Trials@uspto.gov
`571-272-7822
`
`Paper 34
`Date: February 23, 2022
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`INTEL CORPORATION,
`Petitioner,
`
`v.
`
`QUALCOMM INCORPORATED,
`Patent Owner.
`
`
`IPR2018-013341
`Patent 8,838,949 B2
`
`
`
`
`Before TREVOR M. JEFFERSON, DANIEL J. GALLIGAN, and
`AARON W. MOORE, Administrative Patent Judges.
`
`GALLIGAN, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER ON REMAND
`
`
`
`
`
`1 IPR2018-01335 and IPR2018-01336 have been consolidated with the
`instant proceeding.
`
`
`571-272-7822
`
`Paper 34
`Date: February 23, 2022
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`INTEL CORPORATION,
`Petitioner,
`
`v.
`
`QUALCOMM INCORPORATED,
`Patent Owner.
`
`
`IPR2018-013341
`Patent 8,838,949 B2
`
`
`
`
`Before TREVOR M. JEFFERSON, DANIEL J. GALLIGAN, and
`AARON W. MOORE, Administrative Patent Judges.
`
`GALLIGAN, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER ON REMAND
`
`
`
`
`
`1 IPR2018-01335 and IPR2018-01336 have been consolidated with the
`instant proceeding.
`
`
`
`IPR2018-01334
`Patent 8,838,949 B2
`
`
`
`
`A.
`
`INTRODUCTION AND GENERAL INSTRUCTIONS
`1.
`Introduction
`This proceeding is before the Board on remand from the Court of
`Appeals for the Federal Circuit.
`Petitioner challenged claims 1–23 of U.S. Patent No. 8,838,949 B2
`(“the ’949 patent,” Ex. 1001). On March 16, 2020, we determined that
`Petitioner had proven unpatentability of claims 10, 11, 13–15, and 18–23,
`but not claims 1–9, 12, 16, and 17. Paper 30 (“Final Dec.”), 2, 63. On
`appeal, the Federal Circuit vacated our determination that Petitioner had not
`proven unpatentability of claims 1–9, 12, 16, and 17 and remanded the case
`to us. Intel Corp. v. Qualcomm Inc., 21 F.4th 801, 814 (Fed. Cir. 2021). In
`particular, the Federal Circuit vacated our construction of the term
`“hardware buffer” and our determination regarding claims 1–9 and 12 based
`on that construction and also vacated as to claims 16 and 17 based on our
`determination that Petitioner had not shown sufficient corresponding
`structure for certain means-plus-function limitations. Id. Our determination
`regarding claims 10, 11, 13–15, and 18–23, however, stands because Patent
`Owner dropped its appeal of those claims. Id. at 806.
`On February 17, 2022, a conference call was held with counsel for the
`parties to discuss a schedule on remand. Before the call, the parties met and
`conferred and agreed to a proposal for the scope and schedule of briefing.
`Ex. 3001.
`
`The Parties propose that the scope of the briefing on
`remand be limited to (1) the broadest reasonable interpretation of
`the claim term “hardware buffer,” (2) the applicability of the
`broadest reasonable interpretation of “hardware buffer” to the
`asserted prior art disclosures, and (3) whether the Board can
`resolve the prior art challenge to the patentability of claims 16
`
`2
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`IPR2018-01334
`Patent 8,838,949 B2
`
`
`and 17 despite the potential indefiniteness of the means-plus-
`function terms, along with whether these means-plus-function
`terms of claims 16 and 17 are indefinite.
`Ex. 3001. During the call, we raised two additional issues. First, we asked
`that the parties address the meaning of the term “system memory” as it
`relates to the “hardware buffer.” See Intel, 21 F.4th at 810 (“[B]ecause
`claim 1 requires both a ‘system memory’ and a ‘hardware buffer,’ there must
`be some distinction between those two concepts.”). Second, we asked the
`parties to consider whether the prior art challenges to claims 16 and 17 can
`be resolved based on the means-plus-function constructions proposed in the
`Petition. See IPR2018-01335, Paper 3, 17–22.
`The parties further state,
`Given the Federal Circuit’s opinion on the construction of
`“hardware buffer” and its applicability to the prior art, the Parties
`propose that (1) Petitioner may submit additional documentary
`and expert declaration evidence along its opening and reply
`briefs, (2) Patent Owner may submit additional documentary and
`expert declaration evidence along with its response brief, but not
`with its sur-reply brief, and (3) each party may depose any
`declarant who submits a declaration on behalf of the other party
`and must file the transcript as an exhibit with its next paper.
`Ex. 3001.
