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`IN THE 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 No. To Be Assigned
`Patent No. 6,323,853
`
`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(C)
`AND 37 C.F.R. §§ 42.22 AND 42.122(B)
`
` DC: 5456049-2
`
`
`
`Docket No. 032449.0031-US10
`
`
`Inter Partes Review of U.S. Pat. No. 6,323,853
`
`I. STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`
`
`Petitioner Samsung Electronics Co., Ltd. (“Samsung” or “Petitioner”)
`
`respectfully requests joinder pursuant to 35 U.S.C. § 315(c) and 37 C.F.R.§
`
`42.122(b) of the above-captioned inter partes review (“Samsung IPR”) with the
`
`pending inter partes review concerning the same patent captioned Google Inc. and
`
`Motorola Mobility LLC v. Arendi S.A.R.L., Case No. IPR2014-00452 (“Google
`
`IPR”), which was instituted on August 20, 2014 (Paper No. 10). Joinder is
`
`appropriate because it will promote efficient resolution of the validity of the
`
`involved patent, and it will not prejudice the parties to the Google IPR.
`
`
`
`This Motion for Joinder is timely filed under 37 C.F.R. §§ 42.22 and
`
`42.122(b) as it is submitted no later than one month after the August 20, 2014
`
`institution date of the Google IPR.
`
`II. STATEMENT OF MATERIAL FACTS
`
`a. On February 21, 2014, petitioners in the Google IPR requested
`
`inter partes review of claims 1-79 of U.S. Patent No. 6,323,853
`
`(“the ‘853 patent”), citing three grounds of unpatentability.
`
`b. The Patent Owner (purported to be Arendi S.A.R.L. or
`
`“Arendi”) submitted a preliminary response on May 22, 2014
`
`(Paper No. 8).
`
`
`
`- 1 -
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`
`
`Docket No. 032449.0031-US10
`
`
`Inter Partes Review of U.S. Pat. No. 6,323,853
`
`c. In a decision dated August 20, 2014 (Paper No. 10), the Board
`
`instituted inter partes review on two of the three requested
`
`grounds, i.e., claims 1–9, 11, 13–29, 38–45, 57–64, 66, 68–75,
`
`77, and 79 as being rendered obvious under 35 U.S.C. § 103(a)
`
`by Goodhand (U.S. Patent No. 5,923,848) (“the Goodhand
`
`Ground”), and claims 6, 10, 12, 21, 27, 30–37, 42, 46–56, 61,
`
`65, 67, 72, 76, and 78 as being rendered obvious under 35
`
`U.S.C. § 103(a) by Goodhand and Padwick (U.S. Patent No.
`
`5,923,848 and Gordon Padwick et al., USING MICROSOFT
`
`OUTLOOK 97 (Que® Corporation 1997)) (“the
`
`Goodhand/Padwick Ground”).
`
`d. The Samsung petition that accompanies the present Motion for
`
`Joinder includes only the two grounds of unpatentability that
`
`were instituted in the Google IPR for the ‘853 patent.
`
`e. The claim charts in the Samsung petition that accompanies the
`
`present Motion for Joinder are substantially identical to the
`
`claim charts contained in the Google IPR petition for the
`
`Goodhand Ground and Goodhand/Padwick Ground.
`
`
`
`- 2 -
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`
`
`Docket No. 032449.0031-US10
`
`
`Inter Partes Review of U.S. Pat. No. 6,323,853
`
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`
`
`
`The Leahy-Smith America Invents Act (“AIA”) explicitly provides for
`
`joinder of inter partes review (“IPR”) proceedings. The statutory provision
`
`governing joinder of inter partes review proceedings is 35 U.S.C. § 315(c) that
`
`reads as follows:
`
`(c) JOINDER.--If the Director institutes an inter partes
`review, the Director, in his or her discretion, may join as
`a party to that 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.
`
`
`
`
`
`
`
`Although the AIA establishes a one-year bar from the date of service of a
`
`complaint alleging infringement for requesting inter partes review, the one-year
`
`bar does not apply to a request for joinder under Section 315(c).1 In particular,
`
`Section 315(b) reads as follows (emphasis added):
`
`
`1 The one-year bar also should not apply to the Samsung IPR petition because the
`
`First Amended Complaint alleging infringement of the ’853 patent by Samsung was
`
`first filed and served on October 3, 2013. Prior to the First Amended Complaint, the
`
`’853 patent was not asserted against Samsung.
`
`
`
`- 3 -
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`
`
`Docket No. 032449.0031-US10
`
`
`Inter Partes Review of U.S. Pat. No. 6,323,853
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`(b) PATENT OWNER’S ACTION.--An inter partes
`review may not be instituted if the petition requesting the
`proceeding is filed more than 1 year after the date on
`which the petitioner, real party in interest, or privy of the
`petitioner is served with a complaint alleging
`infringement of the patent. The time limitation set forth
`in the preceding sentence shall not apply to a request for
`joinder under subsection (c).
