IPR2015-00820
`United States Patent No. 8,532,641
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`
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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.,
`Petitioners,
`
`
`v.
`
`AFFINITY LABS OF TEXAS, LLC
`Patent Owner
`____________
`
`Case IPR2015-00820
`Patent 8,532,641
`____________
`
`Before the Honorable KEVIN F. TURNER, LYNNE E. PETTIGREW, and
`JON B. TORNQUIST, Administrative Patent Judges.
`
`PETITIONERS’ REPLY IN SUPPORT OF
`THEIR MOTION FOR JOINDER
`UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b)
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`
`

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`IPR2015-00820
`United States Patent No. 8,532,641
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`TABLE OF AUTHORITIES
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`Page(s)
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`CASES
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`Abb Inc. v.Roy-G-Biv Corp.,
`Case IPR2013-00282, Paper 15 (Aug. 9, 2013) .............................................................. 2
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`Amneal Pharms LLC v. Endo Pharms., Inc.,
`Case IPR2014-01365, Paper 13 (Feb. 4, 2015) .............................................................. 2
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`Ariosa Diagnostics v. Isis Innovation Ltd,
`Case IPR2012-00022, Paper 166 (Sept. 2, 2014) .................................................. 2, 3, 4
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`Ariosa Diagnostics v. Isis Innovation Ltd,
`Case IPR2013-00250, Paper 24 (Sept. 3, 2013) ............................................................. 2
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`Butamax Advanced Biofuels LLC. v. Gevo, Inc.,
`Case IPR2014-00581, Paper 8 (Oct. 14, 2014) .............................................................. 5
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`Conopco, Inc. v. The Procter & Gamble Co.,
`Case IPR2014-00628, Paper 21 at 11 (Oct. 20, 2014) ................................................... 5
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`Medtronic, Inc. v. Endotach LLC.,
`Case IPR2014-00695, Paper 18 (Sept. 25, 2014) ........................................................... 5
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`Microsoft Corp. v. Proxyconn Inc.,
`Case IPR2013-00109, Paper 15 (Feb. 25, 2013) ............................................................ 2
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`Reloaded Games, Inc. v. Parallel Networks LLC.,
`Case IPR2014-00950, Paper 12 (Oct. 22, 2014) ........................................................ 4-5
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`Samsung Elecs. Co. v. Affinity Labs of Texas, LLC.,
`Case IPR2014-00209, Paper 36 (Sept. 9, 2014) ............................................................. 1
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`Samsung Elecs. Co. v. Affinity Labs of Texas, LLC.,
`Case IPR2014-00407, Paper 27 (Sept. 9, 2014) ............................................................. 1
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`Samsung Elecs. Co. v. Affinity Labs of Texas, LLC.,
`Case IPR2014-00407, Paper 29 (Oct. 9, 2014) ............................................................... 5
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`Samsung Elec. Co. v. Rembrandt Wireless Tech., Lp,
`Case IPR2015-00118, Paper 14 (Jan. 28, 2015) ............................................................. 4
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`i
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`

