Case IPR2017-00974
`Patent 6,850,414
`Attorney Docket No. 160831-007USIPR
`
`
`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 IPR2017-00974
`Patent 6,850,414 B2
`____________
`
`PATENT OWNER POLARIS INNOVATIONS LTD.’S
`PRELIMINARY RESPONSE TO PETITION FOR
`INTER PARTES REVIEW OF UNITED STATES PATENT NO. 6,850,414
`PURSUANT TO 35 U.S.C. § 313, 37 C.F.R. § 42.107
`
`
`
`
`
`
`
`
`Patent 6,850,414
`Attorney Docket No. 160831-007USIPR
`
`
`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 IPR2017-00974
`Patent 6,850,414 B2
`____________
`
`PATENT OWNER POLARIS INNOVATIONS LTD.’S
`PRELIMINARY RESPONSE TO PETITION FOR
`INTER PARTES REVIEW OF UNITED STATES PATENT NO. 6,850,414
`PURSUANT TO 35 U.S.C. § 313, 37 C.F.R. § 42.107
`
`
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page
`INTRODUCTION ......................................................................................... 1
`
`I.
`
`II. ALL FACTORS FAVOR DENIAL OF THIS QUINTESSENTIAL
`“SECOND BITE AT THE APPLE.” ........................................................... 5
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`Petitioner Previously Filed A First Petition Against The Same
`Claim Of The Same Patent (Third Factor). ........................................... 9
`
`This Petition Was Delayed To Take Advantage Of The Preliminary
`Response And The Non-Institution Decision (Fifth And Seventh
`Factors). ............................................................................................... 10
`
`Petitioner Knew, Or Should Have Known, Of The Art Asserted
`(Fourth And Sixth Factors). ................................................................ 12
`
`The Second Petition Relies On Substantially The Same Arguments
`Previously Presented To The Office (Eighth Factor). ......................... 18
`
`Permitting This Petition Would Waste Board Resources And
`Prevent A “Just, Speedy And Inexpensive Resolution” (First And
`Second Factors). .................................................................................. 20
`
`Petition’s Arguments Neglect To Discuss And Are Contrary To
`Board Policy And Law. ....................................................................... 22
`
`III. THE SECOND PETITION FAILS FOR THE SAME REASONS AS
`THE FIRST PETITION. ............................................................................ 27
`
`A. As Before, Petitioner’s First Ground Fails To Explain How
`Simpson Could Meet Claim 4’s Height Requirements. ...................... 28
`
`1.
`
`Unlike The ’414 Patent, Simpson Is Not Concerned With PCB
`Height And Merely Coincidentally Discloses Only Parts Of The
`’414 Patent’s Claim 4. ............................................................. 33
`
` i
`
`
`
`
`
`B.
`
`2.
`
`As In The First Petition, The Second Petition Fails To Show
`How Simpson Could Be Modified To Meet Claim 4’s Height
`Limitations. .............................................................................. 37
`
`Petitioner’s Second Ground Fails Because The Petition Does Not
`Explain Why An Artisan Would Modify Bechtolsheim’s All
`Horizontally Oriented Memory Chips. ............................................... 47
`
`IV. CONCLUSION ............................................................................................ 52
`
`
`
` ii
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`
`
`
`
`
`CASES
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`Gardner v. TEC Sys.,
`725 F.2d 1338 (Fed. Cir. 1984) .......................................................................... 47
`
`Harmonic Inc. v. Avid Tech., Inc.,
`815 F.3d 1356 (Fed. Cir. 2016) ............................................................................ 6
`
`In re Chaganti,
`554 Fed. Appx. 917 (Fed. Cir. 2014) (nonprecedential) .................................... 51
`
`In re Dembiczak,
`175 F.3d 994 (Fed. Cir. 1999) ............................................................................ 50
`
