`
`Paper No. 10
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`QUALCOMM INCORPORATED
`Petitioner
`
`BANDSPEED, INC.
`
`Patent Owner
`
`IPR2015-01581
`
`U.S. Patent 7,477,624
`
`PETITIONER’S REPLY TO OPPOSITION TO MOTION FOR JOINDER’
`
`41864596. I
`
`
`
`Pursuant to the ORDER entered on August 25, 2015 (Paper 9), Petitioner
`
`files its Reply to “Patent Owner’s Opposition to the Motion for Joinder” (Paper 8).
`
`1.
`
`STATEMENT OF RELEVANT FACTS
`
`On June 11, 2015 the PTAB instituted trial in IPR 2015-00316 (“‘3 16 IPR”)
`
`determining that, based on the asserted grounds, there was a reasonable likelihood
`
`that the claims of U.S. Patent 7,477,624 (“‘624 Patent”) are invalid.
`
`On July 13, 2015, Petitioner timely filed the present petition pursuant to 35
`
`U.S.C. 315(b) and 37 CFR 42.l22(b) with an accompanying motion for joinder.
`
`Bandspeed did not inform the PTAB in the ‘3 16 IPR of the present petition
`
`within the required 21 day timeframe (August 3, 2015). See 37 C.F.R. 42.8.
`
`On August 5, 2015, Bandspeed and Mediatek filed a joint motion to termi-
`
`nate the ‘3 16 IPR proceeding.
`
`II.
`
`THE MOTION FOR J OINDER SHOULD BE GRANTED
`
`A.
`
`Previous PTAB Decisions Favor Joinder
`
`In Nintendo ofAmerica, Ltd. v. Babbage Holdings, Inc. (IPR2015-00568),
`
`the PTAB was faced with a nearly identical situation as the present case (the pri-
`
`mary difference being that Bandspeed has attempted to terminate prior to opposing
`
`joinder, without notifying the PTAB of the new petition). Like the present case, in
`
`Nintendo the joining Petitioner (i) filed the petition within 1-month of institution,
`
`(ii) utilized the same grounds as the instituted petition, (iii) agreed to take an un-
`
`4l864S96.l
`
`-1-
`
`
`
`derstudy role unless and until settlement of the other ‘3 16 IPR Petitioner occurs,
`
`and (iv) noted that the ‘3 16 IPR Petitioner did not oppose this arrangement. In
`
`Nintendo, the patent owner also attempted the same arguments as Bandspeed in
`
`opposition. Specifically, the patent owner stated that (i) the petitioner could have
`
`filed earlier (e.g. with the original petition), and (ii) it is prejudicial to a patent
`
`owner for settlement purposes to allow for joinder.
`
`The PTAB found thatjoinder would not unduly complicate the case because
`
`the newly filed petition did not raise additional issues for review. Further, the pa-
`
`tent owner's arguments regarding settlement were not persuasive at least because
`
`the motion for joinder was on file ml‘ to the motion to terminate and the parties
`
`were aware of the newly filed petition during the settlement negotiations. There-
`
`fore, the motion for joinder was granted. Because circumstances of the present
`
`case are substantively indistinguishable from those of Nintendo, joinder is also ap-
`
`propriate here.
`
`In Bandspeed’s opposition to joinder Google Inc. v. Personal Web Technol-
`
`ogies (IPR20l4-00977) is relied on for the proposition that it is proper to terminate
`
`a proceeding when a joinder motion is present while not allowing for joinder. This
`
`case, however, is easily distinguishable. Specifically, in Google, the PTAB denied
`
`the joinder motion because it was untimely (i.e. filed past the deadline of 37 C.F.R.
`
`42.122), whereas the present motion was timely filed.
`
`4I864596.1
`
`-2-
`
`
`
`B.
`
`Policy Considerations
`
`Bandspeed cites the Trial Practice Guide’s “Settlement” section as an argu-
`
`ment thatjoinder is inappropriate because it may hinder settlement generally for
`
`future parties. The cited portion states that “there are strong public policy reasons
`
`to favor settlement between the parties to a proceeding.” 77 Fed. Reg. 48756,
`
`48758. Nothing about the present motion for joinder impacts the settlement be-
`
`tween Bandspeed and MediaTek (i.e. the parties to the ‘3 16 IPR proceeding). In
`
`other words, the PTAB can approve the present motion for joinder and the ‘316
`
`IPR’s termination motion without hindering any agreement between the parties of
`
`the ‘3 16 proceedings.
`
`Bandspeed speculates thatjoinder will adversely affect settlement generally
`
`in multi-defendant litigation cases because a future hypothetical patent owner must
`
`wait until 1-month after an IPR is instituted to know if other defendants are going
`
`to challenge invalidity. Such plaintiffs are already aware of this circumstance due
`
`to the explicit rules governing IPR proceedings (e.g. 35 U.S.C. 3 l5(b) and 37
`
`C.F.R. 42.122(b)). Thus, this situation should already be taken into account by re-
`
`spective parties.
