Trials@uspto.gov
`571-272-7822
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` Paper 10
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` Entered: June 13, 2014
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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.
`
`
`Case IPR2014-00557
`Patent 8,135,398 B2
`
`
`Before MICHAEL W. KIM, BRIAN J. McNAMARA,
`and MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`
`KIM, Administrative Patent Judge.
`
`
`
`DECISION TO INSTITUTE AND GRANT OF MOTION FOR JOINDER
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`

`

`Case IPR2014-00557
`Patent 8,135,398 B2
`
`
`I.
`
`INTRODUCTION
`
`Samsung Electronics Co., Ltd. (“Petitioner”) filed a corrected Petition
`
`requesting an inter partes review of claims 58 and 63 of U.S. Patent No.
`
`8,135,398 B2 (Ex. 1001, “the ’398 Patent”). Paper 1 (“Pet.”). The Petition
`
`includes a Motion for Joinder under 37 C.F.R. § 42.122 (Paper 3; “Motion
`
`for Joinder”). Virginia Innovation Sciences, Inc. (“Patent Owner”) filed an
`
`Opposition to Joinder (Paper 8; “Opposition”), but did not file a Preliminary
`
`Response by the accelerated due date of May 15, 2014, set forth in an order
`
`dated April 24, 2014 (Paper 9). We have jurisdiction under 35 U.S.C. § 314.
`
`The standard for instituting an inter partes review is set forth in
`
`35 U.S.C. § 314(a) which provides as follows:
`
`THRESHOLD.—The Director may not authorize an inter
`partes review to be instituted unless the Director determines
`that the information presented in the petition filed under section
`311 and any response filed under section 313 shows that there
`is a reasonable likelihood that the petitioner would prevail with
`respect to at least 1 of the claims challenged in the petition.
`
`Upon consideration of the Petition, we determine that the information
`
`presented by Petitioner has established that there is a reasonable likelihood
`
`that Petitioner would prevail in showing the unpatentability of claims 58 and
`
`63 of the ’398 Patent. Accordingly, we institute an inter partes review on
`
`claims 58 and 63. We also grant the Motion for Joiner.
`
`A. Related Proceedings
`
`Petitioner and Patent Owner indicate that Patent Owner asserted the
`
`’398 Patent against Petitioner in Virginia Innovation Sciences, Inc. v.
`
`Samsung Electronics Co., Ltd., Case No. 2:12-cv-00548-MSD-DEM (E.D.
`
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`Case IPR2014-00557
`Patent 8,135,398 B2
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`Va.), filed October 4, 2012. Pet. 1; Paper 7, 2. Petitioner and Patent Owner
`
`also have identified the following related and pending inter partes reviews:
`
`Samsung Electronics Co., Ltd. v. Virginia Innovation Sciences, Inc., Case
`
`IPR2013-00569 (U.S. Patent No. 8,145,268 B2); Samsung Electronics Co.,
`
`Ltd. v. Virginia Innovation Sciences, Inc., Case IPR2013-00570
`
`(U.S. Patent No. 8,224,381 B2); Samsung Electronics Co., Ltd. v. Virginia
`
`Innovation Sciences, Inc., Case IPR2013-00571 (U.S. Patent No. 8,135,398
`
`B2). Pet. 1; Paper 7, 2.
`
`B. The ’398 Patent
`
`The subject matter of the ’398 Patent relates to systems and methods
`
`for providing multimedia content to and from various devices. Ex. 1001,
`
`1:47–49. “Empowered by the next generation of wireless technology,
`
`cellular networks can provide users with access to information from the
`
`Internet such as video on demand, video conferences, databases, etc.”
`
`Ex. 1001, 1:51–54. Use of cellular phones is, thus, no longer limited to
`
`voice transmission. Ex. 1001, 1:54–55.
`
`Such next generation wireless technology allows a user to engage in
`
`communications using various devices, and also allows the user to enjoy
`
`content in various vehicles. Ex. 1001, 2:66–3:2. For example, the user no
`
`longer merely watches television. Ex. 1001, 3:2–3. “Instead, the user may
`
`use their home computer, television, MP3, PDA, cellular phone or various
`
`hybrid devices to enjoy content.” Ex. 1001, 3:3–5. “This content also
`
`arrives from a variety of sources, not just broadcast television as in the past.”
