throbber
By:
`
`
`
`
`
`
`Thomas Engellenner
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`SAMSUNG ELECTRONICS CO. LTD.;
`SAMSUNG ELECTRONICS AMERICA, INC.;
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC; and
`SAMSUNG AUSTIN SEMICONDUCTOR, LLC;
`Petitioner
`
`v.
`
`REMBRANDT WIRELESS TECHNOLOGIES, LP
`Patent Owner
`___________________
`
`Case No. IPR2015-00114
`Patent 8,023,580
`___________________
`
`PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER TO
`RELATED INTER PARTES REVIEW OF U.S. PATENT NO. 8,023,580
`(IPR2014-00518)
`
`

`

`IPR2015-00114
`Opposition To Motion For Joinder
`U.S. Patent No. 8,023,580
`
`TABLE OF CONTENTS
`
`B.
`
`INTRODUCTION .......................................................................................... 1
`I.
`STATEMENT OF FACTS ............................................................................. 3
`II.
`III. ARGUMENT .................................................................................................. 4
`A.
`35 U.S.C. §315(c) Does Not Permit A Party to “Join” A
`Proceeding In Which It Is Already A Party ......................................... 4
`Even If Joinder Were Permitted Under The Statute, There Is No
`Justification For Giving This Petitioner A “Second Bite At The
`Apple”................................................................................................... 5
`The Petition Advances The Same Prior Art Previously
`Presented To The Board ....................................................................... 9
`The Existing Trial Schedule Will Be Negatively Impacted ............... 10
`Joinder Is Not Just Or Efficient .......................................................... 13
`Denial of Joinder Will Not Be Unfair or Prejudicial To
`Petitioner ............................................................................................ 14
`IV. CONCLUSION ............................................................................................. 15
`
`
`
`C.
`
`D.
`E.
`F.
`
`-i-
`
`

`

`IPR2015-00114
`Opposition To Motion For Joinder
`U.S. Patent No. 8,023,580
`TABLE OF AUTHORITIES
`
`
`CASES
`ABB Inc. V. Roy-G-Biv Corp.,IPR2013-00282, Paper 15
`(PTAB Aug. 9, 2013) ............................................................................................ 6
`
`Page(s)
`
`Ariosa Diagnostics v. Isis Innovation, IPR2012-00022, Paper 66
`(PTAB Sept. 2, 2014) ........................................................................................... 6
`
`Butamax Advanced Biofuels v. Gevo, Inc., IPR2014-00581, Paper 8
`(PTAB Oct. 14, 2014) ......................................................................... 1, 7, 8, 9, 13
`
`Conopco, Inc. dba Unilever v. Proctor & Gamble, IPR2014-00628, Paper 21
`(PTAB Oct. 20, 2014) ............................................................................. 2, 8, 9, 13
`
`Eizo Corp. v. Barco N.V., IPR2014-00778, Paper 18
`(PTAB Oct. 10, 2014) ............................................................................... 5, 10, 11
`
`Medtronic, Inc. et al. v. Endotach LLC., IPR2014-00695, Paper 18
`(PTAB Sept. 25, 2014) ....................................................................... 1, 5, 6, 7, 11
`
`Microsoft Corp. v. Enfish, LLC, IPR2014-00576, Paper 12
`(PTAB Sept. 29, 2014) ......................................................................................... 9
`
`Microsoft Corp. v. Proxyconn, IPR2013-00109, Paper 15
`(PTAB Feb. 25, 2013) ........................................................................................... 6
`
`Reloaded Games, Inc. v. Parallel Networks LLC, IPR2014-00950, Paper 12,
`(PTAB October 22, 2014) ..................................................................................... 7
`
`Samsung et al. v Arendi S.A.R.L., IPR2014-01142, Paper 11
`(PTAB Oct. 2, 2014) ........................................................................................... 11
`
`Samsung v. Virginia Innovation Sciences, IPR2014-00557, Paper 10
`(PTAB June 13, 2014) .................................................................................... 5, 12
`
`Target Corp. v. Destination Maternity Corp., IPR 2014-00508, Paper 18
`(PTAB Sept. 25, 2014) ..................................................................................... 4, 5
`
`Unilever, Inc. v. Proctor & Gamble, IPR2014-00506, Paper 17
`(PTAB July 7, 2014) ..................................................................................... 7, 8, 9
`
`-ii-
`
`

