From:
`To:
`Cc:
`
`Subject:
`Date:
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`Cooley, Daniel
`Precedential_Opinion_Panel_Request
`Google-v-Jawbone-IPRs; plambrianakos@fabricantllp.com; vrubino@fabricantllp.com;
`eiturralde@fabricantllp.com; rcowell@fabricantllp.com; ptab@fabricantllp.com; Arner, Erika; Rodkey, Kevin;
`Boyer, Alexander
`IPR2022-00888 - Request for Precedential Opinion Panel Review of Institution Decision
`Wednesday, December 28, 2022 6:09:00 PM
`
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`
`Dear Board,
`
`Petitioner respectfully requests Precedential Opinion Panel (POP) review of the Board’s institution
`decision denying inter partes review in IPR2022-00888 (Paper 12). In particular, POP review is
`needed “to resolve conflicts between Board decisions” and “to promote certainty and consistency.”
`See SOP 2 at II(A).
`
`The Board’s decision in IPR2022-00888 contradicts its decision to institute in IPR2022-00797 (Paper
`12), which involved the same claim features and the same prior art. The Board’s denial of institution
`in IPR2022-00888 is therefore arbitrary and capricious. Based on my professional judgment, I believe
`the Board panel decision is contrary to the following statute: The Administrative Procedure Act, 5
`U.S. Code § 706(2)(A). The same claim terms and inconsistency are also present in IPR2022-00604
`(Paper 12), which will be impacted by a rehearing decision in IPR2022-00888. There, the Board
`denied institution for the same reasons it presented in IPR2022-00888.
`
`The Board’s decision in IPR2022-00888 is also inconsistent with controlling precedent because it
`incorrectly holds that: (1) one teaching in the prior art cannot teach two overlapping claim features
`and (2) an independent claim does not cover an embodiment that one of its dependent claims
`covers. Based on my professional judgment, I believe the Board panel decision is contrary to the
`following decisions of the United States Court of Appeals for the Federal Circuit: Powell v. Home
`Depot U.S.A., Inc., 663 F.3d 1221 (Fed. Cir. 2011) and Littelfuse, Inc. v. Mersen USA EP Corp., 29 F.4th
`1376 (Fed. Cir. 2022).
`
`Best Regards,
`
`Daniel C. Cooley | Bio
`Partner
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`1875 Explorer Street, Suite 800, Reston, Virginia 20190-6023
`571.203.2778 | fax: 202.408.4400 | daniel.cooley@finnegan.com | www.finnegan.com
`
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`
`IPR2022-00888
`Ex. 3001
`
`