IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Examiner: Unassigned
`
`Group Art Unit: Unassigned
`
`Monday, April 29, 2013
`
`))))
`
`)
`)
`)
`)
`
`)))
`
`In re: Gary B. Rohrabaugh and
`
`Scott A. Sherman
`
`Patent No.: 7,461,353
`
`Issued: December 2, 2008
`
`For: Scalable Display of
`
`Internet Content on Mobile Devices
`
`MOTION FOR JOINDER
`UNDER 37 C.F.R. §§ 42.22 AND 42.122(b)
`
`Motorola Mobility LLC (“Petitioner” or “Motorola Mobility”) submits
`
`concurrently herewith a Petition for Inter Partes Review of U.S. Patent No.
`
`7,461,353 (“Petition”). Petitioner respectfully requests that its Petition be granted
`
`and that the proceedings be joined pursuant to 35 U.S.C. § 315(c) and 37 C.F.R.
`
`§ 42.122(b) with the pending inter partes review proceedings concerning the same
`
`patent in Kyocera Corporation v. SoftView LLC, Case IPR2013-00007 (“Kyocera
`
`IPR”). Petitioner submits that joinder is appropriate because it will promote
`
`efficient resolution of the issues without affecting scheduling for the pending
`
`proceeding and will not prejudice the parties to the Kyocera IPR. Absent joinder,
`
`Petitioner may be prejudiced because its interests will not be adequately
`
`represented in the pending inter partes review proceedings.
`
`
`
`Examiner: Unassigned
`
`Group Art Unit: Unassigned
`
`Monday, April 29, 2013
`
`))))
`
`)
`)
`)
`)
`
`)))
`
`In re: Gary B. Rohrabaugh and
`
`Scott A. Sherman
`
`Patent No.: 7,461,353
`
`Issued: December 2, 2008
`
`For: Scalable Display of
`
`Internet Content on Mobile Devices
`
`MOTION FOR JOINDER
`UNDER 37 C.F.R. §§ 42.22 AND 42.122(b)
`
`Motorola Mobility LLC (“Petitioner” or “Motorola Mobility”) submits
`
`concurrently herewith a Petition for Inter Partes Review of U.S. Patent No.
`
`7,461,353 (“Petition”). Petitioner respectfully requests that its Petition be granted
`
`and that the proceedings be joined pursuant to 35 U.S.C. § 315(c) and 37 C.F.R.
`
`§ 42.122(b) with the pending inter partes review proceedings concerning the same
`
`patent in Kyocera Corporation v. SoftView LLC, Case IPR2013-00007 (“Kyocera
`
`IPR”). Petitioner submits that joinder is appropriate because it will promote
`
`efficient resolution of the issues without affecting scheduling for the pending
`
`proceeding and will not prejudice the parties to the Kyocera IPR. Absent joinder,
`
`Petitioner may be prejudiced because its interests will not be adequately
`
`represented in the pending inter partes review proceedings.
`
`
`
`Petitioner’s motion for joinder and accompanying Petition are timely under
`
`37 C.F.R. §§ 42.22 and 42.122(b), as they are submitted within one month of
`
`March 29, 2013, the date that the Kyocera IPR was instituted.1
`
`I.
`
`
`
`Background and Related Proceedings
`
`SoftView LLC is the owner of U.S. Patent No. 7,461,353 (the “‘353 Patent”)
`
`and related U.S. Patent No. 7,831,926 (the “‘926 Patent”). In 2010, SoftView sued
`
`Apple, Inc. and AT&T Mobility for infringement of the ‘353 Patent and the ‘926
`
`Patent (the “Patents-in-Suit”). SoftView LLC v. Apple Inc. et al., Case No. 10-389-
`
`LPS (D. Del.) (the “Underlying Litigation”). On September 30, 2011, SoftView
`
`filed an amended complaint alleging for the first time that Petitioner and 16 new
`
`defendants infringed the ‘353 and ‘926 Patents. Id. (D.I. 108-3). The cases against
`
`all of the defendants are consolidated for pre-trial purposes, and discovery is
`
`ongoing.