`In re Fine,
`837 F.2d 1071 (Fed. Cir. 1988) .......................................................................... 51
`
`In re Rose,
`220 F.2d 459 (C.C.P.A. Mar. 22, 1955) ............................................................. 46
`
`In re Yount,
`171 F.2d 317 (C.C.P.A. Dec. 7, 1948) ................................................................ 46
`
`Interconnect Planning Corp. v. Feil,
`774 F.2d 1132 (Fed. Cir. 1985) .......................................................................... 51
`
`ADMINISTRATIVE DECISIONS
`
`Akamai Techs. v. Limelight Networks, Inc.,
`IPR2017-000358, Paper 9 (PTAB May 2, 2017) .............................. 9, 12, 24, 25
`
`Alarm.com v. Vivint, Inc.,
`IPR2016-01110, Paper 11 (PTAB Nov. 28, 2016) ..................................... passim
`
`Conopco, Inc. v. Proctor & Gamble Co.,
`IPR2014-00506, Paper 25 (PTAB Dec. 10, 2014) ................................ 12, 16, 42
`
` iii
`
`
`
`
`
`Kingston Technology Company, Inc. v. Polaris Innovations, Ltd.,
`IPR2016-01622, Paper 16 (PTAB Apr. 6, 2017) .................................... 6, 39, 40
`
`Kingston Technology Company, Inc. v. Polaris Innovations, Ltd.,
`IPR2016-01622, Paper 7 (PTAB Feb. 15, 2017) ........................................ passim
`
`LG Electronics Inc. v. Core Wireless Licensing S.A.R.L.,
`IPR2016- 00986, Paper 12 (PTAB Aug. 22, 2016) .................................... passim
`
`Medtronic, Inc. v. Barry,
`IPR2015-00780, Paper 1 (PTAB Feb. 20, 2015) ................................................ 26
`
`Microsoft Corp. v. IpLearn-Focus LLC,
`IPR2015-00095, Paper 33 (PTAB Apr. 11, 2016) ............................................. 42
`
`NVIDIA Corp. v. Samsung Elec. Co.,
`IPR2016-00134, Paper 9 (PTAB May 4, 2016) ................................................... 8
`
`Samsung Elec. Co. v. Rembrandt Wireless Techs., LP,
`IPR2015-00114, Paper 14 (PTAB Jan. 28, 2015) .............................................. 21
`
`Toyota Motor Corp. v. Cellport Systems,
`IPR2015-01423, Paper 7 (PTAB Oct. 28, 2015) ................................... 10, 13, 16
`
`Unified Patents, Inc. v. PersonalWeb Techs., LLC,
`IPR2014-00702, Paper 13 (PTAB July 24, 2014) ................................................ 8
`
`Xactware v. Eagle View,
`IPR2017-00025, Paper 9 (PTAB Apr. 13, 2017) ................................ 7, 9, 12, 25
`
`ZTE Corp. v. ContentGuard Holdings, Inc.,
`IPR2013-00454, Paper 12 (PTAB Sept. 25, 2013) ............................................. 23
`
`STATUTES
`
`35 U.S.C. § 314(a) .......................................................................................... passim
`
`35 U.S.C. § 316(a)(11) ........................................................................................ 7, 21
`
`35 U.S.C. § 325(d) ........................................................................................ 7, 25, 27
`
`
`
` iv
`
`
`
`
`
`REGULATIONS
`
`37 C.F.R. § 42.108(a) ................................................................................................. 6
`
`OTHER AUTHORITIES
`
`Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal
`Board,
`81 Fed. Reg. 18,750 (Apr. 1, 2016) ...................................................................... 8
`
`
`
`
`
` v
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`
`
`
`
`EXHIBIT LIST
`
`Exhibit 2001
`
`U.S. Patent No. 7,315,454
`
`Exhibit 2002
`
`U.S. Patent No. 7,414,312
`
`Exhibit 2003
`
`Kingston’s First Amended Answer, Polaris Innovations Ltd. v.
`Kingston Technology Company, Inc., No. 8:16-cv-00300 (C.D.
`Cal. May 23, 2016)
`
`Exhibit 2004
`
`Cecil Ho, Significance of JEDEC DIMM Module,
`Simmtester.com (Sept. 25, 2002)
`
`Exhibit 2005
`
`Andy Santoni, Industry Rallies Around SDRAM Standard, Info
`World, Volume 19, Issue 24 (June 16, 1997)
`
`Exhibit 2006
`
`U.S. Patent No. 5,383,148
`
`Exhibit 2007
`
`Exhibit 2008
`
`Exhibit 2009
`
`Kingston’s Renewed Motion to Stay, Polaris Innovations Ltd.