`
`Ex. 1001, 3:5–6. According to the ’398 Patent, although it may be desirable
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`to have more options, some consumers may feel overwhelmed trying to
`
`manage everything. Ex. 1001, 3:6–8. Thus, the ’398 patent proposes
`
`solutions to problems that cause diminished user enjoyment of various
`
`devices and corresponding content due to the complications of trying to
`
`manage content and interface with a variety of devices that are not
`
`necessarily compatible. Ex. 1001, 3:9–13. According to the ’398 Patent,
`
`one such solution, mobile terminal signal conversion, is set forth in Figure 9,
`
`reproduced below:
`
`Figure 9 illustrates a schematic diagram of a system
`in which mobile signal conversion may reside.
`
`
`
`Specifically, multimedia information may be provided by any number
`
`of service providers 902a-b and delivered through network 904 to base
`
`station 906 to accommodate transmission of the multimedia information to
`
`cellular phone 908, among other devices. Ex. 1001, 14:66–15:4. Mobile
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`terminal signal conversion module (MTSCM) 912 resides within separate
`
`housing 910, outside cellular phone 908. Ex. 1001, 15:19–21. MTSCM 912
`
`processes signals to accommodate reproduction by an external device, such
`
`as external display system 914. Ex. 1001, 15:25–26. Specifically, a
`
`multimedia signal is transmitted to cellular phone 908 through network 904.
`
`Ex. 1001, 15:26–28. MTSCM 912 receives the multimedia signal from
`
`cellular phone 908, by, for example, a cable connection. Ex. 1001, 15:36–
`
`51. MTSCM 912 processes the multimedia signal to provide a converted
`
`video signal that has a display format and/or signal power level appropriate
`
`for external display terminal 914 that is separate from cellular phone 908.
`
`Ex. 1001, 15:52–55. The display format and/or signal power level of
`
`external display terminal 914 may be different from that of cellular phone
`
`908. Ex. 1001, 15:55–58.
`
`C. Illustrative Claim
`
`The ’398 Patent includes 93 claims, of which claims 58 and 63 are
`
`challenged. Claims 58 and 63 depend ultimately from independent claim 15.
`
`Independent claim 15 is reproduced as follows:
`
`15. A wireless terminal apparatus for converting and
`sending of content to devices, the apparatus comprising:
`a processor; and
`a memory, the memory storing program code executable
`by a processor to perform operations comprising:
`receiving a multimedia content item originated from a
`source located outside a designated location and destined for a
`destination device located within the designated location,
`wherein the multimedia content item is received through a
`wireless communication network by the wireless terminal
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`Case IPR2014-00557
`Patent 8,135,398 B2
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`
`apparatus;
`converting the multimedia content item for reproduction
`according to a determined signal format of the destination
`device; and
`sending the converted multimedia content item to the
`destination device, wherein
`the destination device
`is a
`television, and wherein the sending comprises:
`establishing a predetermined channel operatively in
`communication with the destination device, and
`item
`transporting
`the multimedia content
`destination device via said predetermined channel,
`for the destination device to display the multimedia
`content item in conjunction with a navigational command to the
`destination device for the predetermined channel.
`
`the
`
`to
`
`
`
`Petitioner relies upon the following prior art references:
`
`D. Prior Art Relied Upon
`
`Sept. 27, 2011
`
`Karaoguz US 8,028,093 B2
`Aug. 25, 2009
`
`Palin
`US 7,580,005 B1
`Seaman
`US 2004/0223614 A1 Nov. 11, 2004
`
`(Ex. 1002)
`(Ex. 1003)
`(Ex. 1004)
`
`E. The Asserted Ground
`
`Petitioner contends that the challenged claims are unpatentable based
`
`on the following ground:
`
`Reference(s)
`
`Basis
`
`Palin, Karaoguz and Seaman
`
`§ 103(a)
`
`Claims
`Challenged
`
`58 and 63
`
`II. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are
`
`interpreted according to their broadest reasonable construction in light of the
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`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
`
`2012). Also, claim terms are given their ordinary and customary meaning,
`
`as would be understood by one of ordinary skill in the art in the context of
`
`the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257
`
`(Fed. Cir. 2007).
