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`Filed on behalf of: IPR LICENSING, INC.
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`Entered: November 20, 2014
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`Jonathan D. Link
`Latham & Watkins LLP
`555 11th Street, NW
`Washington, D.C. 20004-1304
`Telephone: (202) 637-2200
`Facsimile: (202) 637-2201
`E-mail: jonathan.link@lw.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
`
`MICROSOFT CORPORATION
`Petitioner
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`v.
`
`IPR LICENSING, INC.
`Patent Owner
`_______________________
`
`Case IPR2015-00074
`U.S. Patent No. 8,380,244
`_______________________
`
`Before PATRICK E. BAKER, Trial Paralegal.
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`PATENT OWNER’S OPPOSITION TO PETITIONER’S
`MOTION FOR JOINDER
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`I.
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`
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`Case IPR2015-00074
`U.S. Patent No. 8,380,244
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`Introduction
`Petitioner Microsoft filed a Petition for Inter Partes Review of U.S. Patent
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`No. 8,380,244 (Paper No. 1) (the “Petition”), along with a Motion for Joinder
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`(Paper No. 3) ( the “Motion”). This Motion would join the Petition with the inter
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`partes review in ZTE Corporation v. IPR Licensing, Inc., IPR2014-00525 (the
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`“ZTE IPR”).
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`Patent Owner respectfully opposes the Motion. As Patent Owner will set
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`forth in greater detail in its Preliminary Patent Owner’s Response, the Petition is
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`substantively duplicative to the currently pending ZTE IPR. Petitioner admits that
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`it is based on the same grounds and same combinations of prior art. See, e.g.,
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`Paper No. 3 at 4. Yet, the Petition introduces new information that would
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`unnecessarily complicate the proceedings in the ZTE IPR and the Petitioner fails to
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`explain why this new information is required for the resolution of the ZTE IPR, or
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`why the Board cannot address the merits of the very same prior art and arguments
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`without Petitioner. Moreover, denying the Motion will not harm the Petitioner, as
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`it constructively chose not to timely file its Petition earlier. The Patent Trial and
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`Appeals Board (the “Board”) should exercise its discretion and deny the Motion.
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`1
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`II. Response to Petitioner’s Statement of Facts
`Patent Owner does not dispute the facts set forth in this section of the
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`Case IPR2015-00074
`U.S. Patent No. 8,380,244
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`Motion. However, facts admitted elsewhere in Petitioner’s Motion and its Petition,
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`as well as certain omitted facts, compel denial of the Motion.
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`On September 3, 2013, Petitioner announced that it would purchase
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`substantially all of Nokia’s Devices & Services business, which ultimately included
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`the acquisition of Nokia, Inc. (“Nokia”) by Petitioner’s wholly-owned subsidiary
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`Microsoft Mobile Oy (“MMO”). Despite being sued for patent infringement under
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`the ‘244 patent in March, 2013, Nokia (now wholly-owned by Petitioner) did not
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`join co-defendant ZTE in filing its IPR request. Nor did Nokia file its own IPR
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`request within the time period set forth under 35 U.S.C. § 315(b). Rather, Petitioner
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`waited opportunistically until after the institution of the ZTE IPR. The Motion
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`ignores these facts. The Motion also fails to acknowledge that in related legal
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`proceedings, Petitioner has expressly elected to assume all liabilities of Nokia,
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`including all “defenses, rights of offset or counterclaims related to the Assumed
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`Liabilities” for purposes of those related proceedings. Ex. 2001 (MMO’s Brief
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`Regarding Substitution of Parties, Interdigital Commc’ns, Inc. v. Nokia Corp., No.
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`1:13-cv-00010, D.I. 303 at 6 (D. Del. July 22, 2014)).
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`Finally, Petitioner admits that the Petition is duplicative of the Grounds
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`initiated in the ZTE IPR, as set forth below. See, e.g., Paper No. 1 at 14. Thus,
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`2
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`Case IPR2015-00074
`U.S. Patent No. 8,380,244
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`Petitioner seeks to institute a review that is not only duplicative, but that could have
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`been – but was not – timely filed by Nokia, in whose shoes Petitioner has now
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`willingly chosen to stand.
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`The facts demonstrate that there is no prejudice to Petitioner. The Petitioner
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`has knowingly assumed Nokia’s prior decision not to file, and should not now be
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`permitted to evade its liabilities by joining the ZTE IPR. Therefore, the denial of the
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`Motion and the Petition is proper.
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`III. Joinder is Discretionary
`The Board has discretion to join together two inter partes reviews. 35 U.S.C.
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`§ 315. Specifically, Section 315(c) provides:
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`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.
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`Thus, joinder is discretionary and decided on a “case-by-case basis, taking
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`into account the particular facts of each case, substantive and procedural issues, and
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`other considerations.” Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc.,
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`IPR2013-00584, Paper No. 20 at 3 (P.T.A.B. Dec. 31, 2013) (citing 157 CONG. REC.
