Trials@uspto.gov Paper No. 10
`571-272-7822 Date Entered: June 20, 2013
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MOTOROLA MOBILITY LLC
`Petitioner,
`
`v.
`
`SOFTVIEW LLC
`Patent Owner
`____________
`
`Case IPR2013-00256
`Patent 7,461,353
`____________
`
`
`
`
`Before, SCOTT R. BOALICK, BRYAN F. MOORE and,
`BRIAN J. McNAMARA, Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`
`
`DECISION ON
`MOTION FOR JOINDER
`37 C.F.R. § 42.122(b)
`
`
`
`571-272-7822 Date Entered: June 20, 2013
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MOTOROLA MOBILITY LLC
`Petitioner,
`
`v.
`
`SOFTVIEW LLC
`Patent Owner
`____________
`
`Case IPR2013-00256
`Patent 7,461,353
`____________
`
`
`
`
`Before, SCOTT R. BOALICK, BRYAN F. MOORE and,
`BRIAN J. McNAMARA, Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`
`
`DECISION ON
`MOTION FOR JOINDER
`37 C.F.R. § 42.122(b)
`
`
`
`
`Case IPR2013-00256
`Patent 7,461,353
`
`
`INTRODUCTION
`
`Motorola Mobility LLC (Motorola) filed the instant petition for inter partes
`
`review of U.S. Patent 7,461,353 (the ´353 Patent) on April 29, 2013 (the Motorola
`
`IPR petition). With its petition, Motorola filed a Motion for Joinder with Kyocera
`
`Corporation v. SoftView LLC, IPR2013-00007, instituted on March 29, 2013 (the
`
`Kyocera IPR). In a separate decision, entered today, we grant the Motorola IPR
`
`petition, which was limited to the same claims and the same grounds of
`
`unpatentability for which the Board instituted the Kyocera IPR. For the reasons
`
`that follow, we also grant Petitioner’s Motion for Joinder.
`
`BACKGROUND
`
`On April 23, 2103, at the request of Apple, Inc. (Apple), the Board held a
`
`teleconference in the Kyocera IPR concerning the possibility of Apple filing a
`
`petition for inter partes review and a motion for joinder with the Kyocera IPR. On
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`April 24, 2013, the Board issued an order in the Kyocera IPR authorizing Apple to
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`file a motion for joinder. Paper No. 15, Kyocera, Inc. v. Softview LLC, IPR2013-
`
`00007. (April 24, 2013 Order). The Board’s April 24, 2013 Order identified the
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`following matters to be addressed in a Motion For Joinder: (1) an explanation of
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`the reasons why joinder is appropriate, (2) identification of any new ground of
`
`unpatentability raised in the proceeding sought to be joined, (3) how the impact of
`
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`Case IPR2013-00256
`Patent 7,461,353
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`the joinder on the schedule and costs of the proceeding would be minimized, and
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`(4) how briefing and/or discovery could be simplified to minimize schedule
`
`impact. Although Apple elected not to file, on April 29, 2013, Motorola filed the
`
`Motorola IPR Petition and Motion For Joinder.
`
`On May 1, 2013, during a previously scheduled initial telephone conference
`
`in the Kyocera IPR, the Board authorized Kyocera and SoftView to file
`
`oppositions to Motorola’s Motion for Joinder. Both SoftView and Kyocera timely
`
`filed oppositions to Motorola’s Motion for Joinder.
`
`DISCUSSION
`
`The Leahy-Smith America Invents Act (AIA) permits joinder of like review
`
`proceedings. Thus, an inter partes review (IPR) may be joined with another inter
`
`partes review. The statutory provision governing joinder of inter partes review
`
`proceedings is 35 U.S.C. § 315(c), which reads as follows:
`
`(c) JOINDER.--If the Director institutes an inter partes review, the
`Director, in his or her discretion, may join as a party to that inter
`partes review any person who properly files a petition under section
`311 that the Director, after receiving a preliminary response under
`section 313 or the expiration of the time for filing such a response,
`determines warrants the institution of an inter partes review under
`section 314.
`
`As the movant, Motorola bears the burden to show that joinder is
`
`appropriate. 37 C.F.R. § 42.20(c). In its Motion for Joinder, Motorola addresses
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`Case IPR2013-00256
`Patent 7,461,353
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`the subjects the Board outlined in its April 24, 2013 Order in IPR 2013-00007.
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`Motorola represents that its petition asserts the same grounds of unpatentablity on
`
`which the Board had instituted the Kyocera IPR. Motion for Joinder, pp. 4-5.