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`IPR2015-00820
`United States Patent No. 8,532,641
`
`Samsung Elecs. Co. v. Virginia Innovation Scis., Inc.,
`Case IPR2014-00557, Paper 10 (June 13, 2014) ........................................................ 2, 3
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`Skyhawke Techs. v. L&H Concepts,
`Case IPR2014-01485, Paper 13 (Mar. 20, 2015) ............................................................ 1
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`Sony Corp. v. Yissum Research Dev. Co. of the Hebrew Univ. of Jerusalem,
`Case IPR2013-00327, Paper 15 (Sept. 24, 2013) ........................................................... 2
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`Standard Innovation Corp. v. Lelo, Inc.,
`Case IPR2014-00907, Paper 10 (Dec. 1, 2014) .............................................................. 5
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`Target Corp. v. Destination Maternity Corp.,
`Case IPR2014-00508, Paper 18 (Sept. 25, 2014) ....................................................... 1, 2
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`Target Corp. v. Destination Maternity Corp.,
`Case IPR2014-00508, Paper 20 (Sept. 25, 2014) ....................................................... 1, 2
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`Target Corp. v. Destination Maternity Corp.,
`Case IPR2014-00508, Paper 28 (Feb. 12, 2015) ........................................................ 1, 2
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`Target Corp. v. Destination Maternity Corp.,
`Case IPR2014-00508, Paper 31 (Feb. 12, 2015) ................................................... 1, 2, 4
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`Target Corp. v. Destination Maternity Corp.,
`Case IPR2014-00508, Paper 32 (Feb. 12, 2015) ................................................... 1, 2, 4
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`Unilever, Inc. v. The Procter & Gamble Company,
`Case IPR2014-00506, Paper 17 (July 7, 2014) ............................................................... 5
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`Zimmer Holdings, Inc. v. Bonutti Skeletal Innovations, LLC,
`Case IPR2014-01080, Paper 17 (Oct. 31, 2014) ............................................................ 4
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`ZTE Corp. v. Contentguard Holdings Inc.,
`Case IPR2013-00454, Paper 13 (Sept. 25, 2013) ........................................................... 4
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`STATUTES
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`35 U.S.C.
`§ 315 (c) ............................................................................................................................. 1, 2
`§ 316 (a)(11) .......................................................................................................................... 5
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`ii
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`

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`IPR2015-00820
`United States Patent No. 8,532,641
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`OTHER AUTHORITIES
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`37 C.F.R.
`§ 42.100 (c) ............................................................................................................................ 5
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`H. R. Rep. No. 112-98, pt. 1 .................................................................................................... 2
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`Final Rule, 77 Fed. Reg. 48,680 (Aug. 14, 2012) ................................................................. 2
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`157 Cog. Rec. S 1376 (daily ed. Mar. 8, 2011) ..................................................................... 3
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`iii
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`

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`IPR2015-00820
`United States Patent No. 8,532,641
`PO’s Opposition (Pap. 9, “Opp.”) fails to address the clear reasons for joinder
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`here, and the Board should exercise its discretion to grant joinder.
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`I.
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`ISSUE JOINDER IS PROPER
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`PO’s current argument that “§ 315(c) does not permit a party to join a proceed-
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`ing in which it is already a party” to allow for joinder of issues (Opp. 2) should be re-
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`jected, as it flies in the face of the statute, PO’s own prior admission that issue joinder is
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`appropriate, and the decisions of multiple Board panels—including the recent ex-
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`panded panel decision on rehearing in IPR2014-508, Pap. 28 (“Target II”)—that issue
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`joinder under § 315(c) is entirely proper. See also Target II, Paps. 31, 32. Indeed, in re-
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`lated proceedings between the same parties before this Board, PO consented to Peti-
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`tioners’ motion for joinder under § 315(c), agreeing that issue joinder was proper
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`there. See IPR2014-407, Pap. 18 at 1. The Board, granting joinder, exercised its discre-
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`tion to “join and consolidate the proceedings in their entirety,” finding that
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`“[s]ubstantively, [the proceedings] involve[d] the same patent, the same claims, the
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`same parties, and overlapping prior art references.” Id., Pap. 27; see also IPR2014-209,
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`Pap. 36. The Board should again exercise its discretion to grant joinder here, where
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`PO does not dispute these proceedings involve the same patent, parties, and counsel,
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`the same expert for Petitioners, and a significant overlap in the asserted prior art.
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`While PO cites Skyhawke Techs. v. L&H Concepts, IPR2014-1485, Pap. 13 (Opp.
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`3), to suggest issue joinder is forbidden under § 315(c), that decision denied joinder
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`relying on the now-reversed Target I decision. See id. (citing IPR2014-508, Paps. 18, 20 rev’d on
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`1
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`

