Paper No. __
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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. 7,365,871
`____________________
`
`MOTION FOR JOINDER
`
`
`
`
`
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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. 7,365,871
`____________________
`
`MOTION FOR JOINDER
`
`
`
`Motion for Joinder - Patent No. 7,365,871
`
`
`TABLE OF AUTHORITIES .................................................................................... ii
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`Introduction ...................................................................................................... 1
`
`Background ...................................................................................................... 1
`
`III. Argument ......................................................................................................... 2
`
`A.
`
`B.
`
`C.
`
`Legal Standard ....................................................................................... 2
`
`Petitioner’s Motion for Joinder Is Timely ............................................. 3
`
`The Relevant Factors Weigh in Favor of Joinder ................................. 3
`
`1.
`
`2.
`
`3.
`
`4.
`
`Joinder Is Appropriate ................................................................. 4
`
`No New Grounds Are Presented ................................................. 5
`
`Joinder Will Not Negatively Impact the Schedule of the
`Apple IPR .................................................................................... 6
`
`Discovery and Briefing Can Be Simplified ................................ 7
`
`IV. Conclusion ....................................................................................................... 8
`
`
`
`
`
`i
`
`
`
`Motion for Joinder - Patent No. 7,365,871
`
`
`
`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
`
`37 C.F.R. § 42.122(b) ................................................................................................ 3
`
`
`
`
`
`ii
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`
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`Motion for Joinder - Patent No. 7,365,871
`
`
`I.
`
`Introduction
`
`Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
`
`(collectively, “Petitioner”) submits concurrently herewith a petition for inter partes
`
`review (the “Petition”) of claims 1-15 of U.S. Patent No. 7,365,871 (“the ’871
`
`patent”), which is assigned to e-Watch, Inc. (“Patent Owner”). Petitioner
`
`respectfully requests that this proceeding be joined with a pending inter partes
`
`review initiated by Apple Inc. (“Apple”), i.e., Apple Inc. v. e-Watch, Inc.,
`
`IPR2015-00411 (hereinafter “Apple IPR”).
`
`Petitioner’s request for joinder is timely because the Board has not yet
`
`issued an institution decision in the Apple IPR. The Petition is also narrowly
`
`tailored to the ground of unpatentability that is subject of the Apple IPR, and in
`
`fact is practically a copy of Apple’s petition with respect to the proposed ground,
`
`including the same analysis and expert testimony. In addition, joinder is
`
`appropriate because it will efficiently resolve the validity of the challenged claims
`
`of the ’871 patent in a single proceeding, without prejudicing the parties to the
`
`Apple IPR. In such circumstances, the Board has routinely granted joinder, and
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`therefore should grant joinder here as well.
`
`II. Background
`In 2013, Patent Owner filed ten lawsuits asserting the ’871 patent against
`
`different defendants, including Samsung Electronics Co., Ltd. and Samsung
`
`
`
`1
`
`
`
`Motion for Joinder - Patent No. 7,365,871
`
`
`Telecommunications America, LLC.1 See Case Nos. 2:13-cv-01062, -01061,
`
`-01063, -01064, -01069, -01070, -01071, -01072, -01073, -01074, -01075, -01076,
`
`-01077, -01078.
`
`On December 11, 2014, Apple filed a petition for inter partes review
`
`challenging all claims of the ’871 patent (i.e., claims 1-15) (IPR2015-00411).2 See
`
`Ex. 1006. The Board has not yet issued an institution decision in IPR2015-00411.
`
`The Petition raises only the ground of unpatentability that is subject of the
`
`Apple IPR, and in fact is practically a copy of Apple’s petition with respect to the
`
`adopted ground, including the same analysis and expert testimony. See Pet.
`
`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.
`
`
`1 Effective January 1, 2015, Samsung Telecommunications America, LLC (“STA”)
`
`merged into Samsung Electronics America, Inc., and STA ceased to exist as a
`
`separate corporate entity.
