throbber
Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper 11
` Entered: May 22, 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 IPR2017-00670
`Patent 8,966,144 B2
`_______________
`
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and MIRIAM L. QUINN,
`
`Administrative Patent Judges.
`
`
`
`CHANG, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Petitioner’s Motion to Withdraw Petition and Motion for Joinder
`37 C.F.R. § 42.20(b)
`
`

`

`IPR2017-00670
`Patent 8,966,144 B2
`
`
`INTRODUCTION
`
`Apple Inc. (“Apple”) filed a Petition requesting an inter partes review
`
`of claims 7, 9, 11, 12, 17–21, 23–26, 41, 50, 51, 56–58, 66–76, 78, and 79 of
`
`U.S. Patent No. 8,966,144 B2 (“the ’144 patent”). Paper 1 (“Pet.”). Apple
`
`also concurrently filed a Motion for Joinder, seeking to join this proceeding
`
`with Canon Inc. et al., v. Papst Licensing GmbH & Co., KG, Case
`
`IPR2016-01216 (“the Canon IPR”), which we instituted on
`
`December 15, 2016. Paper 2. Patent Owner, Papst Licensing GmbH & Co.,
`
`KG (“Papst”), did not file a Preliminary Response; nor does it oppose
`
`Apple’s Motion for Joinder. Paper 8.
`
`Subsequently, Apple filed a Motion to Withdraw Petition and Motion
`
`for Joinder, seeking a “dismissal of the current proceeding without rendering
`
`a final written decision.” Paper 9 (“Mot.”). Papst filed an Opposition to
`
`Apple’s Motion to Withdraw. Paper 10 (“Opp.”). For the reasons discussed
`
`below, Apple’s Motion to Withdraw is denied.
`
`ANALYSIS
`
`In its Motion to Withdraw, Apple argues that dismissal of the Petition
`
`and Motion for Joinder, at this preliminary stage, would promote efficiency
`
`and minimize the burdens of both parties and the Board. Mot. 1, 3–4. Apple
`
`also contends that “Patent Owner will not suffer prejudice from the
`
`withdrawal and resulting dismissal because it would be in the same position
`
`as if the Petition had never been filed.” Id. at 1, 5. In Apple’s view,
`
`withdrawal of the Petition and Motion for Joinder would further “the goals
`
`of ‘secur[ing] the just, speedy, and inexpensive resolution of every
`
`proceeding.’” Id. at 5.
`
`
`
`2
`
`

`

`IPR2017-00670
`Patent 8,966,144 B2
`
`
`Papst counters that allowing Apple “to withdraw its Petition conserves
`
`no appreciable resources” in that, since the Canon IPR has been instituted,
`
`the parties have already incurred all of the expenses associated with this
`
`proceeding, and there is nothing left for the Board to do but join this
`
`proceeding with the Canon IPR. Opp. 6. Papst also argues that Apple
`
`should not be permitted to avoid the possible estoppel consequences under
`
`35 U.S.C. § 315(e)(2) and 37 C.F.R. § 42.73(d), as it would be prejudicial to
`
`Papst, and would encourage further serial filings of petitions and discourage
`
`settlement. Id. at 7–8. We agree with Papst.
`
`Granting Apple’s requested relief—“dismissal of the current
`
`proceeding without rendering a final written decision”—essentially would
`
`allow Apple to avoid possible estoppel effects. Notably, 35 U.S.C. § 315(e)
`
`provides the following (emphases added):
`
`(e) ESTOPPEL.—
`
`(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.
`
`(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.
`
`
`
`3
`
`

