Trials@uspto.gov
`571-272-7822
`
`
`
`
`
` Paper 12
`Entered: May 15, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`AFFINITY LABS OF TEXAS, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-00820
`Patent 8,532,641 B2
`____________
`
`
`
`Before KEVIN F. TURNER, LYNNE E. PETTIGREW, and
`JON B. TORNQUIST, Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Petitioner’s Motion for Joinder
`37 C.F.R. § 42.122
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`571-272-7822
`
`
`
`
`
` Paper 12
`Entered: May 15, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`AFFINITY LABS OF TEXAS, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-00820
`Patent 8,532,641 B2
`____________
`
`
`
`Before KEVIN F. TURNER, LYNNE E. PETTIGREW, and
`JON B. TORNQUIST, Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Petitioner’s Motion for Joinder
`37 C.F.R. § 42.122
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2015-00820
`Patent 8,532,641 B2
`
`
`I. INTRODUCTION
`
`
`
`Samsung Electronics Co., Ltd. and Samsung Electronics America,
`
`Inc. (collectively, “Petitioner”) filed a Petition (Paper 7, “Pet.” or “current
`
`Petition”) requesting inter partes review of claims 1–3, 5–7, 9, 10, and 12 of
`
`U.S. Patent No. 8,532,641 (“the ’641 patent”). Petitioner also filed a Motion
`
`for Joinder (Paper 3, “Motion for Joinder”), requesting that the current
`
`Petition be joined with IPR2014-01184. The Motion for Joinder was filed
`
`within one month after institution of trial in IPR2014-01184. See 37 C.F.R.
`
`§ 42.122(b). Patent Owner filed an Opposition to Petitioner’s Motion for
`
`Joinder (Paper 9, “Opp.”), and Petitioner filed a Reply (Paper 11, “Reply”).
`
`
`
`For the reasons that follow, we deny Petitioner’s Motion for Joinder.
`
`We also deny the current Petition and do not institute an inter partes review.
`
`II. BACKGROUND
`
`
`
`Petitioner previously filed three petitions requesting inter partes
`
`review of claims 1–3 and 5–14 of the ’641 patent. In IPR2014-01181 we
`
`instituted review of claims 8 and 11–14; in IPR2014-01182 we instituted
`
`review of claims 1–3 and 5–14; and in IPR2014-01184 we instituted review
`
`of claims 8, 11, 13, and 14. Thus, we have instituted review of every
`
`challenged claim of the ’641 patent in at least one proceeding and, for some
`
`claims, in three different proceedings.
`
`
`
`Petitioner now requests inter partes review of claims 1–3, 5–7, 9, 10,
`
`and 12 of the ’641 patent using a new reference, Hu, in combination with
`
`references Ahn, Nokia, and Galensky, previously relied upon in IPR2014-
`
`01184. Pet. 30–59; Motion for Joinder 2–3. Institution of inter partes
`
`review is barred under 35 U.S.C. § 315(b) when a petition is filed “more
`
`than 1 year after the date on which the petitioner, real party in interest, or
`
`
`
`2
`
`
`
`IPR2015-00820
`Patent 8,532,641 B2
`
`privy of the petitioner is served with a complaint alleging infringement of
`
`the patent.” Petitioner concedes that it was served with a complaint
`
`asserting infringement of the ’641 patent “more than one year” before the
`
`filing date of the current Petition, but contends that the current Petition is
`
`timely in view of its Motion for Joinder. Pet. 7; 35 U.S.C. § 315(b) (noting
`
`that the time limitation set forth in § 315(b) does not apply to a request for
`
`joinder under § 315(c)).
`
`
`
`The decision to grant joinder is discretionary, with Petitioner, as the
`
`moving party, bearing the burden to show that joinder is appropriate.
`
`35 U.S.C. § 315(c); 37 C.F.R. § 42.20(c).
`
`III. ANALYSIS
`
`
`
`Petitioner contends that joinder is appropriate in this case because
`
`IPR2015-00820 and IPR2014-01184 involve the same patent, parties, and
`
`counsel, and “Patent Owner has already responded to, and the Board has
`
`already analyzed for institution, prior petitions challenging every claim now
`
`at issue in the new Petition.” Motion for Joinder 4. Petitioner further
`
`contends that the Hu reference “was not previously known to Petitioners or
`
`presented to the Board in the prior petitions,” and resolves any concerns the
`
`Board had with respect to the references cited in IPR2014-01184. Id. at 5;
`
`Reply 5.
`
`
`
`Patent Owner presents two arguments against joinder. First, Patent
`
`Owner asserts that the statute does not permit the same party to join a
`
`proceeding to which it is already a party. Opp. 3 (citing Skyhawk Techs.
