IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.,
`
`Petitioner,
`
`ARENDI S.A.R.L.,
`Patent Owner.
`
`Case NO. IPR2014—01518
`
`Patent NO. 6,323,853
`
`SAMSUNG’S REPLY TO ARENDI’S OPPOSITION TO SAMSUNG’S
`
`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(C) AND
`
`37 C.F.R. §§ 42.22 AND 42.12203)
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.,
`
`Petitioner,
`
`ARENDI S.A.R.L.,
`Patent Owner.
`
`Case NO. IPR2014—01518
`
`Patent NO. 6,323,853
`
`SAMSUNG’S REPLY TO ARENDI’S OPPOSITION TO SAMSUNG’S
`
`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(C) AND
`
`37 C.F.R. §§ 42.22 AND 42.12203)
`
`
`
`Docket No. 032449.0031-US10
`
`IPR2014-01518
`
`In a communication dated January 9, 2015, the Board authorized Petitioner
`
`Samsung Electronics Co., Ltd.
`
`(“Samsung”) to file the present reply to the
`
`opposition to the motion for joinder to IPR2014-00452 (“the Google IPR”) filed by
`
`Patent Owner Arendi S.A.R.L. (“Arendi”) (Paper 7).
`
`Arendi presents three arguments in opposition to joinder, none of which is
`
`meritorious. First, Arendi argues that joinder will “disrupt
`
`the Google IPR
`
`schedule and introduce burdens of additional depositions and redundant filings.”
`
`Id. at 6. To alleviate any concerns that this could be the case, Samsung agrees to
`
`take on a “limited ‘understudy’ role” without a separate opportunity to actively
`
`participate. Sony Corp., et al. v. Network—I Security Solutions, Inc., IPR2013—
`
`00495, Paper 13, p. 6. In particular, Samsung agrees to:
`
`1.
`
`Refrain from filing its own substantive papers as long as the
`
`Petitioners in the Google IPR remain in the proceeding;
`
`2.
`
`Refrain from requesting or reserving additional deposition time,
`
`or re-conducting depositions, such as the deposition of Patent Owner’s
`
`expert, already conducted by Petitioners in the Google IPR;
`
`3.
`
`Refrain from requesting or reserving any additional oral hearing
`
`time; and
`
`4.
`
`Assume an understudy role as long as the Petitioners in the
`
`Google IPR remain in the proceeding.
`
`In essence, Samsung requests that the Board merely join it as a party to the
`
`Google IPR. Target Corp. v. Destination Maternity Corp, IPR2014—00508, Paper
`
`
`
`Docket No. 032449.0031-U810
`
`IPR2014-01518
`
`18, pp. 10—11. Samsung agrees to subordinate itself into an understudy role,
`
`allowing the Petitioners in the Google IPR to lead the proceeding, absent
`
`settlement and termination of the Petitioners in that proceeding. The Petitioners in
`
`the Google IPR have no objection to joining Samsung in such an “understudy”
`
`role.
`
`Given an “understudy” role for Samsung, the Google IPR can continue to
`
`progress on its existing schedule, and there will be no “redundant and wasteful
`
`effort” or “additional attorney and expert witness fees and expenses.” Paper 7, pp.
`
`26-27. With Samsung in an “understudy” role, there would be no need for another
`
`Patent Owner Response, no need to re—depose Patent Owner’s expert, and no need
`
`to revise the schedule already agreed to by Arendi and the Google IPR Petitioners.
`
`Therefore, joinder of Samsung in an “understudy” role would neither “unduly
`
`delay the resolution of the proceeding” nor “be discernibly prejudicial” to Arendi.
`
`Id. at 25-26.
`
`Second, Arendi’s argument that the petition should be denied because it
`
`“duplicates the grounds” of the Google IPR weighs in favor of joinder, not against
`
`it. Id. at 2. As Arendi admits, “almost Samsung’s entire petition has been copied
`
`and pasted from the Google lPR’s original petition,” “Samsung raises the same
`
`issues presented by the Google IPR,” and “Samsung uses the same expert, Dennis
`
`Allison, and submits a declaration by Mr. Allison that
`
`.
`
`.
`
`. makes the same
`
`
`
`Docket No. 032449.003] -USlO
`
`IPR2014—01518
`
`substantive statements regarding Goodhand, Padwick, and the alleged invalidity of
`
`claims 1—79 of the ‘853 Patent.” Id. at 3—4. As Arendi’s admissions make clear,
`
`Samsung’s petition and declaration will
`
`introduce no new substantive issues.
`
`Therefore, joining Samsung as a party to the Google IPR Where those same issues
`
`will be litigated is entirely proper, and it is unnecessary to invoke 35 U.S.C. §
`
`325(d) to avoid a “duplicate” proceeding.
`
`Third, Arendi argues that it was somehow improper for Samsung to “rely
`
`upon joinder” even though Samsung was not time-barred. Id. at 6. As the Board
`
`recognizes, nothing in 35 U.S.C. § 315(c) limits joinder only to parties who are
`
`otherwise time-barred. Target Corp, IPR2014—00508, Paper 18 at 10 (“If an inter
`
`partes review of a particular patent
`
`is underway at
`
`the Board, a time-barred
`
`petitioner (as well as a non-time-barred petitioner) may request to join it as a
`
`party”) (emphasis added).
`
`Joinder to IPR2014-00452 will introduce no new substantive issues, and, with
`
`Samsung’s circumscribed “understudy” role, will not complicate or delay that
`
`proceeding. Therefore, joinder is appropriate, and Samsung requests that its Motion
`
`be granted.
`
`
`
`Docket No. 032449.0031-U810
`
`IPR2014-01518
`
`Date: January 16, 2015
`
`Respectfully submitted,
`
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`By éjfgtztr’wi 3»
`
`Andrea G. Reisterr‘"
`Registration N0.: 36,253
`Gregory S. Diseher
`Registration N0.: 42,488
`COVINGTON & BURLING LLP
`
`One CityCenter
`850 Tenth Street NW
`
`Washington, DC 20001
`(202) 662-6000
`Attorneys for Petitioner
`
`
`
`Docket No. 032449.0031-U810
`
`IPR2014-01518
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6, I hereby certify that on this 16th day of January 2015,
`
`the foregoing Samsung’s Reply to Arendi’s Opposition to Samsung’s Motion for
`
`Joinder Under 35 U.S.C. § 315(c) and 37 C.F.R. §§ 42.22 and 42.122(b) was served
`
`by electronic mail by agreement of the parties on the following counsel of record for
`
`patent owner.
`
`Robert M. Asher
`
`Bruce D. Sunstein
`
`Sunstein Kann Murphy & Timbers LLP
`rasher@sunsteinlaw.com
`
`bsunstein@sunsteinlaw.com
`
`A courtesy copy was provided to Counsel for Petitioners in IPR2014—00452:
`
`Matthew A. Smith
`
`Zhuanjia Gu
`Turner Boyd LLP
`smith@turnerboyd.com
`gu@turnerbody.com
`
`Date: January 16, 2015
`
`
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`
`Andrea GVReister, Esq.
`Registration No.: 36,253
`
`
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