
`
`POLARIS INNOVATIONS LTD.,
`Patent Owner.
`____________
`
`Case IPR2016-01622
`Patent 6,850,414 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, JEAN R. HOMERE,
`and KEN B. BARRETT, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`
`
`ORDER
`Granting Petitioner’s Request for Rehearing and
`Denying Petitioner’s Motion to Limit the Petition
`37 C.F.R. § 42.71(a),(d)
`
`Case IPR2016-01622
`Notice of Appeal
`Attachment 2
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`
`INTRODUCTION AND SUMMARY OF THE DECISION
`I.
`Kingston Technology Company, Inc. (“Petitioner”) “requests
`
`rehearing [of the Final Written Decision (Paper 35, “Final Dec.”)] to address
`the effects of the Supreme Court’s decision on SAS Inst., Inc. v. Iancu, 584
`U.S. ___ (U.S. Apr. 24, 2018) on this trial, prior to the matter going to any
`appeal.” Paper 40 (“Petitioner’s Request” or “Pet. Req. Reh’g”), 1. No
`challenge of claims 2–4 was instituted in the original Institution Decision
`(Paper 7, “Inst. Dec.”). The Final Written Decision did not include an
`explicit conclusion as to the patentability of those claims, but did include an
`analysis of proposed substitute claim 9, which includes the subject matter of
`claim 4. As part of its submission, Petitioner includes a motion requesting
`“that the Board limit the petition to exclude review of claims 2 and 3.” Id.
`at 1. Petitioner requests that the Final Written Decision be modified to
`include a decision with respect to the patentability of claim 4 and of claims 2
`and 3 “to the extent [the Petition is] not limited.” Id. at 1–2.
`
`After considering Petitioner’s Request and the response of Patent
`Owner Polaris Innovations Ltd. (Paper 41, “PO Resp. Req. Reh’g”), we:
`1) grant Petitioner’s request for rehearing, 2) modify the institution decision
`to institute on all of the challenged claims and all of the grounds presented in
`the Petition, 3) deny Petitioner’s motion to limit the Petition, and 4) modify
`the Final Written Decision to include our determination that Petitioner has
`demonstrated by a preponderance of the evidence that claim 4 is
`unpatentable and that Petitioner has not demonstrated by a preponderance of
`the evidence that claims 2 and 3 are unpatentable.
`
`2
`
`Case IPR2016-01622
`Notice of Appeal
`Attachment 2
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`
`II. PROCEDURAL POSTURE
`Petitioner filed a Petition requesting inter partes review of claims 1–8
`
`of U.S. Patent No. 6,850,414 B2 (“the ’414 patent,” Ex. 1001). Paper 2.
`Patent Owner filed a Preliminary Response to the Petition. Paper 6. The
`Board instituted inter partes review of claims 1 and 5–8 on the ground of
`obviousness under 35 U.S.C. § 103(a) over Simpson. Paper 7, 23. The
`Board did not institute a review as to dependent claims 2–4 and did not
`institute on all grounds. Id. at 6, 23. Specifically, the instituted review did
`not include Petitioner’s obviousness challenge of claims 1–8 based on the
`combination of Simpson and the Intel Specification, or Petitioner’s
`obviousness challenge of claims 1–8 based on the Intel Specification.
`Petitioner filed a Request for Rehearing of The Board’s Institution Decision
`on Claim 4 (Paper 11), which was denied (Paper 16).
`
`Petitioner filed another petition seeking inter partes review of claim 4
`of the ’414 patent in Patent Trial and Appeal Board Case IPR2017-00974
`(Paper 2). In that case, the Board exercised its discretion under
`35 U.S.C. §§ 314(a) and 325(d) to not institute an inter partes review.
`IPR2017-00974, Paper 8. Petitioner’s request for rehearing of that decision
`was denied. IPR2017-00974, Papers 9, 11.
`
`In the present proceeding and subsequent to the institution decision,
`Patent Owner filed a Motion to Amend (“MTA,” Paper 18) seeking to cancel
`the instituted challenged claims and proposing to substitute a newly-
`presented claim 9 for dependent claim 8. Patent Owner characterized the
`proposed substitute claim 9 as “the same as challenged claim 8 in every
`respect, except that it simply adds the limitations of claim 4 . . . .” MTA 1.
`Patent Owner did not file a Response to the Petition. Subsequently,
`
`3
`
`Case IPR2016-01622
`Notice of Appeal
`Attachment 2
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`Petitioner filed an Opposition to Patent Owner’s Motion to Amend
`(Paper 20), and Patent Owner filed a Reply to Petitioner’s Opposition to
`Motion to Amend (Paper 23). Petitioner filed a Surreply to Patent Owner’s
`Motion to Amend (Paper 28). Thereafter Patent Owner filed a Brief
`Addressing Impact of Aqua Products v. Matal1 (Paper 30). An oral hearing
`was held on November 14, 2017. See Paper 34 (Hearing Transcript).
`
`On February 5, 2018, the Board issued a Final Written Decision.
`Paper 35. In that Decision, we determined that Petitioner had demonstrated
`by a preponderance of the evidence that claims 1 and 5–8 of the ’414 patent
`are unpatentable under 35 U.S.C. § 103(a) as obvious over Simpson.
`Additionally, we determined, based on a preponderance of the evidence in
`the entire trial record, that proposed substitute claim 9 is unpatentable, under
`35 U.S.C. § 103(a), as obvious over Simpson and the Intel Specification.
`Patent Owner filed, on March 7, 2018, a request for rehearing of the Final
`Written Decision (Paper 36), which was denied on April 12, 2018
`(Paper 37).
`
`On April 24, 2018, the Supreme Court held that a decision to institute
`under 35 U.S.C. § 314 may not institute on less than all claims challenged in
`the petition. SAS Inst., Inc. v. Iancu, 2018 WL 1914661, at *10 (U.S.
`Apr. 24, 2018).
`
`On May 8, 2018, Petitioner sent to the Board and Patent Owner an
`email stating, in pertinent part: “Pursuant to the guidance provided by the
`Chief Judge in his recent webinar on SAS, Petitioner requests a conference
`call to ask permission to file an out of time request for reconsideration
`
`
`1 Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017).
`
`4
`
`Case IPR2016-01622
`Notice of Appeal
`Attachment 2
`
`
`
`IPR2016-01622
`Patent 6,850,414 B2
`
`seeking institution and a FWD on non-instituted claim 4 in [this] IPR.”
`Ex. 3002. Later that same day, Patent Owner replied: “Patent Owner is
`prepared to explain why Petitioner’s proposed request should not be
`authorized pursuant to the guidance provided on SAS.” Id. On May 11,
`2018, Judges Barrett and Homere participated in a conference call with the
`parties to discuss the parties’ positions regarding Petitioner’s request. A
`transcript of that call has been filed as Exhibit 1026.
`
`On May 21, 2018, we granted Petitioner’s request to excuse the
`lateness of the filing of a request for rehearing, authorized Petitioner to file a
`request for rehearing, authorized Paten
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
