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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
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`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 IPR2015-00114
`Patent 8,023,580
`___________
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`PETITIONER’S REPLY TO PATENT OWNER’S OPPOSITION
`TO MOTION FOR JOINDER TO RELATED
`INTER PARTES REVIEW
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`
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`
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`Patent Owner Has Affirmatively Taken Steps To Make Scheduling
`
`Reply to Opposition to Motion for Joinder
`U.S. Patent No. 8,023,580
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`TABLE OF CONTENTS
`
`INTRODUCTION ......................................................................................... 1
`I.
`II. ARGUMENT .................................................................................................. 1
`A.
`35 U.S.C. § 315(c) Permits Joinder ....................................................... 1
`B.
`Patent Owner’s “Second Bite At The Apple” Argument ...................... 3
`C.
`Difficult ................................................................................................. 5
`D.
`Patent Owner Will Not Be Prejudiced .................................................. 7
`III. CONCLUSION .............................................................................................. 7
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`i
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`
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`Reply to Opposition to Motion for Joinder
`U.S. Patent No. 8,023,580
`TABLE OF AUTHORITIES
`
`Cases
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`Ali v. Fed. Bureau of Prisons, 552 U.S. 214 (2008) .................................................. 2
`
`Chevron, U.S.A., Inc. v. Natural Res. Def. Council, Inc., 467 U.S. 837 (1984) ........ 2
`
`Eizo Corp. v. Barco N.V., IPR2014-00778, Paper 18 (PTAB Oct. 10, 2014) ........... 1
`
`In re Weiler, 790 F.2d 1576, 1579 (Fed. Cir. 1986) .................................................. 4
`
`Medtronic, Inc. et al. v. Endotach LLC., IPR2014-00695, Paper 18 (PTAB Sept. 25,
`2014) ....................................................................................................................... 2
`
`Microsoft Corp. v. Enfish LLC, IPR2014-00574 Paper 13 (PTAB September 29,
`2014) ....................................................................................................................... 3
`
`Samsung Elecs. Co. Ltd. v. Virginia Innovation Sciences, Inc., IPR2014-00557,
`Paper 10 (PTAB June 13, 2014) ............................................................................. 4
`
`Target Corp. v. Destination Maternity Corp., IPR2014-00508, Paper No. 18
`(PTAB Sept. 25, 2014) .......................................................................................1, 2
`
`Voris v. Eikel, 346 U.S. 328 (1953) ........................................................................... 4
`
`Statutes
`Other Authorities
`Rules
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`35 U.S.C. § 311(a) ..................................................................................................... 2
`
`35 U.S.C. § 315(c) ............................................................................................ 1, 2, 4
`
`77 Fed. Reg. 48,679 ................................................................................................... 3
`
`H.R. Rep. No. 112-98, pt. 1 ....................................................................................... 3
`
`37 C.F.R. § 42.122(b) ................................................................................................ 2
`
`
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`
`
`ii
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`
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`I.
`
`Reply to Opposition to Motion for Joinder
`U.S. Patent No. 8,023,580
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`INTRODUCTION
`Patent Owner opposition does not demonstrate that joinder is inappropriate.
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`First, Patent Owner did not respond to any of Petitioner’s statutory construction
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`arguments, but instead simply cited case law with no analysis. Second, Patent
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`Owner’s ‘second bite at the apple’ argument does not take into account the
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`purposes behind IPR proceedings, which is the efficient disposition of validity
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`challenges. Third, Patent Owner’s complaints regarding delaying the schedule are
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`belied by its actions, which at every step, have been designed to cause delay.
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`Finally, Patent Owner will not be prejudiced by being required to defend the
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`validity of a handful of patent claims, all of which are asserted in litigation.
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`II. ARGUMENT
`A.
