Trials@uspto.gov
`571-272-7822
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` Paper 23
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` Entered: December 13, 2017
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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.
`
`
`
`
`ORDER TO SHOW CAUSE
`Conduct of the Proceedings
`37 C.F.R. § 42.5(a)
`
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`571-272-7822
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` Paper 23
`
`
`
` Entered: December 13, 2017
`
`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.
`
`
`
`
`ORDER TO SHOW CAUSE
`Conduct of the Proceedings
`37 C.F.R. § 42.5(a)
`
`
`
`
`
`
`
`IPR2016-01860
`Patent 8,966,144 B2
`
`
`
`On October 11, 2016, Apple Inc. (“Petitioner”) filed a Petition
`requesting an inter partes review of 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”) of U.S. Patent No. 8,966,144 B2 (Ex. 1001, “the ’144
`patent”). Paper 2 (“Pet.”). After considering the Preliminary Response filed
`by Papst Licensing GmbH & Co., KG, (“Patent Owner”) (Paper 9), we
`instituted inter partes review on April 17, 2017 (Paper 10).
`On January 15, 2017, Petitioner filed two Petitions for inter partes
`review and corresponding Motions for Joinder concerning the ’144 patent.
`See IPR2017-00679, Paper 1 and IPR2017-00670, Paper 1. Those Petitions
`and Motions for Joinders were granted, and, consequently, Petitioner was
`joined as a party to the following proceedings: IPR2016-01212 and
`IPR2016-01216. See IPR2016-01212 (Paper 21), IPR2016-01216 (Paper
`22). The Board issued Final Written Decisions in those proceedings on
`December 11, 2017, concluding that the challenged claims of the ’144 patent
`are unpatentable. See IPR2016-01212 (Paper 32), IPR2016-1216 (Paper
`33).
`
`As a result, all the challenged claims in the instant proceeding have
`been the subject of a final written decision under 35 U.S.C. § 318.
`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
`
`2
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`IPR2016-01860
`Patent 8,966,144 B2
`
`
`
`on any ground that the petitioner raised or reasonably
`could have raised during that inter partes review.
`
`Further, the Board has discretion to not institute or to terminate a
`review for reasons for administrative expediency. See 35 U.S.C. § 314(a)
`(authorizing institution of an inter partes review under particular
`circumstances, but not requiring institution under any circumstances); see
`also Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc., 839 F.3d 1382,
`1385 (Fed. Cir. 2016) (“But [35 U.S.C.] § 318(a) contemplates that a
`proceeding can be ‘dismissed’ after it is instituted, and, as our prior cases
`have held, ‘administrative agencies possess inherent authority to reconsider
`their decisions, subject to certain limitations, regardless of whether they
`possess explicit statutory authority to do so.’” (citations omitted)). Indeed,
`our rules expressly provide the Board with the authority to terminate a trial
`without rendering a final written decision where appropriate. 37 C.F.R.
`§ 42.72 (“The Board may terminate a trial without rendering a final written
`decision, where appropriate . . . .”).
`Due to the posture of the instant proceeding in light of the already
`issued Final Written Decisions in IPR2016-01212 and IPR2016-01216, in
`which the Board determined the patentability of the challenged claims in the
`instant proceeding and where Petitioner was a party, we issue this Order for
`the parties to show cause why IPR2016-01860 should or should not be
`terminated.1
`
`
`1 Petitioner and Patent Owner have requested oral argument in IPR2016-
`3
`
`
`
`IPR2016-01860
`Patent 8,966,144 B2
`
`
`
`I. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that each party shall file, no later than one week from this
`Order, a paper not to exceed five pages in length showing cause why
`IPR2016-01860 should or should not be terminated; and
`FURTHER ORDERED that all remaining deadlines and the requested
`oral argument for IPR2016-01860 are held in abeyance until the Board
`determines whether and, if so, how to continue this proceeding.
`
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`01860. The hearing and all further deadlines in the case are held in
`abeyance until we determine whether and, if so, how to continue the instant
`proceeding.
`
`4
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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
`Tyler Dutton
`lgordon-ptab@skgf.com
`speters-ptab@skgf.com
`ymourtad-ptab@skgf.com
`tdutton-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
`
`
`5
`
`
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