Paper No. 2
`Date: June 9, 2015
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`ZTE CORPORATION AND ZTE (USA) INC.,
`Petitioners,
`
`v.
`E-WATCH, INC.,
`Patent Owner.
`_____________
`
`Case IPR2015-___
`Patent 7,365,871 B2
`
`
`MOTION FOR JOINDER TO RELATED INSTITUTED INTER PARTES
`REVIEW UNDER 35 U.S.C. 315(c) AND 37 C.F.R. § 42.122(b)
`_____________
`
`
`Mail Stop PATENT Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`Date: June 9, 2015
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`ZTE CORPORATION AND ZTE (USA) INC.,
`Petitioners,
`
`v.
`E-WATCH, INC.,
`Patent Owner.
`_____________
`
`Case IPR2015-___
`Patent 7,365,871 B2
`
`
`MOTION FOR JOINDER TO RELATED INSTITUTED INTER PARTES
`REVIEW UNDER 35 U.S.C. 315(c) AND 37 C.F.R. § 42.122(b)
`_____________
`
`
`Mail Stop PATENT Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`Paper No. 2
`Date: June 9, 2015
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`STATEMENT OF RELIEF REQUESTED ................................................... 1
`
`BACKGROUND AND RELATED PROCEEDINGS .................................. 1
`
`III. LEGAL STANDARDS AND APPLICABLE RULES ................................. 2
`
`A.
`
`Legal Standard ...................................................................................... 2
`
`IV. ARGUMENT .................................................................................................. 4
`
`A.
`
`B.
`
`C.
`
`Joinder is appropriate in the instant case .............................................. 4
`
`Joinder should be granted as a matter of right because ZTE’s petition
`contains the identical ground on which Apple’s petition was granted 5
`
`Trial schedule will be impacted only minimally and will complete
`within one year ..................................................................................... 6
`
`D. Discovery and briefing may be simplified ........................................... 6
`
`V.
`
`CONCLUSION ............................................................................................... 7
`
`
`
`ii
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`
`
`Paper No. 2
`Date: June 9, 2015
`
`I.
`STATEMENT OF RELIEF REQUESTED
`ZTE Corporation and ZTE (USA), Inc., (“ZTE” or “Petitioner”) submits
`
`concurrently herewith a petition for inter partes review (IPR) of U.S. Patent No.
`
`7,365,871 B2 (the “’871 Patent”) and respectfully requests that its petition be
`
`granted. ZTE also respectfully moves that this proceeding be joined pursuant to 35
`
`U.S.C. § 315(c), 37 C.F.R. §§ 42.22 and 42.122(b) with the pending IPR
`
`concerning the same patent in Apple Inc. v. e-Watch, Inc., Case IPR2015-00412
`
`(the “Apple IPR”). ZTE’s petition for inter partes review is substantively identical
`
`to the Apple IPR petition, except that ZTE’s petition contains only the specific
`
`bases upon which inter partes review was instituted in the Apple IPR, omitting the
`
`additional asserted bases in Apple’s petition that were rejected by the Board.
`
`This Motion for Joinder is timely under 37 C.F.R. §§ 42.22 and 42.122(b),
`
`because it is submitted within one month of May 11, 2015, the institution date of
`
`the Apple IPR.
`II. BACKGROUND AND RELATED PROCEEDINGS
`e-Watch, Inc. is the owner of the ’871 Patent. Starting in 2013, e-Watch
`
`filed eleven suits in district court, including suits against ZTE Corporation, ZTE
`
`(USA) Inc., ZTE Solutions, Inc. and Apple Inc., alleging infringement of the ’871
`
`Patent by camera phones that operate over cellular networks. e-Watch filed its
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`complaint alleging infringement of the ’871 Patent by ZTE Corporation, ZTE
`
`1
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`Paper No. 2
`Date: June 9, 2015
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`(USA) Inc. and ZTE Solutions, Inc. on December 10, 2013.
`
`In addition to the district court litigation, the ’871 Patent has been the
`
`subject of several IPRs: IPR2014-00439 (terminated), IPR2014-00987 (instituted),
`
`IPR2015-00402 (pending), IPR2015-00404 (pending), IPR2015-00406 (pending),
`
`IPR2015-00411 (not instituted), IPR2015-00412 (instituted), IPR2015-00413 (not
`
`instituted), IPR2015-00541 (instituted), and IPR 2015-00610 (pending). The
`
`Apple petition for inter partes review was filed on December 11, 2014 and trial
`
`was instituted on May 11, 2015 (Paper No. 12, IPR 2015-00412) on the sole
`
`ground in Apple’s petition. The Board set July 13, 2015 as the date for e-Watch’s
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`response to the petition, and oral argument is currently set for December 18, 2015.