`
`2 Other petitions for inter partes review of the ’871 patent have also been filed, two
`
`of which has been instituted. See IPR2014-00439, IPR2014-00987, IPR2015-
`
`00402, IPR2015-00404, IPR2015-00406, IPR2015-00411, IPR2015-00412,
`
`IPR2015-00413, IPR2015-00541.
`
`
`
`2
`
`
`
`Motion for Joinder - Patent No. 7,365,871
`
`§ 315(c). A motion for joinder must be filed within one month of institution of any
`
`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
`
`joined has presented any new grounds of unpatentability; (3) what impact, if any,
`
`joinder would have on the trial schedule for the existing review; and (4) how
`
`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)
`
`(quoting Kyocera Corporation v. Softview LLC, IPR2013-00004, Paper 15 at 4
`
`(April 24, 2013)).
`
`Petitioner’s Motion for Joinder Is Timely
`
`B.
`Joinder may be requested no later than one month after the institution date of
`
`an inter partes review for which joinder is requested. 37 C.F.R. § 42.122. Here,
`
`because the Board has not yet issued an institution decision in the Apple IPR, this
`
`motion for joinder is timely.
`
`C. The Relevant Factors Weigh in Favor of Joinder
`Each of the four factors considered by the Board weighs in favor of joinder.
`
`As discussed below, granting joinder will not enlarge the scope of the Apple IPR
`
`and will not negatively impact the Apple IPR schedule, but a decision denying
`
`
`
`3
`
`
`
`joinder could severely prejudice Petitioner. Thus, joinder is appropriate and
`
`Motion for Joinder - Patent No. 7,365,871
`
`
`warranted.
`
`Joinder Is Appropriate
`
`1.
`Joinder with the Apple IPR is appropriate because the Petition is not only
`
`limited to the same ground at issue in the Apple IPR, but also relies on the same
`
`analysis and expert testimony submitted by Apple. Indeed, the Petition is virtually
`
`identical with respect to the ground raised in Apple’s petition.3 Petitioner did not
`
`include any ground or raise any issue that was not raised in Apple’s petition.
`
`Joinder is also appropriate because it will promote the efficient
`
`determination of validity of the challenged claims of the ’871 patent. For example,
`
`a final written decision on the validity of the ’871 patent has the potential to
`
`minimize issues in the underlying litigations, and potentially resolve the litigations
`
`altogether with respect to the ’871 patent. Absent joinder, if Patent Owner and
`
`Apple settle, Petitioner may be forced to start over in district court with the same
`
`arguments on which Apple has already shown it is reasonably likely to prevail,
`
`which would be a waste of judicial resources. In addition, if the Board institutes an
`
`inter partes review of the ’871 patent based on Apple’s petition and a separate
`
`inter partes review of the ’871 patent based on the Petition, the Board would be
`
`3 As discussed further below, the petitions differ only in that the Petition applies a
`
`claim construction adopted by the Board in IPR2014-00987. See Ex. 1007 at 5-7.
`
`
`
`4
`
`
`
`Motion for Joinder - Patent No. 7,365,871
`
`
`required to determine the same issues in multiple proceedings. This would
`
`duplicate efforts and create a risk of inconsistent results.
`
`Moreover, granting joinder will not prejudice Patent Owner or Apple, while
`
`Petitioner could be prejudiced if joinder is denied. As mentioned above, the
`
`Petition does not raise any issue that is not raised in Apple’s petition. In addition,
`
`the Board has not yet issued an institution decision in the Apple IPR. Therefore,
`
`joinder should not affect the timing of the Apple IPR or the content of Patent
`
`Owner’s preliminary response. Also, there should not be any additional cost to
`
`Patent Owner or Apple given the overlap in the petitions. On the other hand,
`
`Petitioner would be potentially prejudiced if joinder is denied. For example,
`
`absent joinder, Patent Owner may attempt to use aspects of the Apple IPR against
`
`Petitioner in district court, even though Petitioner was not able to participate in the
`
`Apple IPR to protect its interests.
`
`No New Grounds Are Presented
`
`2.
