UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________________________
`
`ZTE USA, Inc.
`Petitioner
`
`v.
`
`PARTHENON UNIFIED MEMORY ARCHITECTURE LLC
`Patent Owner
`
`__________________________________
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 5,182,789
`
`Case IPR No.: IPR2016-00664
`
`__________________________________
`
`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c),
`37 C.F.R. §§ 42.22, AND 42.122(b)
`
`
`
`Mail Stop Patent Board Patent
`Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450 Alexandria, VA 22313-1450
`
`
`
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________________________
`
`ZTE USA, Inc.
`Petitioner
`
`v.
`
`PARTHENON UNIFIED MEMORY ARCHITECTURE LLC
`Patent Owner
`
`__________________________________
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 5,182,789
`
`Case IPR No.: IPR2016-00664
`
`__________________________________
`
`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c),
`37 C.F.R. §§ 42.22, AND 42.122(b)
`
`
`
`Mail Stop Patent Board Patent
`Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450 Alexandria, VA 22313-1450
`
`
`
`
`I.
`
`INTRODUCTION
`
`U.S. Patent No. 5,182,789
`ZTE Motion for Joinder
`
`ZTE USA, Inc. (“Petitioner”) submits concurrently herewith a Petition for
`
`Inter Partes Review of U.S. Patent No. 5,182,789 (“the ’789 Patent”) (“Petition”)
`
`based on grounds identical to those asserted in Samsung Elecs. Co., Ltd. v.
`
`Parthenon Unified Memory Architecture, LLC, IPR2015-01944 (“the Samsung
`
`IPR”).
`
`Pursuant to 35 U.S.C. § 315(c), Petitioner respectfully moves that this
`
`Petition be instituted and joined with the Samsung IPR, for which an institution
`
`decision is pending. The Petition is a copy of the Samsung IPR petition in all
`
`material aspects, challenging the same claims of the ’789 Patent on the same
`
`grounds while relying on the same prior art and evidence. Joining the Petition to
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`the Samsung IPR will result in a consolidated IPR with three petitioners—
`
`Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
`
`(collectively “Samsung”), and Petitioner—thereby promoting an efficient
`
`determination of the validity of the ’789 Patent. Petitioner requests that the
`
`institution of this Petition be limited solely to the grounds that will be instituted in
`
`the Samsung IPR, and further requests an opportunity to join the Samsung IPR as
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`an “understudy,” only assuming an active role in the event Samsung settles with
`
`Parthenon Unified Memory Architecture LLC (“Parthenon”). Thus, Petitioner
`
`does not seek to alter the grounds upon which the Board has already considered, or
`
`1
`
`
`
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`is currently considering, in instituting the Samsung IPR, and joinder will have no
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`U.S. Patent No. 5,182,789
`ZTE Motion for Joinder
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`impact on the prospective schedule in the Samsung IPR.
`
`Accordingly, Petitioner respectfully requests that the this motion for joinder
`
`to the Samsung IPR be granted.
`
`II. BACKGROUND AND RELATED PROCEEDINGS
`Parthenon is the owner of the ’789 Patent. In 2014 and 2015, Parthenon
`
`sued nine (9) different companies, including Petitioner and Samsung, for allegedly
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`infringing the ’789 Patent (the “Underlying Litigation”). Samsung filed its petition
`
`for inter partes review of the ’789 Patent on September 22, 2015. Parthenon filed
`
`its preliminary response on December 31, 2015. The Board has not yet decided to
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`institute the Samsung IPR. Petitioner here moves for joinder with the Samsung
`
`IPR.
`
`III. STATEMENT OF REASONS FOR THE REQUESTED RELIEF
`A. Legal standards and applicable rules
`The time limitation set forth in 35 U.S.C. § 315(b) does not apply to a
`
`request for joinder. 35 U.S.C. § 315(b). The Board has discretion to join a
`
`properly filed IPR petition to an IPR proceeding. 35 U.S.C. § 315(c); 37 C.F.R.
