Paper No. 10
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
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`T-MOBILE USA, INC. AND T-MOBILE US, INC.,
`Petitioner
`
`
`v.
`
`
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC,
`Patent Owner
`
`______________
`
`
`Case IPR2015-00015
`Patent 5,915,210
`
`______________
`
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`PETITIONER’S MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c) AND
`37 C.F.R. §§ 42.22 AND 42.122(b)
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`
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`Mail Stop “Patent Board”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
`
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`
`T-MOBILE USA, INC. AND T-MOBILE US, INC.,
`Petitioner
`
`
`v.
`
`
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC,
`Patent Owner
`
`______________
`
`
`Case IPR2015-00015
`Patent 5,915,210
`
`______________
`
`
`PETITIONER’S MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c) AND
`37 C.F.R. §§ 42.22 AND 42.122(b)
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`
`
`Mail Stop “Patent Board”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
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`Petitioner’s Motion for Joinder (IPR2015-00015)
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`I.
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`STATEMENT OF THE PRECISE RELIEF REQUESTED
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`Petitioner T-Mobile USA, Inc. and T-Mobile US, Inc. (collectively, “T-
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`Mobile” or “Petitioner”) respectfully requests joinder on the instituted grounds
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`pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b) of the above-captioned
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`inter partes review (hereinafter “T-Mobile IPR”) with the pending inter partes
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`review in IPR2014-01036, filed by Apple Inc. (the “Apple IPR”).1 In the Apple
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`IPR, the Board instituted on two grounds and exercised its discretion to not
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`institute on one other ground. Specifically, T-Mobile requests joinder to the Apple
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`IPR on the two instituted grounds and continuation of the T-Mobile IPR as to the
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`other ground.2
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`T-Mobile’s joinder request is directed at the same claims, prior art, grounds
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`of unpatentability, and arguments instituted in the Apple IPR. Accordingly, joinder
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`1
`It is T-Mobile’s understanding that, if the request for joinder is granted,
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`termination of the consolidated proceeding by settlement would require the consent
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`of all parties, including T-Mobile. If T-Mobile’s understanding is incorrect, T-
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`Mobile respectfully withdraws this request for joinder.
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`2
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`If the Board disagrees to allow the continuation of the T-Mobile IPR on the
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`non-instituted grounds, T-Mobile respectfully requests joinder to the Apple IPR
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`and consolidation of the two proceedings.
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`2
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`Petitioner’s Motion for Joinder (IPR2015-00015)
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`is appropriate because it will promote the efficient and consistent resolution of the
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`validity of a single patent, will not prejudice the parties to the Apple IPR, and will
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`eliminate duplicative filings and discovery as to the instituted grounds.
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`Continuation of T-Mobile’s IPR as to the non-instituted grounds is also
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`appropriate because the T-Mobile petition has been assigned a common judge from
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`the panel of three judges for the Apple IPR and the Board has not made a
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`substantive institution decision as to these grounds. T-Mobile’s request will also
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`narrow the grounds at issue in the T-Mobile IPR, resulting in reduced briefing and
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`discovery for both parties.
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`II.
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`STATEMENT OF MATERIAL FACTS
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`1.
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`Apple filed its petition for inter partes review of claims 1, 10, and 19
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`of U.S. Patent No. 5,6915,210 (“the ’210 patent”) on or about June 27, 2014 (“the
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`Apple Petition”). IPR2014-01036, Paper 2.
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`2.
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`The Apple Petition challenged the patentability of the ’210 patent on
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`the following three grounds:
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`a. Claims 1 and 10 are anticipated by Saalfrank;
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`b. Claim 19 is rendered obvious by Saalfrank and Nakamura; and
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`c. Claims 1, 10 and 19 are rendered obvious by Witsaman and Bingham.
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`IPR2014-01036, Paper 2. Apple supported its challenges with a declaration from
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`Dr. Apostolos K. Kakaes. IPR2014-01036, Paper 2.
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`3
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`Petitioner’s Motion for Joinder (IPR2015-00015)
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`3.
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`T-Mobile filed its petition for inter partes review of claims 1, 10, and
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`19 of the ’210 patent on October 3, 2014 (“the T-Mobile Petition”). IPR2015‒
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`00015, Paper 1. T-Mobile supported its challenges with the declarations of
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`Dr. Behnaam Aazhang and Dr. Apostolos K. Kakaes. IPR2015-00015, Paper 1.
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`4.
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`The T-Mobile Petition challenged the patentability of the ’210 patent
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`on the same grounds offered in the Apple Petition. IPR2015-00015, Paper 1.
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`5.
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`The Board instituted the Apple IPR on January 22, 2014 for grounds
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`(a) and (b) of the above-listed grounds (the “Saalfrank grounds”). IPR2014-01035,
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`Paper 10. As to ground (c) of the above-listed grounds (the “Witsaman ground”),
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`the Board exercised its discretion to not institute review based on this ground.
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`IPR2014-01036, Paper 9.
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`6.
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`Apple does not oppose this Motion for Joinder.
