Paper No. __
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`Filed on behalf of: Samsung Electronics Co., Ltd. and
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`
`
`Samsung Electronics America, Inc.
`
`By:
`Steven L. Park (stevenpark@paulhastings.com)
`Naveen Modi (naveenmodi@paulhastings.com)
`Elizabeth L. Brann (elizabethbrann@paulhastings.com)
`Paul Hastings LLP
`
`
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioner
`
`v.
`
`E-WATCH, INC.
`Patent Owner
`
`____________________
`
`Patent No. 7,643,168
`____________________
`
`MOTION FOR JOINDER
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`
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`
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`Filed on behalf of: Samsung Electronics Co., Ltd. and
`
`
`
`Samsung Electronics America, Inc.
`
`By:
`Steven L. Park (stevenpark@paulhastings.com)
`Naveen Modi (naveenmodi@paulhastings.com)
`Elizabeth L. Brann (elizabethbrann@paulhastings.com)
`Paul Hastings LLP
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioner
`
`v.
`
`E-WATCH, INC.
`Patent Owner
`
`____________________
`
`Patent No. 7,643,168
`____________________
`
`MOTION FOR JOINDER
`
`
`
`Motion for Joinder - Patent No. 7,643,168
`
`
`TABLE OF AUTHORITIES .................................................................................... ii
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`TABLE OF CONTENTS
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`I.
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`II.
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`Introduction ...................................................................................................... 1
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`Background ...................................................................................................... 2
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`III. Argument ......................................................................................................... 3
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`A.
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`B.
`
`C.
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`Legal Standard ....................................................................................... 3
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`Petitioner’s Motion for Joinder Is Timely ............................................. 3
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`The Relevant Factors Weigh in Favor of Joinder ................................. 3
`
`1.
`
`2.
`
`3.
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`4.
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`Joinder Is Appropriate ................................................................. 4
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`No New Grounds Are Presented ................................................. 5
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`Joinder Will Not Negatively Impact the HTC IPR Trial
`Schedule ...................................................................................... 6
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`Discovery and Briefing Can Be Simplified ................................ 6
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`IV. Conclusion ....................................................................................................... 8
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`
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`i
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`Motion for Joinder - Patent No. 7,643,168
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`
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Dell Inc. v. Network-1 Solutions, Inc.,
`IPR2013-00385, Paper No. 17 (Jul. 29, 2013) ................................................. 6, 7
`
`Hyundai Motor Co. v. Am. Vehicular Sciences LLC,
`IPR2014-01543, Paper No. 11 (Oct. 24, 2014) ............................................ 3, 6, 7
`
`Macronix Int’l Co. v. Spansion,
`IPR2014-00898, Paper 15 (Aug. 13, 2014) .......................................................... 3
`
`Motorola Mobility LLC v. Softview LLC,
`IPR2013-00256, Paper 10 (June 20, 2013) ....................................................... 6, 7
`
`Sony Corp. of Am. v. Network-1 Sec. Solutions, Inc.,
`IPR2013-00495, Paper No. 13 (Sep. 16, 2013) .................................................... 6
`
`Federal Statutes
`
`35 U.S.C. § 103 .......................................................................................................... 2
`
`35 U.S.C. § 315(c) ..................................................................................................... 3
`
`35 U.S.C. § 316(a)(11) ............................................................................................... 6
`
`Regulations
`
`37 C.F.R. § 42.100(c) ................................................................................................. 6
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`37 C.F.R. § 42.122(b) ................................................................................................ 3
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`
`
`
`
`ii
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`
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`Motion for Joinder - Patent No. 7,643,168
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`I.
`
`Introduction
`
`Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
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`(collectively, “Petitioner”) submits concurrently herewith a petition for inter partes
`
`review (the “Petition”) of claims 1-6, 8, 10-11, 13-18, 21-29, and 31 of U.S. Patent
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`No. 7,643,168 (“the ’168 patent”), which is assigned to e-Watch, Inc. (“Patent
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`Owner”). Petitioner respectfully requests that this proceeding be joined with a
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`pending inter partes review initiated by HTC Corporation and HTC America, Inc.
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`(“HTC”), i.e., HTC Corp. v. e-Watch, Inc., IPR2014-00989 (hereinafter “HTC
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`IPR”).
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`Petitioner’s request for joinder is timely because it is being filed within one
`
`month of the institution of the HTC IPR. The Petition is also narrowly tailored to
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`the grounds of unpatentability that are subject of the HTC IPR, and in fact is
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`practically a copy of HTC’s petition with respect to the adopted grounds, including
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`the same analysis and expert testimony. In addition, joinder is appropriate because
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`it will efficiently resolve the validity of the challenged claims of the ’168 patent in
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`a single proceeding, without prejudicing the parties to the HTC IPR. In such
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`circumstances, the Board has routinely granted joinder, and therefore should grant
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`joinder here as well.