`
`1.
`
`“wireless terminal”
`
`Independent claim 15 recites “wireless terminal.” Claims 58 and 63
`
`depend ultimately from independent claim 15. Petitioner indicates that in
`
`IPR2013-00571, which instituted a trial on independent claim 15 of the same
`
`patent, we construed “wireless terminal” as “a point in a system or
`
`communication network at which data can either enter or leave in a wireless
`
`manner.” Pet. 4. After reviewing the specification and our analysis in
`
`IPR2013-00571, we see no need to alter the aforementioned construction for
`
`the purposes of this decision.
`
`2.
`
`“HDMI”
`
`Dependent claims 58 and 63 each recite “HDMI.” Petitioner indicates
`
`that in IPR2013-00571, we construed HDMI” as “high definition multimedia
`
`interface.” Pet. 4. After reviewing the specification and our analysis in
`
`IPR2013-00571, we see no need to alter the aforementioned construction for
`
`the purposes of this decision.
`
`3.
`
`“wireless communication network”
`
`Independent claim 15 recites “wireless communication network.”
`
`Claims 58 and 63 depend ultimately from independent claim 15. Petitioner
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`Case IPR2014-00557
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`indicates that in IPR2013-00571, we construed “wireless communication
`
`network” as “wireless network for transmitting voice or data.” Pet. 4. After
`
`reviewing the specification and our analysis in IPR2013-00571, we see no
`
`need to alter the aforementioned construction for the purposes of this
`
`decision.
`
`B. Claims 58 and 63 – Obvious over Palin, Karaoguz, and Seaman
`
`Petitioner contends that claims 58 and 63 are unpatentable under
`
`35 U.S.C. § 103(a) as obvious over Palin, Karaoguz, and Seaman. Pet. 6–
`
`40. In support of this asserted ground of unpatentability, Petitioner provides
`
`detailed explanations as to how each claim limitation is disclosed or
`
`suggested by Palin, Karaoguz, and Seaman. In its explanations, Petitioner
`
`relies on the Declaration of Dr. Kevin C. Almeroth (Ex. 1005).
`
`Karaoguz (Exhibit 1002)
`
`Karaoguz discloses a system, including a communications device
`
`operatively connected to a network. Ex. 1002, 2:51–53. The
`
`communications device may receive a revisable device profile from the
`
`network, adapt media content based on the received device profile, and send
`
`the adapted media content to the network. Ex. 1002, 2:53–56. Figure 1 of
`
`Karaoguz is set forth below.
`
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`
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`Figure 1 of Karaoguz is a diagram of a media exchange network including
`an architecture to support adaptive digital media parameters.
`
`Ex. 1002, Fig. 1. Media exchange network 100 includes media processing
`
`system 102 (“MPS”) and media peripheral 103 (“MP”) at first home 104,
`
`and MPS 106 and MP 107 at second home 108. Ex. 1002, 3:59–63. MP
`
`107 may interface with MPS 106 via a wireless link. Ex. 1002, 4:11–13.
`
`MPS 102, 106 may connect to media exchange network 100 via a wireless
`
`communications infrastructure. Ex. 1002, 8:40–45. MPS 102, 106 may
`
`include at least one of a set-top box, a PC, and a TV. Ex. 1002, 4:56–60. In
`
`one embodiment, Karaoguz discloses that MPS 106 includes HDTV
`
`capability. Ex. 1002, 6:34–36. MPS 106 sends a profile including the
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`HDTV capability to MPS 102 over media exchange network 100. Ex. 1002,
`
`6:38–40. When MPS 102 sends a digital video to MPS 106, MPS 102 reads
`
`the profile and proceeds to adapt the resolution and image size parameters of
`
`the digital video to take advantage of the HDTV capability of MPS 106.
`
`Ex. 1002, 6:40–46. MPS 102 then pushes the adapted digital video to MPS
`
`106 over media exchange network 100. Ex. 1002, 6:46–48. Karaoguz
`
`discloses that the adapted digital video may be pushed via channels.
`
`Ex. 1002, 6:37–59.
`
`Seaman (Exhibit 1004)
`
`Seaman describes a device that is capable of delivering a video-on-
`
`demand feed to an input of a TV set. Ex. 1004 ¶ 11. Figure 1 of Seaman is
`
`reproduced below.