`

`IPR2015-00114
`Opposition To Motion For Joinder
`U.S. Patent No. 8,023,580
`Zimmer Holdings et al. v. Bonutti Skeletal Innov., IPR2014-01080, Paper 17
`(PTAB Oct. 31, 2014) ................................................................................... 2, 8, 9
`
`ZTE Corp. v. ContentGuard Holdings, IPR2013-00454, Paper 12
`(PTAB Sept. 25, 2013) ..................................................................................... 2, 7
`
`STATUTES
`
`35 U.S.C. § 315(b) ....................................................................................... 4, 6, 7, 11
`
`35 U.S.C. § 315(c) ............................................................................................. 1, 4, 5
`
`35 U.S.C. § 325(d) ..................................................................................................... 9
`
`OTHER AUTHORITIES
`
`H.R. Rep. No. 112-98, pt.1, at 48 (2011) ................................................................. 14
`
`-iii-
`
`

`

`IPR2015-00114
`Opposition To Motion For Joinder
`U.S. Patent No. 8,023,580
`
`I.
`
`
`
`INTRODUCTION
`
`Petitioner filed the present petition (“the ‘114 IPR”) for inter partes review
`
`more than a year after it was served with a complaint alleging infringement of the
`
`‘580 patent. The request challenges claims 2, 19, 49, 52, 53, and 59 of the ‘580
`
`patent, for which the Board previously denied institution in IPR2014-00518 (“the
`
`‘518 IPR”), and is based on the same prior art that Petitioner unsuccessfully
`
`advanced in the ‘518 IPR.
`
`Petitioner seeks to join this request with the ‘518 IPR, a proceeding to which
`
`it is already a party. The joinder petition, therefore, is fundamentally flawed,
`
`because 35 U.S.C. §315(c) does not permit a party to “join” a proceeding in which
`
`it is already a party. Moreover, the joinder request flies in the face of numerous
`
`decisions of the Board denying joinder under similar circumstances:
`
`• Medtronic, Inc. et al. v. Endotach LLC., IPR2014-00695, Paper 18 at 3
`(PTAB Sept. 25, 2014) (“This case represents a ‘second bite at the apple’
`for Petitioner, who has received the benefit of seeing our Decision to
`Institute in the prior case involving the same parties and patent claims.”)
`• Butamax Advanced Biofuels v. Gevo, Inc., IPR2014-00581, Paper 8 at
`12-13 (PTAB Oct. 14, 2014) (“More significantly, we observe that the
`obviousness grounds asserted in the present Petition are expressly
`intended to squarely address[] the alleged deficiencies identified by the
`Board in the 539 IPR. In other words, the four obviousness grounds are
`‘second bites at the apple,’ which use our prior decision to as a roadmap
`to remedy Butamax’s prior, deficient challenge.”)
`
`-1-
`
`

