UNITED STATES PATENT AND TRADEMARK OFFICE
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`PaperNo. 2
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`QUALCOMM IN CORPORA TED
`Petitioner
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`v.
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`BANDSPEED, INC.
`Patent Owner
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`IPR2015-01580
`U.S. Patent 7,477,624
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`PETITIONER'S MOTION FOR JOINDER
`UNDER 35 U.S.C. 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b)
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`41780423.1
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
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`Bandspeed, Inc. v. Broadcom Corporation,
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`1: 14-cv-00433 ............................................................................................................................ 3
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`Bands peed, Inc. v. Marvell Semiconductor, Inc.,
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`1: 14-cv-00434 ............................................................................................................................ 3
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`Bands peed, Inc. v. MediaTek, Inc.,
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`1: 14-cv-00435 ............................................................................................................................ 3
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`Bandspeed, Inc. v. Qualcomm Incorporated et a/,
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`1: 14-cv-00436 ............................................................................................................................ 3
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`Bandspeed, Inc. v. STMicroe/ectronics NV et a/,
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`1: 14-cv-00437 ............................................................................................................................ 3
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`Bandspeed, Inc. v. Texas Instruments Incorporated,
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`1: 14-cv-00438 ............................................................................................................................ 3
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`Rules and Statutes
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`35 u.s.c. § 315(b) ....................................................................................................................... 4, 5
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`35 U.S.C. § 315(c) ....................................................................................................................... 1, 4
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`35 U.S.C. § 316(a)(l1 ) ..................................................................................................................... 7
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`Other Authorities
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`37 C.F.R. § 2.196 ...............................
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`4
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`37 C.F.R. § 42.1 OO(c) .......................................................................................................................
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`3 7 C.F.R. § 42.122(a)
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`....................................................................................................................... 4
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`37 C.F.R. § 42.122(b)
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`.............................................................................................................. 1, 4, 5
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`157 CONG. REC. S1376 (daily ed. Mar. 8, 2011) ..........................................................................
`5
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`PT AB Proceedings
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`Dell Inc. v. Network-] Security Solutions, Inc.,
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`IPR20 13-00385 .......................................................................................................................... 4
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`41780423.1
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`Enzymotec Ltd. v. Neptune Techs & Bioresources,
`Inc.,
`IPR2014-00556
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`Nintendo of America Inc., v. Babbage Holdings LLC
`IPR 2015-00568
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`.. . . . . . ...... 2
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`41780423.1
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`I.
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`STATEMENT OF RELIEF REQUESTED
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`Petitioner Qualcomm Incorporated ("Qualcomm") respectfully submits this
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`Motion for Joinder together with a Petition for Inter Partes Review of U.S. Patent
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`No. 7,477,624 ("Petition"). Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. §
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`42.122(b ), Qualcomm requests inter partes review and joinder with Marvell Semi­
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`conductor,
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`Inc. v. Bands peed, Inc., Case IPR20 15-00315 (the '"315 IPR"), in
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`which trial was instituted on Grounds 1, 2, 3 (as modified pursuant to the institu­
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`tion decision), and 4, of the '315 IPR petition on June 11, 2015. Qualcomm's peti­
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`tion is in all material respects the same as the petition in the '315 IPR. No new ar­
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`guments, no new patent claims and no new grounds of unpatentability are added by
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`Qualcomm' s Petition. Qualcomm' s Motion for Joinder and accompanying Petition
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`are being filed within one month of the decision instituting trial in the '315 IPR,
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`and are therefore timely.
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`Qualcomm is filing this petition and joinder motion to ensure that the initiat­
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`ed trial is completed in the event that the current petitioners in the '315 IPR reach
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`settlement with the Patent Owner. Joinder is appropriate here because Qual­
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`comm 's Petition is the same as the '315 IPR petition on which the Board instituted
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`trial. Additionally, joinder will not adversely impact the trial schedule in the '315
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`IPR, as Qualcomm 's legal theories and analysis are identical to those in the '315
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`IPR and Qualcomm relies on the same expert declaration relied on by the existing
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`41780423.1
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`Petitioners in the '3 15 IPR. Consequently, no additional expert discovery will be
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`required if joinder is allowed, simplifying discovery. Furthermore, Qualcomm will
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`adhere to all applicable deadlines set forth by the June 11, 2015 Scheduling Order
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`currently in place in the '315 IPR. Qualcomm will coordinate with counsel for the
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`'315 IPR petitioners regarding the consolidation of all filings and will not submit
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`any separate filings unless Qualcomm's position differs from the position of the
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`'315 IPR petitioners, in which case Qualcomm would limit any additional filing to
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`seven (7) pages or less.1 See Nintendo of America Inc., v. Babbage Holdings LLC
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`IPR 2015-00568 (allowing joinder in when this provision was requested).
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`procedure and continued cooperation of counsel will greatly simplify briefing if the
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`Board permits joinder.
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`Moreover, Qualcomm would be prejudiced if the Board
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`denies the motion for joinder because of the possibility that all petitioners will
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`reach a settlement and successfully move to terminate the proceedings prior to the
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`issuance of a final determination.