`35 U.S.C. § 315(c) Permits Joinder
`Patent Owner’s opposition does not respond to Petitioner’s statutory
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`construction argument (Paper 3, at 10-13) regarding the words of 35 U.S.C. §
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`315(c) stating that “any person who properly files a petition under section 311”
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`may be joined as a party to an existing inter partes review proceeding. Instead,
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`Patent Owner only block quotes from Target Corp. v. Destination Maternity Corp.,
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`IPR2014-00508, Paper No. 18 (PTAB Sept. 25, 2014), and say the case is “clear,
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`persuasive, and consistent with the legislative intent.” Paper 8, at 4. As Patent
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`Owner acknowledges, however, Target is not precedential. Moreover, Target
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`includes a vigorous dissent by two judges on the panel. Patent Owner’s only other
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`authority is Eizo Corp. v. Barco N.V., IPR2014-00778, Paper 18 (PTAB Oct. 10,
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`2014), and Medtronic, Inc. et al. v. Endotach LLC., IPR2014-00695, Paper 18
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`1
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`
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`Reply to Opposition to Motion for Joinder
`U.S. Patent No. 8,023,580
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`(PTAB Sept. 25, 2014). In Medtronic and Eizo, only the concurrences (one written
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`by Target’s author) believed that 35 U.S.C. § 315(c) precluded joinder of a petition
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`filed by a party to an instituted petition.
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`Petitioner respectfully submits that the majority in Target incorrectly
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`interpreted § 315(c). In particular, the Target majority held that the petitioner there
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`could not be “any person” under § 315(c) because the statute “does not refer to the
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`joining of a petition,” but rather “to the joining of a petitioner,” and that therefore
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`petitioner in that case could not be joined to a proceeding in which it is already a
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`party. Target, Paper 18, at 3, 5 & n.2. As Petitioner pointed out in its motion, §
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`315(c) uses the broad phrase “any person who properly files a petition under
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`section 311.” Paper 3 at 10-11. Thus, contrary to the Target majority, § 315(c)
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`does not refer to “joining of a petitioner.” The statutory term “any” used in the §
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`315(c) is extremely broad. See Ali v. Fed. Bureau of Prisons, 552 U.S. 214, 221
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`(2008) (interpreting the use of “any” as “all-encompassing”). Thus, “any person”
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`under § 315(c) does not exclude any one. Where congress sought to exclude “a
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`person,” it did so explicitly: 35 U.S.C. § 311(a) precludes the Patent Owner from
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`filing a Petition against its own patent.
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`Patent Owner also did not respond to Petitioner’s argument regarding the
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`PTO’s interpretation of § 315(c), found in 37 C.F.R. § 42.122(b), stating that
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`“Joinder may be requested by a patent owner or petitioner.” Petitioner respectfully
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`submits that Patent Owner’s silence shows that the PTO’s interpretation is correct.
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`See also Chevron, U.S.A., Inc. v. Natural Res. Def. Council, Inc., 467 U.S. 837,
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`844 (1984). Finally, Petitioner notes that panels since Target have considered the
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`2
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`
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`Reply to Opposition to Motion for Joinder
`U.S. Patent No. 8,023,580
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`merits of a petition when determining whether to grant a joinder motion. See e.g.
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`Microsoft Corp. v. Enfish LLC, IPR2014-00574 Paper 13 (PTAB September 29,
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`2014) (Motion for joinder denied, but not because of statutory preclusion).
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`B.
`Patent Owner’s “Second Bite At The Apple” Argument
`Patent Owner, relying on several PTAB decisions, argues that the Board
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`should exercise its discretion and deny joinder since the claims at issue in the new
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`petition were challenged in the previously filed `518 IPR. While Petitioner
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`acknowledges that several panels have denied institution on this basis, Petitioner
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`respectfully submits that this is not an appropriate reason to deny joinder here.
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`One of the many purposes of the Leahy-Smith America Invents Act (“AIA”)
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`was improving patent quality by addressing “a growing sense,” reflected in various
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`judicial decisions, “that questionable patents are too easily obtained and are too
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`difficult to challenge.” H.R. Rep. No. 112-98, pt. 1, at 39. In an effort “to correct
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`flaws in the [patent] system that have become unbearable, and to accommodate
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`changes in the economy and the litigation practices in the patent realm,” id. at 38-
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`39, the AIA was drafted with attention to “improving patent quality and providing
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`a more efficient system for challenging patents that should not have issued,” as
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`well as “reducing unwarranted litigation costs,” id. at 39-40. To achieve those
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`goals, “the AIA provides,” among other reforms, “more coordination between
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`district court infringement litigation and [IPR] to reduce duplication of efforts and
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`costs.” See 77 Fed. Reg. 48,679, at 48,721 (Aug. 14, 2012) (Final Rule Notice).