`The parties also agreed on the following schedule and page limits for
`the briefing: Petitioner’s opening brief (20 pages, due 6 weeks after
`authorization); Patent Owner’s response brief (20 pages, due 6 weeks after
`opening brief); Petitioner’s reply (8 pages, due 4 weeks after response);
`Patent Owner’s sur-reply (8 pages, due 4 weeks after reply). Ex. 3001.
`We accept the parties’ agreed schedule and page limits, and we thank
`the parties for meeting and conferring before the call with the Board.
`
`3
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`IPR2018-01334
`Patent 8,838,949 B2
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`
`On the call, the parties also indicated that they anticipated requesting
`oral argument. We advised the parties that the total time period for briefing
`(20 weeks) and an oral argument would mean that we would not issue a
`decision on remand within six months of the Federal Circuit’s February 3,
`2022, mandate, which is the goal set in the Board’s Standard Operating
`Procedure 9 (“SOP 9”).2 The parties acknowledged this and agreed to
`exceed the six-month goal. See SOP 9, 2 (“Notably, certain scenarios may
`necessitate an extension of the six-month goal for issuing a remand
`decision.”).
`The parties may request conference calls as needed during the
`proceeding. Any email requesting a conference call with the Board should:
`(a) copy all parties, (b) indicate generally the relief being requested or the
`subject matter of the conference call, (c) include multiple times when all
`parties are available, (d) state whether the opposing party opposes any relief
`requested, and (e) if opposed, either certify that the parties have met and
`conferred telephonically or in person to attempt to reach agreement, or
`explain why such meet and confer did not occur. The email may not contain
`substantive argument and, unless otherwise authorized, may not include
`attachments. See Consolidated Trial Practice Guide (“Consolidated Practice
`Guide”)3 at 9–10.
`
`
`2 Available at
`https://www.uspto.gov/sites/default/files/documents/sop_9_%20procedure_f
`or_decisions_remanded_from_the_federal_circuit.pdf.
`3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`
`4
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`IPR2018-01334
`Patent 8,838,949 B2
`
`
`Protective Order
`2.
`No protective order shall apply to this proceeding until the Board
`enters one. If either party files a motion to seal before entry of a protective
`order, a jointly proposed protective order shall be filed as an exhibit with the
`motion. It is the responsibility of the party whose confidential information is
`at issue, not necessarily the proffering party, to file the motion to seal.4 The
`Board encourages the parties to adopt the Board’s default protective order if
`they conclude that a protective order is necessary. See Consolidated Practice
`Guide at 107–122 (App. B, Protective Order Guidelines and Default
`Protective Order). If the parties choose to propose a protective order
`deviating from the default protective order, they must submit the proposed
`protective order jointly along with a marked-up comparison of the proposed
`and default protective orders showing the differences between the two and
`explain why good cause exists to deviate from the default protective order.
`The Board has a strong interest in the public availability of trial
`proceedings. Redactions to documents filed in this proceeding should be
`limited to the minimum amount necessary to protect confidential
`information, and the thrust of the underlying argument or evidence must be
`clearly discernible from the redacted versions. We also advise the parties
`that information subject to a protective order may become public if
`identified in a final written decision in this proceeding, and that a motion to
`expunge the information will not necessarily prevail over the public interest
`in maintaining a complete and understandable file history. See Consolidated
`Practice Guide at 21–22.
`
`
`4 If the entity whose confidential information is at issue is not a party to the
`proceeding, please contact the Board.
`
`5
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`IPR2018-01334
`Patent 8,838,949 B2
`
`
`Discovery Disputes
`3.
`The Board encourages parties to resolve disputes relating to discovery
`on their own. To the extent that a dispute arises between the parties relating
`to discovery, the parties must meet and confer to resolve such a dispute
`before contacting the Board. If attempts to resolve the dispute fail, a party
`may request a conference call with the Board.
`4.
`Testimony
`The parties are reminded that the Testimony Guidelines appended to
`the Consolidated Practice Guide at 127–130 (App. D, Testimony Guidelines)
`apply to this proceeding. The Board may impose an appropriate sanction for
`failure to adhere to the Testimony Guidelines. 37 C.F.R. § 42.12. For
`example, reasonable expenses and attorneys’ fees incurred by any party may
`be levied on a person who impedes, delays, or frustrates the fair examination
`of a witness.
`
`Cross-Examination
`5.
`Except as the parties might otherwise agree, for each due date:
`Cross-examination ordinarily takes place after any supplemental evidence is
`due. 37 C.F.R. § 42.53(d)(2).
