VLSI Technology LLC

Patent Trials and Appeals Board

Feb 19, 2021

IPR2020-00526 (P.T.A.B. Feb. 19, 2021)

Trials@uspto.gov Paper No. 21
571-272-7822 Date: February 19, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

INTEL CORPORATION,
Petitioner,

v.

VLSI TECHNOLOGY LLC,
Patent Owner.
____________

IPR2020-00526
IPR2020-00527
Patent 6,663,187 C1
____________

Before THU A. DANG, BART A. GERSTENBLITH, and
KIMBERLY McGRAW, Administrative Patent Judges.

McGRAW, Administrative Patent Judge.

DECISION
Denying Petitioner’s Requests on Rehearing of the
Decision Denying Institution of Inter Partes Review
37 C.F.R. § 42.71(d)

IPR2020-00526, IPR2020-00527
Patent 6,663,187 C1
2
I. INTRODUCTION
Intel Corporation (“Petitioner”) filed a Request for Rehearing in
IPR2020-00526 (Paper 17, “526-Req. Reh’g”) and in IPR2020-00527
(Paper 19, “527-Req. Reh’g”) (collectively, “Rehearing Requests”) seeking
“rehearing and Precedential Opinion Panel review” of our Decision (“Dec.
Inst.”) to deny institution (IPR2020-00526, Paper 16; IPR2020-00527,
Paper 181) of two separate petitions challenging claims of U.S. Patent
No. 6,663,187 C1. Petitioner also requested review by the Board’s
Precedential Opinion Panel (“POP”) in each proceeding. See IPR2020-
00526, Paper 18 (Notification of Receipt of POP Request); IPR2020-00527,
Paper 20 (Notification of Receipt of POP Request). POP review was denied.
IPR2020-00526, Paper 19 (Order); IPR2020-00527, Paper 21 (Order).
For the reasons provided below, Petitioner’s Requests for Rehearing
of our Decision to deny institution in IPR2020-00526 and IPR2020-00527
are 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).

1 A single Decision denying institution in both IPR2020-00526 and
IPR2020-00527 was entered in each proceeding.
IPR2020-00526, IPR2020-00527
Patent 6,663,187 C1
3
Petitioner’s Rehearing Requests raise 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 failing to place sufficient weight on (a) the identity and prior conduct of
VLSI Technology LLC (“Patent Owner”) and (b) Petitioner’s argument that
only a subset of the claims challenged in the Petition will be presented and
resolved in the related district court trial. See, e.g., 526-Req. Reh’g 1–3, 6–
15.2
Petitioner’s Requests do not persuade us that our Decision to exercise
our discretion to deny institution should be modified.
With respect to Petitioner’s first argument, that Fintiv and NHK
Spring were wrongly decided and should be reviewed by the POP, the POP
has considered and denied Petitioner’s requests. See IPR2020-00526,
Paper 19; IPR2020-00527, Paper 21.
With respect to Petitioner’s second argument, we disagree with
Petitioner that we incorrectly weighed either the identity and prior conduct
of Patent Owner or the potential difference in claims challenged in the
Petition and asserted in the related litigation in deciding whether to exercise
our discretion to deny institution pursuant to 35 U.S.C. § 314(a).
Our Decision addressed Petitioner’s allegations regarding Patent
Owner’s identity and conduct under Fintiv factor 6 (other circumstances that