`

`IPR2015-00114
`Opposition To Motion For Joinder
`U.S. Patent No. 8,023,580
`• Zimmer Holdings et al. v. Bonutti Skeletal Innov., IPR2014-01080, Paper
`17 at 4 (PTAB Oct. 31, 2014) (“To bolster the prior reasoning that we
`deemed insufficient, Petitioner, in this proceeding, ‘ha[s] more fully
`articulated the reasons why it would have been obvious to combine the
`references.’ ... We do not reach the merits of Petitioner’s additional
`reasoning. … Petitioner is requesting, essentially, a second chance to
`address claim 43.”)
`• ZTE Corp. v. ContentGuard Holdings, IPR2013-00454, Paper 12 at 6
`(PTAB Sept. 25, 2013) (“A decision to institute review on some claims
`should not act as an entry ticket, and a how-to guide, for the same
`Petitioner who filed an unsuccessful joinder motion, and is outside of the
`one-year statutory period, for filing a second petition to challenge those
`claims which it unsuccessfully challenged in the first petition.”)
`• Conopco, Inc. dba Unilever v. Proctor & Gamble, IPR2014-00628, Paper
`21 at 11 (PTAB Oct. 20, 2014) (“the interests of fairness, economy, and
`efficiency support declining review – a result that discourages the filing
`of a first petition that holds back … should the first petition be denied.”)
`Like in the cases above, the ‘114 IPR petition – filed outside of the one-year
`
`statutory period challenging the same claims on the same grounds which it
`
`unsuccessfully challenged in the first petition – is a belated and improper attempt
`
`to remedy the deficiencies of the first petition. Moreover, joinder would
`
`negatively impact the existing schedule and unduly prejudice the Patent Owner.
`
`-2-
`
`

`

`IPR2015-00114
`Opposition To Motion For Joinder
`U.S. Patent No. 8,023,580
`
`II.
`
`STATEMENT OF FACTS
`
`Petitioner was served with a Complaint alleging infringement of the ‘580
`
`patent on March 20, 2013. Exactly one year later, on March 20, 2014, Petitioner
`
`filed four requests for inter partes review (IPR2014-00514, IPR2014-00515,
`
`IPR2014-00518, and IPR2014-00519), challenging the patent on multiple grounds.
`
`On September 9, 2014, the Board denied the requests in IPR2014-00514 and
`
`IPR2014-00515. On September 23, 2014, the Board issued decisions in IPR2014-
`
`00518 and IPR2014-00519 instituting trials with respect to a subset of the claims,
`
`but declining institution with respect to claims 2, 19, 49, 52, 53, and 59 (IPR2014-
`
`00518) and claims 23, 25, 29, 30 and 41 (IPR2014-00519).
`
`On October 21, 2014, Petitioner filed new IPRs (IPR2015-00114 and
`
`IPR2015-00118) directed to the claims for which trial was not instituted. These
`
`“new” petitions again challenge the claims for which the Board denied institution
`
`and are based on the same prior art that was rejected by the Board in the ‘518 IPR
`
`and IPR2014-00519. However, with the benefit of the Board’s decisions declining
`
`institution, Petitioner prepared new expert declarations containing over 40
`
`paragraphs of “additional opinions regarding the applicability of the prior art
`
`references [the expert] discussed in [his] previous declaration to certain claims for
`
`which the… Board declined to institute a trial.” ‘114 IPR, Ex. 1221 at ¶2; ‘118
`
`-3-
`
`

`

`IPR2015-00114
`Opposition To Motion For Joinder
`U.S. Patent No. 8,023,580
`IPR, Ex. 1319 at ¶2. The new petitions are an improper back-door attempt to get a
`
`rehearing of the previously denied claims.
`
`III. ARGUMENT
`
`A. 35 U.S.C. §315(c) Does Not Permit A Party to “Join” A
`Proceeding In Which It Is Already A Party
`In Target Corp. v. Destination Maternity Corp., IPR 2014-00508, Paper 18
`
`
`
`(PTAB Sept. 25, 2014), the Panel held that §315(c) does not permit the joinder of a
`
`party, such as the Petitioner in this case, to a proceeding in which it is already a
`
`party. Even though Target has not been designated as “precedential,” its reasoning
`
`is clear, persuasive, and consistent with the legislative intent:
`
`The statute does not refer to the joining of a petition. Rather, it refers
`to the joining of a petitioner (i.e., “any person who properly files a
`petition . . .”). Id. Further, it refers to the joining of that petitioner “as
`a party to [the instituted] inter partes review.” Id. Because Target is
`already a party to the proceeding in IPR2013-00531, Target cannot be
`joined to IPR2013-00531.
`
`* * *
`Under our interpretation, once a petitioner is time barred under
`§ 315(b), it is always time barred. A time-barred petitioner cannot
`successfully petition for an inter partes review, regardless of whether
`it requests joinder under subsection (c). … Our interpretation reduces
`Patent Owner harassment by preserving the time limitation Congress
`enacted in § 315(b).
`
`-4-
`
`

