Case IPR2014—00557
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`Docket No. 6521-0107L
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`US. Pat. No. 8,135,398
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.
`Petitioner
`
`V.
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`VIRGINIA INNOVATION SCIENCES, INC.
`Patent Owner
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`Case IPR2014-00557
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`Patent 8,135,398
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`PATENT OWNER'S OPPOSITION TO PETITIONER'S MOTION FOR
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`JOINDER
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`DRA/GSD/Vd
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`
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`Docket No. 6521-0107L
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`US. Pat. No. 8,135,398
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.
`Petitioner
`
`V.
`
`VIRGINIA INNOVATION SCIENCES, INC.
`Patent Owner
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`Case IPR2014-00557
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`Patent 8,135,398
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`PATENT OWNER'S OPPOSITION TO PETITIONER'S MOTION FOR
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`JOINDER
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`DRA/GSD/Vd
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`
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`Case lPR2014—00557
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`I.
`
`INTRODUCTION
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`Docket No. 6521-0107L
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`us. Pat. No. 8,135,398
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`Pursuant
`
`to the Order Authorizing Filing of Opposition to Motion for
`
`Joinder (Paper No. 4) entered by the PTAB on April 7, 2014, Patent Owner
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`Virginia Innovation Sciences, Inc. (“Virginia Innovation Sciences”) submits this
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`Opposition and requests that Petitioner's Motion for Joinder ("Joinder Motion") be
`
`denied, for at least the reasons discussed below. Patent Owner does not waive its
`
`right to file a Preliminary Response in this proceeding, and intends to file its
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`Preliminary Response within three months of the Notice of Filing Date (which has
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`not been issued yet) set forth by 37 C.F.R. § 42.107(b) and the Office Patent Trial
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`Practice Guide. (Federal Register / Vol. 77, No. 157, 48757.)
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`Petitioner, Samsung, does not demonstrate good cause for why the Board
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`should exercise its discretion to join the late—filed IPR to lPR2013-00571.
`
`Samsung already has an active IPR instituted against US. Patent 8,135,398 ("the
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`'398 patent"), but now tries again, 18 months after being served with a Complaint
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`in concurrent litigation, to institute yet another IPR and join it to IPR2013—00571.
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`Without any good cause shown, the Jcinder Motion should be denied.
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`II.
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`PROCEDURAL HISTORY
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`Virginia Innovation Sciences filed suit against Petitioner Samsung for
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`infringement of the '398 patent in US. District Court for the Eastern District of
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`Virginia on October 4, 2012, and served its Complaint on Samsung on October 23,
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`DRA/GSD/vd
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`Case IPR2014—00557
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`Docket No. 6521-0107L
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`US. Pat. No. 8,135,398
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`2012. Samsung filed a defective petition for inter partes review of the ‘398 patent
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`on September 5, 2013 and a corrected petition on September 16, 2013.
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`In the
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`corrected petition, Samsung alleged that claims 15, 57-58, and 60-63 are
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`anticipated and obvious based on art referred to as ”Palin," "Karaoguz", and
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`”Seaman," submitted as Exhibits 1002—1004, respectively,
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`in IPR2013—00571.
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`Samsung's Exhibit 1008 in lPR2013-0057l summarizes the application of the
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`references:
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`(IPR2013—00571, Exh. 1008. See also, IPR2013—00571, Paper 14 at 7.)
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`The Board instituted review of claims 15, 57, and 60-62 on March 6, 2014,
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`finding that Samsung had demonstrated a reasonable likelihood of succeeding in its
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`Case lPR2014—00557
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`Docket No. 652l—0107L
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`US. Pat. No. 8,135,398
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`challenge of claims 15, 55 , 57, 61 and 62 as allegedly anticipated by Karaoguz and
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`its challenge of claims 15, 55, 57, and 60-62 as allegedly being rendered obvious
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`by Palin in View of Karaoguz.
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`(IPR2013-00571, Paper 14 at 15; 22.) The Board
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`found that Samsung did not demonstrate a reasonable likelihood with respect to
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`Claims 15, 55, 57, and 60—62 as allegedly anticipated by Palin and with respect to
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`claims 58 and 63 as allegedly being rendered obvious by Palin combined with
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`Seaman (IPR2013-00571, Paper 14 at 19; 23.)
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`Samsung now alleges that claims 15, 55, 58, 62, and 63 are render obvious
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`by Karaoguz in View of Palin, and further in View of Seaman, as shown in Exhibit
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`1010 accompanying Samsung's late-filed IPR petition (reproduced below):
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`Prior Art:
`
`Claims
`
`15 Indeo. p
`55
`
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`(Exh. 1010.)
