Paper No. 3
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________
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`
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`SAMSUNG ELECTRONCIS CO., LTD.
`Petitioner
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`v.
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`SUMMIT 6 LLC
`Patent Owner
`_______________
`
`
`
`IPR2016-00029
`U.S. Patent 7,765,482
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`_______________
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`
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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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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`
`
`SAMSUNG ELECTRONCIS CO., LTD.
`Petitioner
`
`v.
`
`SUMMIT 6 LLC
`Patent Owner
`_______________
`
`
`
`IPR2016-00029
`U.S. Patent 7,765,482
`
`_______________
`
`
`
`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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`TABLE OF AUTHORITIES
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`Rules and Statutes
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`35 U.S.C. § 315(a)(11) ............................................................................................ 7
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`35 U.S.C. § 315(b) ................................................................................................ .. 5
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`35 U.S.C. § 315(c) .............................................................................................. 4, 5
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`Other Authorities
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`37 C.F.R. § 42.100(c)............................................................................................... 7
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`37 C.F.R. § 42.122(a)............................................................................................... 4
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`37 C.F.R. § 42.122(b) ............................................................................................. 5
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`157 CONG. REC. 81376 (daily ed. Mar. 8, 2011) .................................................. 5
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`
`
`
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`PTAB Proceedings
`
`Dell Inc. v. Network-I Security Solutions, Inc.,
` IPR20 13-00385 …................................................................................................. 5
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`Enzymotec Ltd. v. Neptune Techs & Bioresources, Inc.,
` IPR2014-0556........................................................................................................ 5
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`i
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`I.
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`STATEMENT OF RELIEF REQUESTED
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`Petitioner Samsung Electronics Co., Ltd. ("Samsung") respectfully submits
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`this Motion for Joinder together with a Petition for Inter Partes Review of U.S.
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`Patent No. 7,765,482 ("Petition"). Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. §
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`42.122(b ), Samsung requests inter partes review and joinder with Google, Inc. v.
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`Summit 6, LLC, Case IPR2015-00806 (the "806 IPR"), in which trial was instituted
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`on Grounds 1 and 2 of the 806 IPR petition on September 9, 2015. Samsung’s
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`petition is identical in all material respects to the 806 IPR petition, and is supported
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`by the same expert declaration from the same expert. No new grounds, claims,
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`prior art, arguments, evidence, or witnesses are added by Samsung’s Petition.
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`Samsung’s Motion for Joinder and accompanying Petition are being filed within
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`one month of the decision instituting trial in the 806 IPR, and are therefore timely.
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`Samsung previously requested ex parte reexamination of the patent at issue
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`in the 806 IPR and this petition. See Reexamination Control No. 90/012,987. In
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`that reexamination, Summit 6 had appealed the final rejection of all claims at issue
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`to the Board, and a hearing had been set for November 10, 2015. Patent Owner
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`filed a motion to stay the Samsung-requested reexamination pending the 806 IPR.
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`Paper No. 22, IPR2015-00806. Samsung’s request for leave to file an amicus brief
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`in opposition to Patent Owner’s motion to stay was denied. Ex. 1015. On October
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`7, 2015, the Board stayed the Samsung-requested reexamination pending the 806
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`IPR. Paper No. 26, IPR2015-00806.
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`Samsung is filing this petition and joinder motion to ensure that the
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`instituted trial is completed in the event that the petitioner in the 806 IPR, Google,
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`reaches a settlement with the Patent Owner. Joinder is appropriate here because
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`Samsung’s Petition is the same as the 806 IPR petition on which the Board
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`instituted trial. Additionally, joinder will not adversely impact the trial schedule in
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`the 806 IPR, as Samsung’s legal theories and analysis are identical to those in the
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`806 IPR and Samsung relies on the same expert declaration relied on by the
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`existing Petitioners in the 806 IPR. Consequently, no additional expert discovery
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`will be required if joinder is allowed, simplifying discovery. Furthermore,
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`Samsung will adhere to all applicable deadlines set forth in the Scheduling Order
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`currently in place in the 806 IPR, as modified by the stipulation of the parties.
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`Papers 20 and 25, IPR2015-00806. Samsung will coordinate with counsel for
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`Google regarding the consolidation of all filings and will not submit any separate
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`filings, unless and until Google settles with Patent Owner or the 806 IPR is
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`otherwise terminated as to Google. Google does not oppose this motion.