`

`IPR2015-00114
`Opposition To Motion For Joinder
`U.S. Patent No. 8,023,580
`Target at 3, 10; see also Eizo Corp. v. Barco N.V., IPR2014-00778, Paper 18 at 8
`
`(PTAB Oct. 10, 2014) (“35 U.S.C. §315(c) does not permit the joinder of a party to
`
`a proceeding in which it already is a party”) (A.P.J. McKone concurring);
`
`Medtronic, Inc. et al. v. Endotach LLC., IPR2014-00695, Paper 18 (A.P.J.
`
`Fitzpatrick concurring). Simply put, the present joinder motion is fatally flawed
`
`because Section 315(c)1 does not permit the Petitioner to “join” a proceeding in
`
`which it is already a party.
`
`B. Even If Joinder Were Permitted Under The Statute, There Is No
`Justification For Giving This Petitioner A “Second Bite At The
`Apple”
`Assuming, arguendo, that joinder is permitted under the statute, the Board
`
`should exercise its discretion and deny joinder. The facts in Medtronic, Inc. et al.
`
`v. Endotech LLC., IPR2014-00695 are similar to the present case, as both cases
`
`
`1 While the Panel in Samsung v. Virginia Innovation Sciences, IPR2014-00557,
`
`Paper 10 (PTAB June 13, 2014) allowed joinder of additional grounds by the same
`
`party, it did so without analyzing the language of §315(c). Rather, that Panel relied
`
`on the fact that such joinder had previously been allowed – a fact that was not
`
`persuasive to the Panel in Target. Moreover, to the extent that IPR2014-00557
`
`suggests that it is permissible to give a petitioner “a second bite at the apple,” that
`
`decision is out of step with numerous subsequent decisions. See infra, Section
`
`III(B).
`
`-5-
`
`

`

`IPR2015-00114
`Opposition To Motion For Joinder
`U.S. Patent No. 8,023,580
`involve a petitioner who, having unsuccessfully advanced certain grounds in an
`
`earlier IPR request, filed a subsequent IPR more than a year after having been
`
`served with a complaint, and sought to join the later-filed IPR with the earlier
`
`proceeding. The Panel concluded that there was no justification for joinder:
`
`This case represents a “second bite at the apple” for Petitioner, who
`has received the benefit of seeing our Decision to Institute in the prior
`case involving the same parties and patent claims. See IPR2014-
`00100, Paper 15 (“Institution Decision”). This “second bite at the
`apple” situation is particularly noteworthy in view of the § 315(b) bar
`at issue here … [W]hen a § 315(b) bar would apply absent joinder, we
`hesitate to allow a petitioner a second bite …
`
`Medtronic, IPR2014-00695, Paper 18, at 3-4.2 As in Medtronic, the new
`
`petition here is barred under § 315(b) absent joinder and involves “the same
`
`parties and patent claims,” and the same art as in the prior ‘518 IPR.
`
`
`2 Petitioner’s reliance on Ariosa Diagnostics v. Isis Innovation, IPR2012-00022,
`
`Paper 66 (PTAB Sept. 2, 2014) is misplaced. There, Petitioner was not otherwise
`
`barred from filing its petition under §315(b). Microsoft Corp. v. Proxyconn,
`
`IPR2013-00109, Paper 15 (PTAB Feb. 25, 2013) and ABB Inc. V. Roy-G-Biv
`
`Corp.,IPR2013-00282, Paper 15 (PTAB Aug. 9, 2013) are also inapposite, as
`
`Patent Owner did not oppose joinder in either of those cases.
`
`-6-
`
`

