Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`Paper 29
`Date: February 11, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTEL CORPORATION,
`Petitioner,
`
`v.
`
`VLSI TECHNOLOGY LLC,
`Patent Owner.
`____________
`
`IPR2020-00583
`Patent 7,606,983 B2
`____________
`
`
`
`Before THU A. DANG, BART A. GERSTENBLITH, and
`KIMBERLY McGRAW, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`DECISION
`Denying Petitioner’s Request on Rehearing of the
`Decision Denying Institution of Inter Partes Review
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`Paper 29
`Date: February 11, 2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INTEL CORPORATION,
`Petitioner,
`
`v.
`
`VLSI TECHNOLOGY LLC,
`Patent Owner.
`____________
`
`IPR2020-00583
`Patent 7,606,983 B2
`____________
`
`
`
`Before THU A. DANG, BART A. GERSTENBLITH, and
`KIMBERLY McGRAW, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`DECISION
`Denying Petitioner’s Request on Rehearing of the
`Decision Denying Institution of Inter Partes Review
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`
`IPR2020-00583
`Patent 7,606,983 B2
`
`I. INTRODUCTION
`Intel Corporation (“Petitioner”) filed a Request for Rehearing
`(Paper 24, “Rehearing Request” or “Req. Reh’g”) of the Decision Denying
`Institution of Inter Partes Review (Paper 22, “Decision” or “Inst. Dec.”).
`Petitioner also filed a request for the Precedential Opinion Panel (“POP”) to
`review the Decision (Paper 25 (Notification of Receipt of POP Request)),
`which the POP denied (Paper 26 (Order)).
`For the reasons provided below, Petitioner’s Rehearing Request is
`denied.
`
`II. ANALYSIS
`A party requesting rehearing bears the burden of showing that the
`decision should be modified. 37 C.F.R. § 42.71(d). “The request must
`specifically identify all matters the party believes the Board misapprehended
`or overlooked, and the place where each matter was previously addressed in
`a motion, an opposition, or a reply.” Id. When rehearing a decision on a
`petition, we review the decision for an abuse of discretion. 37 C.F.R.
`§ 42.71(c).
`Petitioner’s Rehearing Request raises two primary arguments: (1) that
`the precedential Board decisions in Apple Inc. v. Fintiv, Inc., IPR2020-
`00019, Paper 11 (PTAB Mar. 20, 2020) (precedential), and NHK Spring Co.
`v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018)
`(precedential), were wrongly decided and should be reviewed by the POP;
`and (2) that, even under the Fintiv/NHK Spring framework, the Board erred
`by (a) speculating that the related district court trial will likely occur months
`before any final written decision; (b) failing to place appropriate weight on
`Patent Owner’s litigation conduct; and (c) ignoring that the district court trial
`
`2
`
`
`
`IPR2020-00583
`Patent 7,606,983 B2
`will likely not address the validity of most challenged claims. See, e.g., Req.
`Reh’g 1–2.
`With respect to whether Fintiv and NHK Spring were decided
`correctly, that issue was raised in Petitioner’s POP request, which was
`denied. See Paper 26. With respect to our consideration of the facts under
`the Fintiv/NHK Spring framework, we address each of Petitioner’s
`arguments.
`First, Petitioner contends that we should not have relied upon the
`circumstances surrounding a potential trial date because “the facts do not
`support an estimation that the third trial will occur by any particular date in
`2021.” Req. Reh’g 12. In short, only the trial date for the first of three
`related district court cases was set by the district court and that trial does not
`involve the ’983 patent, which is at issue only in the third trial. See id. at
`12–14. Additionally, the 112-day spread between the first and third trials
`was based on a proposal by Patent Owner and was not agreed to by Intel or
`endorsed by the district court. Id. at 13. Further, Petitioner contends that
`after we issued our Decision, the district court rescheduled the first trial due
`to the closing of the Austin courthouse for civil jury trials because of
`COVID-19 and that there is no indication when the third trial involving the
`’983 patent actually will occur. Id. at 12–13.
