Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 10
`Entered: March 18, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`ARENDI S.A.R.L.,
`Patent Owner.
`____________
`
`Case IPR2014-01518
`Patent 6,323,853 B1
`
`
`
`Before MICHAEL R. ZECHER, NEIL T. POWELL, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review and
`Granting Petitioner’s Motion for Joinder
`37 C.F.R. §§ 42.108 and 42.122
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper 10
`Entered: March 18, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`ARENDI S.A.R.L.,
`Patent Owner.
`____________
`
`Case IPR2014-01518
`Patent 6,323,853 B1
`
`
`
`Before MICHAEL R. ZECHER, NEIL T. POWELL, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review and
`Granting Petitioner’s Motion for Joinder
`37 C.F.R. §§ 42.108 and 42.122
`
`
`
`
`
`
`
`IPR2014-01518
`Patent 6,323,853 B1
`
`
`I.
`
`INTRODUCTION
`
`On September 19, 2014, Petitioner, Samsung Electronics Co., Ltd.
`
`(“Samsung”), filed a Petition (Paper 1, “Pet.”) requesting an inter partes
`
`review of claims 1–79 of U.S. Patent No. 6,323,853 B1 (“the ’853 patent,”
`
`Ex. 1001). Paper 1. Samsung filed its Petition along with a Motion for
`
`Joinder requesting that we join Samsung as a party with Google Inc. v.
`
`Arendi S.A.R.L., Case IPR2014-00452 (“Google IPR”). Paper 3, “Samsung
`
`Mot.” We previously instituted an inter partes review in the Google IPR on
`
`August 20, 2014. See Google IPR, Paper 10 (“Google IPR Dec. to Inst.”).
`
`The Petition in this proceeding raises the same grounds of unpatentability
`
`over the same claims that we instituted in the Google IPR. Compare Google
`
`IPR Dec. to Inst., with Pet. 4, 16–46. Patent Owner, Arendi S.A.R.L.
`
`(“Arendi”), filed a Preliminary Response, which includes arguments
`
`opposing Samsung’s Motion for Joinder.1 Paper 7, “Prelim. Resp.” We
`
`then authorized Samsung to file a Reply addressing Arendi’s arguments
`
`opposing Samsung’s Motion for Joinder. Paper 9, “Samsung Reply.” We
`
`have jurisdiction under 35 U.S.C. § 314.
`
`
`1 Pursuant to 37 C.F.R. § 42.25(a)(1), “[a]n opposition is due one month
`after service of the motion.” In this case, Samsung’s Motion for Joinder was
`served on September 19, 2014. Samsung Mot. 11 (Certificate of Service).
`Although Arendi did not file an Opposition to Samsung’s Motion for Joinder
`by October 19, 2014, it nonetheless included arguments opposing Samsung’s
`Motion for Joinder in its Preliminary Response filed on December 31, 2014.
`We exercise our discretion under 37 C.F.R. § 42.5(b) to waive the one
`month requirement for filing an opposition to a motion as set forth in 37
`C.F.R. § 42.25(a)(1). As a result, we will consider the belated arguments
`opposing Samsung’s Motion for Joinder presented by Arendi in its
`Preliminary Response.
`
`
`
`2
`
`
`
`IPR2014-01518
`Patent 6,323,853 B1
`
`
`For the reasons discussed below, we institute an inter partes review of
`
`claims 1–79 of the ’853 patent and grant Samsung’s Motion for Joinder.
`
`
`
`II.
`
`INSTITUTION OF INTER PARTES REVIEW
`
`In the Google IPR, we instituted an inter partes review of claims 1–79
`
`of the ’853 patent based on the following grounds of unpatentability:
`
`(1) claims 1–9, 11, 13–29, 38–45, 57–64, 66, 68–75, 77, and 79 as
`
`unpatentable under 35 U.S.C. § 103(a) over Goodhand;2 and (2) claims 6,
`
`10, 12, 21, 27, 30–37, 42, 46–56, 61, 65, 67, 72, 76, and 78 as unpatentable
`
`under 35 U.S.C. § 103(a) over the combination of Goodhand and Padwick.3
`
`Google IPR Dec. to Inst. 23. As we indicated previously, the Petition filed
`
`in this proceeding asserts the same grounds of unpatentability over the same
`
`claims. Pet. 4; see also Samsung Mot. 2 (“The Samsung petition . . .
`
`includes only the two grounds of unpatentability that were instituted in the
`
`Google IPR.”).
