`Tel: 571-272-7822
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`Paper 58
`Entered: August 14, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DELPHI TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
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`MICROCHIP TECHNOLOGY INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00864
`Patent 7,523,243 B2
`____________
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`
`
`Before BRIAN J. McNAMARA, DANIEL N. FISHMAN, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge
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`
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`
`
`ORDER
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. §§ 42.5, 42.71
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`
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`IPR2017‐00864
`Patent 7,523,243 B2
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`I.
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`INTRODUCTION
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`We entered a Decision on Institution in this matter on August 29,
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`2017. Paper 12 (“Dec.” or “Decision”). In that Decision, we instituted a
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`review for some claims/grounds and denied a review on other
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`claims/grounds. On April 24, 2018, the Supreme Court held that a decision
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`to institute under 35 U.S.C. § 314 may not institute on less than all claims
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`challenged in the petition. SAS Inst., Inc. v. Iancu, 2018 WL 1914661,
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`at *10 (U.S. Apr. 24, 2018). In response to the SAS decision, on May 3,
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`2018, we entered an order modifying our Decision to institute trial on all
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`claims and all grounds. Paper 33 (“SAS order”).
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`Our rules require a party to file a request for rehearing “[w]ithin 14
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`days of entry of a non-final decision or a decision to institute a trial as to at
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`least one ground of unpatentability asserted in the petition.” 37 C.F.R.
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`§ 42.71(d)(1). On May 21, 2018, Microchip Technology Inc. (“Patent
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`Owner”) filed a Request for Rehearing of our SAS order. Paper 40 (“Req.”
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`or “Request”).
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`At the request of the Board, the parties filed additional briefing
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`directed to timeliness of the Request and directed to the substantive basis for
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`Patent Owner’s Request (allegedly in excess of our statutory authority).
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`Petitioner filed its Opposition to Patent Owner’s Request for Rehearing on
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`July 13, 2018 (Paper 54, “Opp.” or “Opposition”) and Patent Owner filed its
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`Reply in Support of Request for Rehearing on July 27, 2018 (Paper 57,
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`“Reply”).
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`2
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`IPR2017‐00864
`Patent 7,523,243 B2
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`II. DISCUSSION
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`A.
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`Statutory Authority
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`The thrust of Patent Owner’s argument is that our Decision on
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`Institution exceeded our statutory authority to consider the Petition after the
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`Supreme Court’s SAS decision. Specifically, Patent Owner argues, 35
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`U.S.C. § 312(a) precludes us from considering a Petition that fails to comply
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`with rules promulgated by the Director (such as 42.6 and 42.104). Req. 2–4.
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`The cited statute reads, in pertinent part:
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`(a) REQUIREMENTS OF PETITION.—A petition filed
`under section 311 may be considered only if—
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`. . .
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`(4) the petition provides such other information as the
`Director may require by regulation
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`35 U.S.C. § 312(a) (emphasis added). According to Patent Owner, this
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`statutory subsection requires that, to be considered by the Board, a Petition
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`must comply with rules promulgated by the Director. Req. 2 (“a Petition
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`that does not provide the information required by regulation may not be
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`considered”).
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`Petitioner contends, and we agree, that “Patent Owner’s every-claim-
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`every-ground regulatory compliance theory turns SAS on its head.” Opp. 1.
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`Patent Owner’s argument is contrary to both 35 U.S.C. § 314(a) and SAS,
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`which both make clear that a reasonable likelihood of success as to one
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`ground for one claim is sufficient to institute. Id. at 5–7; 35 U.S.C. § 314(a)
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`(“The Director may not authorize an inter partes review to be instituted
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`unless . . . there is a reasonable likelihood that the petitioner would prevail
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`with respect to at least 1 of the claims challenged in the petition” (emphasis
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`added)). The Supreme Court states:
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`3
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`IPR2017‐00864
`Patent 7,523,243 B2
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`Section 314(a) does not require the Director to evaluate every
`claim individually. Instead, it simply requires him to decide
`whether the petitioner is likely to succeed on “at least 1” claim.
`Once that single claim threshold is satisfied, it doesn't matter
`whether the petitioner is likely to prevail on any additional
`claims; the Director need not even consider any other claim
`before instituting review. Rather than contemplate claim-by-
`claim institution, then, the language anticipates a regime where
`a reasonable prospect of success on a single claim justifies
`review of all.