`
`Motorola argues that joining the instant proceeding to the Kyocera IPR would
`
`enhance efficiency by consolidating issues, avoiding duplicate efforts, and
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`preventing inconsistencies among the pending proceedings, without delaying the
`
`schedule of the Kyocera IPR and without prejudicing either Kyocera or SoftView.
`
`Motion for Joinder, pp. 5-8. Motorola also argues that joinder is appropriate
`
`because the Motorola inter partes reexamination has been stayed and Motorola’s
`
`participation in the Kyocera IPR would allow Motorola to protect is interests. Id.
`
`p. 7-8
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`In exercising its discretion to grant joinder, the Board considers the impact
`
`of both substantive issues and procedural matters on the proceedings, as well as
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`other considerations.
`
`SUBSTANTIVE ISSUES
`
`1. Alleged New Grounds of Patentability
`
`SoftView opposes joining the instant proceeding to the Kyocera IPR and
`
`argues that the Motorola IPR petition includes new grounds of unpatentability.
`
`SoftView Opp. pp. 5-6. The Board previously determined that the Motorola
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`4
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`Case IPR2013-00256
`Patent 7,461,353
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`petition is limited to asserting the same grounds of unpatentability as those on
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`which the Kyocera IPR was instituted and granted SoftView until June 17, 2013 to
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`exercise its option to file a Patent Owner’s Preliminary Response to the Motorola
`
`petition. Paper No. 8, IPR2013-00256, June 13, 2013 (confirming order in
`
`teleconference of May 29, 2013). SoftView did not file a Patent Owner’s
`
`Preliminary Response. In a separate decision, entered today, we instituted an inter
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`partes review in the instant proceeding on the same grounds of unpatentability as
`
`those on which the Board instituted the Kyocera IPR. Id. Paper No. 9. Substantive
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`issues in the Kyocera IPR would not be unduly complicated by joining the
`
`Motorola proceeding because the joinder does not introduce new grounds of
`
`unpatentablity into the Kyocera IPR.
`
`2. Request for Privity Discovery
`
`In its opposition to joining the Motorola IPR proceeding and the Kyocera
`
`IPR, SoftView also argues that discovery would be complicated by the need to
`
`inquire whether Motorola is acting on behalf of Apple and whether Apple is a
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`“real-party-in interest” or a “privy” of Motorola. SoftView Opp., p. 6-7.1
`
`Speculating on the outcome of the Kyocera IPR, SoftView notes that, if joined, the
`
`
`1 Apple, Inc., which is a defendant in pending patent infringement litigation
`brought by SoftView, has filed reexaminations 95/000,634 involving the ´353
`patent and 95/000,635 and 90/009,995 involving related US Patent 7,831,926. On
`December 21, 2012, the Board stayed these reexaminations while related cases,
`IPR2013-00004 and IPR2013-00007, are in progress.
`
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`Case IPR2013-00256
`Patent 7,461,353
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`Patent Office may not maintain the pending Motorola inter partes reexaminations
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`(95/002,132 concerning the ´353 Patent and 95/002,126 concerning related US
`
`Patent 7,831,926), at least with respect to the claims involved in the Motorola and
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`Kyocera IPRs, or the Apple inter partes reexaminations (95/000,634 concerning
`
`the ´353 Patent and 95/000,635 concerning related US Patent 7,831,926). Id., p. 7.
`
`SoftView cites the fact that expert declarant, Dr. Grimes, is a paid Apple
`
`expert in the co-pending district court litigation in Softview LLC v. Apple, Inc. et
`
`al., Case No. 10-389 LPS (D. Del) (the District Court Action). Id. However,
`
`during the teleconference conducted on May 1, 2013, Kyocera stated its plans to
`
`engage Dr. Grimes separately for the Kyocera IPR and that Apple does not plan to
`
`attend the deposition of Dr. Grimes in the Kyocera IPR. See, Paper No. 18,
`
`Kyocera Corp. v. Softview LLC, IPR2013-00007, May 3, 2013. SoftView also
`
`asserts a belief that Motorola and Apple are parties to a joint defense agreement.
