`
`
`
`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 6,840,414
`
`
`
`
`
`
`
`
`
`
`
`
`PETITIONER’S REQUEST FOR REHEARING
`
`
`
`Case IPR2017-00974
`Attorney Docket No: 37307-0007IP2
`
`
`I.
`
`BACKGROUND AND RELIEF REQUESTED
`Petitioner, Kingston Technology Company, Inc. (“Petitioner”), requests
`
`rehearing of the Board’s August 14, 2017 Decision in Paper 8 (hereinafter the
`
`“Decision”) declining to institute a trial as to both Grounds identified at pp. 9-10 of
`
`the Petition (Paper 2) (hereinafter the “Petition”), which requests inter partes
`
`review (“IPR”) of claim 4 of U.S. Patent No. 6,840,414 (“the ’414 Patent”). In the
`
`Decision, the Board denied a trial purely on discretionary grounds under 35 U.S.C.
`
`§§ 314(a) and 325(d).
`
`II. REASONS FOR THE RELIEF REQUESTED
`Petitioner respectfully requests that the Board review the instant Petition on
`
`the merits in view of Patent Owner’s Motion to Amend (Paper 18) (hereinafter
`
`“Motion to Amend”) and Petitioner’s Opposition to the Motion to Amend (Paper
`
`20) (hereinafter “Opposition”) filed in IPR2016-01622 (hereinafter “the
`
`’622 IPR”). In its Motion, Patent Owner has elected to reinsert the subject matter
`
`of non-instituted claim 4 (a height limitation) back into the proceeding as a “new”
`
`limitation in its new claim (claim 9) (see claim chart below). Patent Owner’s
`
`action presents a unique factor for the Board’s consideration in deciding whether to
`
`exercise its discretion under 35 U.S.C. § 325(d). In so doing, Patent Owner has
`
`instigated a situation in which declining to review the proposed rejections of claim
`
`4 on the merits may result in an inconsistent application of the patent law. This
`
`2
`
`
`
`Case IPR2017-00974
`Attorney Docket No: 37307-0007IP2
`factor was not considered by the Board in its Institution Decision and was not
`
`raised by Petitioner because the Motion to Amend had not yet been filed prior to
`
`the filing of the present Petition.
`
`Claim 4 of the ’414 Patent
`
`Patent Owner’s Proposed Claim 9
`
`The printed circuit board according to
`
`The printed circuit board according to
`
`claim 1, wherein:
`
`claim 1, wherein:
`
`said printed circuit board has a
`
`said printed circuit board has a width
`
`height of 1 to 1.2 inches
`
`of 5.25 inches and has a height of 1 to
`
`perpendicular to said contact strip.
`
`1.2 inches perpendicular to said
`
`contact strip.
`
`Furthermore, the Board did not and could not have considered this issue
`
`raised by Patent Owner prior to the Board issuing its Decision because Petitioner
`
`had not yet filed its Opposition to the Motion to Amend. Yet, when the Board
`
`reviews the Motion to Amend and Opposition it must substantively consider the
`
`same references and arguments presented in this Petition, as well as additional
`
`arguments and references that directly address chip sizes and the combination of a
`
`5.25 inch board width with a 1-1.2 inch board height. The present Petition can no
`
`longer be considered merely an attempt by Petitioner to benefit from the Institution
`
`Decision in the ’622 IPR because the Patent Owner willingly chose to reinsert the
`
`subject matter of claim 4 into the ’622 IPR.
`
`3
`
`
`
`Case IPR2017-00974
`Attorney Docket No: 37307-0007IP2
`Declining to review the present Petition on the merits will potentially result
`
`in inconsistent application of the law to identical claim limitations of the same
`
`patent. Should the Board determine that Patent Owner’s new claim 9 is
`
`unpatentable under 35 U.S.C. § 103 (which it is), the Board’s decision would
`
`create an inconsistency by leaving claim 4 (a broader claim than claim 9) valid,
`
`while having determined that the subject matter of claim 4 is, in fact, unpatentable.
`
`Such a result is inherently unjust and defies the primary purpose of the U.S. Patent
`
`and Trademark Office. See 157 Cong. Rec. S5428-9 (daily ed. Sept. 8, 2011)
`
`(statement of Sen. Coburn) (“the issuance of quality patents are critical
`
`components and should remain the primary goal of the U.S. Patent and Trademark
`
`Office”).