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`SAS, 138 S. Ct. at 1356. Moreover, the Board may exercise its authority
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`under 37 C.F.R. § 42.5(b) to waive or suspend regulations and Patent Owner
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`has not articulated a persuasive reason why that authority may not be used in
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`situations such as this to consider the meritorious grounds in a Petition.
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`Reply 9. Indeed, as Petitioner correctly points out, not being able to use our
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`authority under § 42.5(b) would lead to absurd results in which non-
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`compliance with regulatory requirements for things such as page size, fonts,
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`and margins would preclude us from considering a Petition. Opp. 8–9. Our
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`Decision on Institution, in view of the SAS decision’s change in our
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`proceedings, may be reasonably understood to include an implied waiver of
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`any rule allegedly violated by the Petition.
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`For the foregoing reasons, we are not persuaded that we exceeded our
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`statutory authority under § 312(a)(4) by issuing our original Decision on
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`Institution or by issuing our SAS order instituting on all claims and grounds,
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`including those which we deemed non-compliant with 37 C.F.R. § 104(b)(4)
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`and 37 C.F.R. § 42.6(a)(3) in our Decision on Institution.
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`4
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`IPR2017‐00864
`Patent 7,523,243 B2
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`B.
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`Timeliness of Request Relative to Our SAS Order
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`Patent Owner’s Request asserts it is directed to rehearing of our SAS
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`order that modifies our Decision on Institution. Req. 1. To the extent our
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`SAS order is a “non-final decision” as referenced in 37 C.F.R. § 42.71, and
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`to the extent Patent Owner’s Request is directed at the SAS order, a request
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`for rehearing under our rules must be filed “[w]ithin 14 days of the entry” of
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`our SAS order. The filing date of Patent Owner’s Request (May 21, 2018) is
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`more than 14 days after entry of our SAS order (May 3, 2018). Thus, Patent
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`Owner’s Request ordinarily would not be timely filed under our rules.
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`However, Patent Owner contacted the Board by e-mail on May 18,
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`2018 indicating it had experienced a technical problem in attempting to file
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`the Request on May 17, 2018 and, therefore, sought permission to file its
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`motion late. The e-mail message indicated that the parties had conferred and
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`that Petitioner did not object to the late filing of the Request.
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`Staff at the Board determined that Patent Owner had used an incorrect
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`account in its failed attempt to electronically file its Request on May 17,
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`2018. However, in view of Patent Owner’s assertion that Petitioner did not
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`object to the late filing, the Board sent an email message to the parties on
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`May 21, 2018 granting permission to belatedly file the Request on that day,
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`thus, impliedly waiving our rules regarding the timely filing of the Request
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`relative to the date of entry of our SAS order. See 37 C.F.R. §§ 42.5,
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`42.71(d)(1).
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`Accordingly, assuming Patent Owner’s Request is directed to
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`dissatisfaction with our SAS order, the Request is timely filed relative to the
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`date of entry of our SAS order. However, as discussed below, we find the
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`5
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`IPR2017‐00864
`Patent 7,523,243 B2
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`Request is directed to our authority under 35 U.S.C. § 312(a)(4) to issue our
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`Decision on Institution rather than to our SAS order.
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`C.
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`Timeliness Relative to Our Decision on Institution
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`Although we impliedly waived the timeliness requirement of Patent
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`Owner’s Request relative to the date of our SAS order, a question remains as
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`to whether the Request should have been filed within 14 days after our
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`original Decision on Institution (i.e., within 14 days of August 29, 2017).
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`Petitioner argues the Request is untimely because it is directed to
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`rehearing of our Decision on Institution rather than our SAS order and, thus,
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`needed to be filed within 14 days of our Decision (i.e., within 14 days of
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`August 29, 2017 — nearly one year ago). Opp. 2. Petitioner contends, and
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`we agree, the Request is substantively directed to whether we had statutory
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`authority to consider the Petition due to alleged violations of 35 U.S.C.
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`§ 312(a) in the Petition. Id. As discussed supra, Patent Owner’s Request
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`argues the Board did not have statutory authority to even consider the
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`Petition because some grounds in the Petition’s did not comply with 37
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`C.F.R. § 104(b)(4) and 37 C.F.R. § 42.6(a)(3). Req. 4–6. Petitioner further
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`contends the alleged statutory violations of § 312(a) were present in the
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`Petition as filed and revealed in our original Decision on Institution. Opp. 3.
