`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`§ Attorney Docket No.:
`United States Patent No.: 8,532,641
`§
`110797-0004-658
`Inventors: Russell W. White,
`§ Customer No. 28120
`Kevin R. Imes
`Formerly Application No.: 13/673,391 § Petitioners:
`Issue Date: Sept. 10, 2013
`§
`Samsung Electronics Co., Ltd.;
`Filing Date: Nov. 9, 2012
`§
`Samsung Electronics America, Inc.
`Priority Date: March 28, 2000
`§
`
`§
`§
`§
`§
`§
`
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`Former Group Art Unit: 2646
`Former Examiner: Erika Washington
`
`
`
`
`For: SYSTEM AND METHOD FOR MANAGING MEDIA
`
`MAIL STOP PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`Post Office Box 1450
`Alexandria, Virginia 22313-1450
`
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`
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`
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`
`
`PETITIONERS’ MOTION FOR JOINDER
`UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b) AND
`REQUEST FOR SHORTENED RESPONSE TIME FOR PATENT
`OWNER’S PRELIMINARY RESPONSE
`
`
`
`Inter Partes Review
`United States Patent No. 8,532,641
`
`I.
`
`RELIEF REQUESTED
`
`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Petitioners Samsung
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`Electronics Co., Ltd. and Samsung Electronics America, Inc. (“Petitioners”) hereby
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`move for joinder of the limited grounds raised in their new Petition for Inter Partes
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`Review (“IPR”) of United States Patent No. 8,532,641 (“the ‘641 patent”)—filed
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`concurrently with this Motion—with the already-instituted IPR for the ‘641 patent,
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`Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. v. Affinity Labs of Texas,
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`LLC (“Affinity”), IPR2014-01184, which involve the same patent, same parties, and
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`overlapping prior art references.
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`In conjunction with this request for joinder, Petitioners respectfully request
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`that the Board specify a shortened response period of six (6) weeks (until April 10,
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`2015) in which Patent Owner Affinity (“Patent Owner”) may file a Preliminary
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`Response to the Petition.
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`II.
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`STATEMENT OF MATERIAL FACTS
`1.
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`On July 28, 2014, Petitioners filed a petition for inter partes review of the
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`‘641 patent for claims 1-3 and 5-14 based on the Ohmura reference in view of the
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`Ahn, Nokia, and/or Galensky references. See IPR2014-01184, Paper 2.1
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`1 On July 28, 2014, Petitioners also filed two other petitions for inter partes review of
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`the ‘641 patent challenging claims 1-3 and 5-14 (IPR2014-01181 and IPR2014-01182)
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`based on different grounds and different prior art references. The Board instituted
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`1
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`Inter Partes Review
`United States Patent No. 8,532,641
`On January 30, 2015 the Board instituted trial in that proceeding on
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`2.
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`claims 8, 11, 13 and 14. See IPR2014-01184, Paper 10 at 15.
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`3.
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`The prior art relied on for the grounds instituted in IPR2014-01184 is
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`Ohmura in view of Ahn and/or Nokia. See IPR2014-01184, Paper 10 at 15.
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`4.
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`The same patent, Petitioners, and Patent Owner are involved in the
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`already-instituted IPR2014-01184 and the new Petition filed concurrently with this
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`Motion, and it is Petitioners’ understanding that the same counsel for each party from
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`the already-instituted IPR will represent Petitioners and Patent Owner in the new
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`Petition proceedings.
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`5.
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`The new Petition challenges claims 1-3, 5-7, 9-10 and 12 (“Challenged
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`Claims”) on prior art grounds. Claims 1-3, 5-7, 9-10 and 12 were challenged in the
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`earlier petition in IPR2014-01184 but were not instituted for trial. See IPR2014-01184,
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`Paper 10 at 13.
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`6.
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`In particular, the new Petition asserts grounds based on 35 U.S.C. § 103
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`for the Challenged Claims using a combination of a new reference, Hu, in view of the
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`for trial in IPR2014-01181, claims 8 and 11-14 (based on the primary prior art
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`reference “Ito”) and in IPR2014-01182, claims 1-3 and 5-14 (based on the primary
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`prior art reference “Abecassis”). See IPR2014-01181, Paper 10 and IPR2014-01182,
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`Paper 10. Petitioners are also concurrently filing a new Petition for inter partes review
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`of claims 1-3, 5-7, 9 and 10 of the ‘641 patent based on the Ito reference.
