`Tel: 571-272-7822
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`Paper 11
` Entered: May 22, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________
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`APPLE INC.,
`Petitioner,
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`v.
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`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`_______________
`
`Case IPR2017-00670
`Patent 8,966,144 B2
`_______________
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`Before JONI Y. CHANG, JENNIFER S. BISK, and MIRIAM L. QUINN,
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`Administrative Patent Judges.
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`
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`CHANG, Administrative Patent Judge.
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`DECISION
`Denying Petitioner’s Motion to Withdraw Petition and Motion for Joinder
`37 C.F.R. § 42.20(b)
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`IPR2017-00670
`Patent 8,966,144 B2
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`INTRODUCTION
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`Apple Inc. (“Apple”) filed a Petition requesting an inter partes review
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`of claims 7, 9, 11, 12, 17–21, 23–26, 41, 50, 51, 56–58, 66–76, 78, and 79 of
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`U.S. Patent No. 8,966,144 B2 (“the ’144 patent”). Paper 1 (“Pet.”). Apple
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`also concurrently filed a Motion for Joinder, seeking to join this proceeding
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`with Canon Inc. et al., v. Papst Licensing GmbH & Co., KG, Case
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`IPR2016-01216 (“the Canon IPR”), which we instituted on
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`December 15, 2016. Paper 2. Patent Owner, Papst Licensing GmbH & Co.,
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`KG (“Papst”), did not file a Preliminary Response; nor does it oppose
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`Apple’s Motion for Joinder. Paper 8.
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`Subsequently, Apple filed a Motion to Withdraw Petition and Motion
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`for Joinder, seeking a “dismissal of the current proceeding without rendering
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`a final written decision.” Paper 9 (“Mot.”). Papst filed an Opposition to
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`Apple’s Motion to Withdraw. Paper 10 (“Opp.”). For the reasons discussed
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`below, Apple’s Motion to Withdraw is denied.
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`ANALYSIS
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`In its Motion to Withdraw, Apple argues that dismissal of the Petition
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`and Motion for Joinder, at this preliminary stage, would promote efficiency
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`and minimize the burdens of both parties and the Board. Mot. 1, 3–4. Apple
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`also contends that “Patent Owner will not suffer prejudice from the
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`withdrawal and resulting dismissal because it would be in the same position
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`as if the Petition had never been filed.” Id. at 1, 5. In Apple’s view,
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`withdrawal of the Petition and Motion for Joinder would further “the goals
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`of ‘secur[ing] the just, speedy, and inexpensive resolution of every
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`proceeding.’” Id. at 5.
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`2
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`IPR2017-00670
`Patent 8,966,144 B2
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`Papst counters that allowing Apple “to withdraw its Petition conserves
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`no appreciable resources” in that, since the Canon IPR has been instituted,
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`the parties have already incurred all of the expenses associated with this
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`proceeding, and there is nothing left for the Board to do but join this
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`proceeding with the Canon IPR. Opp. 6. Papst also argues that Apple
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`should not be permitted to avoid the possible estoppel consequences under
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`35 U.S.C. § 315(e)(2) and 37 C.F.R. § 42.73(d), as it would be prejudicial to
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`Papst, and would encourage further serial filings of petitions and discourage
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`settlement. Id. at 7–8. We agree with Papst.
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`Granting Apple’s requested relief—“dismissal of the current
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`proceeding without rendering a final written decision”—essentially would
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`allow Apple to avoid possible estoppel effects. Notably, 35 U.S.C. § 315(e)
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`provides the following (emphases added):
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`(e) ESTOPPEL.—
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`(1) PROCEEDINGS BEFORE THE OFFICE.—The 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.
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`(2) CIVIL ACTIONS AND OTHER PROCEEDINGS.—The
`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 assert either in a civil action arising in whole or in part under
`section 1338 of title 28 or in a proceeding before the
`International Trade Commission under section 337 of the Tariff
`Act of 1930 that the claim is invalid on any ground that the
`petitioner raised or reasonably could have raised during that
`inter partes review.