`v. Kingston Technology Company, Inc., No. 8:16-cv-00300
`(C.D. Cal. June 05, 2017)
`
`Petition, Kingston Technology Company, Inc. v. Polaris
`Innovations Ltd., IPR2016-01622, Paper 2 (PTAB Aug. 16,
`2016)
`
`Request for Rehearing, Kingston Technology Company, Inc. v.
`Polaris Innovations Ltd., IPR2016-01622, Paper 11 (PTAB
`Feb. 27, 2017)
`
` vi
`
`
`
`
`
`I.
`
`INTRODUCTION1
`
`This Petition is a quintessential abusive “serial” petition. The Board
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`squarely denied a first IPR petition (the “First Petition”) as to Claim 4 of the ’414
`
`Patent, and then denied it again on rehearing. Yet this second Petition (the
`
`“Second Petition”) asks the Board to focus once again in significant part on the art
`
`that the Board found wanting the first time around, “Simpson” and the “Intel
`
`Specification.” Indeed, of the references Petitioner relies upon here, these retreads
`
`are the only references Petitioner specifically calls out. Pet. at 55 (“The prior art
`
`references cited herein demonstrate the obviousness of the subject matter of claim
`
`4 of the ’414 Patent and raise a reasonable likelihood that Petitioner will prevail in
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`showing that the claims are unpatentable as obvious in view of Simpson and the
`
`Intel Specification.”).2 Incredibly, Petitioner misleadingly tries to pass off the
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`Intel Specification (which it now refers to as the “Intel DIMM Specification”) as
`
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`1 Patent Owner presents in this Preliminary Response more than sufficient
`
`reasons to deny institution. If, however, the Board disagrees, Patent Owner
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`reserves the right to then raise additional arguments, and additional supporting
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`evidence and law.
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`2 All emphases in this brief are added unless otherwise noted.
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` 1
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`
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`new art. See Pet. at 7, 10, 53. It is not, and an “Intel Specification” by any other
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`name still fails to render Claim 4 obvious.
`
`Petitioner adds three new references this time to the two repeats—each of
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`which Petitioner either was aware of, or should have been, when it filed the First
`
`Petition. These three references are all U.S. patents and available in readily
`
`searchable databases, not dissertations in a foreign tongue buried in an obscure
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`library. One of the patents (Karabatsos) is even listed on the face of a patent-at-
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`issue in the co-pending litigation between the parties. A second patent (Tokunaga)
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`was cited during the prosecution of one of Petitioner’s own patents. The third
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`patent’s (Bechtolsheim) grandparent was cited in Petitioner’s own responsive
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`pleading in the co-pending litigation. Petitioner asserts, but does not attempt to
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`prove, that it was unaware of these references earlier. And, even if the alleged
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`ignorance could be substantiated, no justifiable excuse could be made, or has even
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`been attempted, for it.
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`Petitioner took its time waiting to file its Second Petition—over six months
`
`after the first—on the last day before 35 U.S.C. § 315(b)’s time bar took effect. In
`
`the interim, Petitioner took advantage of Patent Owner’s successful preliminary
`
`response and the Board’s decision denying institution as to Claim 4, both of which
`
`it now attempts to use to fashion its second “bite at the apple.” To permit this
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`repeat Petition to proceed using these prejudicial advantages would be grossly
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` 2
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`
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`unfair, and Petitioner’s long, inexcusable delay would deny Patent Owner the “just,
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`speedy, and inexpensive” resolution to which it and the Board are entitled.
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`Tellingly, the Petition, submitted by highly experienced IPR counsel, does
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`not even address the factors the Board has developed to weed out improper, serial
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`petitions like this one. Petitioner does not even acknowledge the Board’s practice
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`of denying such petitions. Rather, the Petition takes the astounding position that it
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`should be the Board’s policy to permit incremental petitions throughout the one-
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`year statutory period “to afford conscientious petitioners who file early” the
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`opportunity to “supplement” their petitions. Pet. at 13-14. Just because Petitioner
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`elected to ignore the Board’s law and practices, however, does not mean it writes
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`on a clean slate. The Board has repeatedly found that a petitioner’s abusive use of
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`a patent owner’s preliminary response and a decision denying institution as a “how
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`to” guide for a second petition weighs strongly against institution of a second
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`petition.
