Inter Partes Reviews Tales From the Trenches Matthew C. Phillips - PowerPoint PPT Presentation

Inter Partes Reviews – Tales From the Trenches Matthew C. Phillips Laurence & Phillips IP Law August 7, 2019 Oregon State Bar, IP Section Portland, OR, USA 1

Disclaimer • These materials are for informational purposes only and do not constitute legal advice. Patent issues are fact-dependent and require the assistance of counsel experienced with such issues. Neither these materials nor attendance at the associated presentation establishes any form of attorney- client relationship. • These materials may contain inaccuracies, errors or omissions despite our diligent efforts in preparing these materials, for which any liability is disclaimed. • The views expressed in this presentation are solely those of the presenters for the sake of pedagogy and entertainment and do not represent the views of Laurence & Phillips IP Law or clients of the firm. 2

Case Study #1 3

Case Study #1 – The ’346 Patent 4

Case Study #1 – ’346 Patent 5

Case Study #1 – IPRs Case No. Filing Date Pet’nrs Refs. Result Final written decision in favor of Hathorn Dell, HP, IPR2013-00635 9/27/2013 patent owner. Affirmed by Federal NetApp Weygant Circuit. TruCluster IPR2014-00152 11/15/2013 Dell, HP, OpenVMS Trial not instituted. NetApp Hathorn + IPR2014-00901 6/4/2014 VMware Consolidated. Final written decision Mylex in favor of patent owner. Settled on IBM, Hathorn + appeal. IPR2014-00949 6/13/2014 Oracle Mylex Chong IBM, IPR2014-00976 6/18/2014 Trial not instituted. Oracle DeKoning Dell, HP, Hathorn + Trial not instituted in IPR2015-00549 1/8/2015 NetApp Mylex “representative” Board opinion. 6

Case Study #1 – Hathorn Hathorn ’346 Patent 7

Case Study #1 – DeKoning 8

Case Study #1 – Katz Decl. 9

Case Study #1 – Mylex 10

Case Study #1 – The Purple Path Alternative X 11

Case Study #2 12

Case Study #2 – The ’544 Patent 13

Case Study #2 – ’544 Patent Claims 8. A flash memory apparatus comprising: a flash memory main body including a case within which a memory element is mounted, an USB (Universal Serial Bus) terminal piece electrically connected with the memory element and installed at a front end of the case in a projecting manner; and a cover including pair of parallel plate members facing each other and spaced by an interval corresponding to the thickness of the case, the cover having an open front end, a closed rear end and a pair of lateral side openings; the parallel plate members defining an inner space receiving the case and being hinged to the case wherein the USB terminal piece is positioned within the inner space of the cover or exposed outside the cover by rotating the cover and case with respect to one another. 14

Case Study #2 – ’544 Patent Claims 11. The apparatus according to claim 8 wherein the cover and case are hinged by a hinge protuberance on at least one side of the case and at least one hinge hole in one of the parallel plate members that receives the hinge protuberance. 12. The apparatus of claim 11 wherein there is a hinged protuberance on a front side and a back side of the case and a hinge hole in each of the parallel plate members. Other claims are like 11 but say “formed on” rather than “on.” 15

Case Study #2 – IPRs Case No. Filing Date Claims Result Trial consolidated. Mixed final IPR2015-00149 10/24/2014 8, 11, 12, 16, 18, 20 written decision. Affirmed-in-part and reversed-in-part by Federal 1-3, 7, 9, 10, 14, 15, IPR2014-00559 1/14/2015 Circuit. 17, 19, 21-24 16

Case Study #2 – Matsumiya + Deng ≠ + Matsumiya Deng ’544 Patent Fig. 15a Fig. 2 Fig. 3a 17

Case Study #2 – Hoogesteger + Wu ≠ + ’544 Patent Wu Hoogesteger Fig. 3a Fig. 2 Fig. 3 18

Case Study #2 – Decisions • Board – Interpreted (under BRI) “hinge protuberance” as “hinging structure that bulges out, protrudes, or projects, beyond the surrounding surface.” – Intrepreted ( sua sponte ) “on” merely indicates relative position and “formed on” as integrated and attached to. • Federal Circuit – “on” = “formed on” = “physically attached to or integrated into” – Pavo Solutions LLC v. Kingston Tech. Co. , 711 F. App’x 1020 (Fed. Cir. Nov. 6, 2017) 19

Thank You! Matthew C. Phillips Laurence & Phillips IP Law Portland, Oregon Washington, DC 503-964-1129 mphillips@lpiplaw.com 20