`
`§ 42.122(b); see also Dell Inc. v. Network-1 Sec. Solutions, Inc., IPR2013-00385,
`
`Paper 19, at 4-6; Sony Corp. v. Yissum Res. & Dev. Co. of the Hebrew Univ. of
`
`Jerusalem, IPR2013-00326, Paper 15, at 3-4; Microsoft Corp. v. Proxyconn, Inc.,
`
`2
`
`
`
`
`IPR2013-00109, Paper 15, at 3-4. “The Board will determine whether to grant
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`U.S. Patent No. 5,182,789
`ZTE Motion for Joinder
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`joinder on a case-by-case basis, taking into account the particular facts of each
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`case, substantive and procedural issues, and other considerations.” Dell, IPR2013-
`
`00385, Paper 19, at 3. The movants bear the burden of proof in establishing
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`entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b). A motion for
`
`joinder should:
`
`(1) set forth the reasons why joinder is appropriate; (2) identify any
`new grounds of unpatentability asserted in the petition; (3) explain
`what impact (if any) joinder would have on the trial schedule for the
`existing review; and (4) address specifically how briefing and
`discovery may be simplified.
`
`Dell, IPR2013-00385, Paper 19, at 4.
`
`This joinder motion and the Petition are timely
`
`B.
`The Petitioner submits that the Petition and the instant motion for joinder are
`
`timely under 35 U.S.C. § 315(c), and 37 C.F.R. §§ 42.22 and 42.122(b). Rule
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`42.122 states that a motion for joinder shall be filed within one month from the
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`granting of the petition that is sought to be joined. The Samsung IPR petition has
`
`not yet been instituted, but because the instant Petition is filed on February 26,
`
`2016, the Petition is filed prior to the prospective institution of the Samsung IPR
`
`petition.
`
`Moreover, even though the Petition is filed not more than one year from
`
`service of the complaint on February 26, 2015, the instant Petition is not subject to
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`3
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`
`
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`the one year time bar of Section 315(b) because it is accompanied by this motion
`
`U.S. Patent No. 5,182,789
`ZTE Motion for Joinder
`
`for joinder. Dell, IPR2013-00385, Paper 17 at 4-5; see also 37 C.F.R.
`
`§§ 42.101(b), 42.122(b); Microsoft Corp. v. Poxyconn, Inc., IPR2013-00109, Paper
`
`15 (permitting joinder of a party beyond the one-year window). Accordingly,
`
`Petitioner respectfully submits that the Petition and the instant motion for joinder
`
`are indeed timely and properly filed under both the applicable statutes and
`
`regulations.
`
`C.
`
`Joinder will not impact the schedule or the Board’s ability to
`complete the review within the one-year period
`
`Joinder in this case will not impact the Board’s ability to complete its review
`
`in a timely manner. Section 316(a)(11) provides that IPR proceedings should be
`
`completed and the Board’s final decision issued within one year of institution of
`
`the review. See also 37 C.F.R. § 42.100(c). Here, joinder will not affect the
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`Board’s ability to issue its final determination within one year because Petitioner
`
`agrees to an understudy role and does not raise any issues that are not already
`
`before the Board. Indeed, the Petitioner requests that only those grounds on which
`
`the Samsung IPR is instituted be herein instituted, copying verbatim the invalidity
`
`grounds asserted in the Samsung IPR petition.
`
`Given that Petitioner will assume an understudy role, its presence will not
`
`introduce any additional arguments, briefing, or need for discovery.
`
`4
`
`
`
`Petitioner only offers identical support that Samsung previously introduced.
`
`U.S. Patent No. 5,182,789
`ZTE Motion for Joinder
`
`
`
`For example, Petitioner petition relies on the expert witness already involved in the
`
`Samsung IPR, Dr. Harold Stone. Petitioner has not submitted a new declaration.
`
`Parthenon has filed a preliminarily response to the grounds asserted in the
`
`Samsung IPR on December 31, 2015. Samsung, IPR2015-01944, Paper 6 (Dec.