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`No mitigating facts exist. There are no new developments, no unexpected or
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`new claim construction positions, or new rulings by the Board, for example.
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`Rather, this Second Petition simply disagrees with the Board’s decision on the First
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`Petition and seeks a “do-over.”
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`Even were the Board to overlook its own guidance and case law, and award
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`Petitioners a mulligan, institution should still be denied for essentially the same
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` 3
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`
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`reasons as it was already denied the first time around. The first ground in both
`
`petitions rely on the same primary reference, Simpson. The Board has already
`
`explained that Petitioner had not sufficiently illustrated how a person of ordinary
`
`skill in the art could or would modify Simpson to achieve the recited height of 1-
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`1.2 inches in Claim 4. Kingston Technology Company, Inc. v. Polaris Innovations,
`
`Ltd., IPR2016-01622, Paper 7 at 17 (PTAB Feb. 15, 2017). As before, the Petition
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`here relies on the same two rows of memory chips in Simpson, but fails to provide
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`any explanation of how two rows of sockets in Simpson would fit within the
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`claimed height of 1-1.2 inches and, if not, what modification would be necessary to
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`reach the invention of Claim 4. While Petitioner swapped out the secondary
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`reference in the first ground, the new secondary reference has the same defect as
`
`the one it replaced: it adds nothing that changes the stubborn fact that there is still
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`no evidence that Simpson could possibly fit within the 1-1.2-inch-height
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`requirement of Claim 4.
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`Petitioner’s second ground here mirrors its second ground in the First
`
`Petition, and it is unsatisfactory for the same reasons. Both assert references that
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`disclose only identically oriented memory chips, and then make a conclusory claim
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`that an artisan would modify those references to achieve Claim 4’s invention.
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`And, as before, Petitioner asserts a reference (Bechtolsheim) in which the
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`module orientation mirrors the prior art that the ’414 Patent identified and
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` 4
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`
`
`
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`improved upon. The Petition offers the Board the conclusory statement that an
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`artisan would rearrange the layout of memory chips on the module to arrive at the
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`invention of the ’414 Patent. But as the Board explained in denying a similar
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`ground in the First Petition, “[i]t is not enough to say that … to do so would ‘have
`
`been obvious to one of ordinary skill.’ Such circular reasoning is not sufficient—
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`more is needed to sustain an obviousness rejection.” IPR2016-01622, Paper 7
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`(decision denying institution in part of First Petition) at 15-16. Thus, this Second
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`Petition offers nothing that would change the result of the first, even if it were
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`considered as a first petition, rather than the rerun it is.
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`II.
`
`ALL FACTORS FAVOR DENIAL OF THIS QUINTESSENTIAL
`“SECOND BITE AT THE APPLE.”
`
`On August 16, 2016, Petitioner filed a first petition challenging all claims of
`
`the ’414 Patent (the “First Petition”). See Ex. 2008 [IPR2016-01622 Petition].
`
`The First Petition challenged Claim 4 based on two references: UK Pat. App.
`
`2,289,573 (“Simpson”), id. at Ex. 1002, and PC SDRAM Unbuffered DIMM
`
`specification (“Intel Specification”), id. at Ex. 1003.
`
`In that first proceeding, the Board instituted trial on Claims 1 and 5-8 but
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`denied institution on the merits with respect to Claims 2-4 based on obviousness
`
`over both references either alone or in combination. Kingston v. Polaris, IPR2016-
`
`01622 at Paper 7 at 16-18, 20- 22 (PTAB Feb. 15, 2017). Dissatisfied with this
`
`outcome, Petitioner filed a request for rehearing as to Claim 4. See Ex. 2009
`
` 5
`
`
`
`
`
`[IPR2016-01622 Req. for Rehearing]. The Board carefully considered Petitioner’s
`
`request for rehearing, and reaffirmed its decision. Kingston v. Polaris, IPR2016-
`
`01622, Paper 16 (PTAB Apr. 6, 2017). Specifically, the Board reaffirmed its
`
`decision as to Claim 4 that “Petitioner has not explained sufficiently how or why a
`
`person of ordinary skill in the art would have modified Simpson to achieve a
`
`height of ‘1 to 1.2 inches perpendicular to said contact strip.’” Id. at 2-3, citing
`
`Paper 7 at 17; see also Section V.A.3, infra. Petitioner now files its second attack
`
`with substantially the same arguments and the same deficiencies as the First
`
`Petition.