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`Patent Owner argues its Request is timely because it is directed to our
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`SAS order rather than to our initial Decision on Institution because our SAS
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`order was the first decision to institute trial with respect to the allegedly
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`defective grounds of the Petition. Reply 1. Patent Owner contends,
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`Had Patent Owner challenged the original Institution Decision
`as violating 35 U.S.C. § 312(a)(4), the Board would no doubt
`have rejected that challenge by concluding the deficient
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`6
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`IPR2017‐00864
`Patent 7,523,243 B2
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`portions of the Petition were not considered under the Board’s
`“partial institution” practice and, therefore, § 312(a)(4) was not
`violated.
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`Id. at 2.
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`Based on the parties’ arguments and the facts in this case, we agree
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`with Petitioner that Patent Owner’s Request for Rehearing is not timely
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`filed. Substantively, the Request is directed to whether we have statutory
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`authority (under 35 U.S.C. § 312(a)) to even consider the Petition based on
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`findings in our Decision on Institution that certain claims/grounds did not
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`meet the requirements of 37 C.F.R. § 104(b)(4) (specifying where each
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`claimed element is found in the references) or 37 C.F.R. § 42.6(a)(3)
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`(improper incorporation by reference). Req. 3–4 (citing Dec. 37–38, 41, 43).
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`More specifically, Patent Owner asserts that, in its view, the statute requires
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`compliance with all such regulations. Req. 2 n.1 (“The Director’s
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`regulations are found in 37 C.F.R. § 42.1 et seq.”).
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`As discussed supra, we disagree with Patent Owner’s interpretation of
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`the statute as requiring all regulations (“42.1 et seq.”) must be met for the
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`board to consider a Petition. Regardless, even accepting Patent Owner’s
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`statutory interpretation as correct, arguendo, Patent Owner’s dissatisfaction
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`with a “non-final decision or decision to institute a trial” (37 C.F.R.
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`§ 42.71(d)) arose on August 29, 2017, at the time we entered our original
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`Decision on Institution that allegedly violated this statutory authority.
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`Under Patent Owner’s theory, 35 U.S.C. § 312(a)(4) precludes consideration
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`of a Petition if any ground fails to comply with our regulations. It follows
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`that Patent Owner should have objected to our consideration of any part of
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`the Petition, regardless of whether we instituted on the allegedly non-
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`compliant ground.
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`7
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`IPR2017‐00864
`Patent 7,523,243 B2
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`Patent Owner’s contention that a challenge to our Decision on
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`Institution at the time of its entry “would have been futile” is baseless.
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`Reply 2. Patent Owner’s unfounded speculation is inconsistent with its
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`argument that our Decision on Institution exceeded our statutory authority
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`by virtue of the expressed reason for denying trial as to grounds 4–6. Patent
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`Owner’s arguments regarding our statutory authority are based on its
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`interpretation of § 312(a) rather than any holdings of the SAS decision or any
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`aspect of our SAS order.
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`Patent Owner therefore could, and should, have raised its argument
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`that 35 U.S.C. § 312(a)(4) precludes us from considering a Petition if one
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`ground fails to comply with our regulations, after our Decision on Institution
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`was entered on August 29, 2017. Thus, under Rule 42.71(d)(1), Patent
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`Owner’s Request needed to be filed within 14 days after entry of our
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`Decision on Institution on August 29, 2017—nearly one year ago. Instead,
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`the Request was filed nearly nine months after our Decision on Institution.
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`Accordingly, Patent Owner’s Request is not timely relative to the date of
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`entry of our Decision on Institution.
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`III. ORDER
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`In view of the foregoing discussion, it is hereby:
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`ORDERED that Petitioner’s Request for Rehearing is denied.
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`8
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`IPR2017‐00864
`Patent 7,523,243 B2
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`PETITIONER:
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`Scott McKeown
`scott.mckeown@ropesgray.com
`
`James L. Davis, Jr.
`james.l.davis@ropesgray.com
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`PATENT OWNER:
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`Bruce Slayden
`bslayden@sgbfirm.com
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`Brian Banner
`bbanner@sgbfirm.com
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`Truman Fenton
`tfenton@sgbfirm.com
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`Jerry Suva
`jsuva@sgbfirm.com
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`R. Beard
`wbeard@sgbfirm.com
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`9
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