Motion for Joinder to Related Inter Partes Review of U.S. Patent No. 8,380,244
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`MICROSOFT CORPORATION
`
`Petitioner
`
`v.
`
`IPR LICENSING, INC.
`
`Patent Owner
`
`U.S. Patent No.: 8,380,244
`Filed: November 9, 2009
`Issued: February 19, 2013
`
`Title: Dual Mode Unit for Short Range, High Rate and Long Range, Lower Rate
`Data Communications
`
`__________________
`
`MOTION FOR JOINDER UNDER 35 U.S.C. 315(c) AND 37 C.F.R. §§ 42.22
`AND 42.122(b) TO RELATED INTER PARTES REVIEW IPR2014-00525
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`MICROSOFT CORPORATION
`
`Petitioner
`
`v.
`
`IPR LICENSING, INC.
`
`Patent Owner
`
`U.S. Patent No.: 8,380,244
`Filed: November 9, 2009
`Issued: February 19, 2013
`
`Title: Dual Mode Unit for Short Range, High Rate and Long Range, Lower Rate
`Data Communications
`
`__________________
`
`MOTION FOR JOINDER UNDER 35 U.S.C. 315(c) AND 37 C.F.R. §§ 42.22
`AND 42.122(b) TO RELATED INTER PARTES REVIEW IPR2014-00525
`
`
`
`Motion for Joinder to Related Inter Partes Review of U.S. Patent No. 8,380,244
`
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`Microsoft Corporation (“Microsoft”) respectfully submits this Motion for
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`Joinder, together with a Petition for Inter Partes Review of U.S. Patent No.
`
`8,380,244 (the “Microsoft Petition”) filed contemporaneously herewith. Pursuant
`
`to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Microsoft requests institution of
`
`an inter partes review and joinder with the inter partes review in ZTE Corporation
`
`v. IPR Licensing, Inc., IPR2014-00525 (the “ZTE IPR”), which was instituted on
`
`September 17, 2014 and concerns the same patent. Microsoft’s request for joinder
`
`is timely. The Microsoft Petition is also narrowly tailored to the same claims, prior
`
`art, and grounds of unpatentability that are the subject of the ZTE IPR. In addition,
`
`Microsoft is willing to streamline discovery and briefing. Microsoft submits that
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`joinder is appropriate because it will not prejudice the parties to the ZTE IPR while
`
`efficiently resolving the question of the 244 Patent’s validity in a single
`
`proceeding.
`
`II.
`
`1.
`
`STATEMENT OF MATERIAL FACTS
`
`In March 2013, IPR Licensing, Inc. and several other InterDigital
`
`entities filed amended complaints against Nokia Corporation, Nokia Inc., and ZTE
`
`in the District of Delaware, alleging that each defendant infringed the 244 Patent.
`
`See InterDigital Commc’ns Inc. v. ZTE Corp., Case No. 13-cv-00009, D.I. 25 (D.
`
`1
`
`
`
`Motion for Joinder to Related Inter Partes Review of U.S. Patent No. 8,380,244
`
`Del.); InterDigital Commc’ns, Inc. v. Nokia Corp., Case No. 1:13-cv-00010, D.I.
`
`15 (D. Del.).
`
`2.
`
`On March 21, 2014, ZTE filed a petition for inter partes review (the
`
`“ZTE Petition”) requesting cancellation of the claims of the 244 Patent asserted
`
`against Nokia Corporation, Nokia Inc., and ZTE in the district court cases. ZTE
`
`Corporation v. IPR Licensing, Inc., IPR2014-00525, Paper 1 (P.T.A.B.).
`
`3.
`
`On April 25, 2014, Microsoft’s subsidiary, Microsoft Mobile Oy,
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`acquired Nokia Inc.
`
`4.
`
`On September 17, 2014, the Board instituted ZTE’s IPR on the
`
`unpatentability of claims 1–8, 14–16, 19–29, 36–38, and 41–44 of the 244 Patent
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`as obvious over U.S. Patent No. 6,243,581 to Jawanda (“Jawanda”), the General
`
`Packet Radio Service Standards (“GPRS Standards”), and the IEEE 802.11
`
`Standard. ZTE Corporation v. IPR Licensing, Inc., IPR2014-00525, Paper 19
`
`(P.T.A.B.).
`
`III.
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`STATEMENT OF REASONS FOR RELIEF REQUESTED
`
`A.