`
`LLC v. L&H Concepts, LLC, Case IPR2014–01485, slip op. at 3–4 (PTAB
`
`Mar. 21, 2015) (Paper 13)). Second, Patent Owner contends that the Motion
`
`for Joinder should be denied because Petitioner simply is seeking a “second
`
`
`
`3
`
`
`
`IPR2015-00820
`Patent 8,532,641 B2
`
`bite at the apple,” without providing any reasonable explanation as to why it
`
`did not make its arguments with respect to the Hu reference in an earlier,
`
`timely-filed petition. Opp. 8, 12.
`
`
`
`With respect to same party joinder, we recognize that different Board
`
`panels have come to contrary positions on this issue. See, e.g., Target Corp.
`
`v. Destination Maternity Corp., Case IPR2014–00508 (PTAB Feb. 12, 2015)
`
`(Paper 31); Skyhawk, slip op. at 3–4. We need not address the issue here,
`
`however, because, even if same party joinder is permissible, we are not
`
`persuaded that joinder is appropriate in this case.
`
`
`
`With respect to the substance of the joinder request, we agree with
`
`Patent Owner that Petitioner provides no reasoned justification for the delay
`
`in asserting the grounds based on Hu. In particular, Petitioner articulates no
`
`persuasive reason why, using reasonable efforts, the Hu reference could not
`
`have been identified and relied upon in the earlier, timely-filed petitions.
`
`See Pet. 33 (identifying Hu as “U.S. Pat. Pub. No. 2006/0262103”); Opp. 12
`
`(noting that Hu is a published U.S. patent application). Thus, we do not
`
`consider this to be a case of changed circumstances—such as new claims
`
`being asserted during district court litigation or new threats of
`
`infringement—that would make joinder an equitable remedy. See, e.g.,
`
`Micro Motion, Inc. v. Invensys Sys., Inc., Case IPR2014-01409, slip op. at 14
`
`(PTAB Feb. 18, 2015) (Paper 14) (citing Microsoft Corp. v. Proxyconn, Inc.,
`
`Case IPR2013-00109, slip op. at 3, 5 (PTAB Feb. 25, 2014) (Paper 15)).
`
`
`
`This appears, instead, to be a case where Petitioner seeks to use our
`
`Decision to Institute in IPR2014-01184 as a guide to remedy deficiencies in
`
`the earlier filed petition, i.e., a “second bite at the apple.” See Motion for
`
`Joinder 3 (noting that the Hu reference was located “only after the institution
`
`
`
`4
`
`
`
`IPR2015-00820
`Patent 8,532,641 B2
`
`decision in IPR2014-01184”). Interpreting our rules to allow Petitioner
`
`another chance to argue the unpatentability of the challenged claims would
`
`not lead to the just, speedy, and inexpensive resolution of the proceedings.
`
`See 37 C.F.R. § 42.1(b). To the contrary, joinder of the current proceeding
`
`would require Patent Owner to address new arguments and evidence, and
`
`potentially require additional declarations and witness depositions, all under
`
`a compressed schedule made necessary to accommodate the more advanced
`
`stage of the proceeding in IPR2014–01184. Petitioner’s desire to present
`
`additional grounds directed to claims already the subject of three prior inter
`
`partes review petitions, and directed to claims currently under review in
`
`IPR2014-01182, does not justify the additional burden on Patent Owner, the
`
`additional costs, or the use of judicial resources.
`
`
`
`Based on the foregoing, we are not persuaded that Petitioner has
`
`demonstrated that joinder is appropriate. Accordingly, we exercise our
`
`discretion and deny joinder of IPR2015-00820 with IPR2014-01184. The
`
`current Petition is, therefore, time-barred under 35 U.S.C. § 315(b).
`
`IV. ORDER
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that Petitioner’s Motion for Joinder is denied;
`
`FURTHER ORDERED that the Petition is denied and no trial is
`
`
`
`
`
`
`
`instituted.
`
`
`
`
`
`
`
`
`
`
`
`
`
`5
`
`
`
`IPR2015-00820
`Patent 8,532,641 B2
`
`PETITIONER:
`
`J. STEVEN BAUGHMAN
`GABRIELLE E. HIGGINS
`KATHRYN N. HONG
`ROPES & GRAY LLP
`steven.baughman@ropesgray.com
`gabrielle.higgins@ropesgray.com
`Kathryn.Hong@ropesgray.com
`
`
`PATENT OWNER:
`
`RYAN SCHULTZ
`THOMAS DESIMONE
`ROBINS KAPLAN LLP
`rschultz@robinskaplan.com
`tdesimone@robinskaplan.com
`
`
`
`
`
`6
`
`
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