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`IPR2015-00820
`United States Patent No. 8,532,641
`reh’g by Target II). In Target II, an expanded panel concluded on rehearing that § 315(c)
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`permits a party to join a proceeding in which it is already a party, and reversed the contra-
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`ry Target I decision (relied on in PO’s cited Skyhawke decision) as “based on an errone-
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`ously narrow interpretation of 35 U.S.C. § 315(c).” IPR2014-508, Pap. 28 at 17; see also
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`Paps. 31, 32. This conclusion in Target II is consistent with numerous other decisions
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`granting issue joinder under § 315(c), including, e.g., IPR2013-109, Pap. 15; IPR2013-
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`282, Pap. 15; IPR2013-327, Pap. 15; IPR2014-557, Pap. 10; IPR2013-250, Pap. 24;
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`IPR2012-22, Pap. 166; IPR2014-1365, Pap. 13. And the majority in Target II (uncited
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`by PO) correctly rejected the very same arguments PO urges here. See IPR2014-508,
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`Pap. 28 at 7 (rejecting argument (Opp. 2-3) that statute’s plain language precludes is-
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`sue joinder), 10 (rejecting argument (Opp. 3-4) that reference in Final Committee Re-
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`port to joining “other petitioners” precludes issue joinder), 14-15 (rejecting argument
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`(Opp. 4) that allowing issue joinder renders § 315(d) superfluous), and 15-16 (rejecting
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`argument (Opp. 5) that joinder should be precluded to prevent “harassment” of PO).
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`II. THE CIRCUMSTANCES OF THIS CASE WARRANT JOINDER
`Contrary to PO’s arguments (Opp. 6), the circumstances here warrant joinder,
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`especially in view of the AIA’s purpose of “reducing unwarranted litigation costs,” “improv-
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`ing patent quality and providing a more efficient system for challenging patents that should not have
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`issued.” H.R. Rep. No. 112-98, pt. 1, at 39-40 (2011); see also, e.g., Final Rule, 77 Fed.
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`Reg. 48,680 (Aug. 14, 2012). The ‘641 patent is one of 14 related patents, of which
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`PO has asserted 6 patents and 50 claims against Petitioners. Thus, the factor of “whether
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`2
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`IPR2015-00820
`United States Patent No. 8,532,641
`large numbers of patents or claims are alleged to be infringed by one or more of the
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`defendants” weighs strongly in favor of joinder.1 157 Cong. Rec. S 1376 (daily ed. Mar.
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`8, 2011). Further, it is in the public interest for the Board to rule on the invalidity of a
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`patent that should never have issued, and PO continues to actively litigate the ‘641
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`and other related patents against numerous other non-parties. See Pap. 7 at 6. It would
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`also waste both judicial resources and litigation costs for this Board to consider, e.g.,
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`the patentability of already-instituted independent claim 8 in the context of certain
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`prior art, but not dependent claims 9, 10, and 12 (and nearly identical claims 1-3 & 5-7)
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`in view of that same art. IPR2012-22, Pap. 166 at 21-22. Rather than have these claims
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`potentially return to district court, both the public and private interests would be bet-
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`ter served by having the Board fully consider invalidity of the ‘641 claims. Id.;
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`IPR2014-557, Pap. 10 at 18 (“the minimal additional amount of work required … is
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`strongly outweighed by the public interest in having consistency of outcome concern-
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`ing similar sets of claimed subject matter and prior art.”)
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`PO is wrong that the “asserted grounds are merely duplicative of the grounds
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`already presented by Petitioners” (Opp. 10).2 This Petition involves a new reference
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`(Hu) not yet considered by the Board that contains explicit disclosure of the “cellular
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`telephone” the Board found absent from the previously-cited art. See Pap. 7 at 30-32.
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`1 This also belies PO’s complaints (Opp. 12-13) about the number of IPRs it faces.
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`2 Nor, for the same reasons, could Petitioners’ newly identified art have been
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`addressed in rehearing, as PO erroneously suggests (Opp. 7).
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`3
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`IPR2015-00820
`United States Patent No. 8,532,641
`In fact, the Board has granted joinder in these precise circumstances—where new ar-
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`guments were raised in view of a newly cited reference, and there was substantial
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`overlap in the remaining cited art. See Target II, Pap. 31 at 2, Pap. 32; IPR2012-22, Pap.
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`166 at 21-22. In addition, this Petition raises a priority issue for claims 1-3, 5-7, 9-10 &
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`12 that is not before the Board in any other proceeding. And contrary to PO’s unsup-
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`ported suggestion that the grounds herein are “duplicative” (Opp. 10), the Board has
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`already determined that a number of distinct grounds of obviousness (e.g., with re-
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`spect to claim 8 in IPR2014-1181, -1182, and -1184) warranted institution, and the
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`grounds presented here are likewise not duplicative of any instituted ground. Further,
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`joinder will not “tie up” the Board’s resources (cf. Opp. 7): the Petition is narrowly tai-
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`lored to address the Board’s concern over “cellular phone” (-1184, Pap. 10 at 12-13).
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`As in Target II, joining this proceeding with -1184 will only require consideration of a
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`single additional reference, and thus joinder will not significantly increase the com-
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`plexity of briefing or discovery. Further, the priority analysis the Board already con-
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`ducted for instituted claim 8 equally applies to dependent claims 9-10 & 12 and will be
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`nearly identical for claim 1 (and dependent claims 2-3 & 5-7). Thus, efficiencies for
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`both the Board and the parties can be maintained with minimal additional effort.
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`Further, Petitioners’ motion is not an improper “second bite at the apple”
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`(Opp. 5-10), and the decisions PO cites are inapposite. In ZTE (IPR2013-454, Pap.
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`13), the first proceeding had been terminated and could no longer be joined. In Sam-
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`sung (IPR2015-118, Pap. 14 at 6-7), Zimmer (IPR2014-1080, Pap. 17 at 5), and Reloaded
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`4
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`IPR2015-00820
`United States Patent No. 8,532,641
`(IPR2014-950, Pap. 12 at 5), no new art was presented. In Butamax (IPR2014-581,
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`Pap. 8 at 12), Conopco (IPR2014-628, Pap. 21 at 11), Standard Innov., (IPR2014-907, Pap.
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`10 at 4-7), and Unilever (IPR2014-506, Pap. 17 at 6), petitioners did not contend that
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`they were not previously aware of the cited art. And in Medtronic (IPR2014-695, Pap.
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`18 at 6-8), petitioner alleged a “changed” claim construction that the Board found pe-
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`titioner had access to before the first petition was filed. Moreover, as represented to
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`the Board by Petitioners’ undersigned counsel, Hu was not known to Petitioners be-
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`fore the original petition was filed.3 It was located, instead, on Feb. 4, 2015–after the
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`Board’s Institution Decision. There is no gamesmanship here: petitioners seek only a full
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`and fair adjudication of validity within the framework created by Congress.
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`III. A JOINED PROCEEDING CAN BE TIMELY COMPLETED
`In light of Order 8, Petitioners attach an alternative proposed schedule reach-
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`ing a Dec. 16, 2015 Due Date for Oral Argument (moved by seven weeks from Oct.
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`28, 2015), which provides for a just and speedy resolution of both petitions and timely
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`completion of both joined proceedings consistent with § 316(a)(11) and § 42.100(c).
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`Petitioners respectfully request that the Board grant joinder.
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`Respectfully submitted,
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`By:/J. Steven Baughman/
`J. Steven Baughman (Lead Counsel)
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`April 6, 2015
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`Gabrielle E. Higgins (Backup Counsel)
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`3 Despite PO’s suggestion that no evidence was provided (Opp. 12), such repre-
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`sentations are regularly accepted by the Board. See, e.g., IPR2014-407, Pap. 29 at 2.
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`5
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`