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`DRA/GSD/Vd
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`Case IPR2014—00557
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`III. ARGUMENT
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`Docket No. 6521—0107L
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`US. Pat. No. 8,135,398
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`A.
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`Joinder is at the Board's discretion
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`Joinder is at the Board's discretion. "[T]he Director, in his or her discretion,
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`may join as a party to that inter partes review any person who properly files a
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`petition under section 311...." 35 U.S.C. § 315(c). The Board is charged with
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`securing the just, speedy, and inexpensive resolution of every proceeding, and has
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`the discretion to join parties to ensure that objective is met. 37 C.F.R. §§ 42.1(b),
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`42.122. As the moving party, Petitioner has the burden of demonstrating that
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`joinder is justified and that the Board should exercise its discretion. 37 C.F.R. §
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`42.20(c).
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`The Board should only grant joinder if the Petitioner demonstrates good
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`cause. For example, if a patent owner asserts new claims in the co-pending
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`litigation and the petitioner is "diligent and timely in filing the motion" for joinder
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`after the changed circumstance, such changed circumstance and diligence may
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`justify the exception (e.g., to allow the new claims to be included in an IPR). See,
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`e.g., IPR2013-00109 Paper 15 at 4; id. at 3 (granting motion for joinder in part
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`because "Petitioner proceeded expeditiously in filing a second Petition after
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`learning that additional claims were being asserted by Patent Owner in concurrent
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`district court litigation”) Patent Owner submits that if there is no justification for
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`a petitioner's delay ~ e.g.,
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`the petitioner simply delayed presenting additional
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`DRA/GSD/vd
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`Case IPR2014—00557
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`Docket No. 652l-0107L
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`US. Pat. No. 8,135,398
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`alleged grounds of obviousness for strategic reasons or otherwise — the Board
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`should not exercise its discretion because doing so would allow a petitioner to
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`circumvent the balance underlying the statute without any justification.
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`Petitioner has not carried its burden of demonstrating that
`B.
`joinder is appropriate
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`Petitioner has not carried its burden of demonstrating that joinder is
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`appropriate: Petitioner has presented no justification for its late—filed IPR petition
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`and motion for joinder; has not demonstrated that its need for a cost-effective
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`alternative to district court litigation outweighs the impact of joinder, including the
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`burden and prejudice on Patent Owner; and has not explained why joinder would
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`not delay the earlier IPR. In short, Petitioner shows no good cause for the Board to
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`exercise its discretion.
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`1.
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`Samsung has not demonstrated good cause
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`Samsung asserts that "Petitioner has shown good cause for joining this
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`proceeding with IPR2013—00571.”
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`(Joinder Motion at 3.) The alleged "good
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`cause" professed by Samsung is that ”[t]he two proceedings involve the same
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`parties, the same patent, overlapping claims and overlapping prior art." (Id, at 3-
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`4.) None of the reasons offered by Samsung amount to good cause.
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`a)
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`Same parties show lack of good cause
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`The fact that the same parties are involved is not a showing of good cause.
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`Instead, it demonstrates that Petitioner was either not thorough in preparing its first
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`5
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`Case IPR2014-00557
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`Docket No. 6521—0107L
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`US. Pat. No. 8,135,398
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`petition, or simply decided for strategic reasons, or otherwise, to not challenge
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`claims 58 and 63 under the newly—proposed theory of obviousness in its first—filed
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`IPR petition. Otherwise Petitioner would have presented the proposed rejections in
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`IPR2013—0057l, within one-year of receiving service of the concurrent litigation.
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`If, on the other hand, a different party sought joinder,
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`it would more likely
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`establish good cause, as a different party necessarily would have to file its own,
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`separate, petition to present the newly-proposed theory of obviousness. 37 C.F.R.
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`§ 42.101. Thus, Petitioner's professed reason — that the same parties are involved —
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`does not show good cause, but the lack thereof.
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`b)
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`Same patent does not show good cause
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`The fact that the same patent is involved does not show good cause.
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`It is
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`self-evident that the joinder statute is only applicable when the same patent is
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`involved. If a different patent was involved, it would be nonsensical for Petitioner
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`to seek joinder to the instituted review of the '398 patent. Every joinder request
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`involves the same patent, thus Petitioner's professed reason does not show good
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`cause for joinder.
