`571-272-7822
`
`
`
`
`
`
`
`Paper 10
`Entered: March 19, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`v.
`PINN, INC.,
`Patent Owner.
`
`IPR2021-00220, IPR2021-00221
`Patent 10,455,066 B21
`
`
`
`
`
`
`
`
`
`Before JAMESON LEE, KARL D. EASTHOM, and
`LYNNE E. PETTIGREW, Administrative Patent Judges.
`PETTIGREW, Administrative Patent Judge.
`
`DECISION
`Dismissal Prior to Institution of Trial
`35 U.S.C. § 314
`
`On March 18, 2021, with Board authorization, Petitioner, Apple Inc.,
`filed a Motion to Dismiss the Petition in each of these proceedings.
`
`
`1 Because this decision resolves issues that are identical in both cases, we
`exercise our discretion to issue a single decision to be entered in each case.
`
`
`
`
`
`IPR2021-00220, IPR2021-00221
`Patent 10,455,066 B2
`IPR2021-00220, Paper 9 (“Mot.”); IPR2021-00221, Paper 9.2 Petitioner
`represents that Patent Owner, Pinn, Inc., does not oppose the relief requested
`in the motion. Mot. 2.
`As Petitioner points out, the instant Petitions (IPR2021-00220,
`Paper 2 (“Pet.”); IPR2021-00221, Paper 2) are the second and third petitions
`filed by Petitioner challenging claims of U.S. Patent No. 10,455,066 B2
`(“the ’066 patent”). Mot. 2–3. In the earlier proceeding, PGR2020-00066,
`the Board exercised its discretion to deny institution under 35 U.S.C.
`§ 324(a), having determined “that instituting a post-grant review would be
`an inefficient use of Board resources” in view of the related district court
`proceeding involving the ’066 patent. Apple Inc. v. Pinn, Inc., PGR2020-
`00066, Paper 16 at 21 (PTAB Dec. 8, 2020); see Mot. 3. That district court
`proceeding remains pending. See, e.g., Pet. 80; Paper 6, 2 (Patent Owner’s
`Mandatory Notices).
`Petitioner submits that dismissal of the Petitions is appropriate
`because these proceedings are in a preliminary stage and the Board has not
`issued decisions on institution, which are due on May 23, 2021. Mot. 4.
`Petitioner contends it would be appropriate to dismiss the Petitions “to
`preserve the Board’s and parties’ resources and promote a speedy and
`inexpensive resolution to this dispute.” Id. Petitioner also notes that it is
`barred from filing another petition for review of the ’066 patent because
`Patent Owner served its complaint alleging infringement of the ’066 patent
`
`
`2 The motions are substantively identical. Unless otherwise noted, citations
`are to the papers filed in IPR2021-00220.
`
`2
`
`
`
`IPR2021-00220, IPR2021-00221
`Patent 10,455,066 B2
`more than one year ago. Id. Thus, Petitioner asserts, dismissal of the
`Petitions does not prejudice Patent Owner. Id.
`Under 37 C.F.R. § 42.71(a), “[t]he Board may take up petitions or
`motions for decisions in any order, [and] may grant, deny, or dismiss any
`petition or motion.” These proceedings are at an early stage, and although
`the Board has expended some resources in its initial review of the Petitions,
`under the circumstances presented here we are persuaded it is appropriate to
`dismiss the Petitions and terminate the proceedings to promote efficiency
`and minimize unnecessary costs.
`This paper does not constitute a final written decision pursuant to
`35 U.S.C. § 318(a).
`
`Accordingly, it is
`ORDERED that Petitioner’s Motion to Dismiss in IPR2021-00220 is
`granted;
`FURTHER ORDERED that the Petition in IPR2021-00220 is
`dismissed and the proceeding in IPR2021-00220 is terminated;
`FURTHER ORDERED that Petitioner’s Motion to Dismiss in
`IPR2021-00221 is granted; and
`FURTHER ORDERED that the Petition in IPR2021-00221 is
`dismissed and the proceeding in IPR2021-00221 is terminated.
`
`
`
`3
`
`
`
`IPR2021-00220, IPR2021-00221
`Patent 10,455,066 B2
`PETITIONER:
`
`W. Karl Renner
`Kim Leung
`Usman Khan
`Andrew B. Patrick
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`leung@fr.com
`khan@fr.com
`patrick@fr.com
`
`
`PATENT OWNER:
`
`Cabrach Connor
`CONNOR KUDLAC LEE PLLC
`cab@connorkudlaclee.com
`
`Carder W. Brooks
`David A. Skeels
`WHITAKER CHALK SWINDLE & SCHWARTZ PLLC
`cbrooks@whitakerchalk.com
`dskeels@whitakerchalk.com
`
`John. R. Kasha
`KASHA LAW LLC
`john.kasha@kashalaw.com
`
`
`4
`
`
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