`571-272-7822
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` Paper 28
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` Entered: January 10, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`v.
`PAPST LICENSING GMBH & CO., KG,
`Patent Owner.
`____________
`
`Case IPR2016-01860
`Patent 8,966,144 B2
`____________
`
`
`
`Before JONI Y. CHANG, JAMES B. ARPIN, and
`MIRIAM L. QUINN, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Termination of Inter Partes Review
`35 U.S.C. §§ 315(e)(1), 316(a)(4); 37 C.F.R. § 42.72
`
`
`
`
`
`
`IPR2016-01860
`Patent 8,966,144 B2
`
`
`I.
`INTRODUCTION
`On October, 11, 2016, Apple Inc. (“Petitioner” or “Apple”) filed a
`Petition, which we granted, requesting inter partes review of certain claims1
`of U.S. Patent No. 8,966,144 B2 (Ex. 1001, “the ’144 patent”). Paper 2
`(“Apple Petition”); Paper 10 (“Decision on Institution” or “Dec.”). Three
`months later, on January 15, 2017, Apple filed two other Petitions for inter
`partes review of the challenged claims and corresponding Motions for
`Joinder. See IPR2017-00679, Papers 12, and IPR2017-00670, Papers 12.
`We granted those Petitions and Motions for Joinder, and, consequently,
`Apple was joined as a petitioner to the following proceedings: IPR2016-
`01212 and IPR2016-01216, in which review of the challenged claims had
`been granted. See IPR2016-01212 (Paper 21), IPR2016-01216 (Paper 22)
`(collectively “Joinder IPRs”).
`On December 11, 2017, the Board issued Final Written Decisions in the
`Joinder IPRs, concluding that the challenged claims of the ’144 patent are
`unpatentable. See IPR2016-01212 (Paper 32), IPR2016-1216 (Paper 33).
`Accordingly, all of the claims challenged in the instant proceeding have
`been subject to review and addressed in a Final Written Decision under
`35 U.S.C. § 318(a). Oral argument in the instant proceeding has been
`requested by the parties. We held in abeyance all remaining deadlines,
`including the requested oral argument, pending the determination of whether
`this proceeding should be terminated in consideration of estoppel under
`
`
`1 Claims 13, 57, 9, 1517, 19, 21, 26, 27, 29, 34, 3739, 41, 49, 52, 54,
`56, 57, 5964, 66, 67, 7883, and 86 (“the challenged claims”).
`2
`
`
`
`IPR2016-01860
`Patent 8,966,144 B2
`
`35 U.S.C. § 315(e)(1) and our authority under 35 U.S.C. §§ 316(a)(4) and
`37 C.F.R. § 42.72.2 Paper 23 (“Order to Show Cause”).
`
`II. BACKGROUND
`The parties do not dispute that the instant proceeding asserts
`unpatentability of the same set of claims of the ’144 patent, for which the
`Board rendered a Final Written Decision in the Joinder IPRs. The instant
`proceeding involves grounds based primarily on Pucci as follows (Dec. 20):
`
`Challenged Claims
`13, 57, 9, 1517, 19, 21,
`26, 27, 29, 34, 3739, 41,
`49, 52, 56, 57, 5964, 67,
`7883, and 86
`
`Basis
`
`References
`
`§ 103(a) Pucci,3 Shinosky,4 Kepley,5 and
`Schmidt6
`
`
`2 See also 35 U.S.C. § 316(b) (“In prescribing regulations under this section,
`the Director shall consider the effect of any such regulation on the economy,
`the integrity of the patent system, the efficient administration of the Office,
`and the ability of the Office to timely complete proceedings instituted under
`this chapter.”; emphasis added); 37 C.F.R. § 42.5(a) (“The Board may
`determine a proper course of conduct in a proceeding for any situation not
`specifically covered by this part and may enter non-final orders to administer
`the proceeding.”).
`3 Marc F. Pucci, Configurable Data Manipulation in an Attached
`Microprocessor, 4 COMPUTING SYSTEMS 217 (1991) (“Pucci”) (Ex. 1041).