`
`
`
`In addition to the Underlying Litigation, the ‘353 Patent is the subject of
`
`three pending reexamination proceedings including: (i) Inter Partes Reexamination
`
`1 On April 26, 2013, counsel for Petitioner confirmed with Judge Joni Chang of
`the Patent Trial and Appeal Board that § 42.122(b) provides for filing motions for
`joinder and that prior authorization for filing a motion for joinder with a petition is
`not required under the Board’s rules. The Board further provided express
`authorization for Motorola’s Motion for Joinder on April 29, 2013. Judge Chang
`expressed that the Board would welcome the opportunity to discuss Petitioner’s
`joinder motion with Petitioner and the parties to the Kyocera IPR. Petitioner has
`reached out to the Board to schedule a conference and anticipates that a conference
`will occur soon.
`
`2
`
`
`
`No. 95/000,634; (ii) Ex Parte Reexamination No. 90/009,994; and (iii) Inter Partes
`
`Reexamination No. 95/002,132. Petitioner filed the request for Inter Partes
`
`Reexamination No. 95/002,132; Apple, Inc. requested the other two pending
`
`reexaminations.
`
`
`
`Kyocera Corporation filed its petition for inter partes review of the ‘353
`
`Patent on October 2, 2012. On December 21, 2012, the Patent Trial and Appeal
`
`Board (“Board”) stayed the three pending reexamination proceedings, including
`
`the reexamination filed by Petitioner, in view of Kyocera’s IPR petition. Kyocera
`
`Corporation v. SoftView LLC, Case IPR2013-00007, Paper No. 9 (Order to Stay
`
`the Concurrent Reexaminations). The Board noted that all of the claims
`
`challenged by Kyocera would be reexamined in the pending reexaminations and
`
`that the grounds of challenge in the Kyocera IPR are based on prior art references
`
`on which many of the rejections in the pending reexaminations are also based. Id.
`
`The Board determined that there was good cause to stay the pending reexamination
`
`proceedings to avoid duplicating efforts and potential inconsistencies among the
`
`proceedings. Id.
`
`
`
`The Board granted the Kyocera IPR on March 29, 2013. Soon thereafter,
`
`Kyocera filed a motion to stay the Underlying Litigation pending the outcome of
`
`the Kyocera IPR. SoftView LLC v. Apple Inc. et al., Case 10-389-LPS (D. Del.)
`
`(D.I. 940). That motion is pending.
`
`3
`
`
`
`Petitioner understands that the parties to the Kyocera IPR have stipulated to
`
`postpone the first deadline – the due date for SoftView’s response to Kyocera’s
`
`petition and any motion to amend the patent – to June 28, 2013. Oral argument is
`
`set for January 7, 2014.
`
`II.
`
`Joinder will not impact the Board’s ability to complete the review
`within the one-year period
`
`Joinder in this case will not impact the Board’s ability to complete its review
`
`in a timely manner. 35 U.S.C. § 316(a)(11) and associated rule 37 C.F.R.
`
`§ 42.100(c) provide that inter partes review proceedings should be completed and
`
`the Board’s final decision issued within one year of institution of the review. The
`
`same provisions provide the Board with flexibility to extend the one-year period by
`
`up to six months for good cause, or in the case of joinder. Id. (§ 316(a)(11)). In
`
`this case, joinder should not affect the Board’s ability to issue its final
`
`determination within one year because Petitioner does not raise any issues that are
`
`not already before the Board.
`
`The Petition for Inter Partes Review of the ‘353 Patent submitted by
`
`Petitioner is based on the same grounds and same combinations of prior art that
`
`were submitted by Kyocera Corporation and granted by the Board in the Kyocera
`
`IPR, for which joinder is requested. The first deadline in the Kyocera IPR is the
`
`due date for SoftView’s response to Kyocera’s petition (37 C.F.R. § 42.120) and
`
`any motion to amend the patent (37 C.F.R. § 42.121). Petitioner understands that
`
`4
`
`
`
`SoftView and Kyocera have stipulated to postpone this deadline to June 28, 2013 –
`
`two months from the date of this motion. Should the Board determine to grant
`
`Petitioner’s request for joinder, SoftView will have ample time to complete its
`
`submissions by its deadline. Because Petitioner’s inter partes review petition does
`
`not raise any new issues, SoftView’s response would not require any analysis
`
`beyond what SoftView is already required to undertake to respond to Kyocera’s
`
`petition.
