DOCKET NO: 5932-5
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`TRIAL NO: IPR2014-00557
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`ISSUED: March 13, 2012
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`PATENT: 8,135,398
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`INVENTORS: TIEHONG WANG,
`NING WANG, XIMING WANG,
`TIEJUN WANG, WILLIAM E.
`HALAL
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`FILED: MAY 6, 2011
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`TITLE: METHOD AND
`APPARATUS FOR MULTIMEDIA
`COMMUNICATIONS WITH
`DIFFERENT USER TERMINALS
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
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`MOTION FOR JOINDER TO RELATED
`INTER PARTES REVIEW OF U.S. PATENT NO. 8,135,398
`(CASE NO. IPR2013-00571) UNDER 37 C.F.R. § 42.122(b)
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`TRIAL NO: IPR2014-00557
`
`
`
`ISSUED: March 13, 2012
`
`
`
`
`
`
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`PATENT: 8,135,398
`
`INVENTORS: TIEHONG WANG,
`NING WANG, XIMING WANG,
`TIEJUN WANG, WILLIAM E.
`HALAL
`
`FILED: MAY 6, 2011
`
`TITLE: METHOD AND
`APPARATUS FOR MULTIMEDIA
`COMMUNICATIONS WITH
`DIFFERENT USER TERMINALS
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`MOTION FOR JOINDER TO RELATED
`INTER PARTES REVIEW OF U.S. PATENT NO. 8,135,398
`(CASE NO. IPR2013-00571) UNDER 37 C.F.R. § 42.122(b)
`
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`Motion for Joinder to Related Instituted Inter Partes Review of
`U.S. Patent No. 8,135,398 Under 37 C.F.R. § 42.122(b)
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`Petitioner Samsung Electronics Co., Ltd. (“Petitioner”) files this Motion for
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`Joinder of the Petition for Inter Partes Review of Claims 58 and 63 of U.S. Patent
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`No. 8,135,398 (the “Second ’398 Petition”) with the instituted inter partes review
`
`titled Samsung Electronics v. Virginia Innovation Sciences, Inc., Case No.
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`IPR2013-00571, pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b).
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`I. APPLICABLE RULE
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`Petitioner relies on 37 C.F.R. § 42.122(b), which states:
`
`Request for joinder. Joinder may be requested by a patent owner or
`petitioner. 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. The time period set forth
`in §42.101(b) shall not apply when the petition is accompanied by a
`request for joinder.
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`II. RELIEF REQUESTED
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`Petitioner requests that the Second ’398 Petition be joined with IPR2013-
`
`00571.
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`III. STATEMENT OF MATERIAL FACTS
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`1.
`
`On October 23, 2012, Petitioner was served with a complaint for
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`infringement of U.S. Patent Nos. 7,899,492, 8,050,711, 8,145,268, 8,224,381,
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`7,957,733, and 8,135,398 (“the ’398 patent”).
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`- 1 -
`
`
`
`Motion for Joinder to Related Instituted Inter Partes Review of
`U.S. Patent No. 8,135,398 Under 37 C.F.R. § 42.122(b)
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`2.
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`On September 5, 2013, Petitioner filed a Petition for Inter Partes
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`Review challenging claims 15, 55, 57, 58 and 60-63 of the ’398 patent (“the First
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`’398 Petition”).
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`3.
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`On March 6, 2014, a decision instituting inter partes review of claims
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`15, 55, 57, 60-62 of the ’398 patent was entered in IPR2013-00571, now styled
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`Samsung Electronics v. Virginia Innovation Sciences, Inc., Case No. IPR2013-
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`00571. In that same decision, the Board declined to institute inter partes review of
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`claims 58 and 63.
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`4.
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`Concurrently with this Motion for Joinder, Petitioner is filing its
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`Second ’398 Petition, challenging claims 58 and 63 of the ’398 patent.
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`IV. ARGUMENT
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`The Board has authority under 35 U.S.C. § 315(c) to join a properly-filed
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`second inter partes review petition to an instituted inter partes review proceeding.
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`This Motion for Joinder is timely and the time periods set forth in 37 C.F.R. §
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`42.101(b) do not apply to the Second ’398 Petition because it is accompanied by
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`this Motion for Joinder. 37 C.F.R. § 42.122(b).