`
`
`
`Figure 1 illustrates a primary embodiment 10 of the device.
`
`Ex. 1004 ¶ 17. Primary embodiment 10 comprises radio 60 and video
`
`decoder 150. Ex. 1004 ¶¶ 22-23. Radio 60 changes a wireless encrypted
`
`video data stream into an unencrypted video data stream. Ex. 1004 ¶ 22. “A
`
`video decoder (150) decodes the unencrypted data stream into a standard
`
`video format that TV set (1001) or monitor can display.” Ex. 1004 ¶ 0023.
`
`Copyright protection circuit 160 adds copyright protection to the signal,
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`which then is sent to TV set 1001. Id. Seaman discloses various coding
`
`schemes that may be used:
`
`Coding and de-coding of video is described. MPEG is a
`
`coding scheme that has the advantage of reducing the size of
`the required data stream, thus reducing the required minimum
`size of the data link. There are variants of MPEG that can be
`used that are within the scope of this invention such as MPEG-
`2, MPEG-3, MPEG-4 etc. Also there are other types of
`encoding that can be used and still be within the scope of this
`invention.
` A non-exhaustive list includes NTSC, PAL,
`SECAM, HDTV, SDTV, RGB, YcbCr, YpbPr, S-Video,
`CVBS, SDI, HDMI, and DVI.
`
`Ex. 1004 ¶ 47.
`
`Analysis
`
`Claim 58 depends from claim 55, which depends from independent
`
`claim 15. Claim 63 depends from claim 62, which depends from
`
`independent claim 15. Accordingly, a proper analysis of claims 58 and 63
`
`includes an analysis of underlying claims 15, 55, and 62.
`
`As required by independent claim 15, Karaoguz discloses a wireless
`
`terminal apparatus with the recited memory and processor in the form of
`
`personal computer (“PC”) 101. PC 101 receives multimedia content at
`
`home 104 from a source located outside a designated location, i.e., Internet
`
`infrastructure 115, through broadband access headend 109, which, because
`
`Karaoguz discloses it may include a satellite headend, would include a
`
`structure corresponding to the recited wireless communication network.
`
`Ex. 1003, 3:65–4:4, Fig. 1. Karaoguz also discloses that MPS 102, located
`
`at home 104, pushes adapted digital video to MPS 106 over media exchange
`
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`network 100. Ex. 1003, 6:46–48. Independent claim 15 further recites
`
`converting the multimedia content item for reproduction according to a
`
`determined signal format of the destination device. Karaoguz discloses that
`
`when MPS 102 sends a digital video to MPS 106, MPS 102 adapts the
`
`resolution and image size parameters of the digital video to take advantage
`
`of the HDTV capability of MPS 106. Ex. 1003, 6:40–46. Independent
`
`claim 15 additionally recites sending the converted multimedia content item
`
`to the destination device, wherein the destination device is a television.
`
`MPS 106 may include at least one of a set-top box, a PC, and a TV.
`
`Ex. 1003, 4:56–60. Independent claim 15 also recites establishing a
`
`predetermined channel operatively in communication with the destination
`
`device. Karaoguz discloses that the adapted digital video may be pushed via
`
`channels. Ex. 1003, 6:37–59. Based on the present record, we are
`
`persuaded similarly that Karaoguz discloses every limitation of claims 55
`
`and 62.
`
`Claim 58 additionally recites “wherein the predetermined processing
`
`category prompts routing to the television through an HDMI input of the
`
`television.” Seaman discloses that the signal from video decoder 150 that is
`
`output to TV set 1001 is in “a standard video format that a TV set (1001) or
`
`monitor can display” (Ex. 1004 ¶ 23), such as “NTSC, PAL, SECAM,
`
`HDTV, SDTV, RGB, YcbCr, YpbPr, S-Video, CVBS, SDI, HDMI, HDCP
`
`and all their variants” (Ex. 1004 at claim 7 (emphasis added)). Thus,
`
`Seaman discloses that the interface between device 10 and TV set 1001 can
`
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`Case IPR2014-00557
`Patent 8,135,398 B2
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`be a “high definition multimedia interface (HDMI),” as required by claim
`
`58. Petitioner further asserts the following:
`
`2.