`
`Legal Standard
`
`The Board has authority under 35 U.S.C. § 315(c) to join a properly filed
`
`second inter partes review petition to an instituted inter partes review proceeding.
`
`35 U.S.C. § 315(c). A motion for joinder must be filed within one month of
`
`institution of the original inter partes review. 37 C.F.R. § 42.122(b). In deciding
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`2
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`
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`Motion for Joinder to Related Inter Partes Review of U.S. Patent No. 8,380,244
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`whether to exercise its discretion, the Board considers factors including: (1) the
`
`reasons why joinder is appropriate; (2) whether the new petition presents any new
`
`grounds of unpatentability; (3) what impact, if any, joinder would have on the trial
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`schedule for the existing review; and (4) how briefing and discovery may be
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`simplified. See Macronix Int’l Co. v. Spansion, IPR2014-00898, Paper 15 at 4
`
`(Aug. 13, 2014) (quoting Kyocera Corporation v. Softview LLC, IPR2013-00004,
`
`Paper 15 at 4 (April 24, 2013)).
`
`B. Microsoft’s Motion for Joinder is Timely
`
`This Motion for Joinder is timely because it is filed within one month of the
`
`September 17, 2014 institution of the ZTE IPR. See 37 C.F.R. § 42.122(b). The
`
`time periods set forth in 37 C.F.R. § 42.101(b) do not apply to the Microsoft
`
`Petition because it is accompanied by this Motion for Joinder.1 See 37 C.F.R. §
`
`42.122(b); Samsung Elecs. Co. v. Va. Innovation Scis., Inc., IPR2014-00557, Paper
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`10 at 15 (June 13, 2014).
`
`C.
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`The Factors Weigh in Favor of Joinder
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`Each of the four factors considered by the Board weighs in favor of joinder.
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`As discussed below, joinder of the Microsoft Petition will not enlarge the scope of
`
`the ZTE IPR and will not negatively impact the ZTE IPR schedule, but a decision
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`1 As set forth in the Microsoft Petition, however, the time period set forth in 37
`
`C.F.R. § 42.101(b) and 35 U.S.C § 315(b) has not expired for Microsoft.
`
`3
`
`
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`Motion for Joinder to Related Inter Partes Review of U.S. Patent No. 8,380,244
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`by the Board not to join could severely prejudice Microsoft. Thus, joinder is
`
`appropriate and warranted.
`
`1.
`
`Joinder is Appropriate
`
`Joinder with the ZTE IPR is appropriate because the Microsoft Petition
`
`involves the same patent, challenges the same claims, and is based not only on the
`
`same grounds and combinations of prior art that were submitted by ZTE, but also
`
`relies solely upon the same grounds on which the Board has already instituted inter
`
`partes review. In substance, the Microsoft Petition is virtually identical to the ZTE
`
`Petition, and contains only minor differences, as explained below.
`
`First, the Microsoft Petition restructures some of the arguments presented in
`
`the ZTE Petition to emphasize certain points and does, in some limited instances,
`
`add citations to evidence already of record to support the invalidity arguments.
`
`The limited additional invalidity citations fall into three categories: (i) in Section V
`
`of Microsoft’s Petition, Microsoft provided additional citations to parts of the
`
`GPRS Standards that support its positions regarding the PDP Context, (ii) in
`
`certain instances where the ZTE Petition cited only the declaration of Dr. Bims,
`
`Microsoft added the citations to the evidence that Dr. Bims referenced in the cited
`
`testimony, and (iii) in Section V, a single citation to Patent Owner’s expert’s
`
`testimony from a hearing before the International Trade Commission was added to
`
`support the same obviousness argument presented by ZTE. The claim charts in the
`
`4
`
`
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`Motion for Joinder to Related Inter Partes Review of U.S. Patent No. 8,380,244
`
`Microsoft Petition and ZTE Petition contain identical citations, except for four
`
`additional citations to the GPRS Standards. Thus, the Microsoft Petition does not
`
`present new substantive issues that would complicate the proceeding. Enzymotec
`
`v. Neptune, IPR2014-00556, Paper 19 at 5-6 (July 9, 2014) (allowing joinder even
`
`where the later-filed petition asserted that several additional claims were
`
`anticipated based on the same evidence already of record in the previously
`
`instituted IPR).