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`3
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`Case IPR2015-00074
`U.S. Patent No. 8,380,244
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`S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl)). Further, “the Director may
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`take into account whether, and reject the petition or request because, the same or
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`substantially the same prior art or arguments previously were presented to the
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`Office.” 35 U.S.C. § 325(d). The Petitioner, as the moving party, has the burden of
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`proof in establishing that joinder is appropriate. 37 C.F.R. §§ 42.20(c), 42.122(b).
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`IV. The Motion Fails to Meet the Requirements for Joinder
`Petitioner has presented no evidence or indication that its presence is
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`necessary in the ZTE IPR. Petitioner has conceded that there are no substantive
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`differences between the Petition and the ZTE IPR. See, e.g., Paper No. 1 at 14.
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`The prior art and arguments are the same. Paper No. 3 at 4. Nonetheless, Petitoner
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`identifies restructuring of arguments, additional citations to prior art, arguments
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`regarding related litigation and a supplemental declaration from the expert. Paper
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`No. 3 at 4-5. Contrary to Petitioner’s assertions, these changes and additional
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`arguments will still require additional analysis by the Patent Owner. Further, the
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`Patent Owner will be required to address these arguments and issues, regardless of
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`how trivial or duplicative the arguments might be. Thus, joining Petitioner will
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`necessarily complicate the proceedings in the ZTE IPR. Despite these additional
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`complications, the Petitioner fails to explain how this new information or its
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`participation are necessary for the resolution of the ZTE IPR, or why the Board
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`4
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`Case IPR2015-00074
`U.S. Patent No. 8,380,244
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`cannot address the merits of the very same prior art and arguments without
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`Petitioner.
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`Moreover, Petitioner’s conclusory statements that joinder will not affect the
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`schedule or the briefing of the ZTE IPR are insufficient. Petitioner must explain the
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`impact of joinder to the schedule and how briefing may be simplified. Kyocera
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`Corp. v. SoftView LLC, IPR2013-00004, Paper 15 at 4 (P.T.A.B. Apr. 24, 2013)
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`(requiring moving party to “explain how the impact on the schedule … will be
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`minimized” and “how briefing and/or discovery may be simplified.”). The Motion
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`provides no detail or even bare suggestion as to how the various events, such as the
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`Patent Owner’s Preliminary Response or the Board’s decision on Institution, could
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`be done within the current schedule in the ZTE IPR. Modifying the current schedule
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`will likely require changing some or all of the dates for completion of briefing and
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`the date for oral argument – dates that were not changed by the parties’ earlier
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`agreement to modify the schedule. Petitioner’s conclusory statements regarding the
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`schedule are insufficient and support denying the Motion. Samsung Elecs. Co., Ltd.
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`v. Arendi S.A.R.L., IPR2014-01144, Paper No. 11 at 5 (P.T.A.B. Oct. 2, 2014)
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`(denying joinder based in part on failure to identify specific changes to schedule).
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`Moreover, Petitioner’s statements regarding briefing are no better, providing only
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`vague goals with no commitment or specifics on how to achieve these goals.
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`Although Petitioner states that it will coordinate with ZTE, there is no indication that
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`5
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`Case IPR2015-00074
`U.S. Patent No. 8,380,244
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`ZTE has agreed to this. Thus, Petitioner has failed to meet its burden, and joinder
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`should be denied for failing to address these issues in its Motion. Id. at 6.
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`V.
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`Joinder Is Improper as the Petition Provides No New Arguments
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`The Motion should be denied as the Petition is substantively duplicative and
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`offers no better grounds than that found in the ZTE IPR. Petitioner admits the
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`“Petition is substantively nearly-identical to the ZTE [IPR].” Paper No. 3 at 6.
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`The Board has routinely rejected petitions where a petitioner has failed to
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`demonstrate why its petition is not redundant to an already pending inter partes
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`review. In Unified Patents, Inc. v. Personal Web Techs., LLC, IPR2014-00702,
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`Paper No. 13 (P.T.A.B. July 24, 2014), the Board exercised its discretion under 35
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`U.S.C § 325(d) and denied a petition “because the same or substantially the same
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`prior art and arguments were presented previously in [an earlier IPR].” Id. at 9.
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`As in the present Petition, the Board recognized in Unified Patents that whether or
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`not the petition is instituted, “a determination will be made as to whether” the
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`challenged claims “are unpatentable” over the same prior art in the earlier
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`proceeding. Id. at 8.
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`The Motion does not identify how the Petition adds to the ZTE IPR or what
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`issues it addresses that the Board would not have considered in the ZTE IPR. The
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`circumstances in the instant case are no different than those in Unified Patents, and
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`thus indicates that the Petition should be denied. Denying institution of the
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`6
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`Case IPR2015-00074
`U.S. Patent No. 8,380,244
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`Petition renders the Motion moot. See Medtronic, Inc. v. Robert Bosch Healthcare
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`Sys., Inc., IPR2014-00436, Paper No. 17 at 15 (P.T.A.B. June 19, 2014). Thus,
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`Petitioner has failed to meet its burden to demonstrate that joinder is appropriate.