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
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`The Leahy-Smith America Invents Act (“AIA”) permits joinder of inter
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`partes review proceedings. The statutory provision governing joinder of inter
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`partes review proceedings is 35 U.S.C. § 315(c), which reads as follows:
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`(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
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`Petitioner’s Motion for Joinder (IPR2015-00015)
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`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.
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`In exercising its discretion to grant joinder, the Board considers the impact of
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`substantive and procedural issues on the proceedings, as well as other
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`considerations, while being “mindful that patent trial regulations, including the
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`rules for joinder, must be construed to secure the just, speedy, and inexpensive
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`resolution of every proceeding.” Dell, Inc. v. Network-1 Security Solutions, Inc.,
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`Case IPR2013-00385, Paper No. 17 (July 29, 2013) at 3. The Board should
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`consider “the policy preference for joining a party that does not present new issues
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`that might complicate or delay an existing proceeding.” Id. at 10. Under this
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`framework, joinder of the T-Mobile IPR with the Apple IPR is appropriate.
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`The Board has stated that “[a] motion for joinder should: (1) set forth the
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`reasons why joinder is appropriate; (2) identify any new grounds of unpatentability
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`asserted in the petition; (3) explain what impact (if any) joinder would have on the
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`trial schedule for the existing review; and (4) address specifically how briefing and
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`discovery may be simplified.” Id. at 4. Each of these issues is addressed fully
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`below.
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`A.
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`Joinder will promote efficiency by consolidating issues, avoiding
`duplicate efforts, and preventing inconsistencies.
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`5
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`Petitioner’s Motion for Joinder (IPR2015-00015)
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`Determining the same validity questions concerning the ’210 Patent and the
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`same references in separate concurrent proceedings duplicates efforts and creates a
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`risk of inconsistent results and piecemeal review. Proceeding with a consolidated
`inter partes review on the Saalfrank grounds avoids inefficiency and potential
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`inconsistency and results in a final written decision on these grounds without any
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`delay. For these reasons, joinder as to the Saalfrank grounds is appropriate.
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`Continuation of the T-Mobile IPR on the Witsaman ground will not affect
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`the scope or timing of the Apple IPR. Although the evidence for the Witsaman
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`ground is already of record before a member of this panel of judges from the Apple
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`IPR, the Board in the Apple IPR exercised its discretion to not institute on these
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`grounds. With joinder of the Saalfrank grounds to the Apple IPR, the grounds at
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`issue in the T-Mobile IPR will be narrowed, resulting in simplified discovery and
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`reduced briefing for all parties. Accordingly, continuation of the T-Mobile IPR as
`to the Witsaman ground is appropriate.3
`In Enzymotec Ltd. v. Neptune Techs. & Bioresources, Inc., Case IPR2014‒
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`00556, the Board granted a similar joinder request. Id. at Paper 19. The Board had
`previously instituted inter partes review of several claims on two grounds, but
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`declined to institute for a subset of the claims as to one of the grounds. Id. at 1; see
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`3
`As stated above, if the Board disagrees that continuation of the T-Mobile
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`IPR as to the Witsaman ground is appropriate, T-Mobile respectfully requests
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`joinder and consolidation of the T-Mobile IPR to the Apple IPR.
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`6
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`Petitioner’s Motion for Joinder (IPR2015-00015)
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`Case IPR2014-00003, Paper 22 at 28. In Enzymotec, the petitioner filed a petition
`for inter partes review and a motion for joinder on the two instituted grounds as to
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`all the claims. Case IPR2014-00556, Paper 19 at 1. In concurrent decisions, the
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`Board granted petitioner’s joinder request as to the instituted grounds and claims
`and instituted the petition with respect to the non-instituted claims. Id. at 2.
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`B.
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`Joinder will not impact the Board’s ability to complete the review
`in a timely manner.
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`Joinder in this case will not impact the Board’s ability to complete its review
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`in a timely manner. 35 U.S.C. § 316(a)(11) and associated rule 37 C.F.R.
`§ 42.100(c) provide that inter partes review proceedings should be completed and
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`the Board’s final decision issued within one year of institution of the review.
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`Joinder should not affect the Board’s ability to issue the decision within this
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`required one-year timeframe because the Petition filed in the T-Mobile IPR as to
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`the Saalfrank grounds contains the virtually identical arguments and claim
`construction sought in the Apple Petition.4
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`4
`to extend the one-year period by up to six months in the case of joinder, 35 U.S.C.
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`The statute governing inter partes review provides the Board with flexibility
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`§ 316(a)(11), but T-Mobile submits that a scheduling extension would likely be
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`unnecessary under the circumstances here. See also Changes to Implement Inter
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`Partes Review Proceedings, 77 Fed. Reg. 48,680, 48, 707 (Aug. 14, 2012) (“In the
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`case of joinder, the Director may adjust the time periods allowing the Office to
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`manage the more complex case.”).