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`
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`1
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`Motion for Joinder - Patent No. 7,643,168
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`II. Background
`In 2013, Patent Owner filed ten lawsuits asserting the ’168 patent against
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`different defendants, including Samsung Electronics Co., Ltd. and Samsung
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`Telecommunications America, LLC.1 See Case Nos. 2:13-cv-01062, -01061, -
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`01063, -01064, -01069, -01070, -01071, -01072, -01073, -01074, -01075, -01076,
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`-01077, -01078.
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`On June 19, 2014, HTC filed a petition for inter partes review challenging
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`the claims of the ’168 patent asserted against HTC in district court (i.e., claims 1-6,
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`8, 10-11, 13-18, 21-29, and 31) (IPR2014-00989).2 See Ex. 1009. On December
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`9, 2014, the Board instituted trial for claims 1-6, 8, 10-11, 13-18, 21-29, and 31
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`based on the four grounds raised in HTC’s petition. Ex. 1010 at 10-23.
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`The Petition raises only the grounds of unpatentability that are subject of the
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`HTC IPR, and in fact is practically a copy of HTC’s petition with respect to the
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`adopted grounds, including the same analysis and expert testimony. See Pet.
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`1 Effective January 1, 2015, Samsung Telecommunications America, LLC (“STA”)
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`merged into Samsung Electronics America, Inc., and STA ceased to exist as a
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`separate corporate entity.
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`2 Other entities have also filed petitions for inter partes review of the ’168 patent,
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`one of which has been instituted. See IPR2015-00401, IPR2015-00407, IPR2015-
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`00408, and IPR2015-00414.
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`
`
`2
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`
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`Motion for Joinder - Patent No. 7,643,168
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`III. Argument
`A. Legal Standard
`The Board has authority to join as a party any person who properly files a
`
`petition for inter partes review to an instituted inter partes review. 35 U.S.C.
`
`§ 315(c). A motion for joinder must be filed within one month of institution of any
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`inter partes review for which joinder is requested. 37 C.F.R. § 42.122(b). In
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`deciding whether to grant a motion for joinder, the Board considers several factors
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`including: (1) the reasons why joinder is appropriate; (2) whether the party to be
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`joined has presented any new grounds of unpatentability; (3) what impact, if any,
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`joinder would have on the trial schedule for the existing review; and (4) how
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`briefing and discovery may be simplified. See, e.g., Hyundai Motor Co. v. Am.
`
`Vehicular Sciences LLC, IPR2014-01543, Paper No. 11 at 3 (Oct. 24, 2014);
`
`Macronix Int’l Co. v. Spansion, IPR2014-00898, Paper 15 at 4 (Aug. 13, 2014)
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`(quoting Kyocera Corporation v. Softview LLC, IPR2013-00004, Paper 15 at 4
`
`(April 24, 2013)).
`
`Petitioner’s Motion for Joinder Is Timely
`
`B.
`This motion is timely because it is filed within one month of December 9,
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`2014, the institution date of the HTC IPR. See Ex. 1010.
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`C. The Relevant Factors Weigh in Favor of Joinder
`Each of the four factors considered by the Board weighs in favor of joinder.
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`As discussed below, granting joinder will not enlarge the scope of the HTC IPR
`3
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`Motion for Joinder - Patent No. 7,643,168
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`and will not negatively impact the HTC IPR schedule, but a decision denying
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`joinder could severely prejudice Petitioner. Thus, joinder is appropriate and
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`warranted.
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`Joinder Is Appropriate
`
`1.
`Joinder with the HTC IPR is appropriate because the Petition is not only
`
`limited to the same grounds adopted by the Board in the HTC IPR, but also relies
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`on the same analysis and expert testimony submitted by HTC. Indeed, the Petition
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`is virtually identical to HTC’s petition with respect to the grounds adopted by the
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`Board.3 Petitioner did not include any grounds or raise any issues that were not
`
`adopted by the Board.
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`Joinder is also appropriate because it will promote the efficient
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`determination of validity of the challenged claims of the ’168 patent. For example,
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`a final written decision on the validity of the ’168 patent has the potential to
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`minimize issues in the underlying litigations, and potentially resolve the litigations
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`altogether with respect to the ’168 patent. Absent joinder, if Patent Owner and
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`3 The petitions differ only in that the Petition applies claim constructions adopted
`
`by the Board in the HTC IPR. See Ex. 1010 at 6-8. This difference, however, does
`
`not introduce new issues, because the analysis copied from HTC’s petition meets
`
`the Board’s construction, as evidence by the Board’s institution of trial in the HTC
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`IPR. See id. at 5-11.
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`
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`4
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`
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`Motion for Joinder - Patent No. 7,643,168
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`HTC settle, Petitioner may be forced to start over in district court with the same
`
`arguments on which HTC has already shown it is reasonably likely to prevail,
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`which would be a waste of judicial resources. In addition, institution of a separate
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`inter partes review of the ’168 patent for Petitioner based on the same grounds that
`
`are subject of the HTC IPR would require the Board to determine the same issues
`
`in multiple proceedings. This would duplicate efforts and create a risk of
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`inconsistent results.
