Paper No. 25
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`Filed on behalf of Patent Owner by:
`Patrick J. McElhinny, Reg. No. 46,320
`Mark G. Knedeisen, Reg. No. 42,747
`K&L GATES LLP
`210 Sixth Ave.
`Pittsburgh, PA 15222
`Tel: 412-355-6500 / Fax: 412-355-6501
`
`Richard F. Giunta, Reg. No. 36,149
`Gerald B. Hrycyszyn, Reg. No. 50,474
`WOLF, GREENFIELD & SACKS, P.C.
`600 Atlantic Ave.
`Boston, MA 02210-2206
`Tel: 617-646-8000 / Fax: 617-646-8646
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
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`LSI CORPORATION and AVAGO TECHNOLOGIES U.S., INC,
`Petitioners,
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`v.
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`REGENTS OF THE UNIVERSITY OF MINNESOTA,
`Patent Owner.
`_____________
`
`Case No. IPR2017-01068
`Patent No. 5,859,601
`_____________
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` PATENT OWNER’S REPLY IN SUPPORT OF MOTION TO STAY
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`301482913 v8
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`Filed on behalf of Patent Owner by:
`Patrick J. McElhinny, Reg. No. 46,320
`Mark G. Knedeisen, Reg. No. 42,747
`K&L GATES LLP
`210 Sixth Ave.
`Pittsburgh, PA 15222
`Tel: 412-355-6500 / Fax: 412-355-6501
`
`Richard F. Giunta, Reg. No. 36,149
`Gerald B. Hrycyszyn, Reg. No. 50,474
`WOLF, GREENFIELD & SACKS, P.C.
`600 Atlantic Ave.
`Boston, MA 02210-2206
`Tel: 617-646-8000 / Fax: 617-646-8646
`
`
`
`
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`LSI CORPORATION and AVAGO TECHNOLOGIES U.S., INC,
`Petitioners,
`
`v.
`
`REGENTS OF THE UNIVERSITY OF MINNESOTA,
`Patent Owner.
`_____________
`
`Case No. IPR2017-01068
`Patent No. 5,859,601
`_____________
`
` PATENT OWNER’S REPLY IN SUPPORT OF MOTION TO STAY
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`301482913 v8
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`TABLE OF AUTHORITIES
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`CASES
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`Coll. Sav. Bank v. Fla. Prepaid Postsecondary Educ. Expense Bd., 527 U.S.
`666, 685-86 (1999) ................................................................................................. 2
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`Kimel v. Fla. Bd. Of Regents, 528 U.S. 62, 73 (2000) ............................................... 3
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`Regents of Univ. of N.M. v. Knight, 321 F.3d 1111 (Fed. Cir. 2003) .................... 1, 2
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`STATUTES
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`35 U.S.C. § 315(d) ..................................................................................................... 3
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`35 U.S.C § 313 ........................................................................................................... 3
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`REGULATIONS
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`37 C.F.R § 42.5(a) ...................................................................................................... 3
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`37 C.F.R. § 42.122(a) ................................................................................................. 3
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`Petitioners concede that (1) the collateral order doctrine applies to UMN’s
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`appeal and (2) tribunals typically preserve sovereign immunity by staying
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`proceedings until resolution of appeals regarding its applicability. Petitioners
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`claim UMN’s appeal is frivolous, but in doing so highlight the very circumstances
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`that eviscerate that claim. Petitioners admit that an “expanded panel” denied
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`UMN’s motion “after extensive deliberation.” Paper 24 at 1 (emphasis added). If
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`UMN’s arguments were frivolous, no expanded panel or extensive deliberation
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`would have been necessary. Indeed, the Board expressly recognized the
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`“exceptional nature of the [waiver] issues presented,” which the Board had “not
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`had occasion to address … before.” Paper 19 at 3; id. at 12 n.1 (“important
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`constitutional issues” raised here make judicial review “essential”).