`
`Motorola respectfully suggests that further briefing and discovery may be
`
`simplified, further to minimize any impact to the schedule or the volume of
`
`materials to be submitted to the Board. Given that Kyocera and Motorola will be
`
`addressing the same prior art and the same bases for rejection of the claims at
`
`issue, the Board may order Kyocera and Motorola to consolidate their submissions
`
`and to conduct joint discovery where appropriate. Conducting the proceedings in
`
`this manner should avoid further complication or delay.
`
`III. Joinder would enhance efficiency by consolidating issues, avoiding
`duplicate efforts, and preventing inconsistencies among the pending
`proceedings
`
`
`
`The validity of the ‘353 patent is squarely at issue in, as described above, (a)
`
`the District Court litigation, (b) three pending reexaminations (presently stayed in
`
`light of the Kyocera IPR), and (c) the Kyocera IPR. In deciding to stay the
`
`reexamination requested by Petitioner and the two reexaminations requested by
`
`5
`
`
`
`Apple Inc., the Board recognized that conducting the reexaminations concurrently
`
`with the Kyocera IPR “would duplicate efforts within the Office and could
`
`potentially result in inconsistencies among the proceedings. Amendment of the
`
`claims in the reexamination proceedings could change the scope of the claims
`
`challenged in [the Kyocera IPR] while the Board is conducting its review.”
`
`Kyocera Corporation v. SoftView LLC, Case IPR2013-00007, Paper No. 9 (Order
`
`to Stay the Concurrent Reexaminations). The same logic urges joinder.
`
`Determining the same validity questions concerning the ‘353 Patent in
`
`multiple concurrent proceedings would duplicate efforts, and create a risk of
`
`inconsistent results. Proceeding with a consolidated inter partes review would
`
`avoid inefficiency and potential inconsistency and would result in a final written
`
`decision within one year. The decision in the inter partes review will resolve the
`
`issues in the reexaminations, and, if it is determined that the patent claims are
`
`unpatentable, would also resolve the district court proceedings. For these reasons,
`
`and especially because Petitioner raises the same validity questions as those
`
`already before the Board in the Kyocera IPR, joinder is appropriate.
`
`IV. Without joinder, Motorola Mobility may be prejudiced.
`
`Petitioner would be prejudiced if it is not permitted to join and to participate
`
`in the Kyocera IPR which will affect not only Petitioner’s pending inter partes
`
`6
`
`
`
`reexamination, but also will likely simplify, or even entirely resolve, issues in the
`
`Underlying Litigation.
`
`Petitioner submitted its request for inter partes reexamination on August 31,
`
`2012, before the inter partes review provisions of the America Invents Act went
`
`into effect. See Inter Partes Reexamination No. 95/002,132. As described above,
`
`that reexamination and two others (filed by Apple, Inc.) were pending before the
`
`Kyocera IPR was granted, and were stayed in view of the Kyocera IPR on
`
`December 21, 2012. Kyocera Corporation v. SoftView LLC, Case IPR2013-00007,
`
`Paper No. 9 (Order to Stay the Concurrent Reexaminations). The Board
`
`recognized that its decision in the Kyocera IPR “will likely simplify the issues in
`
`the reexaminations.” Id. For the same reasons, the decision in the Kyocera IPR
`
`will likely simplify, or even resolve, the issues in the Underlying Litigation.
`
`Joinder is warranted to permit Petitioner to protect its interests in the matters at
`
`issue in the inter partes reexamination and Underlying Litigation.