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`Any additional costs incurred by the existing parties to the '315 IPR will be
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`minor and do not outweigh the prejudice to Qualcomm that would result from a
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`denial of joinder.
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`Accordingly, joinder is appropriate and will not prejudice any
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`1 Qualcomm will continue on this basis unless and until the '315 IPR is terminated
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`as to all other petitioners. Qualcomm would further forego the contingent request
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`for additional briefing if needed in order to allow for joinder.
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`41780423.1
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`party to the '315 IPR and will not inhibit the just, speedy and inexpensive determi­
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`nation of the proceedings.
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`II. STATEMENT OF MATERIAL FACTS
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`lawsuits filed infringement 1. The '624 Patent was asserted in multiple
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`Inc. v.
`on May 9, 2014, by Patent Owner. These actions are styled as: Bandspeed,
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`STMicroelectronics
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`v. Broadcom Corpo­
`NV eta!, 1: 14-cv-0043 7, Bands peed, Inc.
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`ration, 1:14-cv-00433,
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`Bandspeed, Inc. v. Texas Instruments Incorporated,
`1:14-
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`Bandspeed, Inc. v. Qualcomm Incorporated
`cv-00438,
`et al, 1: 14-cv-00436,
`Band­
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`speed, Inc. v. Marvell Semiconductor,
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`Inc., 1: 14-cv-00434, and Bands peed, Inc. v.
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`MediaTek, Inc., 1: 14-cv-0043 5, all in the Western District of Texas.
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`a com-2. On May 14, 2014, Qualcomm Incorporated was served with
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`Bands peed, Inc. v. Qualcomm Incorporated
`plaint captioned
`et al, 1: 14-cv-00436
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`alleging infringement of the '624 patent.
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`Review challeng-3. On November 26, 2014, a Petition for Inter Partes
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`ing claims 5-8 and 17-20 was filed by Marvell Semiconductor, Inc., MediaTek,
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`Inc., and MediaTek U SA, Inc.
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`was entered 4. On June 11, 2015, a decision instituting trial was entered
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`in Case IPR20 15-00315 on the grounds 1, 2, 3 (as modified) and 4.
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`5. The present petition and motion for joiner are filed within 1-month of
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`the institution decision. July 11, 2015 fell on a Saturday. This petition and motion
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`41780423.1
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`for joinder are filed on the next succeeding business day. 37 C.F.R. § 2.196.
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`III. STATEMENT OF REASONS FOR REQUESTED RELIEF
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`A. Legal Standard
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`The Leahy-Smith America Invents Act (AlA) permits joinder of like review
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`proceedings, e.g. an inter partes review may be joined with another
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`review.
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`3 7 C.F .R. § 42.122( a). The Board has discretion to join parties to an ex­
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`its whether to exercise isting inter partes review. 35 U.S.C. § 315(c). In deciding
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`discretion, the Board considers factors including: ( 1) the movant's reasons why
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`joinder is appropriate; (2) whether the new petition presents any new grounds of
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`unpatentability; (3) what impact (if any) joinder would have on the trial schedule
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`for the existing review; and ( 4) how briefing and discovery may be simplified.
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`Dell Inc. v. Network-] Security Solutions,
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`Inc., IPR2013-00385, Paper No. 17 at 4
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`(July 29, 2013).
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`B. Qualcomm 's Motion for Joinder is Timely
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`The instant Petition and this Motion for Joinder are timely under 35 U.S.C. §
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`315(c) and 37 C.F.R. § 42.122(b). While, as a general proposition, a petition for
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`inter partes review may not be filed more than one year after the date on which a
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`petitioner is served with a cotnplaint alleging infringement of the patent-at-issue
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`(35 U.S.C. § 315(b)), the one year period does not apply when a petition for inter
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`partes review is accompanied by a motion for joinder filed within one month of
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`institution of the inter partes review for which joinder is requested. !d.; 3 7 C.F .R.
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`§ 42.122(b). This Motion for Joinder and the accompanying Petition are timely, as
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`they are submitted within one month of the institution of trial on the '315 IPR.
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`C. Joinder is Appropriate
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`The PT AB has previously stated that it is "mindful of a policy preference for
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`joining a party that does not present new issues that might complicate or delay an
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`existing proceeding."
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`Enzymotec Ltd. v. Neptune Techs & Bioresources, Inc.,
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`IPR2014-00556, Paper No. 19 at 6 (July 9, 2014) (citing 157 CONG. REC. S 1376
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`(daily ed. Mar. 8, 2011) (statement of Sen. Kyl) ("The Office anticipates that join­
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`der will be allowed as of right -if an inter partes review is instituted on the basis
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`of a petition, for example, a party that files an identical petition will be joined to
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`that proceeding, and thus allowed to file its own briefs and make its own argu­
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`the same patent claims on the same ments.")). Qualcomm's Petition challenges
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`ground on which trial in the '315 IPR was instituted, and relies on the same legal
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`theories and expert declaration relied on by the '315 IPR petitioners.