`
`Institution of inter partes review is discretionary, bounded by the Board’s
`
`statutory authority under the America Invents Act. See 35 U.S.C. § 314(a)
`
`(authorizing institution of an inter partes review under particular circumstances,
`
`but not requiring institution under any circumstances); 37 C.F.R. § 42.108(a) (“The
`
`Board may authorize the review to proceed. . . .”); Harmonic Inc. v. Avid Tech.,
`
`Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (explaining that under § 314(a), “the
`
`PTO is permitted, but never compelled, to institute an IPR proceeding.”).3 In
`
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`3 As also discussed in Section II.D, infra, discretion to deny institution under
`
`§ 314(a) is separate, and in addition to, discretion of the Board to deny institution
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`under 35 U.S.C. § 325(d), which permits the Board to deny institution when “same
`
`
`
` 6
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`
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`
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`determining whether to institute review based on a second petition challenging the
`
`same claims, the Board considers several key factors, including:
`
`(1)
`
`(2)
`
`the finite resources of the Board (see Section II.E, infra);
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`the requirement under 35 U.S.C. § 316(a)(11) to issue a final
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`determination not later than one year after the date on which the
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`Director notices institution of review (see Section II.E, infra);
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`(3) whether the same petitioner previously filed a petition directed to the
`
`same claims of the same patent (see Section II.A, infra);
`
`(4) whether, at the time of filing of the earlier petition, the petitioner
`
`knew of the prior art asserted in the later petition or should have
`
`known of it (see Section II.C, infra);
`
`(5) whether, at the time of filing of the later petition, the petitioner
`
`already received the patent owner’s preliminary response to the earlier
`
`
`or substantially the same prior art or arguments previously were presented to the
`
`Office.” “Substantially the same arguments” is only one of the factors considered
`
`under § 314(a), and the Board has denied institution under 35 U.S.C. § 314(a) even
`
`where it might otherwise not deny institution under 35 U.S.C. § 325(d). See, e.g.,
`
`Xactware v. Eagle View, IPR2017-00025, Paper 9 at 7-8 (PTAB Apr. 13, 2017)
`
`(denying a second, follow-on petition based on § 314(a) rather than § 325(d)).
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` 7
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`
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`petition or received the Board’s decision on whether to institute
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`review in the earlier petition (see Section II.B, infra);
`
`(6)
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`the length of time that elapsed between the time the petitioner learned
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`of the prior art asserted in the later petition and the filing of the later
`
`petition (see Section II.C, infra);
`
`(7) whether the petitioner provides adequate explanation for the time
`
`elapsed between the filing dates of multiple petitions directed to the
`
`same claims of the same patent (see Section III.B, infra); and
`
`(8) whether the same or substantially the same prior art or arguments
`
`previously were presented to the Office (see Section II.D, infra).
`
`Alarm.com v. Vivint, Inc., IPR2016-01110, Paper 11 at 5-6 (PTAB Nov. 28, 2016),
`
`citing LG Electronics Inc. v. Core Wireless Licensing S.A.R.L., IPR2016- 00986,
`
`Paper 12 at 6-7 (PTAB Aug. 22, 2016); NVIDIA Corp. v. Samsung Elec. Co.,
`
`IPR2016-00134, Paper 9 at 6-7 (PTAB May 4, 2016); Unified Patents, Inc. v.
`
`PersonalWeb Techs., LLC, IPR2014-00702, Paper 13 at 7-9 (PTAB July 24, 2014);
`
`Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal
`
`Board, 81 Fed. Reg. 18,750, 18,759 (Apr. 1, 2016) (“[T]he current rules provide
`
`sufficient flexibility to address the unique factual scenarios presented to handle
`
`efficiently and fairly related proceedings before the Office on a case-by-case basis,
`
`and that the Office will continue to take into account the interests of justice and
`
` 8
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`
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`fairness to both petitioners and patent owners where multiple proceedings
`
`involving the same patent claims are before the Office.”).
`
`Not all factors need to be present for the Board to deny institution of a
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`second, follow-on petition, and the Board need not give equal weight to each
`
`factor. Alarm.com v. Vivint, Inc., IPR2016-01110, Paper 11 at 6 (PTAB Nov. 28,
`
`2016); see also Xactware v. Eagle View, IPR2017-00025 Paper 9 at 8 (PTAB Apr.
