UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`MICROSOFT CORPORATION
`Petitioner
`
`v.
`
`IPR LICENSING, INC.
`Patent Owner
`___________
`
`Case IPR 2015-00074
`Patent 8,380,244 B2
`___________
`
`REPLY IN SUPPORT OF MOTION FOR JOINDER UNDER 35 U.S.C.
`315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b) TO RELATED INTER
`PARTESREVIEW IPR2014-00525
`
`
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`MICROSOFT CORPORATION
`Petitioner
`
`v.
`
`IPR LICENSING, INC.
`Patent Owner
`___________
`
`Case IPR 2015-00074
`Patent 8,380,244 B2
`___________
`
`REPLY IN SUPPORT OF MOTION FOR JOINDER UNDER 35 U.S.C.
`315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b) TO RELATED INTER
`PARTESREVIEW IPR2014-00525
`
`
`
`Case IPR 2015-00074
`Patent 8,380,244 B2
`
`I.
`
`Microsoft Would Be Prejudiced By A Denial Of The Motion For
`Joinder
`
`Absent joinder, Microsoft would be prejudiced in its interests related to the
`
`validity and interpretation of the 244 Patent. A decision on the merits in the ZTE
`
`IPR might be used by InterDigital against Microsoft in district court proceedings
`
`involving the 244 Patent.
`
`InterDigital cites,
`
`in a footnote, a decision by Judge
`
`Andrews, excluding a decision not to institute a different IPR filed by ZTE (Paper 9
`
`at 8, n.2), but a decision not to institute is a not a final decision on the merits.
`
`InterDigital has not agreed that it will not seek to use a final decision in the ZTE IPR
`
`against Microsoft. Further, because Patent Owner appears to contest Microsoft’s
`
`ability to file a petition without joinder, failure to join Microsoft may prejudice
`
`Microsoft if ZTE settles and the IPR were to be terminated.
`
`Rather than address the real prejudice Microsoft will suffer, Patent Owner
`
`argues that any prejudice is of Microsoft’s own making because Microsoft could have
`
`filed its own petition during the one-year period prescribed under 35 U.S.C. § 315(b).
`
`As a preliminary matter, this argument is irrelevant as the one-year bar does not apply
`
`to motions for joinder.
`
`See 35 U.S.C. § 315(c); Microsoft Corp. v. Proxyconn, Inc.,
`
`IPR2013-00109, Paper 15 at 4 (Feb. 25, 2013); Samsung Elecs. Co. v. Va. Innovation Scis.,
`
`Inc., IPR2014-00557, Paper 10 at 15, 18-19 (June 13, 2014). Further, the one-year
`
`period for Microsoft has not expired because it did not have a privity relationship on
`
`the date of service of the complaint against Nokia, and Microsoft Mobile Oy and
`
`1
`
`
`
`Case IPR 2015-00074
`Patent 8,380,244 B2
`
`Nokia Inc. are not real parties-in-interest to Microsoft’s Petition (Paper 1 at 5-7).
`
`Microsoft’s legitimate interests related to the validity and interpretation of the 244
`
`Patent would therefore be prejudiced if joinder were denied.
`
`II.
`
`Joinder Is Appropriate Where Petitions Are Substantively Identical
`
`Patent Owner admits
`
`that
`
`the arguments
`
`in the present Petition are
`
`“substantively duplicative” of the ZTE IPR (Response at 6-7) and thus concedes that
`
`a primary factor weighs heavily in favor of joinder. See Macronix Int’l Co. v. Spansion,
`
`IPR2014-00898, Paper 15 at 4 (Aug. 13, 2014) (whether new petition presents any
`
`new grounds of unpatentability is a key factor).
`
`The present case is thus
`
`distinguishable from Unified Patents, Inc. v. Personal Web Techs., LLC, where the Board
`
`found that the petition raised a new substantive issue that would have required
`
`additional discovery. IPR2014-00702, Paper 12 at 5-6 (P.T.A.B. July 24, 2014).1
`
`III. Microsoft’s Motion For Joinder Provides The Required Details
`
`Microsoft’s Motion provided the required details regarding the impact of
`
`joinder on the ZTE IPR. Microsoft demonstrated that the limited differences
`
`between the two petitions would result in no negative impact in the IPR schedule
`
`(Paper 3 at 7-8). Microsoft also provided specific examples of procedures
`
`implemented in other IPRs that would simplify the proceedings here,
`
`including
`
`consolidation of filings by ZTE and Microsoft and taking depositions in the normal
`
`1 Patent Owner cited the denial of the petition instead of the motion for joinder.
`
`2
`
`
`
`Case IPR 2015-00074
`Patent 8,380,244 B2
`
`time allotted (see id. at 8) (citing procedures adopted in Motorola Mobility LLC v. Softview
`
`LLC, IPR2013-00256). Further, Microsoft showed that it understood fully the need
`
`to coordinate with ZTE and would be amenable to limited participation in the IPR if
`
`the Board deemed that necessary (see Paper 3 at 9).
`
`In light of the foregoing
`
`procedures, Microsoft has sufficiently explained how briefing and discovery could be
`
`simplified.
`
`The only case cited by Patent Owner is distinguishable. In Samsung Elecs. Co. v.
`
`Arendi S.A.R.L., IPR2014-001144, the joinder petitioner relied on the testimony of a
`
`new expert, provided no explanation of how to accommodate this new evidence,
`
`failed to identify the difference between the two petitions, and failed to state whether
`
`the two petitioners were willing to work together to simplify the proceedings. Paper
`
`11 at 5. Here, in contrast, the ZTE and Microsoft’s petitions rely on the same expert,
`
`are substantively the same, and the parties have agreed to work together.
`
`Patent Owner claims, without any meaningful explanation, that a modification
`
`of the schedule will be necessary (Paper 9 at 5). As stated in Microsoft’s Motion,
`
`joinder will not affect the timing of the ZTE IPR schedule or the content of Patent
`
`Owner’s response (Paper 9 at 7), so the Board has ample flexibility to keep to the
`
`same schedule the ZTE IPR would otherwise follow or to adopt a modest alteration
`
`of the schedule if appropriate. Thus, joinder should not be denied on that basis alone
`
`(35 U.S.C. § 316(a)(1); 37 C.F.R. § 42.100(c); Paper 3 at 7).
`
`3
`
`
`
`Case IPR 2015-00074
`Patent 8,380,244 B2
`
`Dated: November 26, 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
`
`4
`
`
`
`Case IPR 2015-00074
`Patent 8,380,244 B2
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true copy of the foregoing “REPLY IN SUPPORT OF
`
`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 November 26, 2014, by electronic mail and UPS Overnight
`
`delivery on:
`
`Lead 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
`
`Backup Counsel for Patent Owner
`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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