Samsung Electronics Co., Ltd.v.NVIDIA Corporation

Patent Trial and Appeal Board

Dec 8, 2015

09586249 (P.T.A.B. Dec. 8, 2015)

Trials@uspto.gov Paper 11
Tel: 571-272-7822 Entered: December 8, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

SAMSUNG ELECTRONICS CO., LTD, SAMSUNG ELECTRONICS
AMERICA, INC., and SAMSUNG SEMICONDUCTOR, INC.,
Petitioner,
v.
NVIDIA CORPORATION,
Patent Owner.

Cases
1

IPR2015-01270 (Patent 7,038,685 B1)
IPR2015-01314 (Patent 7,209,140 B1)

Before KEVIN F. TURNER, BEVERLY M. BUNTING, and
JON B. TORNQUIST, Administrative Patent Judges.
BUNTING, Administrative Patent Judge.

DECISION
Dismissing Petition
37 C.F.R. §§ 42.5(a), 42.71(a)

1
This Order addresses issues that are identical in both cases. We exercise
our discretion to issue one Order to be filed in each case. The parties are not
authorized to use this style heading for any subsequent papers.
IPR2015-01270 (Patent 7,038,685 B1)
IPR2015-01314 (Patent 7,209,140 B1)
2

On November 30, 2015, Samsung Electronics Co., Ltd., Samsung
Electronics America, Inc., and Samsung Semiconductor, Inc. (collectively,
“Petitioner”) filed a motion to dismiss its petitions for inter partes review
and terminate these proceedings (“Mot.”) prior to a determination as to
whether to institute trial in each case. Paper 8.
2
Patent Owner, NVIDIA
Corporation (“Patent Owner”), filed an Opposition (“Opp.”) to Petitioner’s
Motion. Paper 9.
Petitioner submits that dismissal is appropriate because each of these
proceedings is in its preliminary phase and the Board “has yet to reach the
merits and issue a decision on institution.” Mot. 1. Dismissal of these
Petitions, according to Petitioner, will preserve both the Board’s and parties’
resources and will “achieve a just, speedy and inexpensive resolution to this
dispute.” Id. Petitioner further explains that these proceedings are one
component in a dispute between the parties that extends between several
jurisdictions and involves 19 patents. Id. Thus, Petitioner concludes good
cause exits to terminate these proceedings, and Patent Owner will not suffer
any prejudice. Id. at 3. Petitioner notes that it was served with a complaint
asserting infringement in the stayed district court action more than a year
ago. Id. at 5.
Patent Owner opposes Petitioner’s motion, arguing that termination
prior to an institution decision “would promote gamesmanship and prejudice
patent owners such as NVIDIA by allowing challengers to make a public
record of baseless assertions of unpatentability without having the merits of
those assertions determined.” Opp. 1. Patent Owner also argues that 35
U.S.C. § 311–314 precludes withdrawal of a petition or termination of

2
Paper and exhibit numbers refer to IPR2015-01270.
IPR2015-01270 (Patent 7,038,685 B1)
IPR2015-01314 (Patent 7,209,140 B1)
3

institution proceedings once Patent Owner exercises their right to file a
preliminary response to the petition. Id. Citing 35 U.S.C. § 317, Patent
Owner contends that “[t]ermination is only allowed after an institution
decision, namely during the trial phase” and that no provision allows
termination prior to institution. Id. at 2. Patent Owner also disputes
Petitioner’s assertions that dismissal would preserve the resources of the
parties, as both Petitioner and Patent Owner have already expended
significant resources. Id. at 4–5.
Both matters are still in the preliminary proceeding stage,
3
and the
Board has not yet decided the merits of either proceeding. To the extent
Patent Owner argues that termination under 37 C.F.R. § 42.72 is inapposite,
we note that the rules do not expressly preclude termination of an inter
partes review during the preliminary proceeding stage. Nonetheless, the
rules do provide us the discretion to “take up petitions or motions for
decisions in any order” and to “grant, deny, or dismiss any petition or
motion” or enter any appropriate order. 37 C.F.R. § 42.71(a). We are
persuaded also that Patent Owner’s arguments concerning the expenditure of
resources fail to consider the requirements of these proceedings should trial
be instituted.
Petitioner was served with a complaint alleging infringement of U.S.
Patent Nos. 7,038,685 and 7,209,140 more than one year ago. Mot. 5.
Petitioner is, therefore, barred from filing another petition for inter partes
review with respect to these patents. 35 U.S.C. § 315(b); Pet. 1. Under

3
“Preliminary proceeding” is defined as the period from the filing of a
petition for instituting a trial to the written decision as to whether a trial will
be instituted. 37 C.F.R. § 42.2.
IPR2015-01270 (Patent 7,038,685 B1)
IPR2015-01314 (Patent 7,209,140 B1)
4

these circumstances and based on the record before us, we exercise our
discretion and dismiss these petitions under 37 C.F.R. §§ 42.5, 42.71(a), at
this early juncture, to promote efficiency and minimize unnecessary costs.

ORDER
In consideration of the foregoing, it is
ORDERED that Petitioner’s motions to dismiss its petitions and
terminate inter partes review in IPR2015-01270 and IPR2015-01314 are
GRANTED; and
FURTHER ORDERED that the petitions in IPR2015-01270 and
IPR2015-01314 are DISMISSED.

IPR2015-01270 (Patent 7,038,685 B1)
IPR2015-01314 (Patent 7,209,140 B1)
5

PETITIONER:
Robert A. Appleby, P.C.
Gregory S. Arovas, P.C.
KIRKLAND & ELLIS LLP
robert.appleby@kirkland.com
greg.arovas@kirkland.com
Samsung-NVIDIA-IPR-Service@kirkland.com
PATENT OWNER:
Christopher Broderick
Don Daybell
ORRICK HERRINGTON & SUTCLIFFE LLP
CPBPTABDocket@orrick.com
D2DPTABDocket@orrick.