`
` 4
`
` US Patent No. 4,065,644 (“Shinosky”) (Ex. 1045).
`5 US Patent No. 4,790,003 (“Kepley”) (Ex. 1042).
`6 Friedhelm Schmidt, THE SCSI BUS AND IDE INTERFACE (Addison-Wesley
`1995) (“Schmidt”) (Ex. 1007).
`
`
`3
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`IPR2016-01860
`Patent 8,966,144 B2
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`
`Challenged Claims
`
`54
`
`66
`
`References
`Basis
`§ 103(a) Pucci, Shinosky, Kepley,
`Schmidt, and Li7
`§ 103(a) Pucci, Shinosky, Kepley,
`Schmidt, and Wilson8
`
`In addition to the instant proceeding, Apple currently is maintaining
`four inter partes reviews addressing patents related to the ’144 patent:
`IPR2016-01842 (Patent 9,189,437 B2); IPR2016-01863 (Patent 8,504,746
`B2); and IPR2016-01839 and IPR2016-01864 (Patent 6,470,399 B1).
`
`III. ANALYSIS
`According to 35 U.S.C. § 315(e)(1),
`[t]he petitioner in an inter partes review of a claim in a
`patent under this chapter that results in a final written
`decision under section 318(a), or the real party in interest
`or privy of the petitioner, may not request or maintain a
`proceeding before the Office with respect to that claim
`on any ground that the petitioner raised or reasonably
`could have raised during that inter partes review.
`By virtue of it being joined to the Joinder IPRs, Apple is a petitioner
`who has obtained a final written decision on all of the challenged claims of
`the ’144 patent. If estoppel under § 315(e)(1) applies in these
`circumstances, Apple may not maintain the instant proceeding. Therefore,
`we first determine if Apple seeks to maintain this proceeding on “any
`
`
`7 US Patent No. 5,617,423 (“Li”) (Ex. 1053).
`8 US Patent No. 5,353,374 (“Wilson”) (Ex. 1044).
`4
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`IPR2016-01860
`Patent 8,966,144 B2
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`ground that the petitioner raised or reasonably could have raised during” the
`Joinder IPRs, according to § 315(e)(1). If the answer is yes, and Apple is
`estopped, we then determine whether termination is appropriate.
`
`A. Estoppel
`
`We have stated that a ground “reasonably could have been raised” if it
`encompasses prior art that a “skilled searcher conducting a diligent search
`reasonably could have been expected to discover.” See Praxair Dist. Inc., v.
`INO Therapeutics, 2016 WL 5105519 (PTAB Aug. 25, 2016) (IPR2016-
`00781) (citing 157 Cong. Rec. S1375 (daily ed. Mar. 8, 2011) (statement of
`Sen. Kyl); see id. at S1376 (statement of Sen. Kyl) (“This [estoppel]
`effectively bars such a party or his real parties in interest or privies from
`later using inter partes review . . . against the same patent, since the only
`issues that can be raised in an inter partes review . . . are those that could
`have been raised in [an] earlier post-grant or inter partes review.”); 157
`Cong. Rec. S952 (daily ed. Feb. 28, 2011) (statement of Sen. Grassley) (“It
`also would include a strengthened estoppel standard to prevent petitioners
`from raising in a subsequent challenge the same patent issues that were
`raised or reasonably could have been raised in a prior challenge.”).
`Here, there is no question that Apple filed the Apple Petition before
`the petitions in the Joinder IPRs. Therefore, Apple asserted the grounds
`based on Pucci at least three months before it filed the Joinder IPRs. As
`such, there is no evidence or argument in the record that the Pucci grounds
`were unavailable to Apple before it filed its petitions in the Joinder IPRs.
`
`5
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`IPR2016-01860
`Patent 8,966,144 B2
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`
`Apple argues that it could not have raised the Pucci grounds in the
`Joinder IPRs because trial had been instituted already in those proceedings.