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`Ignoring this, Petitioners erroneously claim the Board decided the Motion to
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`Dismiss as a matter of “binding Federal Circuit authority.” Paper 24 at 2. The
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`Board, however, stated that the Federal Circuit had yet to opine on the specific
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`issue of whether filing a district court case waives sovereign immunity from an
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`IPR. Paper 19 at 9. Consequently, the Board found waiver based on purported
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`“unfairness and inconsistency” and reasoning by analogy to Regents of Univ. of
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`N.M. v. Knight, 321 F.3d 1111 (Fed. Cir. 2003), not binding precedent. Paper 19
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`at 7 n.3 (“We do not conclude that an [IPR] is a compulsory counterclaim …
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`Rather, we determine that the rationale given in Knight … similarly supports
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`determining that [UMN] waived [its immunity.]”).
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`UMN will appeal the Order because (1) sovereign immunity precedent
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`makes waiver forum-specific, and inapplicable here, and (2) the purported
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`resulting unfairness does not justify forfeiture of UMN’s constitutional right,
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`particularly where Petitioners can challenge patent validity in district court. See
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`Paper 10 at 13-15; Paper 13 at 3-5; Knight, 321 F.3d at 1126 (“[W]hen a state files
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`suit in federal court …, the state shall be considered to have consented to have
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`litigated in the same forum all compulsory counterclaims.” (emphasis added));
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`Coll. Sav. Bank v. Fla. Prepaid Postsecondary Educ. Expense Bd., 527 U.S. 666,
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`685-86 (1999) (“In the sovereign-immunity context, … evenhandness between
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`individuals and States is not to be expected: The constitutional role of the States
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`sets them apart….” (internal quotations omitted)).
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`Petitioners’ assertion that UMN is engaged in gamesmanship and would not
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`be prejudiced by a denial of this motion, Paper 24 at 7, ignores the nature of
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`UMN’s constitutional right, which would be rendered meaningless without a stay.
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`See Paper 23 at 1 (immunity protects UMN from process of defending on the
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`merits); Paper 13 at 4 (distinguishing UMN’s reference to potential gamesmanship
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`in Reactive Surfaces v. Toyota, IPR2016-01914 from situation here). Petitioners’
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`complaint that UMN refused to stay the district court litigation as a quid pro quo
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`for an IPR stay is a red herring. Petitioners’ motion to stay in the district court is
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`pending; whether that motion has merit is a matter for that court, which is fully
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`aware of this IPR’s status. And, Petitioners’ claim that UMN has “incentive to
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`delay its … appeal,” Paper 24 at 7, flies in the face of UMN’s (i) representation
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`that it would agree to expedite the appeal, and (ii) interest in resolving the appeal
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`quickly given the stays in litigation associated with other IPRs to which it is a
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`party. In any event, Petitioners can request the appeal be expedited if they truly
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`want to avoid delay. Moreover, Petitioners’ assertion that a stay would “frustrate
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`… Congressional intent” for efficient IPR, Paper 24 at 1, ignores that Congress
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`must “unequivocally express its intent to abrogate [sovereign] immunity.” Kimel
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`v. Fla. Bd. Of Regents, 528 U.S. 62, 73 (2000). The AIA does no such thing.
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`Finally, Petitioners wrongly assert that the Board cannot grant a stay because
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`its authority “is limited to that expressly granted by statute.” Paper 24 at 8. But,
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`the statute authorizes the Board to set the “time period” for the filing of a PPOR.
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`35 USC §313; see also 37 C.F.R § 42.5(a) (authorizing Board to “determine a
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`proper course of conduct … for any situation not specifically covered” and “set
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`times by order”); Paper 23 at 6-7 (Board can and has suspended PPOR deadlines as
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`there is no statutory requirement setting a filing date); 35 U.S.C. § 315(d) (limited
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`to stays relating to multiple PTO proceedings); 37 C.F.R. § 42.122(a) (same).
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`Dated: January 23, 2018
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`Respectfully submitted,
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`By: /Patrick J. McElhinny/
`Patrick J. McElhinny, Reg. No. 46,320
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`301482913 v8
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`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6 (e)(4)
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`I certify that on January 23, 2018, I will cause a copy of the foregoing
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`document, including any exhibits or appendices referred to therein, to be served via
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`electronic mail, as previously consented to by Petitioner, upon the following:
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`Kristopher Reed
`Edward Mayle
`David Sipiora
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`Date: January 23, 2018
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`kreed@kilpatricktownsend.com
`tmayle@kilpatricktownsend.com
`dsipiora@kilpatricktownsend.com
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`/Mark G, Knedeisen/
`Mark G. Knedeisen
`K&L GATES LLP
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`301482913 v8
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