Trials@uspto.gov Paper No. 21
`571-272-7822
`Entered: March 4, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`IPR LICENSING, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00074
`Patent 8,380,244 B2
`
`____________
`
`
`
`Before MIRIAM L. QUINN, SALLY C. MEDLEY, and
`BEVERLY M. BUNTING, Administrative Patent Judges.
`
`BUNTING, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 C.F.R. § 42.108
`37 C.F R § 42.122(b)
`
`
`
`
`
`
`
`571-272-7822
`Entered: March 4, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`IPR LICENSING, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00074
`Patent 8,380,244 B2
`
`____________
`
`
`
`Before MIRIAM L. QUINN, SALLY C. MEDLEY, and
`BEVERLY M. BUNTING, Administrative Patent Judges.
`
`BUNTING, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 C.F.R. § 42.108
`37 C.F R § 42.122(b)
`
`
`
`
`
`
`
`
`IPR2015-00074
`Patent 8,380,244 B2
`
`
`I. INTRODUCTION
`
`Petitioner, Microsoft Corporation (“Microsoft”), filed a Petition
`
`(“Pet.,” Paper 1) requesting an inter partes review of claims 1–8, 14–16, 19–
`
`29, 36–38, and 41–44 (“the challenged claims”) of U.S. Patent No.
`
`8,380,244 B2 (“the ’244 patent,” Ex. 1001) and was accorded a filing date of
`
`October 16, 2014 (Paper 7). Concurrently with its Petition, Microsoft filed a
`
`Motion for Joinder (“Mot.,” Paper 3) seeking to join this proceeding with
`
`ZTE v. IPR Licensing, Case IPR2014-00525 (“ZTE IPR”). Mot. 1. The
`
`ZTE IPR concerns the same patent as at issue here, namely the ’244 patent.
`
`We instituted trial in the ZTE IPR on September 17, 2014. See ZTE v. IPR
`
`Licensing, Case IPR2014-00525, Paper 19 (Decision instituting inter partes
`
`review).
`
`We authorized Patent Owner, IPR Licensing, Inc. (“IPR Licensing”),
`
`to file an opposition to Microsoft’s Motion for Joinder, and authorized
`
`Microsoft to file a Reply to the opposition. Paper 7, 2. IPR Licensing filed
`
`an Opposition to Petitioner’s Motion for Joinder (Paper 9) and Microsoft in
`
`turn filed a Reply (Paper 11). IPR Licensing timely filed a Patent Owner
`
`Preliminary Response (“Prelim. Resp.”). Paper 12. In response to a Board
`
`order (Paper 20), Microsoft filed a Notice Regarding Joinder Participation
`
`(“Notice”), effectively limiting its participation in the ZTE IPR, if it were
`
`joined as a party. Paper 19.
`
`We have jurisdiction under 35 U.S.C. § 314, which provides that an
`
`inter partes review may not be instituted “unless . . . there is a reasonable
`
`likelihood that the petitioner would prevail with respect to at least 1 of the
`
`claims challenged in the petition.” For the reasons provided below, we (1)
`
`institute an inter partes review on the ground listed in the Order section of
`
`
`
`2
`
`
`
`IPR2015-00074
`Patent 8,380,244 B2
`
`this decision, and (2) grant Microsoft’s Motion for Joinder, subject to the
`
`conditions detailed herein.
`
`
`
`II. INSTITUTION OF INTER PARTES REVIEW
`
`The Petition in this proceeding asserts the same grounds as those
`
`asserted in the ZTE IPR. Pet. 12–13.1 On September 17, 2014, we instituted
`
`a trial in the ZTE IPR on one ground:
`
`Claims 1–8, 14–16, 19–29, 36–38, and 41–44 of the
`’244 patent as obvious over Jawanda, the GPRS Standards, and
`the IEEE 802.11 Standard.
`
`ZTE v. IPR Licensing, Case IPR2014-00525, Paper 19, 22.
