Trials@uspto.gov
`571.272.7822
`
` Paper No. 27
`Filed: June 1, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HTC CORPORATION and HTC AMERICA, INC.,
`Petitioner,
`
`v.
`
`PARTHENON UNIFIED MEMORY ARCHITECTURE LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00512
`Patent 5,812,789
`____________
`
`Before MICHAEL R. ZECHER, JAMES B. ARPIN, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review and
`Granting Petitioner’s Unopposed Motion for Joinder
`35 U.S.C. § 314(a), 37 C.F.R. §§ 42.108 and 42.122
`
`
`571.272.7822
`
` Paper No. 27
`Filed: June 1, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HTC CORPORATION and HTC AMERICA, INC.,
`Petitioner,
`
`v.
`
`PARTHENON UNIFIED MEMORY ARCHITECTURE LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00512
`Patent 5,812,789
`____________
`
`Before MICHAEL R. ZECHER, JAMES B. ARPIN, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review and
`Granting Petitioner’s Unopposed Motion for Joinder
`35 U.S.C. § 314(a), 37 C.F.R. §§ 42.108 and 42.122
`
`
`
`IPR2017-00512
`Patent 5,812,789
`
`
`I. INTRODUCTION
`
`On January 5, 2017, Petitioner, HTC Corporation and HTC America,
`
`Inc. (collectively, “HTC”), filed a Petition requesting an inter partes review
`
`of claims 1–8 and 11–14 of U.S. Patent No. 5,812,789 (Ex. 1001, “the ’789
`
`patent”). Paper 1 (“Pet.”). HTC filed its Petition along with a Motion for
`
`Joinder requesting that we join HTC as a party with Apple Inc. v. Parthenon
`
`Unified Memory Architecture LLC, Case IPR2016-01135 (“Apple IPR”).
`
`Paper 2 (“HTC Mot. for Joinder”).
`
`On December 6, 2016, we entered a Decision on Institution in the
`
`Apple IPR, in which we instituted an inter partes review as to claims 1–8
`
`and 11–14 of the ’789 patent. See Apple IPR, Paper 7 (“Apple IPR Dec. on
`
`Inst.”). The Petition and supporting evidence filed in this proceeding are
`
`essentially the same as the petition and supporting evidence filed in the
`
`Apple IPR. Compare Apple IPR, Paper 2, 1–69, and Apple IPR, Exs. 1003,
`
`1005–1010, with Pet. 1–66, and Exs. 1003, 1005–1010. Moreover, HTC
`
`represents that it is willing to limit the asserted grounds of unpatentability
`
`(“grounds”) in this proceeding to the same grounds on which we instituted
`
`trial in the Apple IPR. HTC Mot. for Joinder 2–3; Apple IPR Dec. on Inst.
`
`28–29. HTC also represents that, if it is allowed to join the Apple IPR, it
`
`will assume an “understudy” role (i.e., a passive role) and will assume an
`
`active role only in the event that Apple reaches a settlement agreement with
`
`Patent Owner, Parthenon Unified Memory Architecture Limited Liability
`
`Corporation (“Parthenon”).1 HTC Mot. for Joinder 6.
`
`
`1 For example, in its understudy role, HTC may not file any paper or exhibit
`in the Apple IPR separate and apart from Apple, absent our express
`authorization.
`
`
`
`2
`
`
`
`IPR2017-00512
`Patent 5,812,789
`
`
`In this proceeding, Parthenon did not file an opposition to HTC’s
`
`Motion for Joinder. Parthenon, however, did file a Preliminary Response.
`
`Paper 11 (“Prelim. Resp.”).
`
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`
`unless the information presented in the Petition shows “there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the
`
`claims challenged in the petition.” For the reasons discussed below, we
`
`institute an inter partes review as to claims 1–8 and 11–14 of the ’789
`
`patent, and we grant HTC’s Motion for Joinder.
`
`
`
`II. INSTITUTION OF INTER PARTES REVIEW
`
`In the Apple IPR, we instituted an inter partes review as to 1–8 and
`
`11–14 of the ’789 patent based on the asserted grounds set forth in the table
`
`below. Apple IPR Dec. on Inst. 28–29.