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`c)
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`Overlapping claims do not show good cause
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`The fact that overlapping claims are involved in the Joinder Motion and in
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`the late—filed IPR petition does not show good cause. On the contrary, the fact that
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`Petitioner already exercised its ability to challenge claims 5 8 and 63 demonstrates
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`DRA/GSD/Vd
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`Case IPR2014-00557
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`Docket No. 6521-0107L
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`US. Pat. No. 8,135,398
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`the lack of good cause for giving Petitioner another bite at the apple, well outside
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`of the one-year deadline. Petitioner challenged claims 58 and 63 in its original IPR
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`petition, IPR2013-00571, but for strategic reasons, or otherwise, made a decision
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`to not propose the rejections it now tries to advance. Petitioner does not explain
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`why it did not challenge claims 58 and 63 under the newly-proposed theory of
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`obviousness back in September 2013. There is no reason or explanation for why
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`the newly—proposed rejections could not have been presented in the original
`
`petition. In fact, it is apparent that the newly-alleged grounds of obviousness could
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`have been presented in the first—filed IPR petition.
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`Thus, Petitioner's focus on "overlapping claims" is, in fact, a concession that
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`the same claims were already once challenged in its first—filed petition, and that
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`there is no reason, much less good cause, for why such claims should be subject to
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`a late—filed challenge that could have been brought much earlier.
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`d)
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`Overlapping prior art does not show good cause
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`The fact that overlapping prior art is involved in the Joinder Motion and in
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`the late-filed IPR petition does not show good cause. On the contrary, the fact that
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`Petitioner was fully aware of all the art back in September 2013 demonstrates the
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`lack of good cause. The applied references were not recently discovered through a
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`diligent search by Petitioner. Nothing prevented Petitioner from proposing the
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`combination of Karaoguz, Palin, and Seaman in its first-filed IPR petition.
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`DRA/GSD/Vd
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`Case IPR2014-00557
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`Docket No. 6521—0107L
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`US. Pat. No. 8,135,398
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`Petitioner had all of the references, yet decided for strategic reasons, or otherwise,
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`to not propose the newly—alleged combination. Thus, Petitioner's admission that it
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`was aware of all the prior art applied in the late—filed IPR petition does not
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`demonstrate good cause for granting joinder.
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`2.
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`Joinder would cause excessive delay
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`Petitioner fails to establish that joinder would promote efficient resolution of
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`the unpatentability issues without substantially affecting the schedule for IPR2013-
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`00571. Notably, Petitioner in its Joinder Motion does not propose a modified
`
`schedule to be used if joinder is granted or explain how the schedule of IPR2013-
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`00571 can be reconciled with the due dates for the late-filed IPR.
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`Instead,
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`Petitioner only states, in a conclusory manner, that "[j]oinder will not unduly delay
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`the proceedings. . .." (Joinder Motion at 4.)
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`It is not feasible to join the late—filed IPR with IPR2013-00571 without
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`moving Due Date 7 of IPR2013—00571. But the Board has issued clear guidance
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`regarding Due Date 7: "The Board will not consider changing the date of the Oral
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`Argument, which is set to take place on October 1, 2014." (IPR2013-0057l, Paper
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`18 at 3.) The Preliminary Response in the late-filed IPR will be due three months
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`after the Board issues a filing date ~ i.e., no sooner than July 11, 2014. 37 C.F.R. §
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`42.107(b). The Board's decision whether to institute the late-filed IPR would, thus,
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`likely be expected in the late summer.
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`See, 37 C.F.R. §§ 42.25, 42.107(b),
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`Case IPR2014-00557
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`Docket No. 6521-0107L
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`US. Pat. No. 8,135,398
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`42.120(b). This would make it impossible to conduct an oral argument on October
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`1, 2014. (IPR2013-00571, Paper 18 at 3.)
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`If the oral hearing date of IPR2014—00557 were synchronized with the oral
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`hearing date (Due Date 7) of IPR2013-00571, it would necessarily delay resolution
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`of IPR2013-00571. Thus, joinder should be denied as it would unduly delay
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`resolution of IPR2013-00571, contrary to the Board's clear guidance for that
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`proceeding.
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`C.
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`Joinder would be prejudicial to Patent Owner
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`Joinder would be prejudicial to Patent Owner because it would not only
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`delay resolution of IPR2013-00571 contrary to the Board's guidance in IPR2013-
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`00571, Paper 18 at 3, but it would also necessarily increase Patent Owner's costs
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`for the existing IPRs. Contrary to Petitioner's allegations that "joinder of the
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`proceedings will simplify briefing and discovery" (Joinder Motion at 4),
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`the
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`joinder would necessitate multiple depositions of Petitioner's Expert, Dr. Almeroth.