`Further, in the case of joinder, the Board has the discretion to adjust the time
`
`period for issuing a final determination in an inter partes review. 35 U.S.C. §
`
`316(a)(11); 37 C.F.R. § 42.100(c).
`
`
`
`In exercising its discretion to grant joinder, the Board considers the impact
`
`of substantive and procedural issues on the proceedings, as well as other
`
`considerations, while being “mindful that patent trial regulations, including the
`
`rules for joinder, must be construed to secure the just, speedy, and inexpensive
`
`resolution of every proceeding.” See Dell Inc. v. Network-1 Security Solutions,
`
`Inc., Case IPR2013-00385, Paper No. 17, July 29, 2013 at 3. The Board should
`
`“also take into account the policy preference for joining a party that does not
`
`present new issues that might complicate or delay an existing proceeding.” Id. at
`
`
`
`- 4 -
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`
`
`Docket No. 032449.0031-US10
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`10.2 Under this framework, joinder of the Samsung IPR with the Google IPR is
`
`Inter Partes Review of U.S. Pat. No. 6,323,853
`
`appropriate.
`
`
`
`“A motion for joinder should: (1) set forth the reasons why joinder is
`
`appropriate; (2) identify any new grounds of unpatentability asserted in the
`
`petition; (3) explain what impact (if any) joinder would have on the trial schedule
`
`for the existing review; and (4) address specifically how briefing and discovery
`
`may be simplified.” Id. at 4. Each of these four factors is addressed in turn below.
`
`
`
`
`
`
`a.
`
`
`Factor (1): Joinder is Appropriate in Accordance with the
`Statutory Framework
`
`The Board has authority under the statute to join a properly-filed second IPR
`
`petition to an instituted IPR proceeding. The present Motion for Joinder is timely
`
`filed under § 42.122(b), and the time period set forth in § 42.101(b) does not apply
`
`to the Samsung IPR petition because it is accompanied by the present Motion for
`
`Joinder. 37 C.F.R. § 42.122(b).
`
`
`2 Citing 157 Cong. Rec. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (“The
`
`Office anticipates that joinder will be allowed as of right - if an inter partes review is
`
`instituted on the basis of a petition, for example, a party that files an identical petition
`
`will be joined to that proceeding, and thus allowed to file its own briefs and make its
`
`own arguments.”) (emphasis added).
`
`
`
`- 5 -
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`
`
`Docket No. 032449.0031-US10
`
`
`
`The Samsung IPR petition involves the same patent, the same claims, the
`
`Inter Partes Review of U.S. Pat. No. 6,323,853
`
`same prior art, declaration evidence from the same expert, and the same two
`
`instituted grounds (the Goodhand Ground and the Goodhand/Padwick Ground) as
`
`involved in the Google IPR.3 The claim charts in the Samsung IPR petition that
`
`accompanies the present Motion for Joinder are substantially identical to the claim
`
`charts contained in the Google IPR petition for the Goodhand Ground and the
`
`Goodhand/Padwick Ground.
`
`
`
`The declaration evidence accompanying the Samsung IPR petition is from
`
`the same expert as that in the Google IPR, and is substantially the same as the
`
`evidence submitted with the petition in the Google IPR. The evidence presents no
`
`new issues that would complicate or delay the proceeding.
`
`
`
`As to the two grounds on which trial in the Google IPR has been instituted,
`
`the Samsung IPR petition does not present new issues that might complicate or
`
`delay an existing proceeding. Rather, the Samsung IPR Petition adopts the
`
`reasoning and rationale of the Board and the Google IPR petition as to the two
`
`grounds.
`
`
`3 In addition, the same Exhibit numbering has been used as in the Google IPR.
`- 6 -
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`
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`
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`Docket No. 032449.0031-US10
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`
`
`Moreover, absent joinder, the joint stipulation and corresponding stay
`
`Inter Partes Review of U.S. Pat. No. 6,323,853
`
`ordered in the co-pending litigations4 will preclude Samsung from raising in the
`
`District Court an invalidity challenge based on the Goodhand Ground and
`
`Goodhand/Padwick Ground instituted in the Google IPR. Therefore, joinder is
`
`appropriate here to provide Samsung with the opportunity to participate in the
`
`Google IPR on the instituted grounds because Samsung can no longer do so in the
`
`District Court proceedings.
`
`
`
`
`
`b.