`
`13, 2017) (denying institution on the second petition after analyzing only a sub-set
`
`of the above factors); Akamai Techs. v. Limelight Networks, Inc., IPR2017-000358,
`
`Paper 9 at 8-9 (PTAB May 2, 2017) (same).
`
`In the instant case, and as discussed in detail in the following sections, all
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`eight of these factors support denial of this second, follow-on Petition. While each
`
`factor is discussed, they are presented in logical groupings in light of the particular
`
`situation presented here, rather than in numerical order.
`
`A.
`
`Petitioner Previously Filed A First Petition Against The Same
`Claim Of The Same Patent (Third Factor).
`
`A second petition by the same petitioner challenging the same claim of the
`
`same patent supports denial of institution of that second petition. Alarm.com v.
`
`Vivint, Inc., IPR2016-01110, Paper 11 at 8 (PTAB Nov. 28, 2016) (“With regard to
`
`the third factor listed above, the instant Petition represents Alarm.com’s second
`
`petition specifically challenging each of claims 1–8, these claims each having been
`
`challenged in Case IPR2015- 02003 as obvious over Scadaware and Britton.”). In
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` 9
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`
`
`
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`this matter, the instant Petition is the second Petition challenging Claim 4 of the
`
`’414 Patent by Petitioner. See Section II, supra. Therefore, the third factor
`
`strongly supports denial of institution.
`
`B.
`
`This Petition Was Delayed To Take Advantage Of The
`Preliminary Response And The Non-Institution Decision (Fifth
`And Seventh Factors).
`
`Petitioner timed this Second Petition to use both Patent Owner’s Preliminary
`
`Response (“POPR”) and the Board’s Decision on Institution as blueprints to
`
`fashion its follow-on petition. This inequitable strategy also counsels against
`
`institution. See Alarm.com v. Vivint, Inc., IPR2016-01110, Paper 11 at 7-8 (PTAB
`
`Nov. 28, 2016) (denying institution on a second petition and finding that the
`
`follow-on, second petition was “essentially a composite response to our decisions
`
`in those earlier proceedings.”).
`
`Petitioner’s second bite at the apple is especially “unjust” where, as here, the
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`arguments for unpatentability are substantially similar, and the first ground of both
`
`petitions even share the same primary reference (Simpson). See Toyota Motor
`
`Corp. v. Cellport Systems, IPR2015-01423, Paper 7 at 8 (PTAB Oct. 28, 2015)
`
`(“Especially given the similarity between the earlier application of RS-485 and the
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`application here of the CAN standard, the opportunity to read Patent Owner’s
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`Preliminary Response in IPR2015-00634, prior to filing the Petition here, is unjust.
`
` 10
`
`
`
`
`
`See 35 U.S.C. § 314(a).”); see also Section III.D, infra (discussing similarities in
`
`the deficiencies in the First and Second Petitions).
`
`Furthermore, the filing of this Second Petition, just one day before the 35
`
`U.S.C. §315(b) statutory bar on further challenges took effect, maximized
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`Petitioner’s ability to use the first POPR, the first decision on institution, and any
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`developments in the co-pending litigation between the parties to “adjust” its
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`Second Petition. See Alarm.com v. Vivint, Inc., IPR2016-01110, Paper 11 at 9
`
`(PTAB Nov. 28, 2016) (“Because the instant Petition was filed only about one
`
`week prior to the raising of the Section 315(b) bar against further challenges to
`
`claims 1–8 of the ’654 patent, we can discern no other motivation apart from the
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`information to be gleaned from Vivint’s preliminary responses and our decisions
`
`on institution in the related cases.”).
`
`Petitioner’s Second Petition expressly uses information gleaned from the
`
`patent owner’s preliminary response and the corresponding denial of institution in
`
`the First Petition. In fact, the Second Petition is tailored to dodge the Board’s non-
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`institution decision in the First Petition. See, e.g., Pet. at 12 (“These new
`
`references clearly demonstrate that the features of claim 4 of the ’414 patent, on
`
`which the Previous Petition, was not instituted, were not inventive.”); 11 (arguing
`
`incorrectly that “[t]he present Petition, however, presents new and substantially
`
` 11
`
`
`
`
`
`different arguments and prior art that illustrate why the ’414 patent should not have
`
`been granted.”).