`
`Further, declining to review the merits of the present petition in view of the
`
`Patent Owner’s proposed claim amendments would undermine the goals of the
`
`America Invents Act. A specifically stated objective of the America Invents Act
`
`was to “increase the quality and certainty of patent rights” by providing a “timely
`
`alternative to district court litigation.” Cong. Rec. S5354. (daily ed. Sept. 7, 2011)
`
`(quoting STATEMENT OF ADMINISTRATION POLICY H.R. 1249—
`
`AMERICA INVENTS ACT (Rep. Smith, R–Texas, and 5 cosponsors, June 21,
`
`2011)) (emphasis added); see also Cong. Rec. S5435 9 (daily ed. Sept. 8, 2011)
`
`(statement of Sen. Grassley) (“[The America Invents Act] will strengthen patent
`
`4
`
`
`
`Case IPR2017-00974
`Attorney Docket No: 37307-0007IP2
`quality and reduce costs and will curb litigation abuses and improve certainty for
`
`investors and innovators.”) (emphasis added). Yet, permitting inconsistent
`
`application of the patent law to identical claim features of the same patent would
`
`serve only to decrease the quality and certainty of patent rights.
`
`Whether the Board decides to allow Patent Owner’s amendment or deny the
`
`amendment as unpatentable, the subject matter of claim 4 would, in either case, be
`
`reviewed on the merits. In fact, in evaluating the merit of Patent Owner’s Motion
`
`to Amend in the ’622 IPR, the Board will be required to consider the same
`
`substantive subject matter it would in the present petition. As such, Petitioner
`
`asserts that it would be most efficient for both the Board and the parties for the
`
`present IPR to be instituted and aligned in schedule with the ’622 IPR.1 It would
`
`be against the interest of justice to allow subject matter that has been found
`
`unpatentable to remain within the patent monopoly. Moreover, Patent Owner’s
`
`
`1 By itself requesting consideration of the patentability of the height limitation,
`
`Patent Owner has waived any argument that proceeding with IPR 2017-000974
`
`would be inefficient. Moreover, as proposed claim 9 in IPR2016-01622
`
`includes every limitation of claim 4, a finding that proposed claim 9 is not
`
`patentable would mean that claim 4 is by definition also not patentable.
`
`5
`
`
`
`Case IPR2017-00974
`Attorney Docket No: 37307-0007IP2
`actions of inserting identical claim language into its claim amendment nullifies its
`
`own arguments to the contrary. See e.g., Prelim. Resp., 20-22.
`
`Additionally, the consideration of whether an exercise of discretion under
`
`§§ 314(a), 325(d) would result in inconsistent application of law to a patent should
`
`outweigh other factors. This is particularly true when, as is the case here, such a
`
`situation is instigated by the Patent Owner’s own actions. The eight factors used
`
`by the Board for deciding whether to exercise its discretion pertain primarily to
`
`efficient conduct of the post grant proceedings and fairness towards the Patent
`
`Owner. See Decision, 7-8 (quoting Alarm.com v. Vivint, Inc., IPR2016-01110,
`
`Paper 11 at 4–5 (PTAB Nov. 28, 2016). However, such considerations are
`
`overridden by the interests of justice when, as here, Patent Owner itself instigates
`
`issues that give rise to inconsistent applications of the law to a single patent.
`
`III. CONCLUSION
`For each of the reasons set forth above, Petitioner respectfully requests
`
`reconsideration of the institution decision for claim 4 of the ’414 Patent in view of
`
`the arguments set forth above. Petitioner believes that the Petition establishes that
`
`there is a reasonable likelihood that it will prevail on claim 4 and requests that the
`
`Board institute a trial on claim 4 in addition to the already instituted trial on claims
`
`1 and 5-8. In fact, in evaluating the merit of Patent Owner’s Motion to Amend in
`
`the ’622 IPR, the Board will be required to substantively consider the same subject
`
`6
`
`
`
`Case IPR2017-00974
`Attorney Docket No: 37307-0007IP2
`matter as in the present Petition. As such, it would be most efficient for both the
`
`Board and the parties for the present IPR to be instituted and aligned in schedule
`
`with the ’622 IPR.
`
`
`
`
`
`Date: August 30, 2017
`
`
`
`
`
`
`
`
`
`
`
`(Trial No. IPR2017-00974)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
` /David Hoffman/
`By:
`David Hoffman (Reg. No. 54,174)
`FISH & RICHARDSON P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: (512) 226-8154
`Fax: (202) 783-2331
`hoffman@fr.com
`Attorney for Petitioner
`
`
`
`7
`
`
`
`Case IPR2017-00974
`Attorney Docket No: 37307-0007IP2
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR §§ 42.6(e)(4) et seq., the undersigned certifies that on
`
`August 30, 2017, a complete and entire copy of this Petitioner’s Request for
`
`Rehearing was provided via email to the Patent Owner by serving the
`
`correspondence email address of record as follows:
`
`Kenneth J. Weatherwax
`Nathan Lowenstein
`Parham Hendifar
`Loweinsteikn & Weatherwax LLP
`1880 Century Park East, Suite 815
`Los Angeles, CA 90067
`
`Email: PolarInnovs_IPRs@lowensteinweatherwax.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` /Edward G. Faeth/
`Edward G. Faeth
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(202) 626-6420
`
`
`
`
`8
`
`
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