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`3
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`IPR2017-00670
`Patent 8,966,144 B2
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`As the legislative history shows, the estoppel provisions set forth in
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`35 U.S.C. § 315(e) provide “protections that were long sought by inventors
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`and patent owners.” See 157 Cong. Rec. S1326 (daily ed. Mar. 7, 2011)
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`(statement of Sen. Sessions) (“The bill also includes many protections that
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`were long sought by inventors and patent owners. It preserves estoppel
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`against relitigating in court those issues that an inter partes challenger
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`reasonably could have raised in his administrative challenge.”); see also
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`Patent Quality Improvement: Post-Grant Opposition: Hearing before the
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`Subcomm. on Courts, the Internet, and Intellectual Prop. of the H. Comm.
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`on the Judiciary, 108th Cong., note 383382 at 32 (2004) (statement of
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`Michael Kirk, Executive Director, AIPLA) (“A very important aspect of any
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`post-grant-opposition proceeding is the effect the decision will have on the
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`parties. If the estoppel provision is too harsh, no one will use the procedure
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`. . . . If it is too lenient, patentees may be subject to needless repetitive
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`challenges by the same party. Therefore, we believe that a determination
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`with respect to any issue of validity actually raised by an opposer should be
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`preclusive against that opposer in any subsequent proceeding.”).
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`Here, we are not persuaded that Apple, as the moving party, has met
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`its burden to establish that it is entitled to the requested relief (37 C.F.R.
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`§ 42.20(c)), in that Apple has not shown sufficiently that the burden on both
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`parties and the Board of joining the instant proceeding with the Canon IPR
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`outweighs Papst’s interest. As Apple itself argues in its Motion for Joinder,
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`“[j]oinder will have minimal—indeed, likely no—impact on the trial
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`schedule and costs for the existing Canon IPR because of the complete
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`overlap between the two petitions for the instituted grounds.” Paper 2, 6.
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`4
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`IPR2017-00670
`Patent 8,966,144 B2
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`Although the instant proceeding is at the preliminary stage, the parties
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`have completed their briefings in connection with the issues of joinder and
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`institution. As Apple confirms, the “Petition does not present new art or
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`arguments beyond those in IPR2016-01216,” replying on the same
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`evidentiary record and asserting no new grounds of unpatentability. Mot. 5;
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`Paper 2, 1, 5–6. Papst did not file a Preliminary Response. Paper 8. Nor
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`does Papst oppose Apple’s Motion for Joinder. Id. Moreover, Apple’s
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`argument that dismissal would minimize unnecessary costs on the parties, in
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`the event that the petitioner in the Canon IPR settles with Papst, is
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`speculative. As Papst notes, there are many entities that are involved in that
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`proceeding, and “the likelihood of each settling and leaving Apple being the
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`sole petitioner is unlikely.” Opp. 7. If that situation arises, Petitioner also
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`may settle with Papst or request adverse judgment. For these reasons,
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`Petitioner has not established that the burden on both parties and the Board
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`of joining this proceeding with the Canon IPR warrants dismissal.
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`After considering the totality of the circumstances, we are not
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`persuaded that Apple has shown sufficiently that it is entitled to the
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`requested relief—namely, “dismissal of the current proceeding without
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`rendering a final written decision.” 37 C.F.R. § 42.20(c). As a result, we
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`decline to dismiss Apple’s Petition and Motion for Joinder. They will be
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`decided in due course.
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`ORDER
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`In view of the foregoing, it is:
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`ORDERED that Apple’s Motion to Withdrew Petition and Motion for
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`Joinder is denied.
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`5
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`IPR2017-00670
`Patent 8,966,144 B2
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`For PETITIONER:
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`Lori A. Gordon
`Steven W. Peters
`lgordon-ptab@skgf.com
`speters-ptab@skgf.com
`STERNE, KESSLER, GOLDSTEIN & FOX
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`PATENT OWNER:
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`Nicholas T. Peters
`Paul Henkelmann
`FITCH, EVEN, TABIN & FLANNERY LLP
`ntpete@fitheven.com
`phenkelmann@fitcheven.com
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`6
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