`
`The Petition provides no explanation for the delay between the filing dates
`
`of the two Petitions (seventh factor). For the foregoing reasons, the fifth and
`
`seventh factors also strongly support a denial of institution.
`
`C.
`
`Petitioner Knew, Or Should Have Known, Of The Art Asserted
`(Fourth And Sixth Factors).
`
`“Out of concern for fundamental fairness, in determining whether to deny
`
`institution on subsequent petitions challenging the same claims of the same patent,
`
`[the Board] look[s] to whether a petitioner knew or should have known of the
`
`prior art asserted in its later case when it filed the earlier one.” Xactware v. Eagle
`
`View, IPR2017-00025 Paper 9 at 9 (PTAB Apr. 13, 2017), citing Conopco, Inc. v.
`
`Proctor & Gamble Co., IPR2014-00506, Paper 25 at 4-5 (PTAB Dec. 10, 2014)
`
`(emphasis added); Akamai v. Limelight, IPR2017-000358, Paper 9 at 9-10 (PTAB
`
`May 2, 2017) (same). And it is elementary that where “Petitioner, at the time of
`
`filing of the first petition was aware of or should have been aware of the prior art
`
`references applied in the second petition,” this factor weighs against institution.
`
`Alarm.com v. Vivint, Inc., IPR2016-01110, Paper 11 at 11 (PTAB Nov. 28, 2016),
`
`citing LG Electronics Inc. v. Core Wireless Licensing S.A.R.L., IPR2016-00986,
`
`Paper 12 at 7-8 (PTAB Aug. 22, 2016) (informative); see also id. at 5, 8; Toyota
`
` 12
`
`
`
`
`
`Motor Corp. v. Cellport Sys., Inc., Case IPR2015-01423, Paper 7 at 8 (PTAB Oct.
`
`28, 2015).
`
`Here, this Second Petition is based on two references that Petitioner
`
`undeniably knew about because they were also used in the First Petition, and three
`
`references that Petitioner knew or at least should have known about, at the time of
`
`the filing of the First Petition.
`
`Petitioner cites five references in the Second Petition:
`
`(1) UK Patent Application GB 2 289 573 A (“Simpson”);
`
`(2) U.S. Patent Application Publication 2002/0006032 (“Karabatsos”);
`
`(3) U.S. Patent 5,973,951 (“Bechtolsheim”);
`
`(4) U.S. Patent 6.038,132 (“Tokunaga”); and
`
`(5)
`
`PC SDRAM Unbuffered DIMM Specification Revision 1.0 (“Intel
`
`DIMM Specification”).
`
`Pet. at 10-11. Of the five references, two references, Simpson and the Intel DIMM
`
`Specification, were relied on by Petitioner in its First Petition. Compare IPR2016-
`
`01622, Ex. 1002 (Simpson) with IPR2017-00974, Ex. 1002 (Simpson); IPR2016-
`
`01622, Ex. 1003 (Intel Specification) with IPR2017-00974, Ex. 1008 (Intel DIMM
`
`Specification).
`
`Let us be very clear. The First Petition cited the PC SDRAM Unbuffered
`
`DIMM Specification Revision 1.0 (the fifth reference listed above) and referred to
`
` 13
`
`
`
`
`
`it by the name “Intel Specification.” First Pet. at 9. The Second Petition cites the
`
`exact same reference, refers to it by a different name, “Intel DIMM Specification,”
`
`and elects not to inform the Board that they are in fact the same document. Pet.
`
`at 10; compare IPR2016-01622, Ex. 1003 with IPR2017-00974 Ex. 1008.
`
`Petitioner, however, was unable to consistently maintain this ruse and still
`
`occasionally referred to this reference by its original name, the “Intel
`
`Specification.” See Pet. at 37 (“This can be seen at least by the section from the
`
`Intel Specification shown below, which illustrates three different designs with two
`
`different orientations for memory chips. The Intel Specification evidences that
`
`one of ordinary skill in the art would know how to rearrange chips on a DIMM
`
`Board and could readily do so . . .”); id. at 55 (“The prior art references cited
`
`herein demonstrate the obviousness of the subject matter of claim 4 of the ’414
`
`Patent and raise a reasonable likelihood that Petitioner will prevail in showing that
`
`the claims are unpatentable as obvious in view of Simpson and the Intel
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`Specification.”).