`
`Factor (2): No New Grounds of Unpatentability
`
`As noted above, the Samsung IPR petition involves the same patent, the
`
`same claims, the same prior art, and the same two instituted grounds (the
`
`Goodhand Ground and Goodhand/Padwick Ground) as involved in the Google
`
`IPR. Accordingly, the Samsung IPR petition does not present any new ground of
`
`unpatentability.
`
`
`4 Arendi S.A.R.L. v. Samsung Electronics Co., Ltd., Samsung Electronics America,
`
`Inc., and Samsung Telecommunications America, LLC (Civil Action No. 12-1598
`
`(LPS); the “Samsung Litigation”). Other defendants in the Delaware litigations in
`
`which the ’853 patent has been asserted include LG Electronics, Inc. (C.A. No. 12-
`
`1595), Nokia Corp. (C.A. No. 12-1599), Motorola Mobility LLC (C.A. No. 12-
`
`1601), Sony Mobile Communications (USA) Inc. (C.A. No. 12-1602), Google Inc.,
`
`(C.A. No. 13-0919), and Yahoo! Inc., (C.A. No. 13-0920).
`
`
`
`- 7 -
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`
`
`Docket No. 032449.0031-US10
`
`
`
`Inter Partes Review of U.S. Pat. No. 6,323,853
`
`c.
`
`
`Factor (3): Joinder Would Have No Discernible Impact on the
`Trial Schedule for the Google IPR
`
`
`
`
`Given that the Samsung IPR petition involves the same patent, the same
`
`claims, the same prior art, and the same two instituted grounds as involved in the
`
`Google IPR, and that Samsung proposes specific ways in which briefing and
`
`discovery are simplified (see Factor (4) below), there appears to be no discernible
`
`impact on the trial schedule for the Google IPR. As explained in more detail
`
`below for Factor (4), Samsung proposes specific procedures to simply briefing and
`
`discovery that should avoid any material impact on the trial schedule, or any
`
`prejudice to the parties involved in the Google IPR.
`
`
`
`
`
`c.
`
`Factor (4): Procedures to Simplify Briefing and Discovery
`
`Given that Google and Samsung will be addressing identical grounds (the
`
`Goodhand Ground and Goodhand/Padwick Ground) for the identical claims, the
`
`Board may adopt procedures similar to those adopted in Cases IPR2013-00385 and
`
`IPR2013-00356. In those cases, the Board ordered the petitioners to file
`
`consolidated filings, for which the first petitioner (here, Google) was responsible,
`
`and allowed the new petitioner (here, Samsung) to file seven additional pages with
`
`corresponding additional responsive pages allowed to the Patent Owner.
`
`IPR2013-00385, Paper 17 at 8; IPR2013-00256, Paper 10 at 8-9. This procedure
`
`would minimize any complication or delay caused by joinder, as the Board
`
`recognized in those cases. Samsung agrees to such procedures in the present case.
`- 8 -
`
`
`
`
`
`Docket No. 032449.0031-US10
`
`
`
`Moreover, Samsung agrees to coordinate and work together with Google to
`
`Inter Partes Review of U.S. Pat. No. 6,323,853
`
`manage the questioning at depositions within the time normally allotted and to avoid
`
`redundancy. IPR2013-00385, Paper 17 at 9; IPR2013-00256, Paper 10 at 9-10.
`
`
`
`With respect to any deposition(s) of Arendi’s expert(s), Samsung agrees that
`
`Google will ask questions first, and Samsung will be afforded an opportunity to ask
`
`questions only if any time remains within the allotted timeframe.
`
`
`
`With respect to any deposition of Google and Samsung’s expert, because the
`
`same expert witness has submitted substantially identical declaration evidence,
`
`Arendi will not need additional time to schedule a second deposition of a second
`
`expert. Because the substance of the expert declarations is substantially the same,
`
`Arendi should not need additional time beyond the normally allotted timeframe.
`
`
`
`With respect to oral argument, Samsung agrees that Google will present its
`
`arguments first in oral argument, and time allotted to Samsung’s argument would be
`
`presented second. IPR2013-00385, Paper 17 at 9.
`
`IV. CONCLUSION
`
`
`
`For the foregoing reasons, Samsung respectfully requests that its Petition for
`
`Inter Partes Review of U.S. Patent No. 6,323,853 be instituted, and that the
`
`proceeding be joined with Google Inc., and Motorola Mobility LLC v. Arendi
`
`S.A.R.L., Case No. IPR2014-00452.
`
`
`
`- 9 -
`
`
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`Registration No.3 3659253
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`A oourtoisy copy was provided to Counsel for Petitioners in IPR2014u00452:
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`Matthew A. Smith
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`smith@tumerboyd.com
`Zhuanjia Gu
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`Turner Boyd LLP
`2570 W. El Camino Real. Suite 380
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`Andrea G. Reigxér, Esq. '
`Registration No: 36,253
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`Date: September 19, 2014
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`
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