`
`References
`
`Basis
`
`Challenged Claim(s)
`
`Bowes,2 TMS,3 and Thomas4,5
`
`§ 103(a)
`
`1–5 and 12–14
`
`Bowes, TMS, Thomas, and Gove6
`
`§ 103(a)
`
`6 and 8
`
`
`2 U.S. Patent No. 5,546,547 (issued Aug. 13, 1996; filed Jan. 28, 1994)
`(Ex. 1005, “Bowes”).
`3 TMS320C8x System-Level Synopsis, Literature Ref. No. SPRU113B, Texas
`Instruments, Inc. (Sept. 1995) (Ex. 1006, “TMS”).
`4 U.S. Patent No. 5,001,625 (issued Mar. 19, 1991; filed Mar. 24, 1988)
`(Ex. 1007, “Thomas”).
`5 Thomas is not listed as an asserted prior art reference in HTC’s
`“Identification of Challenges” (Pet. 9) (emphasis omitted), but is relied upon
`in its substantive analysis (id. at 15–66).
`6 Robert J. Gove, The MVP: A Highly-Integrated Video Compression Chip,
`IEEE (1994) (Ex. 1008, “Gove”).
`
`
`
`3
`
`
`
`IPR2017-00512
`Patent 5,812,789
`
`
`References
`
`Basis
`
`Challenged Claim(s)
`
`Bowes, TMS, Thomas, and Ran7
`
`§ 103(a)
`
`7
`
`Bowes, TMS, Thomas, and Celi8
`
`§ 103(a)
`
`11
`
`As we indicated previously, the Petition and supporting evidence filed in this
`
`proceeding are essentially the same as the petition and supporting evidence
`
`filed in the Apple IPR, and HTC is willing to limit the asserted grounds in
`
`this proceeding to the same grounds on which we instituted trial in the Apple
`
`IPR. HTC Mot. for Joinder 2–3; Apple IPR Dec. on Inst. 28–29.
`
`
`
`Parthenon filed a Preliminary Response in this proceeding that
`
`includes a single, substantive argument directed to why HTC has not
`
`satisfied the “reasonable likelihood” threshold standard for institution.
`
`Relying upon the testimony of Mitchell A. Thornton, Ph.D., P.E., Parthenon
`
`argues that combining the teachings of Bowes and Thomas would not
`
`support the real-time operations of Bowes’ digital signal processor (“DSP”)
`
`because it would effectively cut the bus bandwidth to the DSP in half.
`
`Prelim. Resp. 8–12 (citing Ex. 2003 (Declaration of Dr. Thornton) ¶¶ 41–
`
`45). This argument also happens to be the only argument presented by
`
`Parthenon in its Patent Owner Response filed in the Apple IPR. Compare
`
`Prelim. Resp. 8–12, and Ex. 2003 ¶¶ 41–45, with Apple IPR Paper 25
`
`(“Patent Owner Response”), 7–11, and Apple IPR Ex. 2011 (Declaration of
`
`Dr. Thornton) ¶¶ 41–45. The supporting testimony of Dr. Thornton in both
`
`this proceeding and in the Apple IPR creates a genuine issue of material fact.
`
`
`7 U.S. Patent No. 5,768,533 (issued June 16, 1998; filed Sept. 1, 1995)
`(Ex. 1009, “Ran”).
`8 U.S. Patent No. 5,742,797 (issued Apr. 21, 1998; filed Aug. 11, 1995)
`(Ex. 1010, “Celi”).
`
`
`
`4
`
`
`
`IPR2017-00512
`Patent 5,812,789
`
`
`
`There are three reasons that warrant not reaching the merits of the
`
`issue of fact identified above until briefing is complete in the Apple IPR,
`
`granting institution of an inter partes review in this proceeding, and simply
`
`joining HTC as a party with the Apple IPR. First, during the preliminary
`
`stage of this proceeding, we are required to view the issue of fact identified
`
`above “in the light most favorable to [HTC] solely for purposes of deciding
`
`whether to institute an inter partes review.” 37 C.F.R. § 42.108(c). In
`
`contrast, if we decline to reach the merits of this issue until briefing is
`
`complete in the Apple IPR, the same issue would be treated in a more
`
`balanced light. That is, 37 C.F.R. § 42.108(c) would no longer apply in the
`
`Apple IPR because we already instituted an inter partes review in that
`
`proceeding.
