`Date: September 15, 2015
`
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`E-WATCH, INC.,
`Patent Owner.
`_______________
`
`Case IPR2015-00412
`Patent 7,365,871 B2
`_______________
`
`Before JAMESON LEE, GREGG I. ANDERSON, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2015-00412
`Patent 7,365,871 B2
`
`
`
`
`
`Introduction
`A telephone conference call was held on September 11, 2015. The
`
`participants were Judges Lee, Anderson, and Clements, counsel for
`respective parties (“Apple” as Petitioner and “e-Watch” as Patent Owner) in
`this proceeding, and counsel for respective parties in IPR2015-01366
`(“ZTE” as Petitioner and “e-Watch” as Patent Owner). The subject of
`discussion is ZTE’s Motion for Joinder (Paper 3), filed on June 9, 2015, in
`IPR2015-01366, which seeks to have that proceeding, once instituted, joined
`with this proceeding. e-Watch did not file an opposition.
`Discussion
`Counsel for e-Watch explained that so long as all substantive
`
`differences, if any, between the petition in IPR2015-01366 and the petition
`in this proceeding, considering the latter as base document, are disregarded
`after institution of trial in IPR2015-01366, and if reliance by Petitioner on its
`expert witness in IPR2015-01366 is withdrawn after institution of trial, e-
`Watch does not oppose joinder and would not need to file a Patent Owner
`Response in IPR2015-01366.
`
`Counsel for Apple represented that so long as the only participation
`accorded ZTE is the opportunity to continue as Petitioner if Apple were to
`reach settlement with e-Watch, Apple does not oppose joinder. It was
`understood that if there will be such a joined proceeding, Apple will not be
`relying on ZTE’s petition or ZTE’s witness Tim A. Williams from IPR2015-
`01366. If that understanding is incorrect, Apple shall initiate a conference
`call with the Board no later than two business days after the date of this
`communication.
`
`2
`
`
`
`
`
`
`IPR2015-00412
`Patent 7,365,871 B2
`
`
`Counsel for ZTE represented (1) that if joinder is granted, it agrees to
`
`have no participation in the joined proceeding except for the opportunity to
`continue as petitioner in the joined proceeding, (2) that if trial is instituted in
`IPR2015-01366 and joinder with this proceeding is granted, it would
`withdraw all reliances on the declaration testimony of Tim A. Williams (Ex.
`1002), and (3) that if trial is instituted and joinder with this proceeding is
`granted, it would withdraw all arguments from its petition in IPR2015-01366
`and rely, instead, on the petition filed by Apple in this proceeding.
`
`Counsel for ZTE further represents that although the words of ZTE’s
`petition in IPR2015-01366 are not the same as the words of Apple’s petition
`in this proceeding, ZTE’s petition is not substantively different from Apple’s
`petition, with regard to all grounds raised in ZTE’s petition. Counsel for
`ZTE also represents that although the words of the declaration of Tim A.
`Williams relied on in ZTE’s petition in IPR2015-01366 are not the same as
`the words in the declaration of Steven J. Sasson relied on in Apple’s petition
`in this proceeding, the two declarations are the same in substance, with
`regard to all grounds asserted in the ZTE petition.
`Conclusion
`The positions of the parties with regard to the joinder issue have been
`
`presented and will be considered in the Board’s rendering of a decision on
`ZTE’s Motion for Joinder in IPR2015-01366.
`
`
`
`3
`
`
`
`
`IPR2015-00412
`Patent 7,365,871 B2
`
`FOR PETITIONER:
`
`
`
`
`
`Brian Buroker
`Blair Silver
`Gibson, Dunn & Crutcher LLP
`bburoker@gibsondunn.com
`bsilver@gibsondunn.com
`
`FOR PATENT OWNER:
`Robert C. Curfiss
`bob@curfiss.com
`
`David O. Simmons
`IVC Patent Agency
`dsimmons1@sbcglobal.net
`
`Gregory S. Donahue
`DiNovo Price Ellwanger & Hardy, LLP
`gdonahue@dpelaw.com
`
`FOR PETITIONER IN IPR2015-01366:
`
`Steve A. Moore
`Richard W. Thill
`Barry K. Shelton
`Brian Nash
`Pillsbury Law LLP
`steve.moore@pillsburylaw.com
`richard.thill@pillsburylaw.com
`barry.shelton@pillsburylaw.com
`brian.nash@pillsburylaw.com
`
`4
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