`
`Id. Participation in a joint defense group alone is not a basis for determining that a
`
`party is a “real party-in-interest” or “privy.” See The Office Patent Trial Practice
`
`Guide 77 Fed. Reg. 48756, 48760 (Aug. 14 2012). Thus, at this time, SoftView
`
`has not adequately shown that it could meet the “necessary in the interest of
`
`justice” standard applicable for additional discovery in an inter partes review
`
`needed for inquiring into the role, if any, of Apple. To justify such additional
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`Case IPR2013-00256
`Patent 7,461,353
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`discovery, SoftView should already be in possession of some facts tending to
`
`indicate, beyond mere speculation, that Apple is a real party-in-interest.
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`SoftView also does not identify any extra work or complication that would
`
`be caused by joinder. If, in order to assert estoppel against Apple in its inter partes
`
`reexaminations, SoftView can establish a basis for inquiring about Apple’s role, it
`
`may make that inquiry in the Kyocera IPR, even if the instant proceeding is not
`
`joined with the Kyocera IPR.
`
`Kyocera argues that because Motorola’s IPR petition is limited to the same
`
`grounds of unpatentability on which the Board had instituted the Kyocera IPR, the
`
`possible estoppel effect on Motorola’s inter partes reexamination2 is uncertain.
`
`Kyocera Opp. 5-6. This argument raises an issue that is not relevant to the joining
`
`the instant proceeding and the Kyocera IPR. Whether joinder affects estoppel on
`
`Motorola in Motorola’s inter partes reexamination is not an actionable concern for
`
`Kyocera because Kyocera is not involved in the Motorola inter partes
`
`reexamination. As the moving party, Motorola is presumed to have considered the
`
`consequences resulting from the joinder.
`
`
`2 Reexaminations 95/002,126 and 95/002,132 filed by Motorola also are stayed
`while related cases, IPR 2013-00004 and IPR2013-00007, are in progress.
`
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`Case IPR2013-00256
`Patent 7,461,353
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`Thus, neither SoftView nor Kyocera has identified any substantive issue that
`
`would not already have existed in the Kyocera IPR to complicate the proceeding if
`
`the Motion for Joinder is granted.
`
`
`
`PROCEDURAL MATTERS
`
`In deciding the issue of joinder, we also consider the impact of procedural
`
`matters on the proceedings.
`
`1. Schedule
`
`The Scheduling Order in IPR2013-00007 sets oral argument to take place on
`
`January 7, 2014. 3 Oral argument should not be delayed. During a teleconference
`
`on May 29, 2013, Motorola indicated that it can comply with the dates in the
`
`current Scheduling Order. In order to assure that the schedule is not affected, we
`
`also consider whether joining the instant proceeding and Kyocera IPR will affect
`
`the parties’ briefing obligations or deposition discovery.
`
`2. Consolidated Filings
`
`
`3 On May 31, 2013, Kyocera and SoftView filed a joint stipulation to modify DUE
`DATE 1 (the date for SoftView’s Response to the Petition and any Motion to
`Amend) of the Scheduling Order in the Kyocera IPR from June 28, 2013 to July
`19, 2013. On May 31, 2013, SoftView also filed a notice of deposition of Dr. Jack
`D. Grimes to take place on June 25, 2013.
`
`
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`8
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`Case IPR2013-00256
`Patent 7,461,353
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`Because the grounds of unpatentability in the Motorola IPR and Kyocera
`
`IPR are the same, the case is amenable to consolidated filings. During the May 29,
`
`2013 teleconference, counsel for Motorola indicated that Motorola could
`
`incorporate its filings (e.g., Reply to the Patent Owner’s Response, Opposition to
`
`Motion to Amend, Motion for Observation on Cross Examination Testimony of a
`
`Reply Witness, Motion to Exclude Evidence, Opposition to Motion to Exclude
`
`Evidence and Reply) with those of Kyocera in a consolidated filing. Kyocera
`
`would be responsible for the consolidated filings. Any separate filing by Motorola
`
`would be limited to no more than seven pages directed only to points of
`
`disagreement with Kyocera. Motorola would not be permitted any arguments in
`
`furtherance of those advanced in Kyocera’s consolidated filing. SoftView would
`
`be allowed a corresponding number of pages to respond separately to the Motorola
`
`filings. This approach should avoid introducing delay that could arise from
`
`lengthy briefing by each party, while providing the parties an opportunity to
`
`address all issues that may arise. These limitations on additional filings by
`
`Motorola also avoid placing an undue burden on SoftView.
`
`3. Depositions
`
`During the May 29, 2013 teleconference, counsel for Kyocera and Motorola
`
`stated they could work together to manage depositions within ordinary time limits.