`
`See Paper Nos. 13 & 15, IPR 2015-00412.
`
`III. LEGAL STANDARDS AND APPLICABLE RULES
`
`A. Legal Standard
`The Leahy-Smith America Invents Act (AIA) permits joinder of inter partes
`
`review proceedings. The statutory provision governing joinder of inter partes re-
`
`view proceedings is 35 U.S.C. § 315(c), which reads as follows:
`
`(c) JOINDER.--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.
`
`
`2
`
`
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`Paper No. 2
`Date: June 9, 2015
`
`Normally, a petition for inter partes review filed more than one year after
`
`the petition (or the petition’s real party-in-interest or privy) is served with a com-
`
`plaint alleging infringement of the patent is barred. See 35 U.S.C. § 315(b); 37
`
`C.F.R. § 42.101(b). The one-year time bar, however, does not apply to a request
`
`for joinder. See 35 U.S.C. § 315(b)(final sentence); 37 C.F.R. § 42.122(b).
`
`In exercising its discretion to grant joinder, the Board considers the impact
`
`of substantive and procedural issues on the proceedings, as well as other considera-
`
`tions, while being “mindful that patent trial regulations, including the rules for
`
`joinder, must be construed to secure the just, speedy, and inexpensive resolution of
`
`every proceeding.” See Dell, Inc. v. Network-1 Security Solutions, Inc., Case
`
`IPR2013-00385, Paper No. 17 (July 29, 2013) (“Dell Joinder Order”) at 3. The
`
`Board should consider “the policy preference for joining a party that does not pre-
`
`sent new issues that might complicate or delay an existing proceeding.” Id. at 10.
`
`Under this framework, joinder of the instant case with the Apple IPR is appropri-
`
`ate.
`
`The Dell Joinder Order states that “[a] motion for joinder should: (1) set
`
`forth the reasons why joinder is appropriate; (2) identify any new grounds of un-
`
`patentability asserted in the petition; (3) explain what impact (if any) joinder would
`
`have on the trial schedule for the existing review; and (4) address specifically how
`
`briefing and discovery may be simplified.” Id. at 4. Each of these issues is ad-
`
`3
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`Paper No. 2
`Date: June 9, 2015
`
`dressed fully below and each leans heavily in favor of granting joinder.
`IV. ARGUMENT
`A.
`Joinder is appropriate in the instant case
`Joinder of the instant proceeding to the Apple IPR is appropriate because
`
`this motion is timely, ZTE’s petition raises no new issues, granting joinder leads to
`
`efficiencies as well as consistent results, and neither party to the Apple IPR will be
`
`prejudiced.
`
`This motion is timely. The Apple IPR was instituted on May 11, 2015, and
`
`this motion is filed within one month thereafter. See 37 C.F.R. § 42.122(b). ZTE’s
`
`petition raises no new issues because it is substantively identical to the Apple IPR
`
`petition and, in fact, removes the alternative bases of unpatentability that were re-
`
`jected by the Board in its institution decision. ZTE argues for the same unpatenta-
`
`bility ground on the exact element-by-element combination of the two prior art ref-
`
`erences, relies upon the same claim construction found by the Board in its institu-
`
`tion decision, and relies upon the same evidence.
`
`If Apple settles its case, that proceeding might not reach a final written deci-
`
`sion. ZTE would then be forced to litigate validity of the ’871 patent in the district
`
`court proceeding under the more demanding burden of clear and convincing evi-
`
`dence. Moreover, the delay that would result will prejudice ZTE as well as the en-
`
`tire smartphone industry by enabling the Patent Owner to continue enforcing a
`
`4
`
`
`
`Paper No. 2
`Date: June 9, 2015
`
`specious patent before the Board renders a thorough review.
`
`If joinder is granted, however, neither Apple nor the Patent Owner is preju-
`
`diced. ZTE’s ground for instituting IPR is identical to the sole ground proposed by
`
`Apple in its petition upon which trial was instituted. Thus, joinder will not affect
`
`the timing of the Apple IPR, and any minimal extension to the schedule that may
`
`be required is permitted by law and the applicable rules. See 35 U.S.C. §
`
`316(a)(11); 37 C.F.R. § 42.100(c). By permitting joinder here, the interests of all
`
`parties and the Board will be well served.
`
`B.