`

`IPR2015-00114
`Opposition To Motion For Joinder
`U.S. Patent No. 8,023,580
`Numerous other decisions echo the concerns raised in Medtronic and refuse
`
`
`
`to allow a subsequent challenge by the same petitioner where the petitioner
`
`attempts to use a prior institution decision as a roadmap for remedying challenges
`
`that were unsuccessfully advanced in an earlier petition. Unilever, Inc. v. Proctor
`
`& Gamble, IPR2014-00506, Paper 17 at 8 (PTAB July 7, 2014) (“Based on the
`
`information presented, we are persuaded that the instant Petition uses our prior
`
`Decision on Institution to bolster challenges that were advanced, unsuccessfully, in
`
`the 505 Petition”); Butamax, IPR2014-00581, Paper 8 at 12-13 (“[T]he four
`
`obviousness grounds are ‘second bites at the apple,’ which use our prior decision
`
`to as a roadmap to remedy Butamax’s prior, deficient challenge”); Reloaded
`
`Games, Inc. v. Parallel Networks LLC, IPR2014-00950, Paper 12, at 4-5 (PTAB
`
`October 22, 2014) (denying joinder of subsequent petition otherwise barred under
`
`§315(b) because “Petitioner seeks a ‘second bite of the apple’” and “has not raised
`
`any grounds of unpatentability that could not have been raised when filing the
`
`[earlier] Petition”); ZTE Corp., IPR2013-00454, Paper 12 at 6 (“A decision to
`
`institute review on some claims should not act as an entry ticket, and a how-to
`
`guide … to challenge those claims which it unsuccessfully challenged in the first
`
`petition”); Zimmer Holdings, IPR2014-01080, Paper 17 at 5 (“The sole difference
`
`between what Petitioner presents in this proceeding and what Petitioner presented
`
`in Zimmer… is that Petitioner now provides further reasoning in support of the
`
`-7-
`
`

`

`IPR2015-00114
`Opposition To Motion For Joinder
`U.S. Patent No. 8,023,580
`same combination of prior art. … Petitioner is requesting, essentially, a second
`
`chance to address claim 43.”)
`
`Like the petitioners in Medtronic, Reloaded Games, Unilever, Butamax, ZTE
`
`Corp. and Zimmer, Petitioner in this case has provided no justification for getting
`
`“a second bite” and has conceded that the “newly filed IPR involves the same
`
`parties, the same patent, the same subject matter and the same prior art as in the
`
`‘518 IPR.” Joinder Mot., at 4.3 Petitioner presents no explanation why it could not
`
`have made the arguments in the earlier ‘518 IPR Petition that it now makes in the
`
`‘114 IPR. See Unilever, Inc., IPR2014-00506, Paper 17 at 6 (“Unilever, however,
`
`presents no argument or evidence that … the cited references were not known or
`
`available to it at the time of filing the 505 petition. On this record, we exercise our
`
`discretion and ‘reject the petition’ ….”); Butamax, IPR2014-00581, Paper 8 at 12
`
`(same); Zimmer, IPR2014-01080, Paper 17 at 5 (same); see also, Conopco, Inc.,
`
`IPR2014-00628, Paper 21 at 11 (same).
`
`
`3 Indeed, in the ‘114IPR, Petitioner and its expert directly responded to the Board’s
`
`“issues” denying trial institution on claims 2, 19, 49, 52, 53, and 59 in the ‘518
`
`IPR. See ‘114 IPR Petition, passim; Ex. 1221 at e.g., ¶¶ 2, 10, 11, 12, 15, 16, etc.
`
`-8-
`
`