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`Thus, the AIA “is remedial in nature, based on fundamental principles of equity
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`and fairness, and should be construed liberally,” In re Weiler, 790 F.2d 1576, 1579
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`3
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`
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`Reply to Opposition to Motion for Joinder
`U.S. Patent No. 8,023,580
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`(Fed. Cir. 1986), “in conformance with its purpose, and in a way which avoids
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`harsh and incongruous results,” see Voris v. Eikel, 346 U.S. 328, 333 (1953).
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`Petitioner respectfully submits that the goals of the AIA in general and IPRs
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`in particular are met by allowing joinder in those cases where the new petition
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`establishes that there is a reasonable likelihood that petitioner will prevail on the
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`challenged clams and, like here, the new petition only challenges claims having
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`minor distinctions from those claims already involved in a trial. See e.g. Samsung
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`Elecs. Co. Ltd. v. Virginia Innovation Sciences, Inc., IPR2014-00557, Paper 10
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`(PTAB June 13, 2014). If this Petition meets this standard, and Petitioner
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`respectfully asserts it does, the goals of the AIA are furthered by instituting a trial,
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`since it will ensure that all questionable claims are reviewed, and cancelled if
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`appropriate. That Petitioner had the benefit of seeing Patent Owner’s preliminary
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`response and the Board’s reasoning behind the decision to deny institution should
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`not be reason for denying joinder. As discussed, a reason Congress passed the
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`AIA and enabled administrative challenges to patents was to provide “a more
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`efficient system for challenging patents that should not have issued.” Petitioner
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`respectfully submits that denying joinder just because an initial challenge was
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`partially unsuccessful goes against congressional intent, especially given the fact
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`that the statute explicitly permits joinder for meritorious petitions filed within one
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`month of institution. See 35 U.S.C. § 315(c).
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`Indeed, joining a petition addressing alleged deficiencies identified in an
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`earlier petition satisfies congressional intent since it ensures that the validity of all
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`the challenged claims are addressed by the PTO, and if appropriate, cancelled.
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`4
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`C.
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`Reply to Opposition to Motion for Joinder
`U.S. Patent No. 8,023,580
`Patent Owner Has Affirmatively Taken Steps To Make
`Scheduling Difficult
`Patent Owner has done everything it can to delay the current proceeding,
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`thereby allowing it to oppose joinder based on alleged scheduling issues. For
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`example, at the October 29, 2014 Board telephone conference where the joinder
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`motion was discussed, Patent Owner resisted the Board’s suggestion that it file its
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`Preliminary Patent Owner’s Response two weeks after the conference. Instead,
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`Patent Owner requested that it be allowed to file one month after the telephone
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`conference, which results in a filing nearly six weeks after the Petition was filed.
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`Patent Owner’s arguments regarding its supposed need to re-depose
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`Petitioner’s expert (Paper 8, at 10-11) are not genuine. Patent Owner deposed
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`Petitioner’s expert in the `518 and `519 IPRs on November 7th, 17 days after
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`October 21st, the date the declaration in the instant proceeding was filed. At that
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`deposition, Patent Owner used only three and half hours of the fourteen it was
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`entitled to for the two IPRs for which the deposition was taken. Although the
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`Patent Owner had plenty time available, it chose not to address any of the claims in
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`the instant petition, but now argues that this same expert will have to be re-deposed
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`in the new proceeding regarding the “40 or more” new paragraphs in his
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`declaration. Paper 8 at 10. By way of comparison, the declarations addressed in
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`the three and a half hour deposition, taken together, include 451 paragraphs.
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`Moreover, during the November 7th deposition, Patent Owner did not ask a
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`single question regarding any claim of the `580 patent. Instead, Patent Owner’s
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`questioning focused solely on (i) construction of one claim term (“at least two
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`types of modulation methods”), (ii) PPM/DQPSK modulation, (iii) the level of
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`5
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`Reply to Opposition to Motion for Joinder
`U.S. Patent No. 8,023,580
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`ordinary skill in the art, and (iv) whether there was motivation to combine Boer
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`(Ex. 1204) with the admitted prior art, issues that are equally applicable to the new
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`petition. Given that Patent Owner had no questions regarding specific claims at
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`issue in the `518 IPR, it is hard to conceive of any questions it might have
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`regarding the claims challenged here.