`The Petition does not present any new ground of unpatentability. As
`
`mentioned above, the Petition presents only the ground raised in Apple’s petition,
`
`and is based on the same analysis and expert testimony submitted by Apple. The
`
`petitions differ only in that the Petition applies a claim construction adopted by the
`
`Board in IPR2014-00987. See Ex. 1007 at 5-7. This difference, however, does not
`
`
`
`5
`
`
`
`introduce new issues, because the analysis copied from Apple’s petition meets the
`
`Motion for Joinder - Patent No. 7,365,871
`
`
`Board’s construction.
`
`3.
`
`Joinder Will Not Negatively Impact the Schedule of the
`Apple IPR
`
`Because the Petition, which is being filed prior to an institution decision in
`
`IPR2015-00411, copies the ground raised in Apple’s petition, including the
`
`analysis and expert testimony provided by Apple, it will not introduce any
`
`additional arguments, briefing, or need for discovery. Therefore, joinder will not
`
`impact the Board’s ability to determine whether trial should be instituted or issue a
`
`final written decision in a timely manner. 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), 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).
`
`Moreover, because the Board has not yet issued an institution decision in the
`
`Apple IPR, there is currently no schedule governing the Apple IPR. Accordingly,
`
`if the Board institutes a joined trial, the Board can set a single schedule governing
`
`
`
`6
`
`
`
`the joined proceedings, which would substantially minimize any burden on the
`
`Motion for Joinder - Patent No. 7,365,871
`
`
`Board and the parties.
`
`Discovery and Briefing Can Be Simplified
`
`4.
`Given the Petition is practically identical to Apple’s petition with respect to
`
`the ground of unpatentability raised in Apple’s petition, the Board may adopt
`
`procedures similar to those used in related cases to simplify briefing and discovery
`
`during trial. See e.g., Hyundai, IPR2014-01543, Paper No. 11 at 5; Dell, IPR2013-
`
`00385, Paper No. 17 at 8-10; Motorola, IPR2013-00256, Paper 10 at 8-10.
`
`Specifically, the Board may order petitioners to consolidate filings, and Petitioner
`
`is willing to be limited to separate filings, if any, of a reasonable number of pages
`
`(e.g., seven pages) directed only to points of disagreement with Apple with the
`
`understanding that it will not be permitted any separate arguments in furtherance of
`
`those advanced in Apple’s consolidated filings. See e.g., Hyundai, IPR2014-
`
`01543, Paper No. 11 at 5. Further, no additional depositions will be needed and
`
`depositions will be completed within ordinary time limits. Id. Moreover,
`
`Petitioner will coordinate with Apple to consolidate filings, manage questioning at
`
`depositions, manage presentations at the hearing, ensure that briefing and
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`discovery occur within the time normally allotted, and avoid redundancies. These
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`procedures should simplify briefing and discovery.
`
`
`
`7
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`
`
`Motion for Joinder - Patent No. 7,365,871
`
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`IV. Conclusion
`For the foregoing reasons, Petitioner respectfully requests that this motion be
`
`granted and that this proceeding be joined with the Apple IPR.
`
`Dated: January 23, 2015
`
`
`
`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.
`
`
`
`
`8
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`
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`Motion for Joinder - Patent No. 7,365,871
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this 23rd day of January 2015, a copy of the
`
`foregoing Motion for Joinder was served by express mail on the Patent Owner at
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`the following correspondence address of record for the subject patent:
`
`Robert C. Curfiss
`Law Office of Robert Curfiss
`19826 Sundance Drive
`Humble, TX 77346-1402
`
`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:
`
`Christopher V. Goodpastor
`DiNovo Price Ellwanger & Hardy LLP
`7000 North MoPac Expressway
`Suite 350
`Austin, TX 78731
`
`
`Respectfully submitted,
`
`By: /Steven L. Park/
` Steven L. Park (Reg. No. 47,842)
`
` Counsel for Samsung Electronics Co., Ltd.
` and Samsung Electronics America, Inc.
`
`
`
`Dated: January 23, 2015
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`
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`
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