Paper No. 12
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________
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`T-MOBILE USA, INC. AND T-MOBILE US, INC.,
`Petitioner
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`v.
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`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC,
`Patent Owner
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`______________
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`Case IPR2015-00015
`Patent 5,915,210
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`______________
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`PETITIONER’S REPLY IN SUPPORT OF ITS MOTION FOR JOINDER
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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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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________
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`T-MOBILE USA, INC. AND T-MOBILE US, INC.,
`Petitioner
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`v.
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`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC,
`Patent Owner
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`______________
`
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`Case IPR2015-00015
`Patent 5,915,210
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`______________
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`PETITIONER’S REPLY IN SUPPORT OF ITS MOTION FOR JOINDER
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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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`Petitioner’s Reply in Support of its Motion for Joinder (IPR2015-00015)
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`As set forth in Petitioner’s Motion for Joinder (“Motion”), joinder will
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`promote the efficient and consistent resolution of the validity of a single patent,
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`will not prejudice the parties to the Apple IPR, and will eliminate duplicative
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`filings and discovery as to the instituted grounds. Patent Owner Mobile
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`Telecommunications Technologies, LLC, in its Opposition to the Motion
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`(“Opposition”), however, attempts to argue against joinder of these close-in-time
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`IPR proceedings that assert the same prior art. Patent Owner’s arguments are
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`without merit, as set forth below. Petitioner’s Motion should be granted.
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`First, despite the proceedings being close in time to each other, Patent
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`Owner argues that joinder supposedly would create an “impossible scheduling
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`conflict,” Opposition at 9-11. On the contrary, joinder will not impact the Board’s
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`ability to complete its review in a timely manner. As set forth in the Motion,
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`Petitioner agrees to adopt procedures similar to those adopted in Case IPR2014-
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`00556 to minimize any complication or delay caused by joinder. Patent Owner’s
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`suggestion that the schedule in the Apple IPR will be “substantially” impacted is
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`without merit. See Opposition at 9-11. Contrary to Patent Owner’s argument, the
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`Board can institute the T-Mobile IPR on the Saalfrank grounds and join the two
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`proceedings without delay because Petitioner seeks to join on the identical grounds
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`and virtually identical arguments already reviewed and instituted on by the Board
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`1
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`Petitioner’s Reply in Support of its Motion for Joinder (IPR2015-00015)
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`in the Apple IPR.1 Briefing on the Motion is now complete and the Board may act
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`as soon as this month to institute the T-Mobile IPR on the Saalfrank grounds and
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`grant joinder to the Apple IPR.
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`Second, despite Apple and Petitioner reciting the same art and Petitioner’s
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`expert copying paragraphs from Apple’s expert declaration verbatim, Patent
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`Owner argues that there is no showing that Apple and Petitioner would work
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`together, Opposition at 1-2. Patent Owner’s argument is unavailing. By the
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`1 In its Opposition, Patent Owner argues that the two petitions have different claim
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`construction arguments. Opposition at 8. Patent Owner’s argument is moot because
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`the Board has already provided a preliminary claim construction in the Apple IPR.
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`Patent Owner further argues that Petitioner’s petition “provide numerous
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`arguments/comments with different organization and/or language from what is
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`provided” in the Apple IPR petition. Id. at 8-9. There is no requirement, nor does
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`Patent Owner cite any, that petitions must be identical for joinder. Further, a quick
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`comparison of the Apple and TMobile IPR proceedings show that the proceedings
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`on the ’210 and ’891 patents that are the subject of the Motion recite virtually the
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`same art and arguments – it was with respect to the ’403 patent, not the subject of
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`these motions for joinder, that T-Mobile’s IPR included additional art and
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`argument as compared to Apple’s IPR.
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`2
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`Petitioner’s Reply in Support of its Motion for Joinder (IPR2015-00015)
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`inherent similarity of the proceedings, Petitioner will work together with Apple to
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`prevent delay and promote efficiency. Further, as stated in Petitioner’s Motion,
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`Petitioner agrees to adopt procedures in which Apple and Petitioner will file
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`consolidated filings with Apple being lead or responsible, allowing Petitioner up to
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`seven additional pages for points of disagreement. Motion at 8. In addition,
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`Petitioner will work together with Apple to manage questioning at depositions and
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`presentations at hearings to avoid redundancy. Motion at 8. Patent Owner’s
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`argument that Petitioner is not prepared to work with Apple because Petitioner
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`would require consent of all parties to terminate the consolidated proceeding is a
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`non sequitur. As stated above, Petitioner merely seeks clarification that settlement
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`or termination of the consolidated proceeding requires the consent of all parties, as
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`is the case for any district court proceeding.
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`Third, Patent Owner argues that joinder will cause delay to the Apple IPR.
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`Opposition at 3-6. Patent Owner will not be prejudiced. Petitioner’s joinder request
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`is directed at the same claims, same prior art, same grounds of unpatentability, and
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`virtually identical arguments instituted in the Apple IPR. Although the Petitioner’s
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`petition included a declaration from Dr. Behnaam Aazhang, in addition to the
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`Kakaes Declaration from the Apple IPR, the prejudice and delay of an additional
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`declarant is minimal because Dr. Aazhang adopted the same opinions as
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`Dr. Kakaes, numbering most of his paragraphs using a “K-x” numbering system to
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`3
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`Petitioner’s Reply in Support of its Motion for Joinder (IPR2015-00015)
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`indicate that those paragraphs came from the Kakaes Declaration. Similarly, the
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`procedures proposed by Petitioner account for points of disagreement between
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`Apple and Petitioner, allowing Petitioner a mere seven pages for points of
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`disagreement. Patent Owner points to no precedence or statutory authority
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`requiring identical arguments to grant joinder, in fact, the proposed procedures
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`adopted by the Board in several cases specifically acknowledge that minor points
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`of disagreement may arise in consolidated proceedings. Accordingly, joinder is
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`appropriate because it will promote the efficient and consistent resolution of the
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`validity of a single patent on the same grounds and will not prejudice the parties to
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`the Apple IPR.
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`For these reasons, as well as those set forth in the Motion, Petitioner
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`respectfully requests that its Petition for Inter Partes Review of U.S. Patent
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`5,915,210 be instituted and that the proceeding be joined with the Apple IPR on
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`the two instituted grounds. As to the non-instituted ground, Petitioner seeks
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`continuation according to the schedule of the T-Mobile IPR, allowing the Board to
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`make a substantive institution decision on this ground and narrowing the grounds
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`4
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`Petitioner’s Reply in Support of its Motion for Joinder (IPR2015-00015)
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`at issue in the T-Mobile IPR.2 With the submission of this reply well ahead of the
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`deadline, Petitioner respectfully submits that the issues are fully briefed and ripe
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`for adjudication by the Board.
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`Although Petitioner 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 Reply to Deposit Account No. 50-5723.
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`2
`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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`5
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`Petitioner’s Reply in Support of its Motion for Joinder (IPR2015-00015)
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`Dated: March 9, 2015
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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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`6
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`Petitioner’s Reply in Support of its 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 March 9, 2015, a complete and entire copy of
`this
`PETITIONER’S REPLY IN SUPPORT OF ITS MOTION FOR JOINDER
`was provided via electronic mail
`to
`the Patent Owner by serving the
`correspondence address of record as follows:
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`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
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`
`
`/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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