UNITED STATES PATENT AND TRADEMARK OFFICE
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`Paper No. 10
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`QUALCOMM INCORPORATED
`Petitioner
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`BANDSPEED, INC.
`Patent Owner
`
`IPR2015-01577
`
`U.S. Patent 7,477,624
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`PETITIONER’S REPLY TO OPPOSITION TO MOTION FOR JOINDER
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`4I851943.|
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`
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`Paper No. 10
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`QUALCOMM INCORPORATED
`Petitioner
`
`BANDSPEED, INC.
`Patent Owner
`
`IPR2015-01577
`
`U.S. Patent 7,477,624
`
`PETITIONER’S REPLY TO OPPOSITION TO MOTION FOR JOINDER
`
`4I851943.|
`
`
`
`Pursuant to the ORDER entered on August 25, 2015 (Paper 9), Petitioner
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`files its Reply to “Patent Owner’s Opposition to the Motion for Jcinder” (Paper 8).
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`1.
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`STATEMENT OF RELEVANT FACTS
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`On June 11, 2015 the PTAB instituted trial in IPR 2015-00314 (“‘3 14 IPR”)
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`determining that, based on the asserted grounds, there was a reasonable likelihood
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`that the claims of U.S. Patent 7,477,624 (“‘624 Patent”) are invalid.
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`On July 13, 2015, Petitioner timely filed the present petition pursuant to 35
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`U.S.C. 315(b) and 37 CFR 42.122(b) with an accompanying motion for joinder.
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`Bandspeed did not inform the PTAB in the ‘3 14 IPR of the present petition
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`within the required 21 day timeframe (August 3, 2015). See 37 C.F.R. 42.8.
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`On August 5, 2015, Bandspeed and Mediatek filed a joint motion to termi-
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`nate the ‘3 14 IPR proceeding.
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`II.
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`THE MOTION FOR JOINDER SHOULD BE GRANTED
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`A.
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`Previous PTAB Decisions Favor Joinder
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`In Nintendo ofAmerica, Ltd. v. Babbage Holdings, Inc. (IPR2015-00568),
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`the PTAB was faced with a nearly identical situation as the present case (the pri-
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`mary difference being that Bandspeed has attempted to terminate prior to opposing
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`joinder, without notifying the PTAB of the new petition). Like the present case, in
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`Nintendo the joining Petitioner (i) filed the petition within 1-month of institution,
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`(ii) utilized the same grounds as the instituted petition, (iii) agreed to take an un-
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`413519411
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`-1-
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`derstudy role unless and until settlement of the other ‘3 14 IPR Petitioner occurs,
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`and (iv) noted that the ‘3 14 IPR Petitioner did not oppose this arrangement. In
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`Nintendo, the patent owner also attempted the same arguments as Bandspeed in
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`opposition. Specifically, the patent owner stated that (i) the petitioner could have
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`filed earlier (e.g. with the original petition), and (ii) it is prejudicial to a patent
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`owner for settlement purposes to allow for joinder.
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`The PTAB found thatjoinder would not unduly complicate the case because
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`the newly filed petition did not raise additional issues for review. Further, the pa-
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`tent owner’s arguments regarding settlement were not persuasive at least because
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`the motion for joinder was on file prii to the motion to terminate and the parties
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`were aware of the newly filed petition during the settlement negotiations. There-
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`fore, the motion for joinder was granted. Because circumstances of the present
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`case are substantively indistinguishable from those of Nintendo, joinder is also ap-
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`propriate here.
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`In Bandspeed’s opposition to joinder Google Inc. v. Personal Web Technol-
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`ogies (IPR20l4-OO977) is relied on for the proposition that it is proper to terminate
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`a proceeding when a joinder motion is present while not allowing for joinder. This
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`case, however, is easily distinguishable. Specifically, in Google, the PTAB denied
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`the joinder motion because it was untimely (i.e. filed past the deadline of 37 C.F.R.
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`42.122), whereas the present motion was timely filed.
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`413519411
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`-2-
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`B.
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`Policy Considerations
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`Bandspeed cites the Trial Practice Guide’s “Settlement” section as an argu-
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`ment that joinder is inappropriate because it may hinder settlement generally for
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`future parties. The cited portion states that “there are strong public policy reasons
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`to favor settlement between the parties to a proceeding.” 77 Fed. Reg. 48756,
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`48758. Nothing about the present motion for joinder impacts the settlement be-
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`tween Bandspeed and MediaTek (i.e. the parties to the ‘3 14 IPR proceeding). In
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`other words, the PTAB can approve the present motion for joinder and the ‘3 14
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`IPR’s termination motion without hindering any agreement between the parties of
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`the ‘3 14 proceedings.
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`Bandspeed speculates thatjoinder will adversely affect settlement generally
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`in multi-defendant litigation cases because a future hypothetical patent owner must
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`wait until 1-month after an IPR is instituted to know if other defendants are going
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`to challenge invalidity. Such plaintiffs are already aware of this circumstance due
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`to the explicit rules governing IPR proceedings (e.g. 35 U.S.C. 3 15(b) and 37
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`C.F.R. 42.l22(b)). Thus, this situation should already be taken into account by re-
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`spective parties.