`
`In its Notice, Microsoft expressly agreed to limit its challenge to the
`
`same ground on which we instituted trial in the ZTE IPR. Paper 19. With
`
`respect to the ground on which trial was instituted in the ZTE IPR, Patent
`
`Owner’s Preliminary Response in this proceeding (Paper 12) did not raise
`
`substantially different arguments or present substantially different evidence,
`
`other than what we considered in the course of instituting trial in the ZTE
`
`IPR. In other words, institution of trial in this proceeding is based upon our
`
`consideration of the same issues, directed to the same prior art references,
`
`arguments, and oppositions already raised and considered with respect to the
`
`ZTE IPR.
`
`In view of the arguments offered in the Preliminary Response, and
`
`further in view of Microsoft’s agreement to limit its Petition to the same
`
`
`1 Although Microsoft asserts that one ground is presented in its Petition,
`Microsoft is actually asserting four grounds: Jawanda alone; Jawanda and
`GPRS; Jawanda and IEEE 802.11; and Jawanda, GPRS, and IEEE 802.11.
`Pet. 14.
`
`
`
`3
`
`
`
`IPR2015-00074
`Patent 8,380,244 B2
`
`ground on which we instituted trial in the ZTE IPR, we institute an inter
`
`partes review in this proceeding on the same ground as that on which we
`
`instituted trial in the ZTE IPR. We do not institute an inter partes review on
`
`any other grounds.
`
`
`
`III. GRANT OF MOTION FOR JOINDER
`
`An inter partes review may be joined with another inter partes
`
`review, subject to the provisions 35 U.S.C. § 315(c), which governs joinder
`
`of inter partes review proceedings:
`
`(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 parties review under
`section 314.
`
`As the moving party, Microsoft bears the burden of proving that it is
`
`entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder
`
`should: (1) set forth the reasons joinder is appropriate; (2) identify any new
`
`grounds of unpatentability asserted in the petition; and (3) explain what
`
`impact (if any) joinder would have on the trial schedule for the existing
`
`review. See Frequently Asked Question H5, http://www.uspto.gov/patents-
`
`application-process/appealing-patentdecisions/ trials/patent-review-
`
`processing-system-prps-0.
`
`The Petition in this proceeding has been accorded a filing date of
`
`October 16, 2014 (Paper 7), and the Motion for Joinder was filed on the
`
`same date (Mot.). Thus, both of these actions satisfy the joinder requirement
`
`of being filed within one month of our instituting a trial in the ZTE IPR. See
`
`
`
`4
`
`
`
`IPR2015-00074
`Patent 8,380,244 B2
`
`37 C.F.R. § 42.122(b) (Any request for joinder must be filed, as a motion
`
`under § 42.22, no later than one month after the institution date of any inter
`
`partes review for which joinder is requested.).
`
`In its Motion for Joinder, Microsoft contends that “the Microsoft
`
`Petition is virtually identical to the ZTE Petition, and contains only minor
`
`differences.” Mot. 4. Microsoft also contends that its Petition is limited to
`
`“the same claims, prior art, and grounds of unpatentability that are the
`
`subject of the ZTE IPR” upon which we instituted trial in the ZTE IPR. Id.
`
`at 1. Microsoft represents in its Motion for Joinder that it will streamline
`
`discovery and briefing (Id.), and that it will “coordinate with ZTE to
`
`consolidate filings, manage the questioning at depositions, manage
`
`presentations at the hearing, ensure that briefing and discovery occur within
`
`the time normally allotted, and avoid redundancies” (Id. at 8). Based on
`
`these representations, Microsoft contends that, in the event of joinder, the
`
`schedule in the ZTE IPR would not be affected, nor would IPR Licensing be
`
`prejudiced by joining this proceeding to the ZTE IPR. Id. 7–8.
`
`Patent Owner opposes the Motion for Joinder, arguing that the instant
`
`Petition is “substantially duplicative to the currently pending ZTE IPR”
`
`(Opp. 1), and “introduces new information that would unnecessarily
`
`complicate the ZTE IPR” (id.). Nonetheless, Microsoft has confirmed that
`
`“should it be joined to IPR2014-00525, it would agree to proceed solely on
`
`the grounds, evidence, and arguments advanced, or that will be advanced, in
`
`IPR2014-00525.” Paper 19, 1.
`
`Based on the present record, we agree with Microsoft that joinder
`
`would be appropriate under the circumstances.
