IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`QUALCOMM INCORPORATED,
`Petitioner
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`v.
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`BANDSPEED, INC.,
`Patent Owner
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`Case IPR2015-01581
`Patent No. 7,477,624
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`PATENT OWNER’S OPPOSITION TO 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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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`QUALCOMM INCORPORATED,
`Petitioner
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`v.
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`BANDSPEED, INC.,
`Patent Owner
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`Case IPR2015-01581
`Patent No. 7,477,624
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`PATENT OWNER’S OPPOSITION TO 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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`
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`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
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`Case IPR2015-01581
`Patent No. 7,477,624
`
`I.
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`INTRODUCTION
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`Pursuant to 37 C.F.R. § 42.23 and the express authorization given by the
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`Patent Trial and Appeal Board (“PTAB” or “Board”) in Paper Number 7 of this
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`proceeding, Patent Owner Bandspeed (“Bandspeed” or “Patent Owner”) files this
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`Opposition to Petitioner’s Motion for Joinder Under 35 U.S.C. § 315(c) and 37
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`C.F.R. §§ 42.22 and 42.122(b). The Board should exercise its discretion to deny
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`joinder under the facts of this proceeding. Denial of joinder would serve public
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`policy interests, avoid scheduling issues and be consistent with PTAB inter partes
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`review (“IPR”) precedent.
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`II.
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`STATEMENT OF RELEVANT FACTS
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`On May 14, 2014 Qualcomm Incorporated (“Qualcomm”) was served with a
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`complaint captioned Bandspeed, Inc. v. Qualcomm Incorporated et al., 1:14-cv-
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`00436, alleging infringement of U.S. Patent No. 7,477,624 (“’624 Patent”).
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`Despite service of this complaint Qualcomm elected not to file an IPR related to
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`the ‘624 Patent during the twelve (12) month window after service provided under
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`35 U.S.C. § 315(b).
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`On June 11, 2015, the PTAB instituted trial in IPR2015-00316, involving
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`the ‘624 Patent, which was originally filed by Marvell Semiconductor, Inc.
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`(“Marvell”) and MediaTek, Inc. and MediaTek USA, Inc. (“MediaTek”). On June
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`10, 2015, one day prior to institution, the PTAB granted Marvell and Bandspeed’s
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`Case IPR2015-01581
`Patent No. 7,477,624
`joint request to terminate the proceedings with respect to Marvell only. On the last
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`possible day under 37 C.F.R. §42.122(b), July 13, 2015, Petitioner Qualcomm filed
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`its motion for joinder of the instant petition with IPR2015-00316. On August 5,
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`2015, MediaTek and Bandspeed filed their joint motion to terminate IPR2015-
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`00316 after settlement of the litigation involving the underlying patent.1
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`1 Patent Owner Bandspeed has reviewed the Statement of Material Facts
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`contained in Petitioner’s Motion for Joinder Under 35 U.S.C. 315(c) and 37 C.F.R.
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`§§ 42.22 and 42.122(b). While Bandspeed generally agrees with the recitation of
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`material facts contained therein, there are several instances in which the recited
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`facts appear to contain typographical errors or are ambiguous. Paragraph 2 of the
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`material facts references the ‘608 patent when it is believed the ‘624 patent should
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`have been referenced. Paragraph 3 of the material facts mentions a petition for IPR
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`challenging certain claims but no specific patent or IPR number is referenced. It is
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`believed that the IPR being referred to is IPR2015-00316 and the patent being re-
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`ferred to is the ‘624 patent. Paragraph 4 of the material facts mentions trial being
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`instituted in IPR2015-00316 for ground 3 (as modified) but it is unclear what “as
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`modified” means. Nevertheless, it is not believed that any of these issues with re-
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`spect to Petitioner’s statement of material facts are relevant for purposes of decid-
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`Case IPR2015-01581
`Patent No. 7,477,624
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`III. LEGAL AUTHORITY AND ARGUMENT
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`A.
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`Joinder of IPR Proceedings is Discretionary
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`The decision whether to join two IPR proceedings is entirely discretionary,
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`and the Petitioner, as the moving party in this instance, bears the burden to show
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`that joinder is appropriate. See ZTE Corporation, ZTE (USA) Inc. and T-Mobile
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`USA Inc. v. Adaptix, Inc., Case IPR2015-01184, Paper 10 at 4. See also 35 U.S.C.