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`The Second ’398 Petition involves the same parties, the same patent,
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`overlapping claims, and the same prior art presented in the First ’398 Petition
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`submitted in IPR2013-00571. In the Second ’398 Petition, Petitioner argues a
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`- 2 -
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`
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`Motion for Joinder to Related Instituted Inter Partes Review of
`U.S. Patent No. 8,135,398 Under 37 C.F.R. § 42.122(b)
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`single new ground for the unpatentability of claims 58 and 63, based in part on the
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`Board’s decision in Case No. IPR2013-00571. In the Second ’398 Petition,
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`Petitioner relies on the same three prior art references submitted with the First ’398
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`Petition1, but is now asserting these three references in a different combination
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`with respect to claims 58 and 63. Specifically, the First ’398 Petition challenged
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`claims 58 and 63 on the grounds of obviousness over Palin in view of Seaman.
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`The Second ’398 Petition challenges claims 58 and 63 on the grounds of
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`obviousness over Karaoguz in view of Palin and Seaman. Joinder is particularly
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`appropriate here because the Board instituted inter partes review in IPR2013-
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`00571 based on grounds that include anticipation by Karaoguz of claims 15, 55
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`(from which claim 58 depends) and claims 15, 62 (from which claim 63 depends).
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`Therefore, the Second ’398 Petition is very closely related to IPR2013-00571.
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`Petitioner has shown good cause for joining this proceeding with IPR2013-
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`00571. The two proceedings involve the same parties, the same patent,
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`1 The three references are: U.S. Patent No. 8,028,093 (“Karaoguz”); U.S. Patent
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`No. 7,580,005 (“Palin”); and U.S. Patent Publication No. 2004/0223614
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`(“Seaman”).
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`- 3 -
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`
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`Motion for Joinder to Related Instituted Inter Partes Review of
`U.S. Patent No. 8,135,398 Under 37 C.F.R. § 42.122(b)
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`overlapping claims and overlapping prior art.2 The declaration evidence submitted
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`with the Second ’398 Petition is from the same expert witness and substantially
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`overlaps the declaration evidence in Case No. IPR2013-00571. Thus, joinder of
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`two additional dependent claims will not unduly complicate these proceedings – in
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`fact, joinder of the proceedings will simplify briefing and discovery and “secure
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`the just, speedy, and inexpensive resolution” of these proceedings. See 37 C.F.R. §
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`42.1(b).
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`Joinder will not unduly delay the proceedings or otherwise prejudice Patent
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`Owner in any discernable way. Petitioner has acted expeditiously in filing the
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`Second ’398 Petition concurrently with this joinder motion and informed the Board
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`and the Patent Owner in a March 24, 2014 conference call in Case No. IPR2013-
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`00571 that this filing was forthcoming. Indeed, Patent Owner itself has requested
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`2 Karaoguz and Palin are common to both Case No. IPR2013-00571 and the
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`Second ’398 Petition. Seaman was submitted with the First ’398 Petition, but not
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`relied on by the Board in its March 6, 2014 Decision instituting trial in Case No.
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`IPR2013-00571. The Board did rely on Seaman, however, in instituting trials on
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`the same day in the separate but related Case Nos. IPR2013-00569 and IPR2013-
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`00570, which are assigned to the same PTAB panel and involve the same Patent
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`Owner.
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`- 4 -
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`
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`Motion for Joinder to Related Instituted Inter Partes Review of
`U.S. Patent No. 8,135,398 Under 37 C.F.R. § 42.122(b)
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`(by stipulated motion) an extension of due dates 1-6 of the current scheduling order
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`in Case No. IPR2013-00571. Thus, the addition of two dependent claims will have
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`little, if any, impact on the trial schedule.
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`In summary, the petitions in this and the related proceeding were filed within
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`the time periods prescribed under 35 U.S.C. §§ 315(b) and (c) and involve the
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`same patent and parties. Petitioner has filed substantially the same exhibits in both
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`proceedings. There is substantial overlap in the asserted references and the
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`declaration evidence to be considered in the joined proceeding. Accordingly,
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`Petitioner respectfully requests joinder of the Second ’398 Petition with IPR2013-
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`00571.
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`Dated: March 28, 2014
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`Respectfully submitted,
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`
`
`/Joseph S. Presta/
`Joseph S. Presta
`Reg. No. 35,329
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`- 5 -
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