VLSI Technology LLCDownload PDFPatent Trials and Appeals BoardFeb 11, 2021IPR2020-00582 (P.T.A.B. Feb. 11, 2021) Copy Citation Trials@uspto.gov Paper 26 571-272-7822 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. ____________ IPR2020-00582 Patent 7,292,485 B1 ____________ 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) IPR2020-00582 Patent 7,292,485 B1 2 I. INTRODUCTION Intel Corporation (“Petitioner”) filed a Request for Rehearing (Paper 21, “Rehearing Request” or “Req. Reh’g”) of the Decision Denying Institution of Inter Partes Review (Paper 19, “Decision” or “Inst. Dec.”). Petitioner also filed a request for the Precedential Opinion Panel (“POP”) to review the Decision (Paper 22 (Notification of Receipt of POP Request)), which the POP denied (Paper 23 (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) improperly surmising that the related district court trial will likely occur months before any final written decision; (b) relying upon Patent Owner’s antedating evidence without affording Petitioner an opportunity to cross-examine it; (c) failing to place appropriate weight on Patent Owner’s IPR2020-00582 Patent 7,292,485 B1 3 litigation conduct; and (d) ignoring that the district court trial will not address the validity of each challenged claim. 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 23. 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 there was “no indication of when the third trial (involving the ’485 patent) would actually occur.” Req. Reh’g 13. 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 ’485 patent, which is at issue only in the third trial. See id. at 12. 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 ’485 patent actually will occur. Id. at 12–13. In our Decision, we found that, although there was no set trial date for the ’485 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. IPR2020-00582 Patent 7,292,485 B1 4 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 1028 (“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 ’485 patent. Ex. 10291 (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 ’485 patent. Ex. 2054 (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 1029 consists of a thread of emails, with the most current being the email referenced above from Mr. Pearson. See Ex. 1029. IPR2020-00582 Patent 7,292,485 B1 5 (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 argues that we should not have relied on Patent Owner’s antedating evidence under Fintiv Factor 6 (other circumstances that impact the Board’s exercise of discretion, including the merits) without affording Petitioner an opportunity to cross-examine it. Req. Reh’g 2, 13– 14. Although Petitioner did not request an opportunity to cross-examine or otherwise respond to Patent Owner’s antedating evidence, we agree that under the circumstances presented, we should not have weighed Patent Owner’s evidence strongly in favor of exercising our discretion to deny institution.2 Thus, we determine that Fintiv Factor 6 weighs neutrally. However, as discussed below, this change does not alter the outcome of our balancing of the factors. Third, Petitioner contends that we incorrectly weighed the identity and behavior of Patent Owner. See Req. Reh’g 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 ’485 patent is 2 Petitioner contended, without elaboration, that it “expects to show that Nii is prior art to the ’485 patent if given the opportunity to respond” to Patent Owner’s antedating evidence. Paper 12 (Petitioner’s Reply to Patent Owner’s Preliminary Response), 10. In our Decision, we remarked that “we make no determination on the ultimate question whether Patent Owner has antedated Nii” (Inst. Dec. 11 n.6), but we weighed Patent Owner’s evidence and argument in favor of exercising our discretion to deny institution (id. at 11). IPR2020-00582 Patent 7,292,485 B1 6 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. Fourth, Petitioner contends that we erred in analyzing the overlap between the related litigation and this proceeding (Fintiv Factor 4) because we focused on the ’485 patent generally rather than the specific claims. Req. Reh’g 14–15. We disagree. Although we mentioned the validity of the ’485 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 “Petitioner’s representation that it does not intend to include Nii as an invalidating reference when it reduces the number of invalidity grounds advanced in the district court,” left no overlapping ground. Inst. Dec. 8–9. Thus, we weighed Fintiv Factor 4 in Petitioner’s favor, finding that it weighs in favor of not exercising our discretion to deny institution. Id. at 9. Accordingly, the difference in claims asserted in the related litigation and this proceeding does not change the weighing of this factor. Even though we now weigh Fintiv Factor 6 neutrally, the weighing of the other factors remains unchanged. In particular, Factor 1 also weighs 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, Factors 2, 3, and 5 weigh in favor of exercising discretion to deny institution. Although Factor 4 weighs in favor of not exercising IPR2020-00582 Patent 7,292,485 B1 7 discretion to deny institution, 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 21) is denied. IPR2020-00582 Patent 7,292,485 B1 8 For PETITIONER: John Hobgood Donald Steinberg WILMER, CUTLER, PICKERING, HALE AND DORR LLP John.Hobgood@wilmerhale.com Don.Steinberg@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 Copy with citationCopy as parenthetical citation