`
`31, 2015). Thus, Petitioner submits that Parthenon does not need to file a Patent
`
`Owner’s Preliminary Response in response to the Petition, and requests that the
`
`Board proceed without it. See Motorola Mobility LLC v. Softview LLC, IPR2013-
`
`00256, Paper 8 (June 13, 2013) (allowing the Patent Owner to file a preliminary
`
`response addressing only those points raised in the new petition that were different
`
`from those in the granted petition). Here, because the invalidity grounds are,
`
`word-for-word, identical to those grounds petitioned for in the Samsung IPR, there
`
`is nothing new for Parthenon to address.
`
`Further, for efficiency’s sake, Petitioner will:
`
`1. Adhere to all applicable deadlines in the Samsung IPR;
`
`2. Submit “consolidated” filings with the Samsung, as set forth above in
`
`the statement of precise relief requested;
`
`3. Refrain from requesting or reserving any additional depositions or
`
`deposition time;
`
`4. Refrain from requesting or reserving additional oral hearing time; and
`
`5
`
`
`
`
`
`U.S. Patent No. 5,182,789
`ZTE Motion for Joinder
`
`5. Assume a understudy role as long as Samsung remains in the
`
`proceeding.1
`
`In view of these provisions, joinder should not affect the trial schedule.
`
`D.
`
`Joinder is appropriate because it would enhance efficiency by
`avoiding duplicate efforts and avoid prejudice to Petitioner
`
`A final written decision on the validity of the ’789 Patent will at least
`
`minimize issues in the Underlying Litigation and, at most, resolve the Underlying
`
`Litigation altogether. Allowing Petitioner to join would also avoid inconsistency
`
`and avoid prejudice to Petitioner in the event that Samsung settles with Parthenon.
`
`Section 317(a) provides that an inter partes review “shall be terminated with
`
`respect to any petitioner upon the joint request of the petitioner and the patent
`
`owner” unless the Board has already reached its decision on the merits. If no
`
`petitioner remains after settlement, “the Office may terminate the review.” Id.
`
`Thus, if Parthenon were to reach a settlement with Samsung, the Samsung IPR
`
`could terminate without proceeding to a final written decision.
`
`Indeed, if the Board terminated the Samsung IPR, Petitioner would have to
`
`reargue the exact same arguments that Samsung has already asserted are
`
`reasonably likely to prevail in the Samsung IPR petition. Arguments related to
`
`
`1 These limitations are consistent with previously granted joinder motions. See, e.g., Enzymotech
`Ltd. v. Neptune Techs., IPR2014-00556, Paper 19 (July 9, 2014) (agreeing to procedural
`concessions, such as “consolidated” responses); Gillette Co. v. Zond, IPR2014-01016, Paper 13
`(Nov. 10, 2014) (same); SAP Am. Inc. v. Clouding IP, LLC, IPR2014-00306, Paper 13 (May 19,
`2014) (same).
`
`6
`
`
`
`
`both claim construction and validity will have to be briefed and considered again,
`
`U.S. Patent No. 5,182,789
`ZTE Motion for Joinder
`
`thereby increasing the work for both Petitioner and Parthenon.
`
`The potential for inconsistency would be also heightened because Petitioner
`
`would face a higher burden before the District Court of proving the invalidity of
`
`claims 1, 3-6, 11, and 13 by clear and convincing evidence, as opposed to the
`
`lower burden here of a preponderance of the evidence. See 35 U.S.C. § 316(e).
`
`Having to overcome a higher burden to get the same result is by definition
`
`prejudicial to Petitioner.
`
`Consider further that if the Board permits Petitioner to join the Samsung
`
`IPR, and the ’789 Patent is upheld in a final decision, Petitioner will be estopped
`
`from further challenging the validity of the patent on these grounds, avoiding
`
`duplication of Parthenon’s efforts at least as to Petitioner. See 35 U.S.C. § 315(e).