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`§ 315(c) and 37 C.F.R. § 42.20(c). 35 U.S.C. § 315 provides in pertinent part:
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`JOINDER.—If the Director institutes an inter partes
`(c)
`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.
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`When exercising its discretion on joinder, the PTAB “is mindful that patent
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`trial regulations, including the rules of joinder, must be construed to secure the
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`just, speedy, and inexpensive resolution of every proceeding…As indicated in the
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`legislative history, the Board will determine whether to grant joinder on a case-by-
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`case basis, taking into account the particular facts of each case.” See ZTE
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`Corporation, ZTE (USA) Inc. and T-Mobile USA Inc. v. Adaptix, Inc., Case
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`ing the instant motion. Patent Owner Bandspeed has recited additional facts herein
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`that may be relevant to this motion for the PTAB’s consideration.
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`Patent No. 7,477,624
`IPR2015-01184, Paper 10 at 6. Pursuant to the legislative history on joinder, the
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`consent of the patent owner is also an important consideration. Id. at 7. Because
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`both scheduling and policy considerations favor denial of joinder and because the
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`PTAB has previously terminated IPR proceedings even when there is a pending
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`motion to join, Patent Owner Bandspeed requests that joinder be denied.
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`B.
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`PTAB Precedent Allows for Denial of Joinder Request
`and Termination of Instituted IPR Proceeding
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`The PTAB has previously exercised its discretion to terminate an instituted
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`IPR despite a pending motion for joinder with the instituted IPR filed in another
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`IPR prior to the filing of a motion to terminate the instituted IPR. Google Inc. and
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`YouTube, LLC v. Personal Web Technologies, LLC and Level 3 Communications,
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`LLC, IPR2014-00977, Paper 10. In IPR2014-00977, Google, Inc. (“Google”)
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`sought to join an already instituted IPR2014-00059 between Rackspace US, Inc.
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`(“Rackspace”) and Personal Web Technologies, LLC (“Personal Web”). Id. at 4.
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`IPR2014-00059 was instituted on April 15, 2014 and Google filed its motion for
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`joinder on June 18, 2014.2 Id. On October 16, 2014, Rackspace and Personal Web
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`2 Google’s motion to join was also ultimately determined to be untimely (i.e.
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`filed more than one month after the time limit imposed under 37 C.F.R.
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`§42.122(b)), and in denying the motion for joinder, the PTAB noted that the mo-
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`tion for joinder was moot because the proceeding to be joined had been terminated.
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`Patent No. 7,477,624
`filed a joint motion to terminate IPR2014-00059 with respect to all parties as well
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`as a true copy of their written settlement agreement. Id. at 6. Hence, PTAB
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`precedent clearly permits the Board to grant a motion to terminate in an instituted
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`IPR even when a motion for joinder with that IPR is pending and filed prior to a
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`motion to terminate that IPR is filed.3
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`Public Policy and Scheduling Concerns Favor Denial of
`C.
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`Qualcomm’s Joinder Request
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`The PTAB terminated the instituted IPR even though the motion to join had been
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`filed prior to the motion to terminate. Id. at 5-6.
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`3Patent Owner is aware of one decision in which the PTAB permitted joinder
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`even though a patent owner and original petitioner intended to file a motion to ter-
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`minate in the near future but had not done so yet and a motion for joinder had al-
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`ready been filed. Nintendo of America, Inc. and Nintendo Co., Ltd. v Babbage
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`Holdings, LLC, Case IPR2015-00568 (Paper 12). However, the Patent Owner is
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`not aware of any instances where the PTAB has permitted joinder when a motion
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`for termination has already been filed and joinder had not yet been perfected (i.e.
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`there had been no decision on joinder even if a pending motion for joinder existed).
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`Even if such decisions exist, both joinder with and termination of the instituted IPR
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`would be discretionary with the PTAB and joinder still should not be permitted in
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`this proceeding for public policy and scheduling reasons discussed infra.
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`Patent No. 7,477,624
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`1.
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`Denial of Joinder and Termination of Instituted IPR
`Would Encourage Early Settlement
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`The PTAB should exercise its discretion to not permit joinder at this stage of
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`IPR2015-00316. Permitting joinder under these circumstances would discourage
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`future settlements—particularly early settlements. Public policy favors allowing
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`parties to settle pending IPRs. The United States Patent and Trademark Office’s
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`Guide states:
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`N. Settlement. There are strong public policy reasons to favor
`settlement between the parties to a proceeding. The Board will be
`available to facilitate settlement discussions, and where appropriate,
`may require a settlement discussion as part of the proceeding. The
`Board expects that a proceeding will terminate after the filing of a
`settlement agreement, unless the Board has already decided the merits
`of the proceeding. The Office Patent Trial Practice Guide, 77 Fed.