`Cross-examination ordinarily ends no later than a week before the
`filing date for any paper in which the cross-examination testimony is
`expected to be used. Id.
`
`Oral Argument
`6.
`Requests for oral argument must comply with 37 C.F.R. § 42.70(a).
`To permit the Board sufficient time to schedule the oral argument, the
`parties may not stipulate to an extension of the request for oral argument
`beyond the date set forth below.
`
`6
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`IPR2018-01334
`Patent 8,838,949 B2
`
`
`Unless the Board notifies the parties otherwise, oral argument, if
`requested, will be held at the USPTO headquarters in Alexandria.
`The parties may request that the oral argument instead be held at the
`Dallas, Texas, USPTO Regional Office. The parties should meet and confer,
`and jointly propose the parties’ preference at the initial conference call, if
`requested. Alternatively, the parties may jointly file a paper stating their
`preference for the hearing location within one month of this Order. Note
`that the Board may not be able to honor the parties’ preference of hearing
`location due to, among other things, the availability of hearing room
`resources and the needs of the panel. The Board will consider the location
`request and notify the parties accordingly if a request for change in location
`is granted.
`Seating in the Board’s hearing rooms may be limited, and will be
`available on a first-come, first-served basis. If either party anticipates that
`more than five (5) individuals will attend the argument on its behalf, the
`party should notify the Board as soon as possible, and no later than the
`request for oral argument. Parties should note that the earlier a request for
`accommodation is made, the more likely the Board will be able to
`accommodate additional individuals.
`The Board has established the “Legal Experience and Advancement
`Program,” or “LEAP,” to encourage advocates before the Board to develop
`their skills and to aid in succession planning for the next generation. The
`Board defines a LEAP practitioner as a patent agent or attorney having
`three (3) or fewer substantive oral arguments in any federal tribunal,
`including PTAB. Parties are encouraged to participate in the Board’s LEAP
`
`7
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`IPR2018-01334
`Patent 8,838,949 B2
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`program.5 The Board will grant up to fifteen (15) minutes of additional
`argument time to that party, depending on the length of the proceeding and
`the PTAB’s hearing schedule. A party should submit a request, no later than
`at least five (5) business days before the oral hearing, by email to the Board
`at PTABHearings@uspto.gov.6
`All practitioners appearing before the Board shall demonstrate the
`highest professional standards. All practitioners are expected to have a
`command of the factual record, the applicable law, and Board procedures, as
`well as the authority to commit the party they represent. The Board discerns
`that it is often LEAP practitioners who have the best understanding of the
`facts of the case and the evidence of record, and the Board encourages their
`participation.
`
`
`
`
`
`
`5 Information about the LEAP program can be found at www.uspto.gov/leap.
`6 Additionally, a LEAP Verification Form shall be submitted by the LEAP
`practitioner, confirming eligibility for the program. A combined LEAP
`Practitioner Request for Oral Hearing Participation and Verification Form is
`available at www.uspto.gov/leap.
`
`8
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`IPR2018-01334
`Patent 8,838,949 B2
`
`
`B. DUE DATES
`The due dates below reflect the parties’ joint proposal. If a party
`wishes to file any other motion during the remand proceeding, such as a
`motion to exclude, the party should contact the Board to set a briefing
`schedule. The parties should meet and confer before contacting the Board to
`attempt to resolve any issues.
`
`Petitioner’s Opening Brief (20 pages) ....................................... April 6, 2022
`
`Patent Owner’s Response Brief (20 pages) .............................. May 18, 2022
`
`Petitioner’s Reply (8 pages) ...................................................... June 15, 2022
`
`Patent Owner’s Sur-reply (8 pages) .......................................... July 13, 2022
`
`Requests for oral argument ........................................................ July 20, 2022
`
`Oral argument (if requested) .................................................... August 4, 2022
`
`
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`9
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`IPR2018-01334
`Patent 8,838,949 B2
`
`For PETITIONER:
`
`David Cavanaugh
`Thomas Anderson
`Joseph Haag
`WILMER CUTLER PICKERING HALE & DORR LLP
`david.cavanaugh@wilmerhale.com
`tom.anderson@wilmerhale.com
`joseph.haag@wilmerhale.com
`
`For PATENT OWNER:
`
`David Cochran
`Matthew Johnson
`Joseph Sauer
`David Maiorana
`Richard Graham
`Joshua Nightingale
`JONES DAY
`dcochran@jonesday.com
`mwjohnson@jonesday.com
`jmsauer@jonesday.com
`dmaiorana@jonesday.com
`ragraham@jonesday.com
`jrnightingale@jonesday.com
`
`
`10
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