`571-272-7822
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` Paper 11
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` Entered: March 19, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HUAWEI DEVICE USA, INC. and ZTE, INC.,
`Petitioner,
`
`v.
`
`SPHA AMERICA, LLC,
`Patent Owner.
`____________
`
`Cases IPR2015-00203 (Patent 8,532,231 B2)
`IPR2015-00221 (Patent 8,565,346 B2)1
`____________
`
`Before SALLY C. MEDLEY, BARBARA A. BENOIT, and BETH Z.
`SHAW, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`ORDER
`Patent Owner’s Amended Mandatory Notices
`37 C.F.R. §§ 42.5
`
`
`
`
`
`
`
`
`
`1 This Order addresses issues that are the same in the identified cases. We
`exercise our discretion to issue one Order to be filed in each case. The
`parties are not authorized to use this style heading.
`
`
`
`IPR2015-00203 (Patent 8,532,231)
`IPR2015-00221 (Patent 8,565,346)
`
`
`
`
`
`Petitioner Huawei Device USA, Inc. and ZTE (USA), Inc. filed a
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`Petition requesting an inter partes review in each of the above-identified
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`proceedings. Paper 4.2 SPH America, LLC (“SPH”) filed a Patent Owner
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`Preliminary Response in each of the above-identified proceedings. Paper 9.
`
`SPH also filed an Amended Mandatory Notice (“Notice”) in each
`
`proceeding. Paper 10.
`
`According to the face of the two involved patents, the assignee, or
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`patent owner is Electronics and Telecommunications Research Institute
`
`(“ETRI”). The Notice, however, indicates that SPH is the exclusive licensee
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`of the involved patents and that SPH will conduct the proceedings “on
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`behalf of Patent Owner.” Id. at 1; IPR2015-00221, Paper 10. According to
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`the Notice, Exhibit 2008 is evidence confirming SPH’s authority to conduct
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`the above-identified proceedings on behalf of Patent Owner ETRI. Id.
`
`Exhibit 2008 is a document describing that an exclusive license was
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`granted from ETRI to SPH, including the exclusive right to appoint
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`attorneys and to defend each of the involved patents in the above-identified
`
`proceedings. The document is signed by SPH’s President and ETRI’s
`
`Director.
`
`Based on the record before us, we accept SPH’s showing that it has
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`authority to conduct the proceedings on behalf of ETRI. For purposes of
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`these proceedings SPH is the sole entity authorized to submit papers,
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`evidence, and to otherwise represent or act as Patent Owner. To the extent
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`that ETRI would want to participate in any manner in the proceedings,
`
`
`2 Unless otherwise indicated, citations are to IPR2015-00203.
`
`2
`
`
`
`IPR2015-00203 (Patent 8,532,231)
`IPR2015-00221 (Patent 8,565,346)
`
`
`
`
`
`Patent Owner must initiate a conference call with opposing counsel and the
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`Board. Lastly, although ETRI will not participate in any manner in these
`
`proceedings, ETRI nonetheless would be bound by any judgment adverse to
`
`SPH. See, e.g., 37 C.F.R. § 42.73(d)(3).
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that SPH is authorized to conduct the above-identified
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`proceedings on behalf of Patent Owner;
`
`FURTHER ORDERED that if ETRI wants to participate in the
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`proceedings in any manner, Patent Owner must arrange a conference call
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`with opposing counsel and the Board; and
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`FURTHER ORDERED that although ETRI will not participate in any
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`manner in these proceedings, SPH as well as ETRI, would be bound by any
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`judgment adverse to SPH. See, e.g., 37 C.F.R. § 42.73(d)(3).
`
`
`
`
`
`
`
`3
`
`
`
`IPR2015-00203 (Patent 8,532,231)
`IPR2015-00221 (Patent 8,565,346)
`
`
`
`
`
`For PETITIONER:
`
`Paul Hunter
`Christopher C. Bolten
`Troy D. Smith
`Foley & Lardner LLP
`phunter@foley.com
`cbolten@foley.com
`tdsmith@foley.com
`
`Steven A. Moore
`Richard W. Thill
`Pillsbury Winthrop Shaw Pittman LLP
`steve.moore@pillsburylaw.com
`richard.thill@pillsburylaw.com
`
`For PATENT OWNER:
`
`SPH
`
`Wayne Helge
`Donald Jackson
`Davidson Berquist Jackson & Gowdey L.L.P.
`whelge@dbjg.com
`djackson@dbjg.com
`
`ETRI
`
`HUNTON & WILLIAMS LLP
`INTELLECTUAL PROPERTY DEPARTMENT
`sloftis@hunton.com
`
`
`4
`
`
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