`
`Second, the Microsoft Petition addresses a Delaware claim construction
`
`order that issued after the ZTE Petition was filed (Ex. 1025). These arguments,
`
`however, do not add any proposed constructions for the Board to consider as the
`
`order adopted the same constructions that ZTE proposed for the IPR. The addition
`
`of this order to the record would have likely occurred when the Patent Owner filed
`
`its mandatory disclosures, and thus does not increase the scope of the proceedings.
`
`Finally, the Microsoft Petition cites additional evidence to support ZTE’s
`
`assertion that the GPRS Standards are printed publications. While Microsoft
`
`believes that Dr. Bims’ declaration provides sufficient evidence to show that the
`
`GPRS Standards were printed publications, Microsoft has provided a limited (4
`
`page) supplemental declaration by Dr. Bims that cites two additional ETSI
`
`documents to corroborate his prior testimony. As the issue of whether the GPRS
`
`5
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`
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`Motion for Joinder to Related Inter Partes Review of U.S. Patent No. 8,380,244
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`Standards were printed publications was already before the Board, this limited
`
`additional corroborating evidence will not alter the scope of the proceedings.
`
`In sum, because the Microsoft Petition is substantively nearly-identical to
`
`the ZTE Petition, good cause exists for joining this proceeding with IPR2014-
`
`00525 in order to resolve the grounds raised in the ZTE and Microsoft Petitions in
`
`the same proceeding.
`
`Joinder is also warranted to permit Microsoft to protect its interests related
`
`to the validity and interpretation of the 244 Patent, and Microsoft could be
`
`prejudiced if it is not permitted to join and participate in the ZTE IPR. Patent
`
`Owner has already argued that any final decision on the merits from the Board in a
`
`ZTE IPR is admissible in a district court litigation against a party other than ZTE
`
`because it is part of the intrinsic record of the patent and is a decision on the merits
`
`regarding patentability (Ex. 1036 (InterDigital’s September 5, 2014 letter to Judge
`
`Andrews) (attempting to submit findings by the Board in a decision not to institute
`
`a ZTE inter partes review of a different InterDigital patent as evidence in a
`
`Delaware district court trial not involving ZTE); Ex. 1035 (InterDigital’s
`
`September 2, 2014 letter to Judge Andrews) (arguing the same issue))). As Patent
`
`Owner may attempt to use aspects of the ZTE IPR in a future proceeding against
`
`Microsoft, fairness dictates that Microsoft should be permitted to protect its
`
`interests in the ZTE IPR.
`
`6
`
`
`
`Motion for Joinder to Related Inter Partes Review of U.S. Patent No. 8,380,244
`
`In addition, institution of a separate inter partes review of the 244 Patent for
`
`Microsoft would require the Board to determine the same validity and claim
`
`construction questions concerning the 244 Patent in multiple concurrent IPR
`
`proceedings. This would duplicate efforts and create a risk of inconsistent results.
`
`Proceeding with a consolidated inter partes review would avoid inefficiency and
`
`potential inconsistency. For these reasons, joinder is appropriate.
`
`2.
`
`No New Grounds of Unpatentabiltiy
`
`The Microsoft Petition does not present any new grounds of unpatentability.
`
`As mentioned above, the Microsoft Petition involves the same patent, the same
`
`grounds and combinations of prior art, and the same claims that the Board has
`
`already agreed to review in the ZTE IPR.
`
`3.
`
`Joinder Will Not Negatively Impact the ZTE IPR
`Trial Schedule
`
`Joinder will not unduly delay the proceedings or otherwise prejudice Patent
`
`Owner in any discernable way. The Microsoft Petition is based on the same
`
`claims, grounds, and combinations of prior art that were submitted by ZTE and
`
`granted by the Board in the ZTE IPR. Since the Microsoft Petition raises no issues
`
`that are not already before the Board, joinder would not affect the timing of the
`
`ZTE IPR schedule or the content of Patent Owner’s response because its response
`
`to the Microsoft Petition would not require additional analysis beyond what it is
`
`already required to undertake in connection with the ZTE IPR. Similarly, the
`
`7
`
`
`
`Motion for Joinder to Related Inter Partes Review of U.S. Patent No. 8,380,244
`
`Microsoft Petition relies on a declaration by the same expert declarant from the
`
`ZTE IPR such that a single deposition of the declarant can occur in this
`
`proceeding. Thus, joinder on the limited additional grounds here will not unduly
`
`complicate these proceedings – in fact, joinder of the proceedings will simplify
`
`briefing and discovery and “secure the just, speedy, and inexpensive resolution” of
`
`these proceedings. See 37 C.F.R. § 42.1(b). Even if the Board were to determine
`
`that joinder would require a modest extension to the schedule, such an extension is
`
`permitted by law and is not a reason for denying joinder. 35 U.S.C. § 316(a)(1);
`
`37 C.F.R. § 42.100(c). Patent Owner cannot complain of such a modest extension
`
`as it already asked for and received an 11 day extension to file its response in the
`
`ZTE IPR (ZTE IPR, Paper No. 21 (extending DUE DATE 1 from Dec. 8th to Dec.