`Reg. 48756, 48768 (Aug. 14 2012).
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`Consistent with this policy the PTAB should not permit late joinder when
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`the original petitioner and patent owner settle and file a motion to terminate an
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`instituted IPR prior to a decision on joinder of the instituted IPR with another
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`proceeding. A contrary decision would mean far fewer settlements will occur in
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`multi-defendant cases until at least one month after institution of an IPR (possibly
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`several months after institution if the original petitioner and patent owner must
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`wait to see if another defendant is permitted to join after that defendant files a
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`motion to join) because the patent owner will always be concerned that even if it
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`settles with the original petitioner, another defendant will seek to join or be
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`Patent No. 7,477,624
`permitted to join the instituted IPR that would otherwise likely be terminated,
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`depriving the patent owner of much of the value of its settlement with the original
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`petitioner.
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`If joinder of two IPRs has not been perfected prior to a motion for
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`termination being filed by all of the original parties to an instituted IPR, it should
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`not be permitted. If the petitioner attempting to join the instituted IPR is not time-
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`barred under 35 U.S.C. § 315(b), then its petition should simply proceed on its own
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`timeline. If the petitioner is time barred, then it only has itself to blame for not
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`filing an IPR until well over a year after being served with a complaint and
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`attempting to rely on an IPR that it has no role in until after joinder is perfected and
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`that is filed by another entity that it does not control.
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`2.
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`Joinder Would Create Scheduling Issues
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`Because the rules of joinder must be construed to secure the just, speedy,
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`and inexpensive resolution of every proceeding, scheduling concerns that may
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`arise are of paramount importance in determining whether joinder is appropriate.
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`See Kyocera Corporation v. Softview LLC, Case IPR2013-00004, Paper 15 at 3. In
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`this case it is particularly difficult to ascertain how the already instituted IPR2015-
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`00316 would proceed without undue delay and major adjustments to the existing
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`scheduling order. According to MediaTek’s counsel, the expert declarant, Dr. Zhi
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`Ding, who MediaTek utilized to support its IPR2015-00316 petition is currently
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`Patent No. 7,477,624
`located in Shanghai, China. MediaTek’s counsel was in the process of making ar-
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`rangements to bring him to the United States for a deposition prior to the agreed
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`patent owner response deadline of September 15, 2015. However, to Bandspeed’s
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`knowledge, MediaTek is no longer making any such efforts to arrange a deposition
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`due to its settlement with Bandspeed and the imminent termination of MediaTek
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`from IPR2015-00316. While Qualcomm has copied Dr. Ding’s expert declaration
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`in support of its IPR2015-01581, it is unclear whether it has also engaged Dr. Ding
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`as an expert in IPR2015-01581 or whether it will be able to exert control over him
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`to bring him to the United States prior to the current patent owner response dead-
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`line.
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`Moreover, 35 U.S.C. § 315(c), discussed supra, requires that the PTAB
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`permit the filing of a preliminary response under 37 C.F.R. § 42.107 in IPR2015-
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`01581 and, after reviewing it, make an institution decision prior to joining
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`IPR2015-01581 with IPR2015-00316. Even if the preliminary response in
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`IPR2015-01581 was expedited and filed prior to its current due date of October 28,
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`2015, it would still likely be due after September 15, 2015, the current due date for
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`patent owner’s response under 37 C.F.R. § 42.120 in IPR2015-00316. See Medi-
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`aTek Inc. and MediaTek USA, Inc. v. Bandspeed, Inc., Case IPR2015-00316, Paper
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`16 and Qualcomm Incorporated v. Bandspeed, Inc., Case IPR2015-01581, Paper 4.
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`Consequently, joining IPR2015-01581 to IPR2015-00316 would require a signifi-
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`Patent No. 7,477,624
`cant adjustment to the current schedule for IPR2015-00316, including a postpone-
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`ment of Due Date 1 for the patent owner’s response under 37 C.F.R. § 42.120 and
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`could compromise the PTAB’s statutorily mandated deadline for a final written
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`opinion under 35 U.S.C. 316(a)(11) and 37 C.F.R. § 42.100.
