Siemens Gamesa Renewable Energy A/S

Patent Trials and Appeals Board

Oct 7, 2021

IPR2021-00723 (P.T.A.B. Oct. 7, 2021)

Trials@uspto.gov Paper 11
571-272-7822 Entered: October 7, 2021
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

GENERAL ELECTRIC CO. and
GE RENEWABLES NORTH AMERICA, LLC,
Petitioner,
v.
SIEMENS GAMESA RENEWABLE ENERGY A/S,
Patent Owner.

IPR2021-00722 (Patent 9,279,413 B2)
IPR2021-00723 (Patent 8,575,776 B2)1

Before MEREDITH C. PETRAVICK, GEORGE R. HOSKINS,
MICHELLE N. WORMMEESTER, and FREDERICK C. LANEY,
Administrative Patent Judges. 2

PETRAVICK, Administrative Patent Judge.

DECISION
Dismissal Prior to Institution of Trial
35 U.S.C. § 314

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.
2 This is not an expanded panel. The panel for IPR2021-00722 is Judges
Petravick, Wormmeester, and Laney. The panel for IPR2021-00723 is
Judges Petravick, Hoskins, and Laney.
IPR2021-00722 (Patent 9,279,413 B2)
IPR2021-00723 (Patent 8,575,776 B2)

2
On October 5, 2021, Petitioner filed a Motion to Dismiss the Petition
in each of these proceedings. Paper 103 (“Mot.”). The Board authorized the
Motions to Dismiss after a September 27, 2021 conference call, during
which Petitioner explained that it seeks to end these proceedings to conserve
its resources for the related district court proceeding, Siemens Gamesa
Renewable Energy A/S v. General Electric Co. and GE Renewables North
America, LLC, Case No. 1:21-cv-10216 (D. Mass.), and acknowledged that,
in view of the related district court proceeding’s progress, the Board’s
precedent in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB
Mar. 20, 2020) (precedential) favors the Board exercising discretion to deny
institution of trial in these proceedings. See Paper 9.
Petitioner states that “Petitioner and Patent Owner have met and
conferred, and Patent Owner does not oppose the relief requested in this
motion.” Mot. 2.
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 October 21, 2021. Id.
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. at 3. Petitioner also notes that it
“has represented to Patent Owner that it does not intend to file another
petition for inter partes review” with respect to these patents. Thus,
Petitioner asserts, dismissal of the Petitions does not prejudice Patent
Owner. Id.

3 The motions are substantively identical. Unless otherwise noted, citations
are to the papers filed in IPR2021-00722.
IPR2021-00722 (Patent 9,279,413 B2)
IPR2021-00723 (Patent 8,575,776 B2)

3
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).

It is:
ORDERED that Petitioner’s Motion to Dismiss in IPR2021-00722 is
granted;
FURTHER ORDERED that the Petition in IPR2021-00722 is
dismissed and the proceeding in IPR2021-00722 is terminated;
FURTHER ORDERED that Petitioner’s Motion to Dismiss in
IPR2021-00723 is granted; and
FURTHER ORDERED that the Petition in IPR2021-00723 is
dismissed and the proceeding in IPR2021-00723 is terminated.

IPR2021-00722 (Patent 9,279,413 B2)
IPR2021-00723 (Patent 8,575,776 B2)

4
FOR PETITIONER:

Monica Grewal
Scott Bertulli
Jonathan Knight
WILMER CUTLER PICKERING HALE AND DORR LLP
monica.grewal@wilmerhale.com
scott.bertulli@wilmerhale.com
jonathan.knight@wilmerhale.com

FOR PATENT OWNER:

Michael D. Gannon
Leif R. Sigmond, Jr.
Douglas S. Rupert
Stephanie M. Hatzikyriakou
BAKER & HOSTETLER LLP
lsigmond@bakerlaw.com
mgannon@bakerlaw.com
drupert@bakerlaw.com
shatzikyriakou@bakerlaw.com