UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SONY CORPORATION,
`Petitioner
`
`v.
`
`RAYTHEON COMPANY,
`Patent Owner
`_______________
`
`Case IPR2016-00209
`
`Patent 5,591,678
`_______________
`
`PATENT OWNER’S RESPONSE TO PETITIONER’S
`MOTION FOR JOINDER
`
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SONY CORPORATION,
`Petitioner
`
`v.
`
`RAYTHEON COMPANY,
`Patent Owner
`_______________
`
`Case IPR2016-00209
`
`Patent 5,591,678
`_______________
`
`PATENT OWNER’S RESPONSE TO PETITIONER’S
`MOTION FOR JOINDER
`
`
`
`IPR2016-00209
`
`Raytheon Company (“Patent Owner”), owner of U.S. Patent No. 5,591,678
`
`(“678 Patent”), respectfully submits this response to Petitioner’s Motion for
`
`Joinder (Paper No. 3, referred to as “Motion” herein). The Petition in the present
`
`proceeding is the second that Petitioner has filed against the 678 Patent,
`
`challenging the very claims that are already at issue -- under six different grounds -
`
`- in a pending IPR proceeding. For the reasons that will be stated in Patent
`
`Owner’s preliminary response, the Board should deny institution of an IPR in the
`
`present proceeding.1 To the extent, however, that the Board decides to institute an
`
`IPR in the present proceeding, Patent Owner does not oppose joinder provided that
`
`the schedule is adjusted to (1) allow Patent Owner sufficient time and opportunity
`
`to address the numerous issues raised by Petitioners and (2) provide for a single
`
`Patent Owner Response to achieve the efficiencies of joinder.
`
`I.
`
`RELATED MATTERS
`
`A.
`
`District Court Litigation
`
`Patent Owner asserted the 678 Patent against Petitioner and several other
`
`defendants in Raytheon Company v. Sony Corporation, et al., C.A. No. 2:15-cv-
`
`
`1 Patent Owner’s Response is due to be filed on February 24, 2016. Paper
`
`No. 4. Patent Owner, however, intends to file its preliminary response early.
`
`1
`
`
`
`IPR2016-00209
`
`342, (E.D. Tex.) and Raytheon Company v. Samsung Electronics Co., Ltd. et al.,
`
`C.A. No. 2-15-cv-00341 (E.D. Tex.). Both cases were filed March 6, 2015 and
`
`remain pending.
`
`B.
`
`IPR 2015-01201
`On May 14, 2015, Petitioner filed a Petition for inter partes review of claims
`
`1-18 of the 678 Patent, alleging six separate grounds based on eleven different
`
`references. IPR2015-01201, Paper 2, at 2, 36. On December 3, 2015, the Board
`
`instituted review of claims 1-18 based on six grounds and numerous references.
`
`Id., Paper 6, at 23-24 (referred to herein as the “1201 IPR”). Pursuant to a joint
`
`stipulation, Patent Owner’s response is due March 7, 2016. IPR 2015-01201, Paper
`
`13.
`
`C.
`
`Present Proceeding
`
`Petitioner filed the Petition in the present proceeding on November 18, 2015,
`
`over six months after the Petition in the 1201 IPR. Paper 2 (referred to herein as
`
`the “0209 IPR”). The Petition alleges unpatentability of claims 1-18 of the 678
`
`Patent based on eight separate grounds and seven references. Id., at 2-3. With the
`
`Petition, Petitioner also filed a motion to join the 0209 IPR proceedings with the
`
`1201 IPR, asserting that the two IPRs involve common issues and that joinder will
`
`conserve resources by simplifying briefing and allowing for a single deposition of
`
`2
`
`
`
`IPR2016-00209
`
`its expert. Paper 3, at 5, 8. In addition, Petitioner recognized that joinder would
`
`require modification of the schedule in the 1201 IPR and pledged to accommodate
`
`reasonable scheduling requests of Patent Owner to facilitate joinder. The parties
`
`met and conferred regarding Petitioner’s joinder motion and scheduling, and
`
`Petitioner did not oppose a joinder schedule that provided for a single Patent
`
`Owner response to be filed on May 25, 2016.2 The parties informed the Board that
`
`they had reached an agreement with respect to a potential schedule in the event of
`
`joinder. Paper 8, at 2.
`
`II.
`
`PATENT OWNER’S RESPONSE TO PETITIONER’S JOINDER
`MOTION
`
`For the reasons that will be stated in Patent Owner’s preliminary response,
`
`the Board should deny institution in the 0209 IPR. To the extent, however, that the
`
`Board decides to institute in the 0209 IPR, Patent Owner does not oppose joinder
`
`provided that the schedule is adjusted to (1) allow Patent Owner sufficient time to
`
`address the numerous issues raised by Petitioners and (2) to provide for a single
`
`Patent Owner Response to simplify briefing and allow for a single deposition of
`
`
`2 Petitioner also indicated that it would not object to reasonable modifications to
`
`briefing page limits and deposition time necessitated by joinder.
`
`3
`
`
`
`IPR2016-00209
`
`Petitioner’s expert. While Patent Owner acknowledges that joinder can simplify
`
`issues for the parties and the Board, joinder should not occur unless it (1) does not
`
`prejudice Patent Owner’s ability to properly respond to Petitioner’s challenges and
`
`(2) achieves the efficiencies attendant to a single proceeding.