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`7
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`Petitioner’s Motion for Joinder (IPR2015-00015)
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`In addition, T-Mobile respectfully proposes procedures to simplify any
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`further briefing and discovery in the consolidated proceeding, which will minimize
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`any potential impact on the schedule or the volume of materials to be submitted to
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`the Board. Since Apple and T-Mobile will be addressing identical grounds and
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`virtually identical arguments for rejection of the claims at issue, the Board may
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`adopt procedures similar to those adopted in Case IPR2014-00556. In that case, the
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`Board ordered the petitioners to file consolidated filings, for which the first
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`petitioner was responsible, and allowed the new petitioner to file seven additional
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`pages for points of disagreement only with corresponding additional responsive
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`pages allowed to the Patent Owner. IPR2014-00556, Paper 19. This procedure
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`would minimize any complication or delay caused by joinder. As in Case
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`IPR2014-00556, Apple and T-Mobile can work together to manage the questioning
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`at depositions and presentations at the hearing to avoid redundancy. IPR2014‒
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`00556.
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`C.
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`Joinder will not prejudice the Patent Owner or Apple.
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`Permitting joinder will not prejudice the Patent Owner or Apple. T-Mobile’s
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`arguments as to the Saalfrank grounds for instituting an IPR are identical to those
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`8
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`Petitioner’s Motion for Joinder (IPR2015-00015)
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`proposed by Apple in its petition.5 Joinder will not affect the timing of the Apple
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`IPR, and any extension to the schedule that may be required is permitted by law
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`and the applicable rules. 35 U.S.C. § 316(a)(1); 37 C.F.R. § 42.100(c). In fact,
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`joinder is likely more convenient and efficient for the Patent Owner by providing a
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`single trial regarding the Saalfrank grounds on the ’210 patent. By allowing these
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`grounds of invalidity to be addressed in a single proceeding, the interests of all
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`parties and the Board will be well served.
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`IV. CONCLUSION
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`For the foregoing reasons, T-Mobile respectfully requests that its Petition for
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`Inter Partes Review of the ’210 patent as to the Petrovic grounds be instituted and
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`that the proceeding be joined with the Apple IPR, Case IPR2014-01036. T-Mobile
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`also respectfully requests continuation of the T-Mobile Petition as to the Cimini
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`grounds according to the schedule in the T-Mobile IPR.
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`Although T-Mobile believes that no fee is required for this Motion, the
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`Commissioner is hereby authorized to charge any additional fees which may be
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`required for this Motion to Deposit Account No. 50-5723.
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`5
`In contrast, T-Mobile’s petition in Case IPR2015-00017 includes the same
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`grounds as in the Apple petition against the same patent, but different arguments
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`on those grounds.
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`Petitioner’s Motion for Joinder (IPR2015-00015)
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`Respectfully submitted,
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`/Pierre J. Hubert/
`Pierre J. Hubert, Reg. No. 45,826
`Steven J. Pollinger, Reg. No. 35,326
`MCKOOL SMITH, P.C.
`300 W. 6th Street, Suite 1700
`Austin, Texas 78701
`Telephone: (512) 692-8700
`Fax: (512) 692-8744
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`ATTORNEYS FOR PETITIONER
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`10
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`Dated: February 17, 2015
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`Petitioner’s Motion for Joinder (IPR2015-00015)
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e)(1) and 42.6(e)(4)(iii), the undersigned
`certifies that on February 17, 2015, a complete and entire copy of this Motion for
`Joinder Under 35 U.S.C. § 315(c) and 37 C.F.R. §§ 42.22 and 42.122(b) was
`provided via electronic mail to the Patent Owner by serving the correspondence
`address of record as follows:
`
`
`John R. Kasha, Reg. No. 67,050
`john.kasha@kashalaw.com
`Kasha Law LLC
`14532 Dufief Mill Rd.
`North Potomac, MD 20878
`Phone: (703) 867-1886
`Fax: (301)340-3022
`
`
`
`/Pierre J. Hubert/
`Pierre J. Hubert, Reg. No. 45,826
`MCKOOL SMITH, P.C.
`300 W. 6th Street, Suite 1700
`Austin, Texas 78701
`Telephone: (512) 692-8700
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`Petitioner’s Motion for Joinder (IPR2015-00015)
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`[PROPOSED] ORDER
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`In consideration of the arguments presented in T-Mobile’s Motion for
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`Joinder, it is hereby [ONE OF THE BELOW AS INDICATED BY CHECK
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`MARK]:
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`ORDERED that T-Mobile’s Motion for Joinder with IPR2014-01036
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`is granted as to the Saalfrank grounds (subject to the condition that
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`IPR2014-01036 cannot terminate without T-Mobile’s consent), and
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`FURTHER ORDERED that the Patent Owner’s Response to the
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`Petition in IPR2015-00015 shall only address T-Mobile’s challenge
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`based on the Witsaman ground; OR
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`ORDERED that T-Mobile’s Motion for Joinder with IPR2014-01036
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`is granted, with this proceeding being joined with IPR2014-01036
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`(subject to the condition that IPR2014-01036 cannot terminate
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`without T-Mobile’s consent); OR
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`ORDERED that T-Mobile’s Motion for Joinder is denied.
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`12
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