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`Moreover, the existence of present circumstances provides parties with more
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`incentive to settle early. A pre—institution settlement in this case would have whol-
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`ly prevented joinder since a party may only join an instituted proceeding.
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`4l85l943.l’
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`"3"
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`
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`Public policy considerations weigh heavily for joinder in this case. When
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`creating IPR proceedings, Congress specifically carved an exception to the 1-year
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`from the service of an infringement suit rule to specifically allow parties that have
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`been sued for infringement to join a proceeding that has been instituted. The pub-
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`lic is served by allowing an interested party threatened by suit to continue a case
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`where the USPTO has found it reasonably likely that the patent is invalid.
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`Additionally, when Congress created that exception to the 1-year rule, it did
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`not create time requirements for filing after institution. The USPTO created the 1-
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`month deadline from institution of Rule 42.122 to encourage timely filing. This
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`deadline balances the policy favoring additional petitioners to join, with the desire
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`to allow for certainty for a patent owner and to guard against harassment. The pre-
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`sent petition was timely filed within the 1-month deadline.
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`C.
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`Joinder Will Have Little to No Effect on the Trial Schedule
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`Bandspeed states that it was unclear whether Petitioner has engaged Dr.
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`Ding as an expert and is able to present him for deposition. Dr. Ding has been en-
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`gaged, and Petitioner is able to present him for deposition.
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`Bandspeed states that Due Date 1 will need to be extended ifjoinder is
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`granted. Any extension of Due Date 1 will be in accommodation to Bandspeed by
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`Petitioner and is necessitated by Bandspeed not having worked to draft their re-
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`sponse for filing within the already existing deadline. In other words, a change in
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`4185 1943.1
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`-4-
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`the schedule would be due to the inaction of Patent Owner. Bandspeed has a re-
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`sponse deadline of September 15, 2015 in the instituted case. The IPR is not ter-
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`minated as of the present date. Bandspeed’s failure to work diligently toward
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`meeting its deadline based on a premature assumption that the PTAB will exercise
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`discretion to terminate the proceeding should not be held against Petitioner when
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`analyzing the propriety ofjoinder in this case.
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`Bandspeed asserts that an extension of Due Date 1 could “compromise the
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`PTAB’s statutorily mandated deadline for a final written opinion.” Petitioner does
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`not see how a minor extension of Due Date 1 (which can be extended by stipula-
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`tion), or any other circurnstance ofthis case arising due to joinder, would cause a
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`need to extend Due Dates 6 and 7 (which cannot be extended by stipulation).
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`III. CONCLUSION
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`For the foregoing reasons, Petitioner respectfully requests that the Board in-
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`stitute its Petition for Inter Panes Review of U.S. Patent No. 7,477,624 and join
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`the proceeding with the ‘3 14 IPR.
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`Dated: August3l,20l5
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`itte,
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`I
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`0. 63,820)
`eg.
`ees
`Nathan J.
`NORTON ROSE FULBRIGHT US LLP
`
`2200 Ross Avenue, Suite 3600
`
`Dallas, Texas 75201-7932
`Tel: 214.855.7164
`
`Fax: 214.855.8200
`
`nate.rees@norton1'osefulbrightcom
`Attorney for Petitioner
`
`cllll5l943.l
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`"5'
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`
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`Certificate of Service
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`Pursuant to 37 C.F.R. § 42.6(e) and 37 C.F.R. § 42.105(a), the undersigned
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`certifies that on August 31, 2015, a complete copy of Petitioner’s Reply to Opposi~
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`tion to Motion for Joinder (“Reply”) was served on the Patent Owner via certified
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`mail, return receipt requested.
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`LEAD COUNSEL
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`BACK-UP COUNSEL
`
`Gregory S. Donahue
`DiNovo Price Ellwanger & Hardy LLP
`7000 North MoPac Expressway
`Suite 350
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`David O. Simmons
`IVC Patent Agency
`P.O. Box 26584
`Austin, TX 78755
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`Austin, TX 78731
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`In addition, a copy of the Reply was electronically served in its entirety on
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`counsel for Petitioner and counsel for Patent Owner in related Case No. lPR20l5—
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`00314:
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`Counsel for Petitioner: Lori A. Gordon (lgordon—PTAB@skgfcom); Robert E.
`Sokohl (rsokohl—PTAB@skgf.com; Jeffrey T. Helvey (jhelvey—PTAB@skgfco1n),
`Sterne Kessler, Goldstein & Fox P.L.L.C.
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`Counsel for Patent Owner: Gregory S. Donahue (gdonahue@dpelaw.com),
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`DiNovo Price Ellwanger & I-Iardy LLP
`
`E
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`Nathan Rees
`
`Attomey for Petitioner
`Registration No. 63,820
`NORTON ROSE FULBRIGHT US LLP
`
`2200 Ross Avenue, Suite 3600
`
`Dallas, Texas 75201-7932
`
`(214) 855-7164
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`418519431
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