`
`In the Preliminary Response filed in this proceeding, Arendi asserts
`
`that it presents new patentability arguments that were not considered
`
`previously in the Google IPR. See Prelim. Resp. 7. Despite Arendi’s
`
`assertion, we are not convinced that the arguments presented by Arendi in
`
`the Preliminary Response filed in the Google IPR differ substantially from
`
`the arguments presented in the Preliminary Response filed in this
`
`proceeding. Instead, upon reviewing both sets of arguments, we are unable
`
`to discern a notable difference.
`
`
`2 Goodhand et al, U.S. Patent No. 5,923,848, issued July 13, 1999 (Ex. 1003,
`“Goodhand”).
`3 Gordon Padwick et al., USING MICROSOFT OUTLOOK 97 (Que® Corp.
`1997) (Ex. 1004, “Padwick”).
`
`
`
`3
`
`
`
`IPR2014-01518
`Patent 6,323,853 B1
`
`
`For instance, in the Preliminary Response filed in this proceeding,
`
`Arendi presents the following arguments: (1) the broadest reasonable
`
`interpretation of “analyzing the document to determine if the first
`
`information is contained therein,” as recited in independent claim 1, must
`
`take into account the prosecution history of the ’853 patent, during which a
`
`clear disavowal of user text selection occurred (Prelim. Resp. 12–21); and
`
`(2) based on Arendi’s proposed construction, which was informed by the
`
`purported disclaimer discussed above, Goodhand does not teach the
`
`aforementioned limitation because it requires the user to identify text as the
`
`contact information to be searched by entering it in the “To” field of an e-
`
`mail template (id. at 21–25). These same arguments also were presented in
`
`the Preliminary Response filed in the Google IPR. See Google IPR, Paper 8
`
`(Patent Owner Preliminary Response), 9–14 (prosecution history
`
`disclaimer), 23–27 (same claim construction applied). Therefore, for the
`
`same reasons discussed in the Decision to Institute filed in the Google IPR,
`
`the arguments presented by Arendi in the Preliminary Response filed in this
`
`proceeding are not persuasive. See Google IPR Dec. to Inst. 10, 13–15, 19.
`
`Taking into account the arguments presented in the Preliminary
`
`Response filed in this proceeding, we conclude that the information
`
`presented in the Petition establishes that there is reasonable likelihood that
`
`Samsung will prevail in challenging claims 1–79 of the ’853 patent as
`
`unpatentable under 35 U.S.C. § 103(a). Pursuant to 35 U.S.C. § 314, we
`
`authorize an inter partes review to be instituted as to these claims of the
`
`’853 patent based on the same grounds of unpatentability instituted in the
`
`Google IPR.
`
`
`
`
`
`4
`
`
`
`IPR2014-01518
`Patent 6,323,853 B1
`
`
`III. GRANTING SAMSUNG’S MOTION FOR JOINDER
`
`Based on authority delegated to us by the Director, we have discretion
`
`to join an inter partes review with another inter partes review under
`
`35 U.S.C. § 315(c). The regulatory provisions governing an inter partes
`
`review address the appropriate timeframe for filing a motion for joinder.
`
`37 C.F.R. § 42.122(b) provides, in relevant part, “[a]ny 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 Petition, and the accompanying Motion for Joinder, were both
`
`filed on September 19, 2014. See Paper 4, 1. As such, Samsung’s Motion
`
`for Joinder was filed timely because joinder was requested no later than one
`
`month after August 20, 2014—the institution date of the Google IPR.
`
`
`
`In its Motion for Joinder, Samsung contends that the Petition filed in
`
`this proceeding sets forth the same grounds and combinations of prior art,
`
`the same expert Declaration, and substantially the same arguments
`
`considered by the Board when instituting an inter partes review in the
`
`Google IPR. Samsung Mot. 2, 6. In response, Arendi contends that we
`
`should not exercise our discretion to join this proceeding with the Google
`
`IPR because it would disrupt the schedule in the Google IPR by introducing
`
`additional depositions and redundant filings, as well as require the parties to
`
`incur additional expenses. Prelim. Resp. 25–28.