`
`HDMI
`
`With respect to challenged claims 58 and 63, a person of
`
`ordinary skill in the art would have been motivated to further
`modify the combined teachings of Karaoguz and Palin with the
`teachings of Seaman that disclose HDMI for connection to an
`alternative display terminal. Converting a video signal into an
`HDMI compatible signal and/or then delivering that signal over
`an HDMI cable would have been obvious to a person of
`ordinary skill in the art at the time of the alleged invention. In
`one embodiment, Karaoguz discloses taking advantage of the
`HDTV capability of the disclosed system: “The MPS 102 then
`pushes the adapted channel with the adapted digital video
`media to the MPS 106 over the media exchange network. As a
`result, the user of the MPS 106 at the 2nd home 108 may view
`the adapted digital video file while taking advantage of the
`maximum display capability (i.e., the HDTV capability) of the
`MPS 106.” Ex. 1002, 6:46-52; see also ’398 Decision at 12
`citing Ex. 1002, 6:34-36. It would have been obvious to a
`person of ordinary skill in the art at the time of the alleged
`invention to use Seaman’s HDMI teachings to take advantage
`of the HDTV capability of Karaoguz. Moreover, given the
`capabilities of HDMI and increasing interest and use of that
`technology in the timeframe leading up to the filing of the ’398
`patent, a person of ordinary skill in the art would have been
`motivated to use it to provide a video signal. Given that the
`features and limitations of using HDMI would have been well
`understood to a person of ordinary skill in the art and the
`industry was already moving towards mandatory usage of
`HDMI in televisions, such a person would have been motivated
`to use it as an alternative to other technologies. Implementing
`the use of HDMI would not have
`required undue
`experimentation for one skilled in the art; HDMI and how to
`use it for delivery of video signals was knowledge that one
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`
`skilled in the art would have possessed. One skilled in the art
`would have a high degree of success in combining the prior art
`references to develop the claimed technology. Ex. 1005 ¶¶ 199-
`200; see also id. ¶¶ 45-119. Thus, further modifying the system
`of Karaoguz (in view of Palin) with the HDMI taught by
`Seaman and called for in claims 58 and 63 would have been
`obvious to a person of ordinary skill in the art at the time of the
`alleged invention.
`
`Pet. 22–23. We are persuaded by Petitioner’s reasoning. Thus, on this
`
`record, we are persuaded it would have been obvious to modify Karaoguz to
`
`include such a limitation. We are persuaded similarly that, based on the
`
`record before us, the combination of Karaoguz and Seaman discloses every
`
`limitation of claim 63.
`
`Conclusion
`
`On this record, we are persuaded that Petitioner has demonstrated a
`
`reasonable likelihood of succeeding in its challenge to claims 58 and 63 as
`
`obvious over Palin, Karaoguz, and Seaman.
`
`C. Joinder with IPR2013-00571
`
`Petitioner included a Motion for Joinder under 37 C.F.R. § 42.122,
`
`requesting that this proceeding be joined with IPR2013-00571. Paper 3.
`
`The Motion for Joinder was filed within one month after institution of a trial
`
`in IPR2013-00571, as required by 37 C.F.R. § 42.122(b). Patent Owner
`
`filed an Opposition to Joinder. Paper 8. The AIA permits joinder of parties
`
`in like review proceedings. The statutory provision governing joinder of
`
`inter partes review proceedings is 35 U.S.C. § 315(c), which provides:
`
`(c) JOINDER.—If the Director institutes an inter partes review,
`the Director, in his or her discretion, may join as a party to that
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`
`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.
`
`35 U.S.C. § 315(b) bars institution of a petition for inter partes review
`
`when the petition is filed more than one year after the petitioner (or the
`
`petitioner’s real party-in interest or privy) is served with a complaint
`
`alleging infringement of the patent. 35 U.S.C. § 315(b); 37 C.F.R. §
`
`42.101(b). However, the one-year time bar does not apply to a request for
`
`joinder. 35 U.S.C. § 315(b) (final sentence) (“[t]he time limitation set forth
`
`in the preceding sentence shall not apply to a request for joinder under
`
`subsection (c)”) ; 37 C.F.R. § 42.122(b). Petitioner was served with a
`
`complaint asserting infringement of the ʼ398 Patent more than one year
`
`before filing this Petition.1 Thus, absent joinder of this proceeding with
`
`IPR2013-00571, the Petition would be barred.