`

`IPR2015-00114
`Opposition To Motion For Joinder
`U.S. Patent No. 8,023,580
`C. The Petition Advances The Same Prior Art Previously Presented
`To The Board
`
`As in other cases where the Board has considered joinder motions involving
`
`similar facts, it appears that this Panel intends to address joinder and institution at
`
`the same time. In refusing to allow “follow-on” petitions like the present one to
`
`move forward, the Board has relied on 35 U.S.C. §325(d), which permits the Board
`
`to “take into account whether … the same or substantially the same prior art or
`
`arguments previously were presented to the Office.” This provision is applicable
`
`here, because the present petition relies on prior art mappings that are essentially
`
`identical to ones that Petitioner previously presented. See Unilever, Inc., IPR2014-
`
`00506, Paper 17 at 7 (“the claim charts essentially are identical in both petitions”);
`
`Conopco, Inc., IPR2014-00628, Paper 21 at 10 (“The instant Petition also raises
`
`similar, if not ‘substantially the same,’ prior art previously ‘presented to the
`
`Office’”); Butamax, IPR2014-00581, Paper 8 at 12 (“the arguments made in both
`
`cases are substantially similar. For these reasons, we conclude that the instant
`
`Petition advances “the same or substantially the same prior art or arguments [that]
`
`previously were presented to the Office”); Zimmer, IPR2014-01080, Paper 17 at 5
`
`(“ the ‘same prior art’ was ‘previously presented’ to the Board, with respect to the
`
`same claim”); see also, Microsoft Corp. v. Enfish, LLC, IPR2014-00576, Paper 12
`
`at 6 (“In IPR2013-00559 we have already considered the combination of Smith
`
`‘510 and Chang …. In essence, Microsoft seeks a rehearing of that decision.”).
`
`-9-
`
`

`

`IPR2015-00114
`Opposition To Motion For Joinder
`U.S. Patent No. 8,023,580
`Because the ‘114 Petition is based on the same art against the same claims, and
`
`essentially the same arguments as previously rejected by the Board in the ‘518
`
`IPR, joinder should be denied.
`
`D. The Existing Trial Schedule Will Be Negatively Impacted
`
`
`
`Petitioner’s point heading that “Joinder Should Not Affect The Trial
`
`Schedule” (Joinder Mot., at 13) is simply wrong. It ignores the fact that
`
`Petitioner’s expert was already deposed in the ‘518 IPR on November 7, 2014, and
`
`Patent Owner’s Response in the ‘518 IPR is due December 1, 2014 – the same day
`
`that its Preliminary Response is due in the ‘114 IPR. On these facts, it is a virtual
`
`certainty that joinder will affect the existing schedule, because the joinder decision
`
`will issue after Patent Owner has filed its Patent Owner Response in the ‘518 IPR.
`
`Since Patent Owner will need an appropriate amount of time after joinder to cross-
`
`examine Petitioner’s expert with respect to the 40 or more new paragraphs in his
`
`declaration, address the new arguments, and prepare a Patent Owner Response, it is
`
`difficult to envision any scenario where the existing schedule would not be
`
`impacted.
`
`
`
`Rather than address these scheduling issues, Petitioner makes a conclusory
`
`statement that “[j]oinder will not unduly delay the proceedings.” Joinder Mot., at
`
`13. As the Board explained in Eizo Corp. v. Barco, IPR2014-00778, Paper 18 at 6
`
`(PTAB Oct. 10, 2014), this is insufficient:
`
`-10-
`
`

