`571-272-7822
`
`Paper 8
`Date: October 25, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTEL CORPORATION,
`Petitioner,
`
`v.
`
`VLSI TECHNOLGY LLC,
`Patent Owner.
`____________
`
`IPR2019-01196
`Patent 7,246,027 B2
`____________
`
`Before BART A. GERSTENBLITH, MINN CHUNG, and
`KIMBERLY McGRAW, Administrative Patent Judges.
`
`McGRAW, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`IPR2019-01196
`Patent 7,246,027 B2
`
`On Tuesday, October 23, 2019, Intel Corporation (“Petitioner”)
`
`submitted an email to the Board requesting authorization to file a reply to the
`
`Preliminary Response (Paper 7, “Prelim. Resp.”) filed by VLSI Technology
`
`LLC (“Patent Owner”). Ex. 3001. Specifically, Petitioner requests leave to
`
`respond to Patent Owner’s argument that the Board should exercise its
`
`discretion under 35 U.S.C. § 314(a) to deny institution. Patent Owner
`
`opposes the request. Id.
`
`Patent Owner’s Preliminary Response argues the Board should
`
`exercise its discretion under 35 U.S.C. § 314(a) to deny institution because
`
`the present Petition challenges the same claims that are at issue in a
`
`co-pending district court litigation. See Prelim. Resp. 1. Patent Owner
`
`contends, inter alia, Petitioner timed the filing of the present Petition to
`
`circumvent the statutory estoppel in the America Invents Act to ensure that
`
`the Board’s final written decision will not issue until after the district court
`
`trial has concluded and that having two parallel proceedings challenging the
`
`same patent claims based on the same references under the same claim
`
`construction standard would be a waste of resources. Id. at 9–12.
`
`Because we determine that a reply would be helpful in deciding
`
`whether the Board should exercise its discretion to deny institution in the
`
`present proceeding, we grant Petitioner’s request. See 37 C.F.R.
`
`§§ 42.20(d), 42.108(c). Petitioner’s reply shall be no longer than 5 pages,
`
`shall be limited to responding to the arguments presented in the Preliminary
`
`Response that institution of an inter partes review as requested in the
`
`Petition should be denied under 35 U.S.C. § 314(a), and is due no later than
`
`10 days after the date of this Order. Patent Owner is authorized to file a
`
`sur-reply to Petitioner’s reply, if it so chooses. The sur-reply shall also be
`
`2
`
`
`
`IPR2019-01196
`Patent 7,246,027 B2
`
`no longer than 5 pages, shall be limited to responding to the arguments
`
`presented in the reply, and is due 10 days after the filing of the reply.
`
`No conference call is necessary at this time.
`
`ORDER
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that Petitioner may file a reply not to exceed 5 pages, no
`
`later than 10 days after the issuance of this Order, and limited to responding
`
`to the argument presented in the Preliminary Response that the Board should
`
`exercise its discretion pursuant to 35 U.S.C. § 314(a) and deny institution;
`
`and
`
`FURTHER ORDERED that Patent Owner may file, if it so chooses, a
`
`sur-reply limited to responding to the arguments presented in the reply, not
`
`to exceed five pages, and no later than 10 days after the filing of Petitioner’s
`
`reply.
`
`3
`
`
`
`IPR2019-01196
`Patent 7,246,027 B2
`
`FOR PETITIONER:
`
`Richard Goldenberg
`Dominic E. Massa
`Daniel Williams
`Yvonne Lee
`WILMER HALE
`
`
`FOR PATENT OWNER:
`
`H. Annita Zhong
`Benjamin Hattenback
`IRELL & MANELLA
`
`4
`
`
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