`
`Joinder should be granted as a matter of right because ZTE’s
`petition contains the identical ground on which Apple’s petition
`was granted
`
`The legislative history shows that two proceedings with identical petitions–
`
`the situation here–should be joined as a matter of right. See 157 CONG. REC.
`
`S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (“The Office anticipates
`
`that joinder will be allowed as of right – if an inter partes review is instituted on the
`
`basis of a petition, for example, a party that files an identical petition will be joined
`
`to that proceeding, and thus allowed to file its own briefs and make its own argu-
`
`ments.”) (emphasis added). For this reason alone, joinder should be granted.
`
`Even if the Patent Owner raises a ZTE-specific defense as a reason for why
`
`joinder should be denied, this cannot override the strong legislative intent and
`
`public policy in favor of joining identical petitions. Moreover, any ZTE-specific
`
`5
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`Paper No. 2
`Date: June 9, 2015
`
`defense, though unlikely, can be accommodated easily by the normal briefing and
`
`trial schedule and would have no impact on the Apple IPR.
`
`C. Trial schedule will be impacted only minimally and will complete
`within one year
`
`Joinder will not impact the Board’s ability to complete its review in a timely
`
`manner. 35 U.S.C. § 316(a)(11) and associated rule 37 C.F.R. § 42.100(c) provide
`
`that IPRs should be completed and the Board’s final decision rendered within one
`
`year of institution. Joinder should not affect the Board’s ability to issue its deci-
`
`sion within this required one-year timeframe because the instant petition contains
`
`the identical ground instituted in the Apple IPR and ZTE agrees to procedural
`
`safeguards (discussed below) that ensure speedy resolution.
`
`D. Discovery and briefing may be simplified
`ZTE respectfully proposes procedural safeguards to ensure a speedy and
`
`simplified trial, thus minimizing any trial-schedule impact and minimizing the vol-
`
`ume of materials submitted to the Board. ZTE proposes procedural safeguards
`
`similar to those adopted in the Dell Joinder Order:
`
`1) Apple and ZTE will file papers, except for motions that do not involve
`
`the other party, as consolidated filings. Apple will prepare such filings.
`
`2)
`
`ZTE may file an additional paper not to exceed seven pages, which
`
`may address only points of disagreement with the consolidated filing. The Patent
`
`Owner may respond to any such paper, but may not exceed the number of pages in
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`6
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`
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`Paper No. 2
`Date: June 9, 2015
`
`ZTE’s filing and is limited to issues raised in such filing.
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`3) Apple may question witnesses in depositions before ZTE.
`
`4) Apple may present argument before ZTE at any oral argument.
`
`See Dell Joinder Order, at 11-12.
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`Furthermore, ZTE will rely upon Apple’s expert, and will not offer addition-
`
`al expert testimony unless Apple terminates its involvement in the IPR.
`
`These procedural safeguards minimize any complication or delay and will
`
`result in a speedy trial with little impact on the Apple IPR parties or the Board.
`V. CONCLUSION
`For the foregoing reasons, ZTE respectfully requests that its Petition for
`
`Inter Partes Review of U.S. Patent No. 7,365,871 B2 be instituted and that this
`
`proceeding be joined with Apple Inc. v. e-Watch, Inc., Case IPR2015-00412.
`
`
`Dated:
`
`
`June 9, 2015
`
`
`By:
`
`Respectfully submitted,
`
`/Steven A. Moore/
`Steven A. Moore, Reg. No. 55,462
`Richard W. Thill, Reg. No. 53,684
`501 West Broadway, Suite 1100
`San Diego, CA 92101
`Phone: (619) 544-3112
`
`Attorneys for Petitioner
`
`
`
`
`7
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`
`
`Paper No. 2
`Date: June 9, 2015
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR §§ 42.6(e)(4)(i) et seq. and 42.105(b), the undersigned
`
`certifies that on June 9, 2015, a complete and entire copy of Petitioner’s Motion for
`
`Joinder to Related Instituted Inter Partes Review (37 C.F.R. § 42.122(b)) of U.S.
`
`Patent No. 7,365,871 B2 was served EXPRESS MAIL® to the Patent Owner by
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`serving the correspondent of record, as indicated below:
`
`
`
`
`
`
`
`Robert C. Curfiss
`Law Office of Robert Curfiss
`19826 Sundance Drive
`Humble TX 77346-1402
`
`
`/Steven A. Moore/
`Steven A. Moore, Reg. No. 55,462
`501 West Broadway
`Suite 1100
`San Diego, CA 92101
`
`
`
`8
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`
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