`
`Currently the only deposition scheduled is the cross-examination of Dr. Grimes on
`
`
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`9
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`Case IPR2013-00256
`Patent 7,461,353
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`June 25, 2013. At this time, there are no proposals to extend the allotted time for
`
`the cross examination or the redirect. Thus, at this time there appears to be no
`
`undue burden on SoftView resulting from additional deposition testimony
`
`associated with joinder.
`
`
`
`OTHER CONSIDERATIONS
`
`As previously noted herein, Motorola has filed reexamination proceedings
`
`challenging the subject patent. Motorola was impacted by the Board’s issuance of
`
`a stay of all reexaminations pending the outcome of IPR2013-00004 and IPR2013-
`
`00007.
`
`CONCLUSION
`
`Under the circumstances, we are persuaded that granting Motorola’s Motion
`
`for Joinder will not unduly complicate or delay IPR2013-00007.
`
`
`
`ORDER
`
`In view of the foregoing, therefore it is
`
`ORDERED that IPR2013-00256 is joined with IPR2013-00007;
`
`FURTHER ORDERED that the grounds on which IPR2013-00007 was
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`instituted are unchanged;
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`Patent 7,461,353
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`FURTHER ORDERED that the Scheduling Order in place for IPR2013-
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`00007 is unchanged, except as stipulated with respect to DUE DATE 1, in the joint
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`stipulation filed on May 31, 2013;
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`FURTHER ORDERED that throughout the proceeding, Kyocera and
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`Motorola will file papers, except for motions which do not involve the other party,
`
`as consolidated filings. Kyocera will identify each such filing as a Consolidated
`
`Filing and will be responsible for all completing all consolidated filings. Motorola
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`may file an additional paper, not to exceed seven pages, which may address only
`
`points of disagreement with points asserted in Kyocera’s consolidated filing. Any
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`such filing by Motorola must specifically identify and explain each point of
`
`disagreement. Motorola may not file separate arguments in support of points made
`
`in Kyocera’s consolidated filing;
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`FURTHER ORDERED that, in addition to responding to any consolidated
`
`filing, SoftView may respond separately to any separate Motorola filing. Any such
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`response by SoftView to a Motorola filing may not exceed the number of pages in
`
`the Motorola filing and is limited to issues raised in the Motorola filing;
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`FURTHER ORDERED that SoftView will conduct the cross-examination
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`of Dr. Grimes and any other witnesses, as well as the redirect of any witness it
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`produces, in the timeframe normally allotted by the rules;
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`Case IPR2013-00256
`Patent 7,461,353
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`FURTHER ORDERED that Motorola and Kyocera will designate
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`attorneys to conduct the cross-examination of any witnesses produced by SoftView
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`and the redirect of any witnesses produced by Kyocera or Motorola within the
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`timeframe normally allotted by the rules for one party. Motorola and Kyocera will
`
`not receive any separate cross-examination or redirect time;
`
`FURTHER ORDERED that any requests by any party for additional
`
`deposition time must be brought before the Board;
`
`FURTHER ORDERED that this proceeding (IPR2013-00256) is
`
`terminated under 37 C.F.R. § 42.72 and all further filings in the joined proceeding
`
`shall be made in IPR2013-00007; and
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`FURTHER ORDERED that the case caption in IPR2013-00007 shall be
`
`changed to reflect joinder with this proceeding in accordance with the attached
`
`example.
`
`
`PETITIONER KYOCERA CORPORATION: (via electronic transmission)
`Richard Bauer
`Michael Tomsa
`Katten Muchin Rosenman, LLP
`Email: Richard.bauer@kattenlaw.com
`Email: Michael.tomsa@kattenlaw.com
`
`
`PETITIONER MOTOROLA MOBILITY LLC: (via electronic transmission)
`John. C. Alemanni
`KILPATRICK TOWNSEND & STOCKTON LLP
`Email:jalemanni@kilpatricktownsend.com
`
`
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`Case IPR2013-00256
`Patent 7,461,353
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`PATENT OWNER SOFTVIEW LLC: (via electronic transmission)
`Ben Yorks
`Babak Redjaian
`Irell & Manella, LLP
`Email: byorks@irell.com
`Email: bredjaian@irell.com
`
`
`
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`Case IPR2013-00256
`Patent 7,461,353
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KYOCERA CORPORATION
`MOTOROLA MOBILITY LLC
`Petitioners
`
`v.
`
`SOFTVIEW LLC
`Patent Owner,
`____________
`
`Case IPR2013-00007
`Case IPR2013-00256
`Patent 7,461,353
`____________
`
`
`
`14
`
`
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