`Paper 27, 12. This is not a fact relevant to our inquiry. We focus on
`whether Apple did raise or reasonably could have raised the Pucci grounds
`when it filed the ’670 and ’679 petitions and requested joinder. Apple chose
`not to include any ground based on Pucci in these petitions, but rather to file
`petitions identical to those for which trial was instituted in the Joinder IPRs.
`We recognize that what Apple chose to do served to increase the likelihood
`that the Board would grant the joinder request. A petitioner, however, is not
`required to join another petitioner’s case. Nor is a petitioner required to
`request joinder only as to those grounds previously instituted. See 157
`Cong. Rec. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (stating
`that the USPTO would allow joinder as of right if a party files a petition
`identical to that of an instituted inter partes review, but clarifying that if a
`party seeking joinder also presents “additional challenges to validity that
`satisfy the threshold for instituting a proceeding, the Office will either join
`that party and its new arguments to the existing proceeding, or institute a
`second proceeding for the patent.”). Thus, the choice of what ground to
`raise or not to raise is that of the petitioner. And for purposes of our inquiry
`regarding what constitutes grounds that could have been raised, it does not
`matter whether the Board would have instituted on those grounds had they
`been presented in connection with a joinder request.9
`
`
`9 See Sony Corp. v. Yissum Research Devel. Co., Case IPR2013-00327, slip
`op. at 12–13 (PTAB Sep. 24, 2013) (Paper 14) (Joinder motion granted
`6
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`IPR2016-01860
`Patent 8,966,144 B2
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`Accordingly, we do not find persuasive Apple’s argument that it is not
`estopped merely because the trials it sought to join already were instituted.
`On the record before us, we determine that the Pucci grounds asserted in the
`instant proceeding were grounds Apple could have raised when it filed
`papers to join the instituted Joinder IPRs. Further, because the Board has
`issued a Final Written Decision in the Joinder IPRs concerning all of the
`challenged claims, we determine that Apple is estopped from maintaining
`the instant proceeding under § 315(e)(1).
`
`B. Termination
`
`We now turn to the question of whether to terminate the instant
`proceeding. Patent Owner argues that the instant proceeding is the third
`challenge to the ’144 patent maintained by Apple, and that termination
`would save resources by Patent Owner and the Board in preparing for oral
`argument and in rendering a Final Written Decision. Paper 26, 5. Apple
`contends that the Board neither will conserve any resources by terminating
`
`
`adding challenged claims to an existing inter partes review. The Board’s
`determination that the additional challenged claims are unpatentable was
`affirmed by our reviewing court.); see Yissum Research Devel. Co. v. Sony
`Corp., 626 Fed. Appx. 1006 (Mem.) (Fed. Cir. 2015) (Judgment pursuant to
`Fed. Cir. R. 36); but see Nidec Motor Corporation v. Zhongshan Broad
`Ocean Motor Co. Ltd. and Matal, 868 F.3d 1013, 1020 (Fed. Cir. 2017),
`cert. petition filed U.S. Supreme Ct Dkt No. 17-751 (Nov. 20, 2017) (Dyk,
`J., concurring; “We think it unlikely that Congress intended that petitioners
`could employ the joinder provision to circumvent the time bar by adding
`time-barred issues to an otherwise timely proceeding, whether the petitioner
`seeking to add new issues is the same party that brought the timely
`proceeding, as in this case, or the petitioner is a new party.”).
`7
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`IPR2016-01860
`Patent 8,966,144 B2
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`the proceeding nor is authorized to do so. Paper 27, 25. We disagree with
`Apple’s contentions.
`First, we have determined that Apple is estopped from maintaining the
`instant proceeding, and there is no need to duplicate the Board’s expenditure
`of resources by determining patentability of claims that already have been
`found unpatentable.10 Contrary to Apple’s assertions, the record is not
`complete, and rendering a Final Written Decision here involves more than a
`mere “copy and paste” job by the Board. Paper 27, 2–3. The ’144 patent
`includes 87 claims, of which about half are challenged. The careful review
`of the record we undertake in developing final written decisions, however
`imperceptible it may seem to Petitioner, is performed in light of the papers
`and evidence submitted in this proceeding—not on whether a similar claim
`or similar disputes have been addressed in a related proceeding.