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`2
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`Inter Partes Review
`United States Patent No. 8,532,641
`secondary prior art references Ahn, Nokia, and/or Galensky (which were previously
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`cited in combination with the Ohmura reference and, as discussed above, Ahn and
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`Nokia form grounds on which trial is instituted in IPR2014-01184). Petitioners were
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`not aware of the Hu reference at the time the earlier IPR2014-01184 petition was filed,
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`and instead located that reference only after the institution decision in IPR2014-01184.
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`7.
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`Petitioners rely in their new Petition on a supporting declaration from
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`the same expert who submitted a declaration in the already-instituted IPR2014-01184.
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`III. DISCUSSION
` The requested joinder will serve to secure the just, speedy, and inexpensive
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`resolution of these proceedings. Under 35 U.S.C. § 315(c):
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`If the Director institutes an inter partes review, the Director, in his or
`her discretion, may join as a party to that inter partes review any person
`who properly files a petition under section 311 that the Director, after
`receiving a preliminary response under section 313 or the expiration of
`the time for filing such a response, determines warrants the institution of
`an inter partes review under section 314.
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`In addition, 37 C.F.R. § 42.122(b) provides that:
`
`Joinder may be requested by a patent owner or petitioner. Any request
`for joinder must be filed, as a motion under §42.22, no later than one
`month after the institution date of any inter partes review for which
`joinder is requested. The time period set forth in § 42.101(b) shall not
`apply when the petition is accompanied by a request for joinder.
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`This Motion is timely under § 42.122(b) because Petitioners are filing it within
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`3
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`Inter Partes Review
`United States Patent No. 8,532,641
`one month after the January 30, 2015 institution date for IPR2014-01184.
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`The Board has further provided that a motion for joinder should: (1) set forth
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`the reasons why joinder is appropriate; (2) identify any new grounds of unpatentability
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`asserted in the petition; (3) explain what impact (if any) joinder would have on the
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`trial schedule of the existing proceeding; and (4) address specifically how briefing and
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`discovery may be simplified. See, e.g., Kyocera Corp. v. Softview LLC, IPR2013-00004,
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`Paper 15 at 4 (Apr. 24, 2013). Analysis of these factors here warrants the Board’s use
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`of its discretion to grant the requested joinder.
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`The existence of several significant similarities between the already-instituted
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`IPR2014-01184 and the new Petition supports application of joinder. The same
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`patent, parties, and counsel are involved in both proceedings. The same expert for
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`Petitioners is involved in both proceedings—and, presumably, Patent Owner may use
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`a common expert in both proceedings. Patent Owner has already responded to, and
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`the Board has already analyzed for institution, prior petitions challenging every claim
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`now at issue in the new Petition, which contain overlapping subject matter with
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`claims already instituted for trial. And Petitioners assert here the same secondary
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`prior art references as in the original petition for which trial has been instituted
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`(IPR2014-01184).
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`Petitioners believed, in submitting their original petitions, that they had made
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`the required showing to invalidate claims 1-3, 5-7, 9-10 and 12 of the ‘641 patent. In
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`its January 30, 2015 Institution Decision, however, the Board determined that
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`4
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`Inter Partes Review
`United States Patent No. 8,532,641
`Petitioners had not shown it was more likely than not that they would prevail in
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`demonstrating that Ohmura in combination with Ahn, Nokia, and/or Galensky
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`rendered obvious claims 1-3, 5-7, 9-10 and 12, finding that “Petitioner has not
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`explained sufficiently why one of ordinary skill in the art would have found it
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`‘beneficial’ or ‘advantageous’ to modify Ohmura’s portable audio apparatus to include
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`Internet connectivity over a cellular connection.” See IPR2014-01184, Paper 10 at 13.
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`While Petitioners respectfully disagree, the Hu reference (Ex. 1301) relied on in the
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`new Petition resolves any concerns that the Board had with respect to Ohmura. The
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`Hu reference was not previously known to Petitioners or presented to the Board in
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`the prior petitions and contains explicit disclosure of the teachings that the Board
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`found absent from the previously-cited art. Specifically, Hu discloses a system for
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`playing music stored in a portable device through a user interface and an audio system
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`within a vehicle. While the system disclosed in Hu shares many of the same features
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`with the system disclosed in Ohmura – such as the ability to wirelessly connect a
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`portable device to a vehicle using Bluetooth, stream music from the device to the
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`vehicle, and control the portable device through the vehicle interface – the portable
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`device in Hu is expressly disclosed to be a cellular telephone that includes Internet connectivity (i.e.,
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`with the ability to download music and receive and send emails over the Internet).