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`IPR2015-00820
`United States Patent No. 8,532,641
`PETITIONERS’ REVISED PROPOSED SCHEDULE
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`Deadline
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`Due Date 1 (IPR2014-
`01184)
`Patent owner’s response
`to the petition
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`Patent owner’s motion to
`amend the patent
`(IPR2015-00820) Patent
`owner’s preliminary re-
`sponse
`(IPR2015-00820) Deci-
`sion to institute and deci-
`sion on motion for join-
`der (suggested)
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`Current Schedule in
`IPR2014-01184
`April 30, 2015
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`Petitioner’s Revised Pro-
`posal for Joined Proceeding
`April 30, 2015 (SAME)
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`--
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`--
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`June 13, 2015 (SAME)
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`July 24, 2015
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` Patent Owner has not offered a proposed schedule in its Opposition. Petitioners
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`further reiterate their offer to discuss with Patent Owner any further adjustments of
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`the schedule, or adjustments as determined by the Board to be appropriate or neces-
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`sary to promote efficient resolution of this case, including extension of the schedule
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`beyond the proposed date of Dec. 16, 2015 for an Oral Hearing. See, e.g., IPR2012-
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`22/IPR2013-250; IPR2012-26/IPR2013-109; IPR2013-531/IPR2014-508. Petitioners
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`are also open to extending Due Date 1 in IPR2014-01184 to the same proposed dead-
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`line for Due Date 1A if the Board determines that it would be efficient to have a sin-
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`gle unified schedule for both proceedings that provides for a common Patent Own-
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`er’s Response (and any deposition of Petitioners’ expert) and Petitioners’ Reply.
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`1
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`