`

`IPR2015-00114
`Opposition To Motion For Joinder
`U.S. Patent No. 8,023,580
`Patent Owner argues that Petitioner has not addressed the impact of
`joinder on the ‘358 proceeding’s schedule. Specifically, Patent
`Owner argues that DUE DATE 1 for Patent Owner’s Response is set
`for October 14, 2014, and joinder would impact this date unfairly.
`We agree with Patent Owner. Petitioner has not addressed the impact
`to DUE DATE 1 or the ripple effect of any change in DUE DATE 1
`on the other due dates in the ‘358 proceeding. …
`
`Id. (emphasis added). See also Samsung et al. v Arendi S.A.R.L., IPR2014-01142,
`
`Paper 11 at 5 (PTAB Oct. 2, 2014) (denying joinder where Petitioner “does not
`
`suggest any specific changes to the schedule … Petitioner, instead, merely alleges
`
`that ‘there will be no discernable impact on the trial schedule’”); Medtronic,
`
`IPR2014-00695, Paper 18 at 9 (denying joinder of “Second Petition subject to a
`
`bar under §315(b) absent joinder with IPR2014-00100, which is much further
`
`along in its own schedule and in which Patent Owner has already filed a Patent
`
`Owner Response.”)
`
`
`
`The reason Petitioner fails to address scheduling issues is because joinder
`
`will likely impact the existing schedule to the detriment of Patent Owner.
`
`Specifically, should joinder be granted, Petitioner stands to gain extra time to
`
`prepare its Reply in the ‘518 IPR, while the Patent Owner would be forced onto an
`
`accelerated schedule to depose Petitioner’s expert on an extensive new declaration
`
`and prepare its response to the ‘114 IPR portion of the joined proceeding. Thus,
`
`not only would Petitioner unfairly benefit procedurally in the ‘518 IPR from its
`
`-11-
`
`

`

`IPR2015-00114
`Opposition To Motion For Joinder
`U.S. Patent No. 8,023,580
`belated new IPR filing and have a second bite at the apple, the Patent Owner would
`
`be prejudiced by having to rush to develop its response and evidence to the
`
`renewed challenges.
`
`To the extent Samsung Elecs. v. Virginia Innovation Sciences, Inc.,
`
`IPR2014-00557, Paper 10, suggests that “second bites at the apple” are
`
`permissible, that decision is not in keeping with numerous other decisions
`
`discussed above. In addition, that case is clearly distinguishable because there, the
`
`two challenged dependent claims being joined merely added the limitation that a
`
`wireless terminal apparatus would communicate via an HDMI connection. By
`
`contrast, Petitioner in the present case challenges the patentability of six claims (2,
`
`19, 49, 52, 53, and 59) that include both independent and dependent claims reciting
`
`different subject matter. For example, whereas claim 2 depends on claim 1 and is
`
`directed to the reversion of modulation method to the first modulation, claim 19
`
`depends on claim 13 and recites that the transceiver is configured to receive data
`
`from the intended destination in the first modulation method when the intended
`
`destination is the first type of receiver. Further, whereas claims 2 and 19 are
`
`method claims, claim 49 is directed to an independent computer-readable storage
`
`medium. In addition, claims 52 and 53 recite additional subject matter not covered
`
`by claims 2 and 19. Hence, Petitioner seeks to add a multitude of new issues. For
`
`this reason, the joinder motion should be denied.
`
`-12-
`
`

`

`IPR2015-00114
`Opposition To Motion For Joinder
`U.S. Patent No. 8,023,580
`
`E. Joinder Is Not Just or Efficient
`
`
`
`In an effort to manufacture an argument where none exists, Petitioner claims
`
`that joinder is just and efficient because Patent Owner “will likely assert [the
`
`patent] against other parties in the future.” Joinder Mot., at 8. Even though Patent
`
`Owner has only asserted the patent against Petitioner and one other party
`
`(Blackberry), Petitioner authoritatively states that “litigation against parties other
`
`than Petitioner is not speculative.” Id., at 8. Petitioner’s rank speculation about
`
`future litigation cannot justify the relief that it requests. Should the “other parties”
`
`about which Petitioner speculates materialize, they will be free to challenge the
`
`patent themselves.
`
`
`
`Nor is it just for Patent Owner to be forced to continually defend against
`
`repetitive challenges to the patent by the same Petitioner. Given the sheer number
`
`of requests and grounds that Petitioner has already asserted against the patent, this
`
`concern is real. As the Board stated in Conopco:
`
`P&G raises a legitimate concern that Unilever will continue to mount
`serial attacks against the ’155 patent claims, until a ground is
`advanced that results in the institution of review. … P&G’s concern
`that it will “have to continually defend against repetitive []
`challenges” to the same patent claims is not without merit, given the
`multiplicity of grounds applied in each petition.
`
`IPR2014-00628, Paper 21, at 11-12. See also, Butamax, IPR2014-00581, Paper 8
`
`at 13 (“Allowing similar, serial challenges to the same patent, by the same
`
`-13-
`
`