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`Moreover, granting joinder will not prejudice Patent Owner or HTC, while
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`Petitioner could be prejudiced if joinder is denied. As mentioned above, the
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`Petition does not raise any issue that is not already before the Board. Therefore,
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`joinder should not affect the timing of the HTC IPR or the content of Patent
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`Owner’s response. Also, there should not be any additional cost to Patent Owner
`
`or HTC given the overlap in the petitions. On the other hand, Petitioner would be
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`potentially prejudiced if joinder is denied. For example, absent joinder, Patent
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`Owner may attempt to use aspects of the HTC IPR against Petitioner in district
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`court, even though Petitioner was not able to participate in the HTC IPR to protect
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`its interests.
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`No New Grounds Are Presented
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`2.
`The Petition does not present any new ground of unpatentability. As
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`mentioned above, the Petition presents only the grounds already adopted by the
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`
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`5
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`
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`Board in the HTC IPR, and is based on the same analysis and expert testimony
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`Motion for Joinder - Patent No. 7,643,168
`
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`submitted by HTC.
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`3.
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`Joinder Will Not Negatively Impact the HTC IPR Trial
`Schedule
`
`Because the Petition copies the grounds from HTC’s petition that were
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`adopted by the Board, including the analysis and expert testimony provided by
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`HTC, joinder will not impact the Board’s ability to complete its review in a timely
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`manner, as it will not introduce any additional arguments, briefing, or need for
`
`discovery. In such circumstances, the Board has routinely granted joinder. See,
`
`e.g., Hyundai, IPR2014-01543, Paper No. 11 at 2-4; Sony Corp. of Am. v. Network-
`
`1 Sec. Solutions, Inc., IPR2013-00495, Paper No. 13 at 5-9 (Sep. 16, 2013); Dell
`
`Inc. v. Network-1 Solutions, Inc., IPR2013-00385, Paper No. 17, at 6-10 (Jul. 29,
`
`2013); Motorola Mobility LLC v. Softview LLC, IPR2013-00256, Paper 10 at 4-10
`
`(June 20, 2013). Even if the Board were to determine that joinder would require a
`
`modest extension of the schedule (Petitioner does not believe one is necessary),
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`such an extension is permitted by law and is not a reason for denying joinder. 35
`
`U.S.C. § 316(a)(11); 37 C.F.R. § 42.100(c).
`
`Discovery and Briefing Can Be Simplified
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`4.
`Since the Petition is practically identical to HTC’s petition with respect to
`
`the instituted grounds of unpatentability, the Board may adopt procedures similar
`
`to those used in related cases to simplify briefing and discovery. See e.g.,
`
`
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`6
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`Motion for Joinder - Patent No. 7,643,168
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`Hyundai, IPR2014-01543, Paper No. 11 at 5; Dell, IPR2013-00385, Paper No. 17
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`at 8-10; Motorola, IPR2013-00256, Paper 10 at 8-10. Specifically, the Board may
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`order petitioners to consolidate filings, and Petitioner is willing to be limited to
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`separate filings, if any, of a reasonable number of pages (e.g., seven pages)
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`directed only to points of disagreement with HTC with the understanding that it
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`will not be permitted any separate arguments in furtherance of those advanced in
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`HTC’s consolidated filings. See e.g., Hyundai, IPR2014-01543, Paper No. 11 at 5.
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`Further, no additional depositions will be needed and depositions will be
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`completed within ordinary time limits. Id. Moreover, Petitioner will coordinate
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`with HTC to consolidate filings, manage questioning at depositions, manage
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`presentations at the hearing, ensure that briefing and discovery occur within the
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`time normally allotted, and avoid redundancies. These procedures should simplify
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`briefing and discovery.
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`7
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`Motion for Joinder - Patent No. 7,643,168
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`IV. Conclusion
`For the foregoing reasons, Petitioner respectfully requests that this motion be
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`granted and that this proceeding be joined with the HTC IPR.
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`Dated: January 7, 2015
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`
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`Respectfully submitted,
`
`By: /Steven L. Park/
` Steven L. Park (Reg. No. 47,842)
` Naveen Modi (Reg. No. 46,224)
` Elizabeth L. Brann (Reg. No. 63,987)
`
` Counsel for Samsung Electronics Co., Ltd.
` and Samsung Electronics America, Inc.
`
`
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`8
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`Motion for Joinder - Patent No. 7,643,168
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 7th day of January 2015, a copy of the foregoing
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`Motion for Joinder was served by express mail on the Patent Owner at the
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`following correspondence address of record for the subject patent:
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`Moore Landrey
`1609 Shoal Creek, Blvd.
`Suite 100
`Austin, TX 78701
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`In addition, a courtesy copy of the foregoing Motion for Joinder was served
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`by express mail on Patent Owner’s litigation counsel at the following address:
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`Christopher Goodpastor
`Watts Guerra LLP
`811 Barton Springs Road, Suite 725
`Austin, Texas 78704
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`Respectfully submitted,
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`By: /Steven L. Park/
` Steven L. Park (Reg. No. 47,842)
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` Counsel for Samsung Electronics Co., Ltd.
` and Samsung Electronics America, Inc.
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`
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`Dated: January 7, 2015
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