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`Accordingly, Hu provides the teaching in the art that the Board found to be lacking
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`from Ohmura.
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`Given the overlap in subject matter and prior art, the requested joinder
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`5
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`Inter Partes Review
`United States Patent No. 8,532,641
`preserves for the Board and the parties significant efficiencies by permitting these
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`prior art arguments to be addressed in a single proceeding. The proposed schedule
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`would permit the efficient conduct of briefing, discovery and argument on these
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`issues, and enable the Board’s resolution in one proceeding of the invalidity issues
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`presented across these petitions. With particular reference to discovery, Petitioners
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`rely on the same expert in their new Petition as in their original petitions, thus
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`simplifying discovery and making it possible to hold a single deposition of this witness
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`for all proceedings. See, e.g., Ariosa Diagnostics v. Isis Innovation Limited, IPR2013-00250,
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`Paper 24 at 4. Given the overlap in subject matter between the claims challenged in
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`this Petition, the same is likely to be true for any expert testimony offered by Patent
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`Owner. In addition, the new Petition relies on prior art (the Hu reference) that was
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`published after the claimed priority date of March 28, 2000, and the Board in
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`IPR2014-01184 has already addressed the same issue concerning the priority date for
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`claims that include elements common to the Challenged Claims in the new Petition.
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`Given the significant overlap in challenged subject matter (the Challenged Claims in
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`the new Petition have been previously analyzed by the Board and include elements
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`common to the already-instituted claims), prior art issues, and priority date issues,
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`common discovery and briefing will enable both the parties and the Board to preserve
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`efficiencies while addressing all of these issues concerning the ’641 patent.
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`Joinder here need not have any appreciable effect on the trial schedule of the
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`proceedings in the already-instituted IPR2014-01184. Petitioners have attached hereto
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`6
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`Inter Partes Review
`United States Patent No. 8,532,641
`a proposed schedule on which the joined proceeding can move forward without
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`delaying the resolution of the earlier-filed petition, and—as they have indicated to
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`counsel for Patent Owner—Petitioners are amenable to discussing with Patent Owner
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`such further adjustments of the proposed schedule as may be appropriate (e.g., to
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`accommodate schedule concerns and promote efficient resolution).2
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`To accommodate joinder with the pending IPR2014-01184 trial, some
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`compression of the general default schedule for this new Petition will be necessary.
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`Subject to the possibility of negotiating a joint proposal on schedule, Petitioners
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`accordingly request at the outset that the Board provide a shortened period of six (6)
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`weeks (until April 10, 2015) for a Patent Owner Preliminary Response to the new
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`Petition. As reflected in the proposed schedule, Petitioners contemplate that their
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`own periods for response will also be compressed. Given the significant overlap of
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`issues and evidence, however, Petitioners respectfully submit that neither party would
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`need to be unfairly prejudiced by the shortening of these periods from the general
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`timelines provided as a default for entirely new invalidity proceedings. In connection
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`with the Preliminary Response, for example, Patent Owner and its counsel are already
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`quite familiar with—and have already responded to Petitions concerning—the patent
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`2 Counsel for Patent Owner has confirmed that, if the Board determines that joinder
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`is appropriate, Patent Owner agrees that the parties should cooperate with the Board
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`regarding scheduling of the joined proceedings.
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`7
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`Inter Partes Review
`United States Patent No. 8,532,641
`and claims at issue, as well as the secondary prior art references at issue here.
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`IV. CONCLUSION
`For the foregoing reasons, Petitioners respectfully request that the Board grant
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`joinder of trial, if instituted, on the new Petition filed concurrently with this Motion,
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`with the pending trial in IPR2014-01184. In addition, Petitioners respectfully request
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`a shortened period of six (6) weeks (until April 10, 2015) for a Patent Owner
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`Preliminary Response.