`In our Decision, we found that, although there was no set trial date for
`the ’983 patent, the facts available at the time supported the determination
`that trial would likely occur months before any final written decision. Inst.
`Dec. 6–7. Even though we agreed with Petitioner that a firm trial date had
`not been set, the information available at the time of our Decision supported
`Patent Owner’s argument that trial would occur before a final written
`decision would have issued, if not months before. See id.
`
`3
`
`
`
`IPR2020-00583
`Patent 7,606,983 B2
`A conference call was held on January 28, 2021, between counsel for
`the parties and Judges Dang, Gerstenblith, and McGraw to discuss the
`current state of the related district court litigation. A transcript of the
`conference is of record as Exhibit 1026 (“Tr.”). During the conference,
`Patent Owner explained that, although a firm trial date had not been set by
`court order, the parties received an email from Mr. Pearson, one of Judge
`Albright’s law clerks, in which Mr. Pearson acknowledges the urgency of
`setting trial dates and indicates that the parties have priority to a trial date of
`June 7, 2021, for the ’983 patent. Ex. 10271 (Email from Evan Pearson, sent
`Nov. 17, 2020), 1 (Mr. Pearson states, “I will get them on the calendar and
`hold them as a priority – please keep us posted with adjustments.”);
`Tr. 11:17–12:9. Petitioner contends that the June 2021 date held for the
`third trial involving the ’485 patent is based on holding the trial in Austin,
`Texas, where the courthouse is closed currently, and that the first trial was
`moved to Waco, where the courthouse is open currently. Tr. 14:9–16. On
`February 4, 2021, the district court issued an order setting a trial date of
`June 7, 2021, for the ’983 patent. Ex. 2045 (Order Setting Jury Trial).
`The change in circumstances regarding the trial date does not
`persuade us to change our decision to exercise our discretion to deny
`institution. Even if we were to institute an inter partes review proceeding,
`the deadline for issuing a final written decision could be no earlier than
`February 2022. Thus, at this time, it appears likely that trial will occur many
`months before any final written decision would likely issue in this
`proceeding. Therefore, we maintain our finding that Fintiv Factor 2
`
`
`1 Exhibit 1027 consists of a thread of emails, with the most current being the
`email referenced above from Mr. Pearson. See Ex. 1027.
`
`4
`
`
`
`IPR2020-00583
`Patent 7,606,983 B2
`(proximity of the court’s trial date to the Board’s projected statutory
`deadline for a final written decision) weighs in favor of exercising our
`discretion to deny institution pursuant to 35 U.S.C. § 314(a).
`Second, Petitioner contends that we incorrectly weighed the identity
`and behavior of Patent Owner. See Req. Reh’g 14–15. We disagree. In our
`Decision, we considered Petitioner’s allegations regarding Patent Owner’s
`identity and conduct under Fintiv Factor 6 (other circumstances that impact
`the Board’s exercise of discretion, including the merits), and we noted that,
`“[e]ven if Petitioner’s contentions are true, the validity of the ’983 patent is
`at issue in the co-pending litigation, which is likely to go to trial well before
`the deadline for a final written decision in this proceeding.” Inst. Dec. 10.
`Accordingly, we maintain our finding that Petitioner’s “argument does not
`weigh against exercising our discretion to deny institution.” Id.
`Third, Petitioner contends that we erred in analyzing the overlap
`between the related district court litigation and this proceeding (Fintiv
`Factor 4) because we focused on the ’983 patent generally rather than the
`specific claims. Req. Reh’g 14. We disagree. Although we mentioned the
`validity of the ’983 patent, we did so in the context of addressing
`Petitioner’s arguments regarding Patent Owner’s identity and behavior under
`Fintiv Factor 6. In the context of Fintiv Factor 4 (overlap between issues
`raised in the petition and in the parallel proceeding), we found that, at the
`time of the Decision, the grounds and claims had a complete overlap
`between the related litigation and this proceeding. Inst. Dec. 8. Petitioner’s
`argument that Patent Owner would drop claims was too speculative at the
`time to result in weighing the factor differently. Id. at 8–9 (“the potential for
`claim differences alone does not negate that the same combinations of
`
`5
`
`
`
`IPR2020-00583
`Patent 7,606,983 B2
`references asserted in the Petition also are asserted in the Western District of
`Texas litigation”).