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` This procedure and continued cooperation of counsel will greatly simplify
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`briefing if the Board permits joinder. Moreover, Samsung would be prejudiced if
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`the Board denies the motion for joinder because of the possibility that Google 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 806 IPR will be
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`minor and do not outweigh the prejudice to Samsung that would result from a
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`denial of joinder. Accordingly, joinder is appropriate and will not prejudice any
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`party to the 806 IPR and will not inhibit the just, speedy and inexpensive
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`determination of the proceedings.
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`II.
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`STATEMENT OF MATERIAL FACTS
`1.
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`The ’482 Patent has been asserted in multiple infringement lawsuits as
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`follows: Summit 6 LLC v. Research in Motion et al., 3:11-cv-00367, Summit 6
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`LLC v. HTC et al., 7:14-cv-00014, Summit 6 LLC v. Apple, 7:14-cv-00106, Summit
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`6 v. Twitter, 7:15-cv-0062, all in the Northern District of Texas.
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`2.
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`On or about March 9, 2011, Samsung Electronics Co, Ltd. agreed to
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`waive service of a complaint in Summit 6 LLC v. Research in Motion et al. alleging
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`infringement of the ’482 patent. Samsung’s wholly owned subsidiary at the time,
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`Samsung Telecommunications America LLC (which subsequently merged into
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`Samsung Electronics America, Inc.), was served with the same complaint on or
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`about February 28, 2011. On September 21, 2015, the Federal Circuit issued an
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`opinion in an appeal of that litigation. The mandate has not yet issued.
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`3.
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`Samsung filed a request for ex parte reexamination of the ’482 patent,
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`which resulted in reexamination number 90/012,987. In that reexamination, the
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`Board set a hearing on November 10, 2015 to hear argument regarding Summit 6’s
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`appeal of the final rejection of all claims at issue. Paper 26, IPR 2015-00806
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`(discussing history of reexamination).
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`4.
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`Google filed the 806 IPR Petition on February 25, 2015. Paper 1,
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`IPR2015-00806.
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`5.
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`The Board entered an order instituting trial in the 806 IPR on
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`September 9, 2015. Paper 19, IPR 2015-00806.
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`6.
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`The Board stayed the Samsung-requested reexamination pending the
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`806 IPR on October 7, 2015. Paper 26, IPR2015-00806.
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`7.
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`The present petition and motion for joiner are filed on October 8,
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`2015, within 1-month of the institution decision in the 806 IPR.
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`III. STATEMENT OF REASONS FOR REQUESTED RELIEF
`A. Legal Standard
`The Leahy-Smith America Invents Act (AIA) permits joinder of like review
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`proceedings, e.g. an inter partes review may be joined with another inter partes
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`review. 37 C.F.R. § 42.122(a). The Board has discretion to join parties to an
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`existing inter partes review. 35 U.S.C. § 315(c). In deciding whether to exercise
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`its 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-1 Security Solutions, Inc., IPR2013-00385, Paper No. 17 at 4
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`(July 29, 2013).
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`Samsung’s Motion for Joinder is Timely
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`B.
`The instant Petition and this Motion for Joinder are timely under 35 U.S.C. §
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`315(c) and 3 7 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 complaint 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. Id.; 37 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 ’806 IPR.
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`Joinder is Appropriate
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`C.
`The PTAB 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." 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. S1376
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`(daily ed. Mar. 8, 2011) (statement of Sen. Kyl) ("The Office anticipates that
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`joinder will be allowed as of right – if an inter partes review is instituted on the
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`basis of a petition, for example, a party that files an identical petition will be joined
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`to that proceeding, and thus allowed to file its own briefs and make its own
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`arguments.")). Samsung’s Petition challenges the same patent claims on the same
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`ground on which trial in the 806 IPR was instituted, and relies on the same legal
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`theories and expert declaration relied on by the 806 IPR petitioners.
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`Samsung is currently in communication with counsel for Google and the
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`common expert declarant, 1 and will cooperate on all briefing and discovery.
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`Google does not oppose this motion. No new claims and no new grounds will be
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`added to the proceedings as a result of the Board allowing joinder. Patent Owner
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`did not move for rehearing of the order instituting the 806 IPR. To the extent
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`Patent Owner files a preliminary response to Samsung’s duplicative petition, it
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`should not require a substantial amount of time to prepare. Because Samsung’s
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`Petition is drafted to be materially the same as the petition upon which the 806 IPR
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`trial has been instituted, joinder will result in no substantial additional cost to any
`
`party. Therefore, no party will be prejudiced if the Board permits joinder.
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`Joinder will not alter the trial schedule currently in place in the 806 IPR
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`because both Samsung and Google will address the same prior art using the same
`
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`1 In support of its Petition Samsung has submitted the same Declaration of Dr. Paul
`Clark that was submitted in support of the 806 IPR petition.