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`IPR2015-00820
`United States Patent No. 8,532,641
`Current Schedule in
`Petitioner’s Revised Pro-
`IPR2014-01184
`posal for Joined Proceeding
`--
`September 4, 2015
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`July 30, 2015
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`October 16, 2015
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`August 31, 2015
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`November 6, 2015
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`September 21, 2015
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`November 20, 2015
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`October 5, 2015
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`December 2, 2015
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`Deadline
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`Due Date 1A (IPR2015-
`00820)
`Patent owner’s supple-
`mental response
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`Patent owner’s motion to
`amend to address
`grounds raised in
`IPR2015-00820
`Due Date 2 (IPR2014-
`01184 & IPR2015-00820)
`Petitioner’s reply to pa-
`tent owner’s response to
`petition
`
`Petitioner’s opposition to
`motion to amend
`Due Date 3 (IPR2014-
`01184 & IPR2015-00820)
`Patent owner’s reply to
`petitioner’s opposition to
`motion to amend
`Due Date 4 (IPR2014-
`01184 & IPR2015-00820)
`Motion for observation
`regarding cross-
`examination of reply wit-
`ness
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`Motion to exclude evi-
`dence
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`Request for oral argu-
`ment
`Due Date 5 (IPR2014-
`01184 & IPR2015-00820)
`Response to observation
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`Opposition to motion to
`exclude
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`2
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`

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`IPR2015-00820
`United States Patent No. 8,532,641
`Current Schedule in
`Petitioner’s Revised Pro-
`IPR2014-01184
`posal for Joined Proceeding
`October 13, 2015
`December 9, 2015
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`October 28, 2015
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`December 16, 2015
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`Deadline
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`Due Date 6 (IPR2014-
`01184 & IPR2015-00820)
`Reply to opposition to
`motion to exclude
`Due Date 7 (IPR2014-
`01184 & IPR2015-00820)
`Oral argument (if re-
`quested)
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`3
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`

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`IPR2015-00820
`United States Patent No. 8,532,641
`CERTIFICATE OF SERVICE
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`It is certified that a copy of PETITIONERS’ REPLY IN SUPPORT OF
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`THEIR MOTION FOR JOINDER has been served in its entirety by causing the
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`aforementioned document to be electronically mailed, pursuant to the Petitioners’ and
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`Patent Owner’s agreement, the following attorneys of record for the Patent Owner
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`listed below:
`
`
`
`Ryan M. Schultz
`ROBINS, KAPLAN, MILLER & CIRESI L.L.P.
`800 LaSalle Ave.
`2800 LaSalle Plaza
`Minneapolis, MN 55402
`
`Thomas R. DeSimone
`ROBINS, KAPLAN, MILLER & CIRESI L.L.P.
`One Atlantic Center
`1201 West Peachtree St., Suite 2200
`Atlanta, CA 30309
`TRDeSimone@rkmc.com
`
`
`
`
`
`By: /s/ Kathryn N. Hong
`Kathryn N. Hong
`ROPES & GRAY LLP
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`
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`1
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`Dated: April 6, 2015