`After our Decision, Patent Owner narrowed the claims asserted in the
`related litigation such that only six of the twelve claims challenged in the
`Petition remain in the related litigation. Req. Reh’g 14 (citing Ex. 1025
`(Plaintiff VLSI Technology LLC’s Identification of Narrowed Claims
`Pursuant to the Court’s August 7, 2020 Order), 2). Thus, at present,
`claims 1, 4, 5, 9, 11, and 13 remain in the related litigation. Ex. 1025, 2. In
`contrast, Petitioner challenges claims 1–5, 7, 9, 11–14, and 16 in the
`Petition. Petition 3. Claims 1, 9, and 11 are the independent claims of the
`’983 patent. See Ex. 1001, 11:27–14:9 (claims listing). Each independent
`claim remains asserted in the related litigation. Ex. 1025, 2. The dependent
`claims no longer asserted in the related litigation (claims 2, 3, 7, 12, 14, and
`16) are substantially similar to the claims remaining in the related litigation
`such that the difference in claims does not result in tilting the scale in favor
`of not exercising our discretion to deny institution under Factor 4. Even if
`we weigh the new difference in claims in favor of Petitioner, the overlapping
`grounds and insubstantial differences between the claims no longer
`overlapping each weigh in favor of Patent Owner. Accordingly, on balance,
`we find that Factor 4 weighs neutrally, neither in favor of nor against
`exercising our discretion to deny institution.
`Considering all of the factors, the outcome of our balancing remains
`unchanged. In particular, Factors 1, 4, and 6 weigh neutrally. The related
`litigation involves the same parties as this proceeding. Fact and expert
`discovery has concluded and substantially all, if not all, motions have been
`briefed. Tr. 18:13–21. The trial date, even if not June 7, 2021, is still likely
`to be months before any final written decision could issue in this case; thus,
`
`6
`
`
`
`IPR2020-00583
`Patent 7,606,983 B2
`Factors 2, 3, and 5 weigh in favor of exercising discretion. After weighing
`all of the factors and taking a holistic view of the relevant circumstances, we
`maintain our finding that “instituting an inter partes review would be an
`inefficient use of the Board’s and parties’ resources.” Inst. Dec. 11.
`Accordingly, having considered Petitioner’s Rehearing Request,
`Petitioner has not persuaded us, for the reasons discussed, that the outcome
`of our Decision should be modified.
`
`III. ORDER
`For the foregoing reasons, it is:
`ORDERED that Petitioner’s Rehearing Request (Paper 24) is denied.
`
`
`
`
`7
`
`
`
`IPR2020-00583
`Patent 7,606,983 B2
`For PETITIONER:
`John V. Hobgood
`Donald R. Steinberg
`S. Calvin Walden
`WILMER, CUTLER, PICKERING, HALE AND DORR LLP
`John.Hobgood@wilmerhale.com
`Don.Steinberg@wilmerhale.com
`Calvin.Walden@wilmerhale.com
`
`
`For PATENT OWNER:
`Kenneth Weatherwax
`Bridget Smith
`Flavio Rose
`Edward Hsieh
`Parham Hendifar
`Patrick Maloney
`Jason Linger
`LOWENSTEIN & WEATHERWAX LLP
`weatherwax@lowensteinweatherwax.com
`smith@lowensteinweatherwax.com
`rose@lowensteinweatherwax.com
`hseih@lowensteinweatherwax.com
`hendifar@lowensteinweatherwax.com
`maloney@lowensteinweatherwax.com
`linger@lowensteinweatherwax.com
`
`
`8
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