`
`
`
`In its Reply to Arendi’s arguments opposing Samsung’s Motion for
`
`Joinder, Samsung attempts to alleviate Arendi’s concerns by agreeing to take
`
`a limited understudy role in the Google IPR without a separate opportunity
`
`to participate actively, similar to the role undertaken by the Petitioners in
`
`Sony Corp. of America v. Network-1 Security Solutions, Inc., Case IPR2013-
`
`
`
`5
`
`
`
`IPR2014-01518
`Patent 6,323,853 B1
`
`00495 (PTAB Sept. 16, 2013) (Paper 13). Samsung Reply 1. Samsung
`
`asserts that, as long as Google remains a party in the Google IPR, it agrees to
`
`refrain from filing its own substantive papers, re-conducting depositions of
`
`Arendi’s Declarants, and requesting or reserving additional oral argument
`
`time. Id. Samsung further asserts that, given this limited understudy role,
`
`there will be no discernable prejudice to Arendi because the Google IPR can
`
`continue to progress on its existing schedule, no additional burdens will be
`
`placed on Arendi, and no additional costs will be incurred by the parties. Id.
`
`at 2.
`
`Based on Samsung’s willingness to take on the limited understudy
`
`role outlined above, we conclude Samsung has demonstrated that joinder
`
`will not unduly complicate or delay the Google IPR. We, therefore, grant
`
`Samsung’s Motion for Joinder to join this proceeding with the Google IPR.
`
`
`
`
`
`IV. ORDER
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that, pursuant to 35 U.S.C. § 314, an inter partes review
`
`is instituted as to claims 1–79 of the ’853 patent based on the same grounds
`
`instituted in Case IPR2014-00452;
`
`FURTHER ORDERED that Samsung’s Motion for Joinder is
`
`GRANTED, and this proceeding is joined with Case IPR2014-00452;
`
`FURTHER ORDERED that the grounds on which an inter partes
`
`review was instituted in Case IPR2014-00452 remain unchanged, and no
`
`other grounds are instituted in the joined proceedings;
`
`
`
`6
`
`
`
`IPR2014-01518
`Patent 6,323,853 B1
`
`
`FURTHER ORDERED that the Revised Scheduling Order entered in
`
`Case IPR2014-00452 (Paper 21) shall govern the schedule of the joined
`
`proceedings;
`
`FURTHER ORDERED that Case IPR2014-01518 is instituted, joined,
`
`and terminated under 37 C.F.R. § 42.72, and all further filings in the joined
`
`proceedings shall be made in Case IPR2014-00452;
`
`FURTHER ORDERED that, unless given prior authorization by the
`
`Board, Samsung is not permitted to file papers, engage in discovery, or
`
`participate in any deposition or oral argument in Case IPR2014-00452.
`
`Samsung, however, is permitted to appear in Case IPR2014-004524 so that it
`
`may receive notification of filings and attend the oral argument. Should
`
`Samsung believe it is necessary to take any further action, Samsung should
`
`request a conference call to obtain authorization from the Board;
`
`FURTHER ORDERED that the role of Google and Arendi in the
`
`joined proceedings remains unchanged;
`
`FURTHER ORDERED that the case caption in Case IPR2014-00452
`
`shall be changed to reflect the joinder with this proceeding in accordance
`
`with the attached example; and
`
`FURTHER ORDERED that a copy of this Decision be entered into
`
`the file of Case IPR2014-00452.
`
`
`
`
`4 Counsel for Samsung should refer to the Board’s website, in particular
`Frequently Asked Questions C3, D5, and G8, for information regarding
`filings in the Patent Review Processing System. See
`http://www.uspto.gov/patents-application-process/appealing-patent-
`decisions/trials/patent-review-processing-system-prps-0#heading-8.
`
`
`
`7
`
`
`
`IPR2014-01518
`Patent 6,323,853 B1
`
`For PETITIONER:
`
`Andrea G. Reister
`Gregory S. Discher
`Covington & Burling LLP
`areister@cov.com
`gdischer@cov.com
`
`
`For PATENT OWNER:
`
`Robert M. Asher
`Bruce D. Sunstein
`John J. Stickevers
`Sunstein Kann Murphy & Timbers LLP
`rasher@sunsteinlaw.com
`bsunstein@sunsteinlaw.com
`jstickevers@sunsteinlaw.com
`
`
`
`
`
`
`
`
`8
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper:
`Entered:
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC., MOTOROLA MOBILITY LLC, and
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioners,
`
`v.
`
`ARENDI S.A.R.L.,
`Patent Owner.
`____________
`
`Case IPR2014-0045215
`Patent 6,323,853
`
`
`
`
`
`
`
`15 Case IPR2014-01518 has been joined with this proceeding.
`
`
`
`
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