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`Qualcomtn is currently in communication with counsel for the '315 IPR pe-
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`2 In support of its Petition Qualcomm has submitted the same Declaration of Dr.
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`Zhi Ding submitted in support of the '315 IPR petition.
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`41780423.1
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`titioners and will cooperate on all briefing and discovery.3 No new claims and no
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`new grounds will be added to the proceedings as a result of the Board allowing
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`joinder. Thus, Patent Owner should not require a substantial amount of time to
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`prepare its response.
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`Because Qualcomm' s Petition is drafted to be materially the
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`same as the petition upon which the '315 IPR trial has been instituted, joinder will
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`result in no substantial additional cost to any party. Therefore, no party will be
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`prejudiced if the Board permits joinder.
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`Joinder will not alter the trial schedule currently in place in the '315 IPR be­
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`cause both Qualcomm and the existing '315 IPR petitioners will address the same
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`prior art using the same expert, resulting in no additional expert discovery. More­
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`over, Qualcomm has agreed to adhere to all applicable deadlines set forth in the
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`'315 IPR Scheduling Order and will coordinate with counsel for the '315 IPR peti­
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`tioners to consolidate filings. Unless and until all '315 petitioners settle with the
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`patent owner, Qualcomm would take an understudy role; it will not submit any
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`separate filings to the PTO unless it disagrees with the positions of the current peti­
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`tioners (which is not anticipated), and in the event of such disagreement it would
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`Petition challenges submit a filing not exceeding seven pages. Since Qualcomm's
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`no additional claims and raises no new grounds of unpatentability, joinder should
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`3 MediaTek, Inc., and MediaTek U SA, Inc. do not oppose Qualcomm's Motion for
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`Joinder.
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`41780423.1
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`not unduly affect the Board's ability to complete its review and issue its final de­
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`termination within the statutory time limits under 35 U.S.C. § 3 16(a)(ll) and 37
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`impact on the '315 C.F .R. § 42.1 00( c). Therefore, joinder will have no adverse
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`IPR Scheduling Order.
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`Qualcomm is filing this petition and joinder motion to ensure that the trial is
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`completed in the event that the current petitioners in the '315 IPR reach settlement
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`with the Patent Owner. Given that the patent owner has filed a joint motion to set­
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`tle with respect to one petitioner, this is a significant concern. Qualcomm would
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`be prejudiced if the Board denies the motion for joinder because Qualcomm's in­
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`terests may not be adequately represented under all circumstances in the '3 15 IPR,
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`particularly in the event that all petitioners reach a settlement and successfully
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`move to terminate the proceedings prior to the issuance of a final determination.
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`IV. CONCLUSION
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`For the foregoing reasons, Qualcomm respectfully requests that the Board
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`institute its Petition for Inter Partes Review of U.S. Patent No. 7,477,624 and join
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`the proceeding with MediaTek, Inc., and MediaTek USA, Inc., Case IPR2015-
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`00315. Although it is believed that no fee is required for this Motion, the Commis­
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`sioner is hereby authorized to charge any fees that may be required for this Motion
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`to Deposit Account 06-2380.
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`41780423.1
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`Dated: July 13,2015
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`Nathan J. Rees (Reg. No. 63,820)
`NORTON ROSE FULBRIGHT US LLP
`2200 Ross Avenue, Suite 3600
`Dallas, Texas 75201-7932
`Tel: 214.855.7164
`Fax: 214.855.8200
`nate.rees@nortonrosefulbright.com
`Attorney for Petitioner
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`� 1780423.1
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`-8-
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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. § 42.1 05(a), the undersigned
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`certifies that on July 13, 2015, a complete copy of Petitioner's Motion for Joinder
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`Under 35 U.S.C. 315(c) and 37 C.F.R. §§ 42.22 AND 42.122(b) ("Motion") was
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`served on the Patent Owner via Federal Express®.
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`HICKMAN PALERMO TRUONG BECKER BINGHAM WONG LLP
`I ALMADEN BOULEY ARD
`FLOOR 12
`SAN JOSE, CA 95113
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`In addition, a copy of the Motion was electronically served in its entirety on
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`counsel for Petitioner and counsel for Patent Owner in related Case No. IPR20 15-
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`00315:
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`Lori A. Gordon (lgordon-PTAB@skgf.com); Robert E.
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`Counsel for Petitioner:
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`Sokohl (rsokohi-PTAB@skgf.com; Jeffrey T. Helvey Qhelvey-PT AB@skgf.com),
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`& Fox P.L.L.C. Sterne Kessler, Goldstein
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`Counsel for Patent Owner: Gregory S. Donahue (gdonahue@dpelaw.com),
`DiNovo Price Ellwanger & Hardy LLP
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`NORTO ROSE FULBRIGHT US LLP
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`Nathan Rees
`Attorney for Petitioners
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`Registration No. 63,820
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`Date: July 13,2015
`2200 Ross Avenue, Suite 3600
`Dallas, Texas 75201-7932
`(214) 855-7164
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`-11780-123.1