VLSI Technology LLC

Patent Trials and Appeals Board

Feb 11, 2021

IPR2020-00582 (P.T.A.B. Feb. 11, 2021)

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)

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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
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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.
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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.
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(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).
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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
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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.

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Patent 7,292,485 B1
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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