`
`A.
`
`The Petitions Raise a Substantial Number of Issues
`
`Although Petitioner asserts that the petitions in the 1201 IPR and 0209 IPR
`
`involve overlapping issues, it does not deny that the two petitions assert a
`
`substantial number of grounds based on a large number of references. Paper 3, at
`
`2-3. Indeed, the two petitions include 14 separate alleged grounds based on
`
`numerous references. In addition, with the 1201 IPR Petitioners submitted a 127
`
`page expert declaration, and with the 0209 IPR Petitioners submitted a 85 page
`
`expert declaration. IPR 2015-01201, Ex. 1002; IPR 2016-00209, Ex. 1002. There
`
`can be no doubt that Patent Owners require sufficient time to respond to the
`
`substantial number of issues raised by Petitioners. Absent sufficient time to
`
`respond, Patent Owners will be prejudiced by joinder and joinder should be denied.
`
`B.
`
`A Single Patent Owner Response Will Simplify Briefing and
`Discovery
`
`In addition to sufficient time to respond to the issues raised by Petitioner, in
`
`the event that the Board joins the two IPR proceedings, it should modify the
`
`schedule to allow for the filing of a single Patent Owner Response. In its motion
`4
`
`
`
`IPR2016-00209
`
`supporting joinder, Petitioner acknowledges and asserts that joinder will (1)
`
`simplify briefing and discovery, and (2) allow for a single deposition of its expert.
`
`Paper 3, at 8 (citing Ariosa Diagnostics, IPR2013-00250, Paper 24, at 4).
`
`Petitioner also asserts that simplified briefing and a single deposition will conserve
`
`the parties’ and the Board’s resources. Id. Accordingly, to the extent that the
`
`Board decides to join the proceedings, Patent Owner requests that a single date be
`
`set for a Patent Owner Response in the joined proceeding. Without a single Patent
`
`Owner Response date, Patent Owner will likely be forced to take multiple
`
`depositions of Petitioner’s expert, and submit multiple Patent Owner Responses,
`
`which would negate the very efficiencies that support joinder.
`
`Accordingly, to the extent that the 0209 IPR is instituted and joined, Patent
`
`Owner requests a single Patent Owner response date of May 25, 2016, which will
`
`give Patent Owner sufficient time to respond to the numerous issues raised by
`
`Petitioner and provide for simplified briefing and a single expert deposition.3
`
`Petitioner has acknowledged that joinder will require modification of the schedule,
`
`
`3 Patent Owner also requests appropriate modification to page limits and deposition
`
`time necessitated by joinder.
`
`5
`
`
`
`IPR2016-00209
`
`and has informed Patent Owner that it would not object to a single Patent Owner
`
`response date of May 25, 2016 in the event of joinder.4
`
`III. CONCLUSION
`
`For the foregoing reasons, Patent Owner does not oppose joinder in the
`
`event that the Board modifies the schedule to allow for a single Patent Owner
`
`Response and sufficient time for Patent Owner to address the numerous issues
`
`raised by Petitioner.
`
`
`4 Alternatively, in the event the Board institutes and does not grant Patent Owner’s
`
`scheduling request, Patent Owner requests a conference call with the Board shortly
`
`after institution to discuss scheduling.
`
`6
`
`
`
`IPR2016-00209
`
`
`
`Respectfully submitted,
`
`/Thomas J. Filarski Reg No 31,612/
`Thomas J. Filarski
`Reg. No. 31,612
`tfilarski@steptoe.com
`John L. Abramic
`Reg. No. 51,031
`jabramic@steptoe.com
`Brian Fahrenbach
`Reg. No. 72,603
`bfahrenbach@steptoe.com
`STEPTOE & JOHNSON LLP
`115 South LaSalle Street, Suite 3100
`Chicago, IL 60603
`Telephone: 312-577-1300
`Facsimile: 312-577-1370
`
`Counsel for Raytheon Company
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Date: January 15, 2016
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Customer Number: 27890
`STEPTOE & JOHNSON LLP
`115 S. LaSalle St.
`Chicago, IL 60603
`Telephone: (312) 577-1300
`Facsimile: (312) 577-1370
`
`7
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing PATENT
`
`OWNER’S RESPONSE TO PETITIONER’S MOTION FOR JOINDER, was
`
`served in its entirety on January 15, 2016 by filing this document through the
`
`Patent Review Processing System as well as by delivering a copy via electronic
`
`email to the attorneys of record for the Patent Owner’s as follows:
`
`Matthew A. Smith
`Zhuanjia Gu
`TURNER BOYD LLP
`702 Marshall St., Ste. 640
`Redwood City, CA 94063
`smith@turnerboyd.com
`gu@turnerboyd.com
`
` Robert Hails
`BAKER & HOSTETLER LLP
`1050 Connecticut Avenue, NW
`Washington, DC 20036
`rhails@bakerlaw.com
`
`Date: January 15, 2016
`
`
`By:
`
`/Thomas J. Filarski, Reg No. 31,612/
`Thomas J. Filarski
`Registration No. 31,612
`Steptoe & Johnson LLP
`115 S. LaSalle St.
`Chicago, IL 60603
`Telephone: 312-577-1252
`Facsimile:
`312-577-1370
`
`Counsel for Raytheon Company
`
`8
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