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`
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`February 27, 2015
`
`
`Gabrielle E. Higgins (Backup Counsel)
`Reg. No. 38,916
`ROPES & GRAY LLP
`1900 University Avenue – Suite 600
`East Palo Alto, CA 94303
`P: 650-617-4000 /F: 650-617-4090
`gabrielle.higgins@ropesgray.com
`
`Respectfully submitted,
`
`By:/J. Steven Baughman/
`J. Steven Baughman (Lead Counsel)
`Reg. No. 47,414
`ROPES & GRAY LLP
`One Metro Center, 700 12th St. – Ste. 900
`Washington, DC 20005-3948
`P: 202-508-4606 / F: 202-383-8371
`steven.baughman@ropesgray.com
`
`Mailing address for all PTAB correspondence: ROPES & GRAY LLP
`IPRM – Floor 43, Prudential Tower, 800 Boylston Street, Boston, MA 02199-3600
`
`Attorneys for Petitioners, Samsung Electronics Co., Ltd., and Samsung Electronics America, Inc.
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`8
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`Inter Partes Review
`United States Patent No. 8,532,641
`PETITIONERS’ PROPOSED SCHEDULE
`
`
`
`Patent Owner Preliminary
`Response
`Due Date 1
`Patent owner’s response to
`the petition
`
`Patent owner’s motion to
`amend the patent
`Due Date 2
`Petitioner’s reply to patent
`owner’s response to petition
`
`Petitioner’s opposition to
`motion to amend
`Due Date 3
`Patent owner’s reply to
`petitioner’s opposition to
`motion to amend
`Due Date 4
`Motion for observation
`regarding cross-examination
`of reply witness
`
`Motion to exclude evidence
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`Request for oral argument
`Due Date 5
`Response to observation
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`Opposition to motion to
`exclude
`Due Date 6
`Reply to opposition to
`motion to exclude
`Due Date 7
`Oral argument (if requested)
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`Current Schedule in
`IPR2014-01184
`
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`Petitioner’s Proposal for
`Joined Proceeding
`April 10, 2015
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`April 30, 2015
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`July 2, 2015 (assuming
`institution decision circa
`May 8, 2015)
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`July 30, 2015
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`August 27, 2015
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`August 31, 2015
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`September 18, 2015
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`September 21, 2015
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`October 2, 2015
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`October 5, 2015
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`October 9, 2015
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`October 13, 2015
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`October 16, 2015
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`October 28, 2015
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`October 28, 2015
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`9
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`Inter Partes Review
`United States Patent No. 8,532,641
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`§ Attorney Docket No.:
`United States Patent No.: 8,532,641
`§
`110797-0004-658
`Inventors: Russell W. White,
`§ Customer No. 28120
`Kevin R. Imes
`Formerly Application No.: 13/673,391 § Petitioners:
`Issue Date: Sept. 10, 2013
`§
`Samsung Electronics Co., Ltd.;
`Filing Date: Nov. 9, 2012
`§
`Samsung Electronics America, Inc.
`Priority Date: March 28, 2000
`§
`
`§
`§
`§
`§
`§
`
`
`
`
`
`
`
`
`
`Former Group Art Unit: 2646
`Former Examiner: Erika Washington
`
`
`
`
`For: SYSTEM AND METHOD FOR MANAGING MEDIA
`
`MAIL STOP PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`Post Office Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`CERTIFICATE OF SERVICE
`
`It is certified that a copy of Petitioners’ Motion For Joinder Under 35 U.S.C.
`
`§ 315(c) And 37 C.F.R. § 42.122(b) And Request For Shortened Time For Patent
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`Owner’s Preliminary Response, was served on February 27, 2015 by causing the
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`aforementioned document to be deposited in the United States Postal Service as
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`Express Mail postage (EF 070 058 206 US) pre-paid in an envelope addressed to:
`
`TROP, PRUNER & HU, P.C.
`Samuel Epstein
`John Garza
`Dan Hu
`
`
`
`1
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`
`
`Inter Partes Review
`United States Patent No. 8,532,641
`
`Fred Pruner
`Edwin Richards
`Mark Rozman
`Timothy Trop
`1616 S. VOSS ROAD, SUITE 750
`HOUSTON TX 77057-2631
`Attorneys for Patent Owner Affinity Labs of Texas, LLC
`
`
`
`
`
`
`
`By: _/s/ Kathryn N. Hong________
`
`Kathryn N. Hong
`ROPES & GRAY LLP
`
`Mailing address for all PTAB correspondence:
`ROPES & GRAY LLP
`IPRM – Floor 43
`Prudential Tower
`800 Boylston Street
`Boston, MA 02199-3600
`Attorneys for Petitioners
`Samsung Electronics Co., Ltd.,
`Samsung Electronics America, Inc.
`
`
`
`
`
`
`2
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`
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