`
`Joinder may be authorized when warranted, but the decision to grant
`
`joinder is discretionary. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b). When
`
`exercising that discretion, the Board is mindful that patent trial regulations,
`
`including the rules for joinder, must be construed to secure the just, speedy,
`
`and inexpensive resolution of every proceeding. 37 C.F.R. § 42.1(b).2 As
`
`
`
`1 Petitioner was served with a complaint alleging infringement of the ’398
`Patent on October 23, 2012. Motion for Joinder, 1. Petitioner filed its
`Petition in the instant proceeding on March 28, 2014.
`2 35 U.S.C. § 316(b) (“In prescribing regulations under this section, the
`
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`indicated in the legislative history, the Board will determine whether to grant
`
`joinder on a case-by-case basis, taking into account of the particular facts of
`
`each case. See 157 Cong. Rec. S1376 (daily ed. Mar. 8, 2011) (statement of
`
`Sen. Kyl) (when determining whether and when to allow joinder, the Office
`
`may consider factors including the breadth or unusualness of the claim
`
`scope, claim construction issues, and consent of the patent owner).
`
`Patent Owner argues in its Opposition that Section 315(c) addresses
`
`joinder of a party, and not the joinder of additional grounds by the same
`
`party. Opposition 10–11. We note that the Board already has allowed
`
`joinder of additional grounds by the same party. See, e.g., Microsoft Corp.
`
`v. Proxyconn, Inc., Case IPR2013-00109 (PTAB Feb. 24, 2013) (Paper 15);
`
`Ariosa Diagnostics, Inc. v. Isis Innovation Ltd., Case IPR2013-00250
`
`(PTAB Sept. 3, 2013) (Paper 24); ABB Inc. v. Roy-G-Biv Corp., Case
`
`IPR2013-00286 (PTAB Aug. 9, 2013) (Paper 14); Sony Corp. v. Yissum
`
`Research Dev. Co. of the Hebrew Univ. of Jerusalem, Case IPR2013-00327
`
`(PTAB Sept. 24, 2013) (Paper 15). Independent of the authority conferred
`
`by Section 315(c), 35 U.S.C. § 315(d) is the statutory provision governing
`
`multiple proceedings or matters before the Office, and reads as follows:
`
`(d) MULTIPLE PROCEEDINGS.—Notwithstanding sections
`135(a), 251, and 252, and chapter 30, during the pendency of an
`inter partes review, if another proceeding or matter involving
`
`
`
`Director shall consider the effect of any such regulation on the economy, the
`integrity of the patent system, the efficient administration of the Office, and
`the ability of the Office to timely complete proceedings instituted under this
`chapter.”)
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`
`the patent is before the Office, the Director may determine the
`manner in which the inter partes review or other proceeding or
`matter may proceed, including providing for stay, transfer,
`consolidation, or termination of any such matter or proceeding.
`
`37 C.F.R. § 42.122(a) provides further that “[w]here another matter
`
`involving the patent is before the Office, the Board may during the pendency
`
`of the inter partes review enter any appropriate order regarding the
`
`additional matter including providing for the stay, transfer, consolidation, or
`
`termination of any such matter.” As noted above, the Board’s rules for AIA
`
`proceedings “shall be construed to secure the just, speedy, and inexpensive
`
`resolution of every proceeding.” 37 C.F.R. § 42.1(b); see Office Patent Trial
`
`Practice Guide, 77 Fed. Reg. at 48,758.
`
`At a minimum, the instant Petition is a matter before the Office
`
`involving the same patent as in IPR2013-00571. Accordingly, for the same
`
`reasons we exercise our discretion under Section 315(c), the analysis of
`
`which is set forth below, we concurrently exercise our discretion under
`
`Section 315(d) and consolidate this matter with pending IPR2013-00571,
`
`which involves the same patent.
`
`Joinder of this proceeding with IPR2013-00571 will not delay unduly
`
`the resolution of either proceeding, but will help “secure the just, speedy,
`
`and inexpensive resolution” of these proceedings. See 37 C.F.R. § 42.1(b).