2 For convenience, citations are to the Rehearing Request filed in IPR2020-
00526. Similar arguments were made in the Rehearing Request filed in
IPR2020-00527. See 527-Req. Reh’g.
IPR2020-00526, IPR2020-00527
Patent 6,663,187 C1
4
impact the Board’s exercise of discretion, including the merits), and we
noted that, “[e]ven if Petitioner’s contentions are true, Petitioner has not
shown these contentions will avoid adjudication of Intel’s invalidity
defenses” in the related Western District of Texas litigation. Dec. Inst. 13.
In light of the record at the time, we found that Petitioner’s arguments in
connection with Fintiv factor 6 did not weigh against exercising our
discretion to deny institution. Id. at 13–15. Accordingly, we maintain our
finding that Petitioner’s argument does not weigh against exercising our
discretion to deny institution.
We also disagree with Petitioner’s assertions that we placed
inadequate weight on Petitioner’s argument that not all of the challenged
claims might be asserted at trial. See, e.g., 526-Req. Reh’g 2–3, 9–10, 13–
15. We considered this argument in addressing Fintiv factor 4 (overlap
between issues raised in the petition and in the parallel proceeding) and
determined that, based on the record as it existed at that time, Petitioner’s
contention that the claims challenged in the present proceedings may not be
asserted at trial in the related litigation was not persuasive as it was based on
speculation and that Petitioner did not provide sufficient evidentiary support
that any of the claims asserted in IPR2020-00526 or IPR2020-00527 would
not be adjudicated at trial. Dec. Inst. 12. In its Rehearing Requests,
Petitioner contends that after the Board issued its discretionary denial
decision, Patent Owner has since narrowed its asserted claims in the parallel
proceeding, such that only three of the nine claims challenged in IPR2020-
00526 and only two of the five claims challenged in IPR2020-00527 remain
at issue in the litigation. 526-Req. Reh’g 14; 527-Req. Reh’g 14. Petitioner
asserts “[i]f the Board does not revisit its denial of institution decision” the
dropped claims “will be insulated from validity challenges, as [Petitioner]
IPR2020-00526, IPR2020-00527
Patent 6,663,187 C1
5
will be barred from challenging them in future petitions.” 526-Req. Reh’g
14; 527-Req. Reh’g 14.
Petitioner has not shown that this change in circumstance warrants
modifying (1) the determination that Fintiv factor 4 weighs in favor of
exercising discretion to deny institution or (2) the determination, after
weighing all factors and taking a holistic view of the relevant circumstances,
to exercise discretion to deny institution. Several of the claims challenged in
each Petition are still at issue in the parallel proceeding, and the
combinations of references asserted by Petitioner in the district court largely
overlap with the combinations of references asserted in the Petitions.
Petitioner has not identified any differences among the claims that have been
dropped and the claims that remain as a reason to modify our Decision. See
Fintiv, Paper 11 at 13 (“if a petition involves the same prior art challenges
but challenges claims in addition to those that are challenged in the district
court, it may still be inefficient to proceed because the district court may
resolve validity of enough overlapping claims to resolve key issues in the
petition”).
Nor are we persuaded by Petitioner’s argument that if “the Board does
not revisit its denial of institution decision, the [already dropped claims (and
any other claims VLSI may drop before trial)] will be insulated from validity
challenges, as Intel will be barred from challenging those claims in future
petitions.” 526-Req. Reh’g 14–15 (citing 35 U.S.C. § 315(b)); see also id.
at 14 (stating that “VLSI can assert those shielded claims against others in
future cases”). Although Petitioner may be barred from challenging the
dropped claims in future petitions, there is no indication that Petitioner
would be precluded from challenging those claims in district court litigation
if Patent Owner ultimately decides to pursue them against Petitioner or that a
IPR2020-00526, IPR2020-00527
Patent 6,663,187 C1
6
third party would be precluded from challenging those claims via petition if
asserted against that party by Patent Owner.
We also note that on February 4, 2021, the district court issued an
Order setting a trial date of April 12, 2021 for the ’187 patent. Ex. 3002
(Order Setting Jury Trial). This 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.
Accordingly, having considered Petitioner’s Rehearing Requests,
Petitioner has not persuaded us, for the reasons discussed, that our Decision
denying institution of IPR2020-00526 and IPR2020-00527 should be
modified.
III. ORDER
For the foregoing reasons, it is:
ORDERED that Petitioner’s Rehearing Request in IPR2020-00526
(Paper 17) is denied, and
FURTHER ORDERED that Petitioner’s Rehearing Request in
IPR2020-00527 (Paper 19) is denied.

IPR2020-00526, IPR2020-00527
Patent 6,663,187 C1
7
For PETITIONER:
Donald Steinberg
John Hobgood
WILMER, CUTLER, PICKERING, HALE AND DORR LLP
Don.steinberg@wilmerhale.com
john.hobgood@wilmerhale.com

For PATENT OWNER:
Kenneth Weatherwax
Nathan Lowenstein
Bridget Smith
Flavio Rose
Edward Hsieh
Parham Hendifar
Patrick Maloney
Jason Linger
LOWENSTEIN & WEATHERWAX LLP
weatherwax@lowensteinweatherwax.com
lowenstein@lowensteinweatherwax.com
smith@lowensteinweatherwax.com
rose@lowensteinweatherwax.com
hseih@lowensteinweatherwax.com
hendifar@lowensteinweatherwax.com
maloney@lowensteinweatherwax.com
linger@lowensteinweatherwax.com