Trials@uspto.gov
`571.272.7822
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` Paper 52
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` Date: October 29, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`NVIDIA CORPORATION,
`Petitioner,
`
`v.
`
`POLARIS INNOVATIONS LIMITED,
`Patent Owner.
`____________
`IPR2017-00901 (Patent 7,405,993 B2)
`IPR2017-01500 (Patent 6,532,505 B1)
`____________
`
`
`Before SCOTT R. BOALICK, Chief Administrative Patent Judge.
`
`BOALICK, Chief Administrative Patent Judge.
`
`
`ORDER
`On September 13, 2021, the United States Court of Appeals for the Federal
`Circuit issued orders in the appeals of each of the above-referenced cases,
`remanding the cases to the Office “for the limited purpose of allowing the parties
`to seek further action by the Director.” Polaris Innovations Ltd. v. Hirshfeld,
`No. 2019-1483, ECF No. 76, at 2 (Sept. 13, 2021); Polaris Innovations Ltd. v.
`Hirshfeld, No. 2019-1484, ECF No. 84, at 2 (Sept. 13, 2021). On September 23,
`2021, Polaris Innovations Limited (“Patent Owner”) sent an email to the Board in
`each case requesting “a conference call with the Board to seek guidance regarding
`
`

`

`IPR2017-00901 (Patent 7,405,993 B2)
`IPR2017-01500 (Patent 6,532,505 B1)
`
`how the remand should proceed.” IPR2017-01500, Ex. 3001.1 Patent Owner’s
`email explains that Petitioner NVIDIA Corporation is no longer participating in
`either case “due to the parties’ settlement.” Id. According to Patent Owner, “the
`parties filed a timely joint motion to terminate (Paper 33) that the Board should
`grant and that doing so is consistent with the Federal Circuit’s remand
`instructions” in each case. Id.
`The parties filed the joint motion to terminate prior to the United States
`Supreme Court’s decision in United States v. Arthrex, Inc., 141 S. Ct. 1970
`(June 21, 2021). See Paper 33 (filed June 10, 2020). The joint motion to terminate
`in each case indicates that the Federal Circuit vacated the Board’s final written
`decision and remanded the case to the Board for proceedings consistent with the
`Federal Circuit’s decision in Arthrex, Inc. v. Smith & Nephew, Inc., 940 F.3d 1320
`(Fed. Cir. 2019) (en banc reh’g denied Mar. 23, 2020). Paper 33, 2–3. The
`Supreme Court, however, vacated the Federal Circuit’s Arthrex decision, granted a
`pending Petition for Certiorari from the appeals in these cases, vacated the Federal
`Circuit’s judgment in the appeals from these cases, and remanded the appeals in
`these cases to the Federal Circuit for consideration in light of the Arthrex decision.
`See Polaris, No. 2019-1483, ECF No. 71 (July 30, 2021); Polaris, No. 2019-1484,
`ECF No. 72 (July 30, 2021). The Federal Circuit subsequently vacated its
`judgments, recalled the mandates, and reinstated each of the appeals. See Polaris,
`No. 2019-1483, ECF No. 72 (Aug. 12, 2021); Polaris, No. 2019-1484, ECF No. 73
`(Aug. 12, 2021). Further, in the appeal from IPR2017-01500, the Federal Circuit’s
`limited remand order denied a motion to vacate the Board’s final written decision
`
`
`1 Patent Owner sent substantially the same email for both cases. This order refers
`to the email Patent Owner sent for IPR2017-01500. Unless otherwise noted, this
`order also refers to the papers filed in IPR2017-01500, as they are substantively the
`same as the papers filed in IPR2017-00901.
`2
`
`
`
`

`

`IPR2017-00901 (Patent 7,405,993 B2)
`IPR2017-01500 (Patent 6,532,505 B1)
`
`that Patent Owner filed in that appeal. See Polaris, No. 2019-1483, ECF No. 76, at
`2 (Sept. 13, 2021) (“Polaris’s motion to vacate the final written decision is
`denied.”). Thus, the Board’s final written decision in each of these cases is not
`vacated, and it is not necessary for the Board to issue a new final written decision
`in either of these cases. Instead, the appropriate course of action on remand in
`each of these cases is to authorize Patent Owner to request Director review
`consistent with the Office’s interim guidance.2 Patent Owner may file a request for
`Director review within 14 days of this Order. If Patent Owner does not file a
`request for Director review within the allotted time, then the Board’s final written
`decision will remain the final agency decision in each case. No conference call
`with the Board is necessary.
`Accordingly, it is:
`ORDERED that Patent Owner shall have 14 days to file a request for
`Director review in each case; and
`FURTHER ORDERED that the Board’s final written decision in each case
`will remain the final agency decision if Patent Owner does not file a request for
`Director review within 14 days.
`
`
`
`
`
`
`2 See USPTO implementation of an interim Director review process following
`Arthrex, https://www.uspto.gov/patents/patent-trial-and-appeal-board/procedures/
`uspto-implementation-interim-director-review; see also Arthrex Q&As,
`https://www.uspto.gov/patents/patent-trial-and-appeal-board/procedures/arthrex-
`qas (updated July 20, 2021) (setting forth more details about the interim Director
`review process).
`
`
`
`3
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`

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`IPR2017-00901 (Patent 7,405,993 B2)
`IPR2017-01500 (Patent 6,532,505 B1)
`
`For PETITIONER:
`Jeremy Monaldo
`W. Karl Renner
`David Hoffman
`Katherine Vidal
`FISH & RICHARDSON P.C.
`jjm@fr.com
`axf-ptab@fr.com
`hoffman@fr.com
`lutton@fr.com
`
`For PATENT OWNER:
`
`Matthew Phillips
`Kevin Laurence
`LAURENCE & PHILLIPS IP LAW LLP
`mphillips@lpiplaw.com
`klaurence@lpiplaw.com
`
`Bryan Richardson
`WiLAN Inc.
`brichardson@wilan.co
`
`
`
`4
`
`