`
`For example, the only additional subject matter added by claims 58 and 63
`
`to the subject matter of the claims for which a trial already has been
`
`instituted in IPR2013-00571 is HDMI, for which the Petition cites the
`
`Seaman reference. The relevance of Seaman with respect to HDMI is
`
`17
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`Case IPR2014-00557
`Patent 8,135,398 B2
`
`addressed already in the context of trials concerning the unpatentability of
`
`certain claims in related proceedings IPR2013-00569 (claim 27 of related
`
`U.S. Patent No. 8,145,268 B2) and IPR2013-00570 (claims 19 and 33 of
`
`related U.S. Patent No. 8,224,381 B2). Accordingly, the minimal additional
`
`amount of work required on the part of Patent Owner to address claims 58
`
`and 63 of the ’398 Patent is strongly outweighed by the public interest in
`
`having consistency of outcome concerning similar sets of claimed subject
`
`matter and prior art.
`
`Moreover, to minimize prejudice to Patent Owner, we already have
`
`adjusted the Scheduling Order in IPR2013-00571 such that the Patent Owner
`
`Response is due on July 7, 2014, more than two months after the original
`
`due date of May 6, 2014, and more than three weeks after the institution of a
`
`trial in this proceeding.
`
`To further minimize prejudice to Patent Owner, we also order
`
`Petitioner to pay all future costs associated with making Dr. Almeroth
`
`available for cross-examination at a location convenient to counsel for
`
`Patent Owner.
`
`We, therefore, conclude that there is no discernible prejudice either to
`
`Patent Owner or Petitioner from joining this proceeding with
`
`IPR2013-00571. We also conclude that Petitioner has met its burden of
`
`demonstrating that joinder with IPR2013-00571 is warranted under the
`
`circumstances.
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`18
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`Case IPR2014-00557
`Patent 8,135,398 B2
`
`
`III. CONCLUSION
`
`For the foregoing reasons, we determine that the information
`
`presented in the Petition establishes that there is a reasonable likelihood that
`
`Petitioner would prevail in establishing the unpatentability of claims 58 and
`
`63 of the ’398 Patent.
`
`The Board has not made a final determination on the patentability of
`
`any challenged claims.
`
`Accordingly, it is
`
`IV. ORDER
`
`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
`
`hereby instituted as to claims 58 and 63 of the ’398 Patent as unpatentable
`
`under 35 U.S.C. § 103(a) as obvious over Palin, Karaoguz, and Seaman.
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(d) and
`
`37 C.F.R. § 42.4, notice is hereby given of the institution of a trial; the trial
`
`commencing on the entry date of this Order;
`
`FURTHER ORDERED that this proceeding is joined with Case
`
`IPR2013-00571;
`
`FURTHER ORDERED that any and all further filings in the joined
`
`proceedings shall be made only in Case IPR2013-00571;
`
`FURTHER ORDERED that the case caption in Case IPR2013-00571
`
`shall be changed to reflect the joinder with this proceeding in accordance
`
`with the attached example;
`
`FURTHER ORDERED that a copy of this Decision be entered into
`
`the file of Case IPR2013-00571; and
`
`19
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`Case IPR2014-00557
`Patent 8,135,398 B2
`
`
`FURTHER ORDERED that Petitioner will pay all future costs
`
`associated with making Dr. Almeroth available for cross-examination at a
`
`location convenient to counsel for Patent Owner.
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`20
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`

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`Case IPR2014-00557
`Patent 8,135,398 B2
`
`For PETITIONER:
`
`Joseph Presta
`Updeep Gill
`Nixon & Vanderhye P.C.
`JSP@nixonvan.com
`usg@nixonvan.com
`
`For PATENT OWNER:
`
`D. Richard Anderson
`George Dolina
`Birch, Stewart, Kolasch & Birch LLP
`dra@bskb.com
`gsd@bskb.com
`
`
`
`
`
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`Case IPR2014-00557
`Patent 8,135,398 B2
`
`
`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
`
`
`Case IPR2013-005713
`Patent 8,135,398 B2
`
`
`
`
`
`
`
`3 Case IPR2014-00557 has been joined with this proceeding.
`
`22
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`