`
`Second, declining to reach the merits of the issue of fact identified
`
`above until briefing is complete in the Apple IPR is a more balanced result
`
`because, after institution of an inter partes review in the Apple IPR, the
`
`“reasonable likelihood” threshold standard no longer applies. Instead, Apple
`
`and any party that might be joined to the Apple IPR (e.g., HTC) bears the
`
`burden of demonstrating that claims 1–8 and 11–14 of the ’789 patent are
`
`unpatentable by a preponderance of evidence. 35 U.S.C. § 316(e) (“In an
`
`inter partes review instituted under this chapter, the petitioner shall have the
`
`burden of proving a proposition of unpatentability by a preponderance of the
`
`evidence.”).
`
`Third, declining to reach the merits of the issue of fact identified
`
`above until briefing is complete in the Apple IPR would allow us to address
`
`this issue in a single proceeding (i.e., the Apple IPR), rather than in two
`
`proceedings (i.e., this preliminary proceeding and the Apple IPR). This type
`
`
`
`5
`
`
`
`IPR2017-00512
`Patent 5,812,789
`
`of judicial economy comports with our mandate “to secure the just, speedy,
`
`and inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b)
`
`(emphases added).
`
`As we explain below, we grant HTC’s Motion for Joinder. Given that
`
`we are granting HTC’s Motion for Joinder, and for the reasons identified
`
`above that warrant not reaching the merits of the argument presented in
`
`Parthenon’s Preliminary Response until briefing is complete in the Apple
`
`IPR, we conclude that the information presented in the Petition establishes
`
`that there is a reasonable likelihood that HTC would prevail in challenging
`
`claims 1–8 and 11–14 of the ’789 patent as unpatentable under § 103(a).
`
`Pursuant to § 314, we institute an inter partes review as to these claims of
`
`the ’789 patent.
`
`
`
`III. GRANTING HTC’S MOTION FOR JOINDER
`
`Based on authority delegated to us by the Director, we have discretion
`
`to join a petitioner for inter partes review as a party to another inter partes
`
`review, subject to certain exceptions not present here. 35 U.S.C. § 315(c).
`
`The regulatory provisions governing an inter partes review proceeding
`
`address the appropriate timeframe for filing a motion for joinder. Section
`
`42.122(b) of Title 37 of the Code of Federal Regulations provides, in
`
`relevant part, “[a]ny request for joinder must be filed, as a motion under
`
`§42.22, no later than one month after the institution date of any inter partes
`
`review for which joinder is requested.”
`
`
`
`The Petition in this proceeding was accorded a filing date of January
`
`5, 2017 (Paper 4, 1), and the Motion for Joinder was filed on the same day.
`
`As such, HTC’s Motion for Joinder was timely because joinder was
`
`
`
`6
`
`
`
`IPR2017-00512
`Patent 5,812,789
`
`requested no later than one month after the December 6, 2016, institution
`
`date of the Apple IPR.
`
`
`
`In its Motion for Joinder, HTC contends that joinder is appropriate
`
`because this proceeding and the Apple IPR are identical (i.e., they involve
`
`the same claims, the same patent, the same prior art references, the same
`
`expert declaration, and the same arguments and rationales). See HTC Mot.
`
`for Joinder 3–5. In other words, HTC asserts that the Petition and
`
`supporting evidence filed in this proceeding do not raise any new substantive
`
`challenges or procedural issues. See id. HTC further argues that, because it
`
`is willing to work with counsel for Apple (i.e., as an understudy) to
`
`consolidate all filings and discovery, joinder will not impact the schedule of
`
`the Apple IPR, thereby allowing us to complete a single consolidated
`
`proceeding in a timely manner. Id. at 4–6. HTC also argues that, if it is
`
`joined as a party with the Apple IPR, Parthenon will not suffer any prejudice
`
`because granting joinder under these circumstances will not add issues for
`
`consideration by or costs to the Board or Parthenon above and beyond those
`
`already presented in the Apple IPR, nor will granting joinder affect the
`
`issues, briefing, or discovery in the Apple IPR, as they will remain the same.