`

`IPR2015-00114
`Opposition To Motion For Joinder
`U.S. Patent No. 8,023,580
`petitioner, risks harassment of patent owners and frustration of Congress’s intent in
`
`enacting the Leahy-Smith America Invents Act” citing, H.R. Rep. No. 112-98,
`
`pt.1, at 48 (2011) (“While this amendment is intended to remove current
`
`disincentives to current administrative processes, the changes made by it are not to
`
`be used as tools for harassment or a means to prevent market entry through
`
`repeated litigation and administrative attacks on the validity of a patent. Doing so
`
`would frustrate the purpose of the section as providing quick and cost effective
`
`alternatives to litigation.”)).
`
`F. Denial of Joinder Will Not Be Unfair or Prejudicial To Petitioner
`
`
`
`Petitioner has already had multiple opportunities to challenge claims 2, 19,
`
`49, 52, 53, and 59 using inter partes review. See IPRs 2014-00514 and -00518. In
`
`addition, Petitioner shortly will have an opportunity to challenge the validity of
`
`these claims in the District Court litigation,4 which is scheduled to go to trial on
`
`February 9, 2015. Thus, even absent joinder, Petitioner will get multiple “bites at
`
`the apple” when it comes to challenging the validity of these claims. Thus, it is
`
`difficult to discern any meaningful prejudice to Petitioner if joinder is denied.
`
`
`4 Rembrandt Wireless Technologies, LP v. Samsung Electronics Co., Ltd., et al.,
`
`E.D. Tx, Case No. 2:13-CV-213-JRG-RSP, Document 145, filed 10/03/14 (setting
`
`Jury Selection for February 9, 2015).
`
`-14-
`
`

`

`IPR2015-00114
`Opposition To Motion For Joinder
`U.S. Patent No. 8,023,580
`Finally, given the present trial schedule in the District Court, joinder will not
`
`save any judicial resources in the District Court. The trial in the District Court will
`
`be completed long before any Final Written Decision involving these claims.
`
`IV. CONCLUSION
`
`
`
`For the foregoing reasons, Patent Owner respectfully requests that joinder be
`
`denied, and that no trial be instituted.
`
`Respectfully submitted,
`
`Dated: November 8, 2014
`
`
`
`
`By: /Thomas Engellenner/
`Thomas Engellenner, Reg. No. 28,711
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
`Attorney for Patent Owner
`
`-15-
`
`

`

`CERTIFICATE OF SERVICE
`
`
`I hereby certify that on November 8, 2014, a true and accurate copy of this
`
`paper, PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER, was served on the
`following counsel for Petitioner via email:
`
`Jeffrey A. Miller
`millerj@dicksteinshapiro.com
`Dickstein Shapiro LLP
`1841 Page Mill Road
`Palo Alto, CA 94304
`Tel: (650) 690-9500
`Fax: (650) 690-9501
`
`Daniel G. Cardy (via e-mail only)
`cardyd@dicksteinshapiro.com
`Dickstein Shapiro LLP
`1825 Eye St. NW
`Washington DC 20006-5403
`Tel: (202) 420-2200
`Fax: (202) 420-2201
`
`Samsung.Rembrandt@dicksteinshapiro.com (via e-mail only)
`
`Dated: November 8, 2014 By:
`
`
`
`
`
`
` /Thomas Engellenner/
`Thomas Engellenner, Reg. No. 28,711
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
`Attorney for Patent Owner
`
`
`
`

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