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`VI. Joinder Is Improper as No Harm Would Result to Petitioner
`Joinder may only be authorized when warranted and the decision to grant
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`joinder is discretionary. The Board has frequently stressed that joinder must
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`“secure the just, speedy, and inexpensive resolution of every proceeding.” Shaw
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`Indus. Grp., IPR2013-00584, Paper No. 20 at 3 (emphasis added). There is no
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`injustice in denying the Motion and the Petition, because Nokia’s failure to file an
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`IPR within the statutory time period prescribed under 35 U.S.C. § 315(b) was a
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`choice knowingly adopted and assumed by Petitioner. Nokia had ample
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`opportunity to either join in ZTE’s petition or to file its own petition before the one-
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`year time bar, but chose to do neither. Petitioner should be bound by this choice.
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`Petitioner has represented in district court that it acquired substantially all of
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`Nokia Corporation’s Device and Services Business, including Nokia. Ex. 2001 at 5.
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`Petitioner, presumably after the requisite investigation into the facts, further
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`affirmatively chose to assume all “defenses, rights of offset or counterclaims related
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`to the Assumed Liabilities.” Id. at 6. Petitioner, by choosing to step into the shoes
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`of Nokia, adopts its previous choices and the equities that flow from them. See,
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`e.g., Taylor v. Sturgell, 553 U.S. 880, 895 (2008) (control of a litigation may bar a
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`7
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`Case IPR2015-00074
`U.S. Patent No. 8,380,244
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`party as already having “‘had his day in court’ even though he was not a formal
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`party.” (quoting 1 Restatement (Second) of Judgments § 39 cont. (1982)). These
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`previous Nokia decisions should not now be disregarded by permitting joinder.
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`Petitioner’s arguments that its wholly-owned subsidiaries are not in privity
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`would elevate corporate form over the substance of what has occurred. Petitioner
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`acquired Nokia with full knowledge of the choices Nokia had made regarding inter
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`partes review. There is no unfairness in denying Petitioner’s joinder, as Nokia
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`neither filed its own petition nor attempted to join the ZTE IPR earlier.1 The
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`Motion confirms that Petitioner is the same as MMO when asserting that
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`arguments made against its wholly-owned subsidiary MMO (which includes
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`Nokia) in litigation should permit Petitioner to join the IPR.2 Paper No. 3 at 6.
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`Petitioner has embraced its relationship with its wholly-owned subsidiaries in the
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`Motion and has agreed to accept all liabilities and defenses in the related litigation.
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`1 Petitioner’s citation to antitrust regulations is inapplicable, as it had standing to
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`file its own petition prior to the expiration of the one year period of § 315(b).
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`2 The Motion omits that the denial of the petition for inter partes review of the
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`‘151 patent was not admissible against ZTE, the party that filed it, let alone Nokia.
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`See Ex. 2002, Interdigital Commc’ns, Inc. v. Nokia Corp., No. 1:13-cv-00010, D.I.
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`367 (D. Del. Sept. 19, 2014).
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`8
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`Case IPR2015-00074
`U.S. Patent No. 8,380,244
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`Petitioner should not be permitted to deny that relationship and disavow Nokia’s
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`decision not to join the ZTE IPR or file its own when arguing for joinder.
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`VII. Conclusion
`Therefore, the Patent Owner respectfully submits that the Petitioner has
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`failed to meet its burden to demonstrate that joinder is appropriate and requests that
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`this Motion should be denied as improper.
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`Dated: November 20, 2014
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`
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`Respectfully submitted,
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`
`
`/Jonathan D. Link/
`Jonathan D. Link
`LATHAM & WATKINS LLP
`555 Eleventh Street, N.W., Ste. 1000
`Washington, DC 20004-1304
`Telephone: (202) 637-2200
`Facsimile: (202) 637-2201
`
`Julie M. Holloway
`LATHAM & WATKINS LLP
`505 Montgomery Street
`Suite 2000
`San Francisco, California 94111-
`6538
`Telephone: (415) 391-0600
`Facsimile: (415) 395-8095
`
`Counsel for Patent Holder
`IPR Licensing, Inc.
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`9
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`Case IPR2015-00074
`U.S. Patent No. 8,380,244
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 20th day of November, 2014, true and correct
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`copies of the foregoing PATENT OWNER’S OPPOSITION TO PETITIONER’S
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`MOTION FOR JOINDER were served by electronic mail and Federal Express,
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`upon the following counsel of record for Petitioner Microsoft Corp.:
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`Lead Counsel
`John Haynes
`Reg. No. 44754
`Alston & Bird LLP
`One Atlantic Center
`1201 West Peachtree Street
`Atlanta, GA 30309-3424
`E-mail: john.haynes@alston.com
`Telephone: (404) 881-7737
`Fax: (404) 253-8292
`
`
`Backup Counsel
`David Frist
`Reg. No. 60511
`Alston & Bird LLP
`One Atlantic Center
`1201 West Peachtree Street
`Atlanta, GA 30309-3424
`E-mail: david.frist@alston.com
`Telephone: (404) 881-7874
`Fax: (404) 253-8284
`
`
`/Jonathan D. Link/
`Jonathan D. Link
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