`
`19th)).
`
`4.
`
`Procedures to Simplify Briefing and Discovery
`
`Since the ZTE and Microsoft Petitions are based on the same claims,
`
`grounds, and combinations of prior art, the Board may adopt procedures similar to
`
`those used in related cases to simplify briefing and discovery. See e.g., Motorola
`
`Mobility LLC v. Softview LLC, IPR2013-00256, Paper 10 at 8-10 (June 20, 2013).
`
`Specifically, the Board may order petitioners ZTE and Microsoft to consolidate
`
`filings. Id. Further, no additional depositions are needed and Microsoft submits
`
`that depositions should take place in the normal time allotted. Moreover,
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`8
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`
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`Motion for Joinder to Related Inter Partes Review of U.S. Patent No. 8,380,244
`
`Microsoft will coordinate with ZTE to consolidate filings, manage the questioning
`
`at depositions, manage presentations at the hearing, ensure that briefing and
`
`discovery occur within the time normally allotted, and avoid redundancies. These
`
`procedures would minimize any complication or delay caused by joinder. Further,
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`at a minimum, the Board should institute on the basis of the Microsoft Petition and
`
`join Microsoft even if the Board deems it efficient to limit Microsoft’s
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`participation in some manner.
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`IV. CONCLUSION
`
`For the foregoing reasons, Microsoft respectfully requests that the Board
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`institute its Petition for Inter Partes Review of U.S. Patent No. 8,380,244 and join
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`this proceeding with ZTE Corporation v. IPR Licensing, Inc. (IPR2014-00525).
`
`Dated: October 16, 2014
`
`Respectfully submitted,
`
`/John D. Haynes/
`John D. Haynes (Reg. No. 44,926)
`E-mail: john.haynes@alston.com
`David S. Frist (Reg. No. 60,511)
`E-mail: david.frist@alston.com
`Alston & Bird LLP
`1201 West Peachtree Street
`Atlanta, GA 30309-3424
`Telephone: (404) 881-7000
`Fax: (404) 253-8292
`
`Attorneys for Microsoft Corporation
`
`9
`
`
`
`Motion for Joinder to Related Inter Partes Review of U.S. Patent No. 8,380,244
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true copy of the foregoing “MOTION FOR JOINDER
`
`UNDER 35 U.S.C. 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b) TO
`
`RELATED INTER PARTES REVIEW IPR2014-00525,” was served in its entirety
`
`on October 16, 2014, by UPS Overnight delivery on:
`
`Patent Owner
`Lawrence F. Shay
`President
`IPR Licensing, Inc.
`200 Bellevue Parkway, Suite 300
`Wilmington, DE 19809
`Telephone: (302) 281-3600
`
`Patent Owner’s Correspondence
`Address of Record
`VOLPE AND KOENIG, P.C.
`DEPT. ICC
`United Plaza
`30 South 17th Street
`Philadelphia, PA 19103
`
`Counsel for Patent Owner
`Jonathan D. Link
`Reg. No. 41,548
`Latham & Watkins LLP
`555 11th Street, NW
`Suite 1000
`Washington, D.C. 20004-1304
`Telephone: (202) 637-2200
`Facsimile: (202) 637-2201
`E-mail: jonathan.link@lw.com
`
`Julie M. Holloway
`Reg. No. 44,769
`Latham & Watkins LLP
`505 Montgomery Street
`Suite 2000
`San Francisco, CA 94111-6538
`Telephone: (415) 391-0600
`Facsimile: (415) 395-8095
`E-mail: julie.holloway@lw.com
`
`/John D. Haynes/
`John D. Haynes
`
`
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