`
`That is not all. Petitioner actually conceals this fact. Petitioner implicitly
`
`tells the Board that the Intel DIMM Specification of the Second Petition is a new
`
`reference. The Second Petition tells the Board: “With only one exception
`
`[Simpson], the prior art in the present Petition is wholly new.” Pet. 11; see also id.
`
`at 12 (“Although the present Petition does include one prior art reference
`
` 14
`
`
`
`
`
`[Simpson] addressed in the Previous Petition, the application of teaching from
`
`within Simpson are now integrated with an entirely new reference.”). Petitioner’s
`
`statements are false. There were two exceptions, Simpson and the “Intel DIMM
`
`Specification.”
`
`The Second Petition does include three references that were not cited in the
`
`First Petition. But Petitioner either knew, or at least should have known, of all
`
`three at the time it filed the First Petition.
`
`The three additional references are Karabatsos, Bechtolsheim, and
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`Tokunaga. Petitioner had already cited a grandparent of Bechtolsheim in its First
`
`Amended Answer in the related litigation, filed on May 23, 2016 and well before
`
`the First Petition. See Ex. 2003 [Kingston’s First Amended Answer] ¶78 (citing
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`U.S. Patent 5,383,148 against the ’414 Patent). Significantly, the related ’148
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`Patent cited by Petitioner in its Answer has identical specifications and figures to
`
`the Bechtolsheim reference cited by the Petition. Compare Ex. 1004
`
`[Bechtolsheim] with Ex. 2006 [U.S. Patent No. 5,383,148]. Petitioner’s switch
`
`from one patent in litigation to another patent in its Petition, when both patents
`
`have identical specifications, may be a clumsy effort to conceal its prior awareness
`
`of the “new” reference.
`
`With respect to the other references, Karabatsos appears as a reference cited
`
`by the examiner on the face of U.S. Patent 7,315,454, which is another patent in
`
` 15
`
`
`
`
`
`the co-pending district court litigation. See Kingston Technology Company, Inc. v.
`
`Polaris Innovations LTD, IPR2016-01623, Ex. 2001 [U.S. Patent No. 7,315,454].
`
`The third reference, Tokunaga, appears as a reference cited by the examiner on the
`
`face of U.S. 7,414,312, which is a patent assigned to Petitioner itself. Petitioner
`
`surely cannot claim ignorance of that reference. See Ex. 2002 [U.S. Patent No.
`
`7,414,312].
`
`Even if the three “new” references were not so conspicuously available to
`
`the Petitioner on the particular facts of this case, all three are published U.S.
`
`Patents, and Petitioner presents no reason why the references could not have been
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`“known or available to” Petitioner at the time of the First Petition. See Conopco v.
`
`Proctor & Gamble, IPR2014-00628, Paper 21 at 11 (PTAB Oct. 20, 2014)
`
`(“[Petitioner] does not argue that the other references applied in the instant Petition
`
`… were unknown or unavailable at the time of filing the 510 Petition. That fact
`
`supports a reasonable inference that those references were known and available to
`
`Unilever when it requested review the first time.”); Toyota Motor Corp. v. Cellport
`
`Systems, IPR2015-01423, Paper 7 at 8 (PTAB Oct. 28, 2015) (“Petitioner presents
`
`no argument or evidence that [the prior art reference in the second IPR] was not
`
`known or available to Petitioner at the time of filing of the Petition in [the first
`
`IPR]. Without explanation, Petition seeks another opportunity to challenge the
`
`same claims on essentially the same grounds, based on overlapping, albeit not
`
` 16
`
`
`
`
`
`identical, set of prior art references. Such a second bite at the apple wastes the
`
`Board’s limited resources and imposes undue burden on the Patent Owner.”); LG
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`Elecs. v. Core Wireless, IPR2016-00986, Paper 12 at 11 (PTAB Aug. 22, 2016)
`
`(“Petitioner does not indicate when or how it first became aware of [the prior art
`
`references in the second IPR], and does not represent that either [reference]
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`reasonably was unavailable to Pe
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