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`expert, resulting in no additional expert discovery. Moreover, Samsung has agreed
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`to adhere to all applicable deadlines set forth in the 806 IPR Scheduling Order and
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`will coordinate with counsel for Google to consolidate filings. Unless and until
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`Google settles with the Patent Owner, Samsung would take an understudy role; it
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`will not submit any separate filings to the PTO. Since Samsung’s Petition
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`challenges no additional claims, raises no new grounds of unpatentability, and
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`relies on no new evidence, joinder should not unduly affect the Board’s ability to
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`complete its review and issue its final determination within the statutory time
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`limits under 35 U.S.C. § 315(a)(11) and 37 C.F .R. § 42.100(c). Therefore, joinder
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`will have no adverse impact on the 806 IPR Scheduling Order. This is made even
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`more certain by the fact that the parties to the 806 IPR have already stipulated to
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`certain extensions in Due Dates 1-4. Paper 25, IPR2015-00806.
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`Samsung 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 806 IPR reach settlement
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`with the Patent Owner. Samsung would be prejudiced if the Board denies the
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`motion for joinder because Samsung’s interests may not be adequately represented
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`under all circumstances in the 806 IPR, particularly in the event that all petitioners
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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. Patent Owner’s serial litigation and settlement
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`strategy, which has resulted in serial IPRs and may continue to result in additional
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`IPRs, makes this a significant concern. Additionally, Patent Owner previously has
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`attempted to stay the Samsung-requested reexamination in light of other petitions
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`for IPR, specifically, IPR2015-00685, 686, 687 and 688, before those petitions
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`were dismissed based on settlement. See, e.g., Exhibit 1029 in IPR2015-00685
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`(transcript of telephone conference requesting permission to file a motion to stay).
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`Given its history, Patent Owner may settle with Google to dismiss this IPR at any
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`time, and additional, serial litigations may result in additional IPRs. This would
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`result in an inefficient use of the Board’s resources, and could unnecessarily
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`prolong the current stay of the reexamination.
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`IV. CONCLUSION
`For the foregoing reasons, Samsung respectfully requests that the Board
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`institute its Petition for Inter Partes Review of U.S. Patent No. 7,765,482 and join
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`the proceeding with Google, Inc. v. Summit 6 LLC, IPR2015- 00806. Although it
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`is believed that no fee is required for this Motion, the Commissioner is hereby
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`authorized to charge any fees that may be required for this Motion to Deposit
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`Account 07-1896.
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`Dated: October 8, 2015
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`
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`Respectfully Submitted,
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`/s/ Brian Erickson
`Brian K. Erickson
`Registration No. 48,895
`DLA PIPER LLP (US)
`401 Congress Avenue, Suite 2500
`Austin, TX 78701-3799
`Telephone: 512-457-7000
`Facsimile: 512-457-7001
`Samsung_Summit-IPR@dlapiper.com
`
`James M. Heintz
`Registration No. 41,828
`DLA PIPER LLP (US)
`11911 Freedom Drive, Suite 300
`Reston, VA 20190
`Telephone: 703-773-4148
`Facsimile: 703-773-5200
`Samsung_Summit-IPR@dlapiper.com
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`Attorneys for Petitioner
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`CERTIFICATE OF SERVICE
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`The undersigned certifies service pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(b)
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`on the Patent Owner by Express Mail of a copy of this Motion for Joinder and
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`supporting material at the following correspondence address of record for the ‘482
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`Patent:
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`LAW OFFICE OF DUANE S. KOBAYASHI
`P.O. BOX 3207
`RESTON, VA 20195
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`In addition, a copy of this Motion for Joinder and supporting material is being
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`electronically served in its entirety on counsel for Petitioner and counsel for Patent
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`Owner in related Case No. IPR2015-00806:
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`Counsel for Petitioner:
`John Alemanni (JAlemanni@kilpatricktownsend.com)
`Michael Morlock (MMorlock@kilpatricktownsend.com)
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`Counsel for Patent Owner:
`Peter J. Ayers (peter@leehayes.com)
`John Shumaker (jshumaker@leehayes.com)
`Brian Mangum (brianm@leehayes.com)
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`/s/ Brian Erickson
`Brian K. Erickson
`Registration No. 48,895
`DLA PIPER LLP (US)
`401 Congress Avenue, Suite 2500
`Austin, TX 78701-3799
`Telephone: 512-457-7000
`
`Dated: October 8, 2015
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`Facsimile: 512-457-7001
`Samsung_Summit-IPR@dlapiper.com
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