`
`Accordingly, to avoid duplicate efforts, the possibility of inconsistencies, and
`
`prejudice to Petitioner, joinder is appropriate.
`
`E.
`
`Because no new grounds are advanced in the Petition, joinder will
`not prejudice Parthenon
`
`Granting joinder and permitting Petitioner to assume the understudy role
`
`will not prejudice Parthenon or Samsung. Petitioner raises no issues that are not
`
`already before the Board, such that joinder would not affect the Samsung IPR or
`
`the content of Parthenon’s preliminary response. Petitioner’s understudy role
`
`7
`
`
`
`
`ensures that Parthenon will not suffer any additional costs. Indeed, Petitioner will
`
`U.S. Patent No. 5,182,789
`ZTE Motion for Joinder
`
`only assume the role of lead counsel if Samsung and Parthenon reach a settlement
`
`agreement. Petitioners have done everything conceivable to minimize the burden
`
`on the other parties in the Samsung IPR in exchange for the opportunity to be a
`
`part of the Samsung IPR.
`
`IV. Conclusion
`For the foregoing reasons, Petitioner respectfully requests that their Petition
`
`for Inter Partes Review of U.S. Patent No. 5,812,789 be granted and that the
`
`proceedings be joined with the Samsung IPR.
`
`Although Petitioner believes that no fee is required for this Motion, the
`
`Commissioner is hereby authorized to charge any additional fees which may be
`
`required for this Motion to Deposit Account No. 06-0916.
`
`Dated: February 26, 2016
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`/Lionel M. Lavenue/
`Lionel M. Lavenue
`Registration No. 46,859
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, LLP
`11955 Freedom Dr.
`Two Freedom Square
`Reston, VA 20190
`Tel: 571.203.2700
`Fax: 202.408.4400
`
`COUNSEL FOR PETITIONER ZTE
`USA, Inc.
`
`8
`
`
`
`
`
`U.S. Patent No. 5,182,789
`ZTE Motion for Joinder
`
`CERTIFICATE OF SERVICE
`
`
`
`Pursuant to 37 C.P.R. §§ 42.6(e) and 42.105(a), this is to certify that I
`
`caused to be served a true and correct copy of the foregoing MOTION FOR
`
`JOINDER UNDER 37 C.F.R. §§ 42.22 AND 42.122(b) by Federal Express
`
`delivery, on this 26th day of February, 2016 on the Patent Owner at the
`
`correspondence address of the Patent Owner as follows:
`
`Lisa K. Jorgenson
`SGS THOMSON MICROELECTRONICS INC.
`1310 Electronics Drive
`Carrollton, TX 75006
`
`Alisa Anne Lipski, Esq. (alipski@azalaw.com)
`Amir H. Alavi, Esq. (aalavi@azalaw.com)
`Brian Ervin Simmons, Esq. (bsimmons@azalaw.com)
`Jamie Alan Aycock, Esq. (jamieaycock@azalaw.com)
`Justin Yee-Jin Chen, Esq. (jchen@azalaw.com)
`Kenneth Alan Young, Esq. (kyoung@azalaw.com)
`Kyril Vladimir Talanov, Esq. (ktalanov@azalaw.com)
`Masood Anjom, Esq. (manjom@azalaw.com)
`Michael Dean McBride, Esq. (mmcbride@azalaw.com)
`Scott W Clark, Esq. (sclark@azalaw.com)
`Demetrios Anaipakos, Esq. (danaipakos@azalaw.com)
`AHMAD, ZAVITSANOS, ANAIPAKOS, ALAVI & MENSING P.C.
`3460 One Houston Center
`1221 McKinney Street
`Houston, TX 77010
`
`
`
`
`
`
`
`
`
`
`Dated: February 26, 2016
`
`
`U.S. Patent No. 5,182,789
`ZTE Motion for Joinder
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`/Ashley F. Cheung/
`Ashley F. Cheung
`Case Manager
`
`Finnegan, Henderson, Farabow, Garrett &
`Dunner, LLP
`
`10
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