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`IV. CONCLUSION
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`The PTAB should exercise its discretion to deny joinder. Public policy and
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`scheduling considerations weigh in favor of denial of joinder. PTAB precedent
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`and the legislative history of the joinder and settlement provisions further support
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`that joinder should be denied under the present fact pattern, particularly when the
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`patent owner objects to such joinder and the petitioner attempting to join has
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`deliberately chosen not to file an IPR petition within the one year window
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`permitted under 35 U.S.C. § 315(b) and filed its motion to join another entity’s IPR
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`on the last possible day permitted under 35 U.S.C. § 315(c) and 37 C.F.R. §
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`42.122(b).
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`Date: August 20, 2015
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`Respectfully submitted,
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` /s/ Gregory S. Donahue
`Gregory S. Donahue, Registration No. 47,531
`DiNOVO PRICE ELLWANGER & HARDY LLP
`7000 North MoPac Expressway
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`Patent No. 7,477,624
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`Suite 350
`Austin, Texas 78731
`(512) 539-2626
`Attorney for Patent Owner
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`Case IPR2015-01581
`Patent No. 7,477,624
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`Appendix A - Exhibit List
`
`Description
`U.S. Patent No. 7,477,624 to Gan et al., issued January 13,
`2009 (“The ’624 Patent”)
`Declaration of Dr. Zhi Ding in Support of Petition for Inter
`Partes Review of U.S. Patent No. 7,477,624 November 24,
`2014 (“Ding Decl.”)
`
`U.S. Patent No. 6,760,319 to Gerten et al., issued July 6, 2004
`(“Gerten”)
`U.S. Patent No. 6,418,317 to Cuffaro et al., issued July 9,
`2002 (“Cuffaro”)
`U.S. Patent No. 6,115,407 to Gendel et al., issued September
`5, 2000 (“Gendel”)
`U.S. Patent No. 7,280,580 to Haartsen, issued October 9,
`2007 (“Haartsen”)
`U.S. Patent No. 5,781,582 to Sage et al., issued July 14, 1998
`(“Sage”)
`Non-Final Office Action mailed January 12, 2012, Inter
`Partes Reexamination of U.S. Patent No. 7,027,418, Control
`No. 95/000648 (“Non-Final Office Action”)
`Patent Owner’s Housekeeping Amendment, filed February
`11, 2013 in Inter Partes Reexamination of U.S. Patent No.
`7,027,418, Control No. 95/000648 (“Housekeeping Amend-
`ment”)
`Patent Owner’s Comments after Action Closing Prosecution,
`filed December 3, 2013 in Inter Partes Reexamination of U.S.
`Patent No. 7,027,418, Control No. 95/000648 (“Comments
`After ACP”)
`Definition of “vote,” The American Heritage Dictionary, Sec-
`ond College Edition, Boston: Houghton Mifflin Company,
`1985; p. 1356
`Definition of “while,” The American Heritage Dictionary,
`Second College Edition, Boston: Houghton Mifflin Company,
`1985; p. 1376
`Definition of “Register,”– Microsoft Press Computer Diction-
`ary, 3rd Edition, Redmond, WA: Microsoft, 1997; p. 402
`Curriculum Vitae of Zhi Ding, Ph.D.
`
`Exhibit No.
`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`1013
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`1014
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`Case IPR2015-01581
`Patent No. 7,477,624
`U.S. Patent No. 7,027,418 to Gan et al., issued April 11, 2006
`Specification of the Bluetooth System, Version 1.0B, Decem-
`ber 1, 1999
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`1015
`1016
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`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(e), 42.105(a))
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`The undersigned hereby certifies that the above-captioned PATENT OWN-
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`ER’S OPPOSITION TO PETITIONER’S MOTION FOR JOINDER UNDER
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`35 U.S.C. 315(C) AND 37 C.F.R. §§ 42.22 AND 42.122(B) was served in its en-
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`tirety on August 20, 2015 on the following parties via electronic mail:
`
`
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`
`
`NORTON ROSE FULBRIGHT US LLP
`2200 Ross Avenue, Suite 3600
`Dallas, Texas 75201-7932
`nate.rees@nortonrosefulbright.com
`richard.zembek@nortonrosefulbright.com
`eric.hall@nortonrosefulbright.com
`ross.viguet@nortonrosefublright.com
`
`
`
` /s/ Gregory S. Donahue
`
` Gregory S. Donahue
` DINOVO PRICE ELLWANGER & HARDY, LLP
`Attorney for Patent Owner
`Registration No. 47,531
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