`
`7
`
`Moreover, the existence of present circumstances provides parties with more
`
`incentive to settle early. A pre~institution settlement in this case would have whol-
`
`ly prevented joinder since a party may only join an instituted proceeding.
`
`41864596. I
`
`-3 -
`
`
`
`Public policy considerations weigh heavily forjoinder in this case. When
`
`creating IPR proceedings, Congress specifically carved an exception to the 1-year
`
`from the service of an infringement suit rule to specifically allow parties that have
`
`been sued for infringement to join a proceeding that has been instituted. The pub-
`
`lie is served by allowing an interested party threatened by suit to continue a case
`
`where the USPTO has found it reasonably likely that the patent is invalid.
`
`Additionally, when Congress created that exception to the 1-year rule, it did
`
`not create time requirements for filing after institution. The USPTO created the 1-
`
`month deadline from institution of Rule 42.122 to encourage timely filing. This
`
`deadline balances the policy favoring additional petitioners to join, with the desire
`
`to allow for certainty for a patent owner and to guard against harassment. The pre-
`
`sent petition was timely filed within the 1-month deadline.
`
`C.
`
`Joinder Will Have Little to No Effect on the Trial Schedule
`
`Bandspeed states that it was unclear whether Petitioner has engaged Dr.
`
`Ding as an expert and is able to present him for deposition. Dr. Ding has been en-
`
`gaged, and Petitioner is able to present him for deposition.
`
`Bandspeed states that Due Date 1 will need to be extended ifj oinder is
`
`granted. Any extension of Due Date 1 will be in accommodation to Bandspeed by
`
`Petitioner and is necessitated by Bandspeed not having worked to draft their re-
`
`sponse for filing within the already existing deadline.
`
`In other words, a change in
`
`41864596. I
`
`-4-
`
`
`
`the schedule would be due to the inaction of Patent Owner. Bandspeed has a re-
`
`sponse deadline of September 15, 2015 in the instituted case. The IPR is not ter-
`
`minated as of the present date. Bandspeed’s failure to work diligently toward
`
`meeting its deadline based on a premature assumption that the PTAB will exercise
`
`discretion to terminate the proceeding should not be held against Petitioner when
`
`analyzing the propriety ofjoinder in this case.
`
`Bandspeed asserts that an extension of Due Date 1 could “compromise the
`
`PTAB’s statutorily mandated deadline for a final written opinion.” Petitioner does
`
`not see how a minor extension ofDue Date 1 (which can be extended by stipula-
`
`tion), or any other circumstance of this case arising due to joinder, would cause a
`
`need to extend Due Dates 6 and 7 (which cannot be extended by stipulation).
`
`III. CONCLUSION
`
`For the foregoing reasons, Petitioner respectfully requests that the Board in-
`
`stitute its Petition for Inter Parres Review of U.S. Patent No. 7,477,624 and join
`
`the proceeding with the ‘3 16 IPR.
`
`Dated: August 31, 2015
`
`W mitt
`
`0. 63,820)
`Nathan J. Rees (Reg.
`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.con1
`Attorney for Petitioner
`
`4 l 3(a45‘)(a l
`
`"'5 '"
`
`
`
`Certificate of Service
`
`Pursuant to 37 C.F.R. § 42.6(e) and 37 C.F.R. § 42.l05(a), the undersigned
`
`certifies that on August 31, 2015, a complete copy of Petitioner’s Reply to Opposi-
`
`tion to Motion for Joinder (“Reply”) was served on the Patent Owner via certified
`
`mail, return receipt requested.
`
`LEAD COUNSEL
`
`BACK-UP COUNSEL
`
`Gregory S. Donahue
`DiNoVo Price Ellwanger & Hardy LLP
`7000 North l\/[oPac Expressway
`Suite 350
`
`David O. Simmons
`IVC Patent Agency
`PO. Box 26584
`Austin, TX 78755
`
`Austin, TX 78731
`
`In addition, a copy of the Reply was electronically served in its entirety on
`
`counsel for Petitioner and counsel for Patent Owner in related Case No. lPR20l5—
`
`00316:
`
`Counsel for Petitioner: Lori A. Gordon (lgordon—PTAB@skgf.com); Robert E.
`Sokohl (rsokohl—PTAB@skgf.com; Jeffrey T. Helvey (jhelvey~PTAB@sl<gf.com),
`Sterne Kessler, Goldstein & Fox P.L.L.C.
`
`Counsel for Patent Owner: Gregory S. Donahue (gdonahue@dpelaw.com),
`
`DiNovo Price Ellwanger& Hardy LLP /
`
`Nathan Rees
`
`Attorney for Petitioner
`Registration No. 63,820
`NORTON ROSE FULBRJGHT US LLP
`
`2200 Ross Avenue, Suite 3600
`
`Dallas, Texas 75201-7932
`
`(214) 855-7164
`
`-ll864596.l