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`As Petitioner previously pointed out, the new IPR only raises two issues:
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`whether Boer teaches (i) transmission of a subsequent packet, where a header in
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`the second packet indicates that the data in the second packet is modulated with a
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`different type of modulation than in the first packet, and (ii) a transceiver that can
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`receive transmissions from a receiver it previously communicated with, where that
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`receiver both receives and transmits in the first modulation method. Paper 3 at 5-6.
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`Patent Owner does not deny this, asserting instead that a distinction between
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`method and apparatus claims, a claim directed to a “computer-readable storage
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`medium,” and unspecified “additional subject matter” raise a “multitude” of new
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`issues, although no such issues are ever identified. Paper 8 at 12.
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`It is not credible for Patent Owner to argue that its alleged need to re-depose
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`Petitioner’s expert will affect the schedule when it could have questioned the
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`expert on November 7th. Moreover, Patent Owner will re-depose Petitioner’s
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`expert again on November 18th-19th in the litigation. Petitioner respectfully
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`submits that minor scheduling adjustments can be made in the `518 IPR to
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`complete all the proceedings in a reasonable amount of time and to ensure that
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`Petitioner is not given any perceived advantage. Petitioner commits to working
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`with the Board and Patent Owner to formulate an appropriate schedule should
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`6
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`
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`Reply to Opposition to Motion for Joinder
`U.S. Patent No. 8,023,580
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`joinder be ordered, and is willing to shorten its response times accordingly.
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`D.
`Patent Owner Will Not Be Prejudiced
`Patent Owner asserts it is unfair to “continually defend against repetitive
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`challenges” by the same petitioner. Patent Owner, however, voluntarily sued
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`Petitioner, so it should be prepared to defend against validity challenges in
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`whichever forum they occur. Moreover, Patent Owner should not complain about
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`“the sheer number of requests and grounds that Petitioner has already asserted”
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`(Paper 8 at 13) since each are caused by the large number of repetitive claims
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`Patent Owner prosecuted in the PTO and is now asserting in litigation. Regardless,
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`the instant petition does not harass Patent Owner, as it suggests in Paper 8, at 13,
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`since it is already responding to challenges regarding similar claims and the same
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`prior art in the `518 IPR.
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`The only prejudice here is to Petitioner and the public should joinder be
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`denied since Petitioner will be forced to deal with the challenged claims in court
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`while the public will be forced to deal with them when Patent Owner, a “Patent
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`Infringement Solutions” vendor that develops “tailored enforcement strategy” (See
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`www.rembrandtip.com/about.php), sues another manufacturer using the accused
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`Bluetooth standard. Petitioner respectfully submits that all parties, Petitioners, the
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`PTAB (who can deal with this challenge while familiar with the patent and the
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`prior art since both are at issue in the `518 IPR), the public, and even the Patent
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`Owner, will be best served by instituting trial and joining it to the `518 IPR.
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`III. CONCLUSION
`Petitioner respectfully requests that its motion for joinder be granted.
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`7
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`Dated: November 18, 2014
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`Reply to Opposition to Motion for Joinder
`U.S. Patent No. 8,023,580
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`Respectfully submitted,
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`/s/ Jeffrey A. Miller
`
`Jeffrey A. Miller
`Registration No. 35,287
`DICKSTEIN SHAPIRO LLP
`1841 Page Mill Road
`Palo Alto, CA 94305
`Tel.: (650) 690-9500
`Counsel for Petitioners
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`8
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`Reply to Opposition to Motion for Joinder
`U.S. Patent No. 8,023,580
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that a copy of the foregoing Petitioner’s Reply To
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`Patent Owner’s Opposition To Motion For Joinder To Related Inter Partes Review
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`is being served on counsel of record by filing this document through the Patent
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`Review Processing System as well as delivering a copy via email to:
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`
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`Thomas Engellenner (engellet@pepperlaw.com)
`Reza Mollaaghababa (mollaagr@pepperlaw.com)
`Lana Gladstein (gladstel@pepperlaw.com)
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
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`Respectfully submitted,
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`Dated: November 18, 2014
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`:
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`/s/ Jeffrey A. Miller
`Jeffrey A. Miller
`Registration No. 35,287
`DICKSTEIN SHAPIRO LLP
`1841 Page Mill Road
`Palo Alto, CA 94305
`Tel.: (650) 690-9500
`Counsel for Petitioners
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`1
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