`

`IPR2017-00670
`Patent 8,966,144 B2
`
`
`As the legislative history shows, the estoppel provisions set forth in
`
`35 U.S.C. § 315(e) provide “protections that were long sought by inventors
`
`and patent owners.” See 157 Cong. Rec. S1326 (daily ed. Mar. 7, 2011)
`
`(statement of Sen. Sessions) (“The bill also includes many protections that
`
`were long sought by inventors and patent owners. It preserves estoppel
`
`against relitigating in court those issues that an inter partes challenger
`
`reasonably could have raised in his administrative challenge.”); see also
`
`Patent Quality Improvement: Post-Grant Opposition: Hearing before the
`
`Subcomm. on Courts, the Internet, and Intellectual Prop. of the H. Comm.
`
`on the Judiciary, 108th Cong., note 383382 at 32 (2004) (statement of
`
`Michael Kirk, Executive Director, AIPLA) (“A very important aspect of any
`
`post-grant-opposition proceeding is the effect the decision will have on the
`
`parties. If the estoppel provision is too harsh, no one will use the procedure
`
`. . . . If it is too lenient, patentees may be subject to needless repetitive
`
`challenges by the same party. Therefore, we believe that a determination
`
`with respect to any issue of validity actually raised by an opposer should be
`
`preclusive against that opposer in any subsequent proceeding.”).
`
`Here, we are not persuaded that Apple, as the moving party, has met
`
`its burden to establish that it is entitled to the requested relief (37 C.F.R.
`
`§ 42.20(c)), in that Apple has not shown sufficiently that the burden on both
`
`parties and the Board of joining the instant proceeding with the Canon IPR
`
`outweighs Papst’s interest. As Apple itself argues in its Motion for Joinder,
`
`“[j]oinder will have minimal—indeed, likely no—impact on the trial
`
`schedule and costs for the existing Canon IPR because of the complete
`
`overlap between the two petitions for the instituted grounds.” Paper 2, 6.
`
`
`
`4
`
`

`

`IPR2017-00670
`Patent 8,966,144 B2
`
`
`Although the instant proceeding is at the preliminary stage, the parties
`
`have completed their briefings in connection with the issues of joinder and
`
`institution. As Apple confirms, the “Petition does not present new art or
`
`arguments beyond those in IPR2016-01216,” replying on the same
`
`evidentiary record and asserting no new grounds of unpatentability. Mot. 5;
`
`Paper 2, 1, 5–6. Papst did not file a Preliminary Response. Paper 8. Nor
`
`does Papst oppose Apple’s Motion for Joinder. Id. Moreover, Apple’s
`
`argument that dismissal would minimize unnecessary costs on the parties, in
`
`the event that the petitioner in the Canon IPR settles with Papst, is
`
`speculative. As Papst notes, there are many entities that are involved in that
`
`proceeding, and “the likelihood of each settling and leaving Apple being the
`
`sole petitioner is unlikely.” Opp. 7. If that situation arises, Petitioner also
`
`may settle with Papst or request adverse judgment. For these reasons,
`
`Petitioner has not established that the burden on both parties and the Board
`
`of joining this proceeding with the Canon IPR warrants dismissal.
`
`After considering the totality of the circumstances, we are not
`
`persuaded that Apple has shown sufficiently that it is entitled to the
`
`requested relief—namely, “dismissal of the current proceeding without
`
`rendering a final written decision.” 37 C.F.R. § 42.20(c). As a result, we
`
`decline to dismiss Apple’s Petition and Motion for Joinder. They will be
`
`decided in due course.
`
`ORDER
`
`In view of the foregoing, it is:
`
`ORDERED that Apple’s Motion to Withdrew Petition and Motion for
`
`Joinder is denied.
`
`
`
`
`
`5
`
`

`

`IPR2017-00670
`Patent 8,966,144 B2
`
`
`For PETITIONER:
`
`Lori A. Gordon
`Steven W. Peters
`lgordon-ptab@skgf.com
`speters-ptab@skgf.com
`STERNE, KESSLER, GOLDSTEIN & FOX
`
`
`
`PATENT OWNER:
`
`Nicholas T. Peters
`Paul Henkelmann
`FITCH, EVEN, TABIN & FLANNERY LLP
`ntpete@fitheven.com
`phenkelmann@fitcheven.com
`
`
`
`
`
`
`
`
`
`
`6
`
`

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