`Consequently, we do not agree with Apple’s contentions, and instead find
`that expending the Board’s resources in determining patentability of claims
`already determined to be unpatentable is an important consideration in our
`decision whether or not to terminate this proceeding.
`Second, as to Apple’s contention that the Board lacks authority to
`terminate this proceeding, we rely on our rulemaking authority to prescribe
`
`
`10 Pursuant to 35 U.S.C. § 318(a), the Board shall issue a final written
`decision “with respect to the patentability of any patent claim challenged by
`the petitioner.” Nevertheless, a subsequent final written decision in a later-
`initiated review involving the same petitioner might be viewed as merely a
`conditional or an advisory decision with respect to the “patentability” of a
`claim that we previously determined to be unpatentable, unless that previous
`determination had been vacated or reversed by our reviewing court.
`8
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`IPR2016-01860
`Patent 8,966,144 B2
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`regulations for establishing and governing inter partes review and the
`relationship of such review to other proceedings under this title, as stated in
`§ 316(a). See supra pg. 3 n.2. And, under this authority, we have
`established that the Board may “terminate a trial without rendering a final
`written decision, where appropriate, including where the trial is consolidated
`with another proceeding or pursuant to a joint request under 35 U.S.C.
`317(a) or 327(a).” 37 C.F.R. § 42.72. It is appropriate here for us to
`exercise our discretion in light of Petitioner’s estoppel before the Office
`under § 315(e)(1) to terminate the instant proceeding without issuing a final
`written decision. Petitioner has no right to maintain this proceeding under
`that estoppel provision, and we determine that the Board will administer its
`resources most efficiently by focusing on determining patentability of claims
`for which Petitioner is not estopped.
`Finally, we are not persuaded by Apple’s allegation of unfairness
`because of hypothetical results of potential appeals of the Final Written
`Decisions in the Joined IPRs. Paper 27, 34. That allegation is purely
`speculative and presumes that (1) Apple ultimately will prevail in this
`proceeding and (2) any final written decision in this proceeding would not
`be appealed. The fact remains that the Board already has expended
`considerable resources in rendering two Final Written Decisions concerning
`the ’144 patent claims in the Joinder IPRs. Providing Apple with a third
`opportunity is not an effective and efficient use of the Board’s resources and
`would undermine the statutory estoppel provisions meant to protect Patent
`Owner from repeated challenges to the same claims of the ’144 patent.
`
`9
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`IPR2016-01860
`Patent 8,966,144 B2
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`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that, pursuant to 37 C.F.R. § 42.72, this proceeding is
`hereby terminated; and
`FURTHER ORDERED that, in light of termination of this
`proceeding, the parties’ requests for oral argument (Papers 20, 22) are
`denied as moot.
`
`
`10
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`
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`IPR2016-01860
`Patent 8,966,144 B2
`
`For PETITIONER:
`
`Lori A. Gordon
`Steven W. Peters
`Yasser Mourtada
`lgordon-ptab@skgf.com
`speters-ptab@skgf.com
`ymourtad-ptab@skgf.com
`STERNE, KESSLER, GOLDSTEIN & FOX
`
`
`For PATENT OWNER:
`
`Gregory s. Donahue
`Minghui Yang
`gdonahue@dpelaw.com
`myang@dpelaw.com
`docketing@dpelaw.com
`DiNOVO PRICE ELLWANGER & HARDY LLP
`
`Michael R. Fleming
`mfleming@irell.com
`IRELL & MANELLA LLP
`
`Anthony Meola
`Jason. A. Murphy
`Victor J. Baranowshi
`Arlen L. Olsen
`ameola@iplawusa.com
`jmurphy@iplawsa.com
`vbaranowski@iplawusa.com
`aolsen@iplawusa.com
`SCHMEISER, OLSEN & WATTS, LLP
`
`
`11
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