Pinn Inc.

Patent Trials and Appeals BoardMar 19, 2021

IPR2020-01668 (P.T.A.B. Mar. 19, 2021)

Trials@uspto.gov Paper 13 571-272-7822 Entered: March 19, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD APPLE INC., Petitioner, v. PINN, INC., Patent Owner. IPR2020-01668 Patent 9,807,491 B2 Before JAMESON LEE, KARL D. EASTHOM, and LYNNE E. PETTIGREW, Administrative Patent Judges. PETTIGREW, Administrative Patent Judge. DECISION Dismissal Prior to Institution of Trial 35 U.S.C. § 314 On March 18, 2021, with Board authorization, Petitioner, Apple Inc., filed a Motion to Dismiss the Petition in this proceeding. Paper 12 (“Mot.”). Petitioner represents that Patent Owner, Pinn, Inc., does not oppose the relief requested in the motion. Mot. 2. As Petitioner points out, the instant Petition (Paper 3, “Pet.”) is the second petition filed by Petitioner challenging claims of U.S. Patent IPR2020-01668 Patent 9,807,491 B2 2 No. 9,807, 491 B2 (“the ’491 patent”). Mot. 2. In the earlier proceeding, IPR2020-00999, the Board exercised its discretion to deny institution under 35 U.S.C. § 314(a), having determined “that instituting an inter partes review would be an inefficient use of Board resources” in view of the related district court proceeding involving the ’491 patent. Apple Inc. v. Pinn, Inc., IPR2020-00999, Paper 15 at 20 (PTAB Dec. 8, 2020); see Mot. 3. That district court proceeding remains pending. See, e.g., Pet. 75; Paper 8, 2 (Patent Owner’s Mandatory Notices). Petitioner submits that dismissal of the Petition is appropriate because this proceeding is in a preliminary stage and the Board has not issued a decision on institution, which is due on March 29, 2021. Mot. 4. Although “[t]he Board has undoubtedly expended some resources on initial review of the instant Petition,” Petitioner contends it nevertheless would be appropriate to dismiss the Petition “to preserve the Board’s and parties’ resources and promote a speedy and inexpensive resolution to this dispute.” Id. Petitioner also notes that it is barred from filing another petition for review of the ’491 patent because Patent Owner served its complaint alleging infringement of the ’491 patent more than one year ago. Id. Thus, Petitioner asserts, dismissal of the Petition does not prejudice Patent Owner. Id. Under 37 C.F.R. § 42.71(a), “[t]he Board may take up petitions or motions for decisions in any order, [and] may grant, deny, or dismiss any petition or motion.” This proceeding is at an early stage, and although the Board has expended some resources, under the circumstances presented here IPR2020-01668 Patent 9,807,491 B2 3 we are persuaded it is appropriate to dismiss the Petition and terminate the proceeding to promote efficiency and minimize unnecessary costs. This paper does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). Accordingly, it is ORDERED that Petitioner’s Motion to Dismiss is granted; and FURTHER ORDERED that the Petition is dismissed and the proceeding is terminated. IPR2020-01668 Patent 9,807,491 B2 4 PETITIONER: W. Karl Renner Kim Leung Usman Khan Andrew B. Patrick FISH & RICHARDSON P.C. axf-ptab@fr.com leung@fr.com khan@fr.com patrick@fr.com PATENT OWNER: Cabrach Connor CONNOR KUDLAC LEE PLLC cab@connorkudlaclee.com Carder W. Brooks David A. Skeels WHITAKER CHALK SWINDLE & SCHWARTZ PLLC cbrooks@whitakerchalk.com dskeels@whitakerchalk.com John. R. Kasha KASHA LAW LLC john.kasha@kashalaw.com