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`Under the current schedule, Patent Owner expects to depose Dr. Almeroth in a
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`combined session for all of the instituted IPRs (IPR2013-00569, IPR2013-00570,
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`and IPR2013-00571).
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`If the late-filed IPR is joined to IPR2013-0057l, it will
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`delay the schedule of IPR2013—00571 relative to the other lPRs and thus require
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`multiple depositions of Dr. Almeroth, increasing Patent Owner's costs.
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`DRA/GSD/Vd
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`Case IPR2014—00557
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`Docket No. 6521—0107L
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`US. Pat. No. 8,135,398
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`D;
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`Denial of joinder is not prejudicial to Petitioner
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`Denial of joinder is not prejudicial to Petitioner, as Petitioner is merely left
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`in the situation of its own making. Petitioner chose, for strategic reasons, or
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`otherwise, to not assert the newly-alleged combination of references in its first—
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`filed IPR petition. Even if Petitioner is prevented from doing so now, there is no
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`prejudice to Petitioner as it is challenging the validity of the '398 patent in a trial
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`starting on April 21, 2014 — less than two weeks from now.
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`(EXh. 1009 at 5.)
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`E.
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`Statute does not support joinder of the same party
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`35 U.S.C. § 315(b) bars the late-filed IPR petition, yet Samsung attempts to
`
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`join itself as a party to a proceeding (IPR2013-00571) where it already is an
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`existing pay. Samsung's joinder request ignores that 35 U.S.C. § 315(0) only
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`supports "join[ing] as a party” to a proceeding a person who is not already a party
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`to the proceeding.1
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`Further, the statute bars Samsung‘s late-filed IPR petition and requested
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`joinder because the late-filed IPR petition was not "properly filed.” See 35 U.S.C.
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`§ 315(b)-(c). 35 U.S.C. § 315(0) only allows joinder when a person "properlyfiles
`
`a petition under section 311." Samsung's late—filed IPR petition is not "properly
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`filed,” because it is filed more than one year after the date when Samsung was
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`1 The Board may take a different View of the statutory construction of 35 U.S.C. § 315(0),
`but Patent Owner submits that the language of the statute implies that only a person who is not
`already a party may be joined as a party. Otherwise, the language of "join as a party" loses
`meaning, because the word ”join" implies something new being added.
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`1 0
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`DRA/GSD/vd
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`Case IPR2014—00557
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`Docket No. 652l-0107L
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`US. Pat. No. 8,135,398
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`served with a complaint alleging infringement of the '398 patent.
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`35 U.S.C. §
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`315(b). Thus, the joinder should be denied as contrary to the statute.
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`F.
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`Conclusion
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`Virginia Innovation Sciences respectfully requests the Board to deny the
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`joinder of IPR2014—00557 to IPR2013—0057l and is available for a teleconference
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`with the Board and Petitioner, should the Board deem that a teleconference is
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`required for a full consideration of this Motion.
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`Dated:
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`April ll, 2014
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`Res“ t l
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`D. Richard Anderson Lead Cuvl)
`Registration No.: 40,439
`
`George Dolina (Backup Counsel)
`Registration No.: 63,654
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`BIRCH, STEWART, KOLASCH &
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`BIRCH, LLP
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`8110 Gatehouse Road, Suite 100 East
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`Falls Church, VA 22042
`703-205-8000
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`1 l
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`DRA/GSD/vd
`5/09
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`Case IPR2014—00557
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`Docket No. 652l—0107L
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`U.S. Pat. No. 8,135,398
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`CERTIFICATE OF SERVICE
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`I hereby certify that on April 11, 2014, a copy of the PATENT OWNER'S
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`OPPOSITION TO PETITIONER'S MOTION FOR JOINDER was served upon the
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`below-listed parties/counsel as follows:
`
`VIA E-MAIL TRANSMISSION
`
`Joseph S. Presta, Reg. No. 3 5,329
`1' sngnixonvancom
`Nixon & Vanderhye, PC.
`901 North Glebe Road,
`11th Floor,
`Arlington, VA 22203
`Telephone: 703-816-4000
`Fax: 703-816—4100
`
`Updeep S. Gill, Reg. No. 37,334
`usg@nixonvan.com
`Nixon & Vanderhye, PC.
`901 North Glebe Road,
`1 1th Floor,
`Arlington, VA 22203
`Telephone: 703—816—4000
`Fax: 703-816—4100
`
`
`
` Date: April 11, 2014 i/‘L/(PCM
`
`Vincent Duran
`
`DRA/GSD/Vd
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`
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