`
`Id. at 6–7.
`
`Given that Parthenon did not oppose HTC’s Motion for Joinder, and
`
`HTC agrees to consolidate all filings and discovery with Apple, we conclude
`
`HTC has demonstrated that joinder will not unduly complicate or delay the
`
`Apple IPR. See 37 C.F.R. § 42.1(b) (providing for “the just, speedy, and
`
`inexpensive resolution of every proceeding” (emphases added)). We,
`
`therefore, grant HTC’s Motion for Joinder and, as a result, join HTC as a
`
`party with the Apple IPR.
`
`
`
`7
`
`
`
`IPR2017-00512
`Patent 5,812,789
`
`
`
`
`In consideration of the foregoing, it is hereby:
`
`IV. ORDER
`
`ORDERED that, pursuant to 35 U.S.C. § 314(a) and 37 C.F.R. § 42.4,
`
`an inter partes review is instituted as to claims 1–8 and 11–14 of the ’789
`
`patent;
`
`FURTHER ORDERED that HTC’s Motion for Joinder is GRANTED,
`
`and HTC is joined as a party with Case IPR2016-01135;
`
`FURTHER ORDERED that the grounds on which an inter partes
`
`review was instituted in Case IPR2016-01135 remain unchanged, and no
`
`other grounds are instituted in the joined proceedings;
`
`FURTHER ORDERED that Case IPR2017-00512 is instituted, joined
`
`with Case IPR2016-01135, and administratively terminated under 37 C.F.R.
`
`§ 42.72, and all further filings in these proceedings shall be made in Case
`
`IPR2016-01135;
`
`FURTHER ORDERED that the Scheduling Order entered in Case
`
`IPR2016-01135 (Paper 9) shall govern the schedule of these proceedings;
`
`FURTHER ORDERED that HTC’s participation in the briefing,
`
`depositions, and oral argument of these proceedings shall be subject to
`
`Apple’s acquiescence to HTC’s participation and, absent our express
`
`authorization, HTC shall not file papers or exhibits separate and apart from
`
`Apple;
`
`FURTHER ORDERED that the roles of Apple and Parthenon in these
`
`proceedings remain unchanged;
`
`
`
`8
`
`
`
`IPR2017-00512
`Patent 5,812,789
`
`
`FURTHER ORDERED that the case caption in Case IPR2016-01135
`
`shall be changed to reflect that HTC has been joined as a party in accordance
`
`with the attached example; and
`
`FURTHER ORDERED that a copy of this Decision be entered into
`
`the file of Case IPR2016-01135.
`
`
`
`9
`
`
`
`IPR2017-00512
`Patent 5,812,789
`
`For PETITIONER:
`
`Joseph A. Micallef
`Stephen M. Everett
`Samuel A. Dillon
`Sidley Austin LLP
`jmicallef@sidley.com
`stephen.everett@sidley.com
`samuel.dillon@sidley.com
`
`
`
`For PATENT OWNER:
`
`Masood Anjom
`Amir Alavi
`Scott Clark
`Justin Chen
`Ahmad, Zavitsanos, Anaipakos, Alavi, & Mensing P.C.
`manjom@azalaw.com
`aalavi@azalaw.com
`sclark@azalaw.com
`jchen@azalaw.com
`
`Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
`
`
`
`
`
`
`
`
`
`
`
`10
`
`
`
`
`
`Trials@uspto.gov
`571.272.7822
`
`
`
`
`Paper No.
`Filed:
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HTC CORPORATION, HTC AMERICA, INC., and APPLE INC.,
`Petitioners,
`
`v.
`
`PARTHENON UNIFIED MEMORY ARCHITECTURE LLC,
`Patent Owner.
`____________
`
`Case IPR2016-0113519
`Patent 5,812,789
`____________
`
`
`
`
`
`
`
`19 Case IPR2017-00512 has been joined with this proceeding.
`
`
`
`
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