`
`The possibility of settlement between SoftView and Kyocera and the
`
`resulting impact on Petitioner further supports that joinder is appropriate. 35
`
`U.S.C. § 317(a) provides that an inter partes review “shall be terminated with
`
`respect to any petitioner upon the joint request of the petitioner and the patent
`
`owner” unless the Board has already reached its decision on the merits. If no
`
`petitioner remains after settlement, “the Office may terminate the review.” Id. If
`
`7
`
`
`
`SoftView and Kyocera were to reach a settlement, the pending Kyocera IPR thus
`
`may terminate without proceeding to a final written decision. Petitioner has a
`
`significant interest in seeing the IPR proceedings through to a final decision, given
`
`the potential impact on Petitioner’s stayed inter partes reexamination and
`
`Petitioner’s defense
`
`in
`
`the Underlying Litigation. Joinder would protect
`
`Petitioner’s interests and avoid the potential prejudice to Petitioner that could result
`
`from a settlement between SoftView and Kyocera.
`
`V.
`
`Joinder will not prejudice SoftView or Kyocera
`
`
`
`Permitting joinder will not prejudice SoftView or Kyocera. Petitioner raises
`
`no issues that are not already before the Board, such that joinder would not affect
`
`the timing of the Kyocera IPR or the content of SoftView’s response due on June
`
`28, 2013. Moreover, even if the Board were to determine that joinder would
`
`require an extension to the schedule, such an extension is permitted by law and is
`
`not a reason for denying joinder. 35 U.S.C. § 316(a)(1); 37 C.F.R. § 42.100(c).
`
`VI. Conclusion
`
`
`
`For the foregoing reasons, Petitioner respectfully requests that its Petition for
`
`Inter Partes Review of U.S. Patent No. 7,461,353 be granted and that the
`
`proceedings be joined with Kyocera Corporation v. SoftView LLC, Case IPR2013-
`
`00007.
`
`8
`
`
`
`The undersigned attorney may be reached by telephone at (336) 607-7311.
`
`Although Petitioner believes that no fee is required for this Motion, the
`
`Commissioner is hereby authorized to charge any additional fees which may be
`
`required for this Motion to Deposit Account No. 20-1430.
`
`Respectfully submitted,
`
`Date: April 29, 2013
`
`
`
`
`
`
`
`/John C. Alemanni/
`John C. Alemanni
`Reg. No. 47,384
`
`Counsel for Petitioner
`Motorola Mobility LLC
`
`KILPATRICK TOWNSEND & STOCKTON LLP
`1001 West Fourth Street
`Winston-Salem, NC 27101-2400
`(336) 607-7311 (tel)
`(336) 734-2621 (fax)
`jalemanni@kilpatricktownsend.com
`
`
`
`
`
`
`
`
`
`9
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6, I hereby certify that on Monday, April 29,
`
`2013, a
`
`true copy of
`
`the accompanying MOTION FOR JOINDER
`
`UNDER 37 C.F.R. §§ 42.22 AND 42.122(b) was served upon the following, by
`
`EXPRESS MAIL®:
`
`Morgan Chu (mchu@irell.com)
`Samuel K. Lu (slu@irell.com)
`Irell & Manella LLP
`1800 Avenue of the Stars, Suite 900
`Los Angeles, CA 90067-4276
`
`Counsel for SoftView LLC
`
`Richard Bauer (Richard.Bauer@Kattenlaw.com)
`Michael S. Tomsa (Michael.Tomsa@Kattenlaw.com)
`Katten Muchin Rosenman LLP
`2900 K Street NW – Suite 200
`Washington, DC 20007-5118
`
`Counsel for Kyocera Corporation
`
`/John C. Alemanni/
`John C. Alemanni
`Reg. No. 47,384
`
`Counsel for Petitioner
`Motorola Mobility LLC
`
`KILPATRICK TOWNSEND & STOCKTON LLP
`1001 West Fourth Street
`Winston-Salem, NC 27101-2400
`(336) 607-7311 (tel)
`(336) 734-2621 (fax)
`jalemanni@kilpatricktownsend.com
`
`10
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