`
`
`
`
`
`5
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`
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`IPR2015-00074
`Patent 8,380,244 B2
`
`
`IV. 35 U.S.C. § 315(b)
`
`In its Patent Owner Preliminary Response, IPR Licensing argues that
`
`the Petition is barred under 35 U.S.C. § 315(b) because Nokia, a privy of
`
`Microsoft, was served with a complaint alleging infringement of the ’244
`
`patent more than a year before the filing of the instant Petition. Prelim.
`
`Resp. 26–35. Because we grant Microsoft’s motion for joinder under 35
`
`U.S.C. § 315(b), we need not address Patent Owner’s arguments suggesting
`
`that the Petition is time-barred under 35 U.S.C. § 315(b).2
`
`
`
`V. CONCLUSION
`
`Based on the record before us, we institute an inter partes review in
`
`IPR2015-00074 and grant Microsoft’s motion to join that proceeding to
`
`IPR2014-00525.
`
`
`
`In consideration of the foregoing, it is hereby:
`
`VI. ORDER
`
`
`
`ORDERED that a trial is instituted as to the challenged claims of the
`
`’244 patent only on the following ground:
`
`Claims 1–8, 14–16, 19–29, 36–38, and 41–44 of the ’244
`patent as obvious over Jawanda, the GPRS Standards, and
`the IEEE 802.11 Standard;
`
`FURTHER ORDERED that Microsoft’s Motion for Joinder is granted
`
`
`
`and that this proceeding is joined with IPR2014-00525;
`
`
`2 The last sentence of 35 U.S.C. § 315(b) expressly states that “[t]he time
`limitation set forth in the preceding sentence shall not apply to a request for
`joinder under subsection (c).” 35 U.S.C. § 315(b).
`
`
`
`6
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`
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`IPR2015-00074
`Patent 8,380,244 B2
`
`
`
`FURTHER ORDERED that the ground on which IPR2014-00525 was
`
`instituted is unchanged and no other grounds are instituted in the joined
`
`proceeding;
`
`
`
`FURTHER ORDERED that the Scheduling Order in place for
`
`IPR2014-00525 (Paper 12) remains unchanged and shall govern the joined
`
`proceedings;
`
`
`
`FURTHER ORDERED that, unless given prior authorization by the
`
`Board, Microsoft is not permitted to file papers, engage in discovery, or
`
`participate in any deposition or oral hearing in IPR2014-00525. Microsoft,
`
`however, is permitted to appear in IPR2014-00525 so that it may receive
`
`notification of filings and may attend depositions and oral hearing. Should
`
`Microsoft believe it necessary to take any further action, Microsoft should
`
`request a conference call to obtain authorization from the Board;
`
`
`
`FURTHER ORDERED that IPR2015-00074 is terminated under 37
`
`C.F.R. § 42.72 and all further filings in the joined proceeding are to be made
`
`in IPR2014-00525;
`
`
`
`FURTHER ORDERED that a copy of this Decision be entered into
`
`the file of IPR2014-00525; and
`
`
`
`FURTHER ORDERED that the case caption in IPR2014-00525 shall
`
`be changed to reflect joinder with this proceeding in accordance with the
`
`attached example.
`
`
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`7
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`
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`IPR2015-00074
`Patent 8,380,244 B2
`
`PETITIONER:
`
`Joseph A. Micallef
`Douglas I. Lewis
`Scott Border
`Sidley Austin LLP
`jmicallef@sidley.com
`dilewis@sidley.com
`sborder@sidley.com
`
`
`PATENT OWNER:
`
`Jonathan D. Link
`Julie M. Holloway
`Latham & Watkins LLP
`jonathan.link@lw.com
`julie.holloway@lw.com
`
`
`
`
`
`
`8
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`
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`IPR2015-00074
`Patent 8,380,244 B2
`
`
`
`Example Case Caption for Joined Proceeding
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZTE CORPORATION and ZTE (USA) INC.,
`and
`MICROSOFT CORPORATION,
`Petitioners,
`
`v.
`
`IPR LICENSING, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-005253
`Patent 8,380,244 B2
`
`
`
`
`
`
`3 Case IPR2015-00074 has been joined with this proceeding.
`
`
`
`9
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`
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