`Trials@uspto.gov
`Entered: May 6, 2016
`
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`ZTE USA, INC., HTC CORPORATION, HTC AMERICA, INC., LG
`ELECTRONCIS, INC., and APPLE INC.,1
`Petitioners,
`
`v.
`
`PARTHENON UNIFIED MEMORY ARCHITECTURE LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00664 (Patent 5,812,789) Case IPR2016-00848 (Patent 5,960,464)
`Case IPR2016-00665 (Patent 5,960,464) Case IPR2016-00923 (Patent 5,812,789)
`Case IPR2016-00847 (Patent 5,812,789) Case IPR2016-00924 (Patent 5,960,464)2
`____________
`
`
`Before MICHAEL R. ZECHER, JAMES B. ARPIN, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 ZTE USA, Inc., is the Petitioner in Cases IPR2016-00664 and IPR2016-00665,
`HTC Corporation, HTC America, Inc., and LG Electronics, Inc. are the Petitioner
`in Cases IPR2016-00847 and IPR2016-00848, and Apple Inc. is the Petitioner in
`Cases IPR2016-00923 and IPR2016-00924.
`2 This Order addresses an issue that is identical in all six cases. We, therefore,
`exercise our discretion to issue one Order to be filed in each case. The parties,
`however, are not authorized to use this style heading in any subsequent papers.
`
`
`
`
`IPR2016-00664 (Patent 5,812,789)
`IPR2016-00665 (Patent 5,960,464)
`IPR2016-00847 (Patent 5,812,789)
`
`
`IPR2016-00848 (Patent 5,960,464)
`IPR2016-00923 (Patent 5,812,789)
`IPR2016-00924 (Patent 5,960,464)
`
`I. DISCUSSION
`A conference call in the six proceedings identified above was held on May
`
`4, 2016, between the parties and Judges Zecher, Arpin, and Clements. Petitioners,
`ZTE USA, Inc., HTC Corporation, HTC America, Inc., LG Electronics, Inc., and
`Apple Inc. (collectively “Petitioners”), initiated the conference call to discuss
`adjusting the pre-institution schedules in each of these proceedings. Petitioners
`arranged for a court reporter and agreed to file a transcript of the conference call in
`each proceeding as a separate exhibit. We reiterate some of the discussion here,
`but we need not repeat all the details because the complete discussion will be
`reflected in the transcript.
`Petitioners began the conference call by explaining that the Petitions filed in
`these proceeding were accompanied by Motions for Joinder. Each Motion for
`Joinder seeks to join one of Cases IPR2015-01944 and IPR2015-01946, in which
`Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
`(collectively “Samsung”) challenged the same patents involved in these
`proceedings and we instituted inter partes reviews. Petitioners explained that,
`according to recent filings in the underlying district court case between Samsung
`and Patent Owner, Parthenon Unified Memory Architecture LLC (“Patent
`Owner”), there is a settlement pending between these two parties. Counsel for
`Samsung participated in the conference call and, upon further inquiry from us,
`confirmed that the settlement pending encompasses Cases IPR2015-01944 and
`IPR2015-01946. In light of the pending settlement between Samsung and Patent
`Owner, Petitioners requested that we adjust the pre-institution schedules in these
`
`2
`
`
`
`IPR2016-00848 (Patent 5,960,464)
`IPR2016-00923 (Patent 5,812,789)
`IPR2016-00924 (Patent 5,960,464)
`
`IPR2016-00664 (Patent 5,812,789)
`IPR2016-00665 (Patent 5,960,464)
`IPR2016-00847 (Patent 5,812,789)
`
`proceedings so as to expedite action on the Motions for Joinder prior to the
`termination of Cases IPR2015-01944 and IPR2015-01946.
`
`In response, we explained that we cannot expedite action on the Motions for
`Joinder filed in these proceeding unless (1) Patent Owner agrees not to oppose the
`Motions for Joinder in the proceedings where the default time period for filing an
`opposition has yet to expire; and (2) Patent Owner agrees to file or waive the
`Patent Owner Preliminary Responses prior to the three month default time period
`for filing such Responses. Patent Owner confirmed that it did not oppose the
`Motions for Joinder in Cases IPR2016-00664 and IPR2016-00665, and represented
`that it will not oppose the Motions for Joinder in the remaining proceedings where
`the default time period for filing an opposition has yet to expire. Patent Owner
`also represented that it was willing to file or waive the Patent Owner Preliminary
`Responses in these proceedings by May 26, 2016. Petitioners agreed to the date
`proposed by Patent Owner. After a brief deliberation, we notified the parties that,
`based on their agreement, we will reset the deadline for filing or waiving the Patent
`Owner Preliminary Responses in these proceedings to May 26, 2016.
`
`
`II. ORDER
`Accordingly, it is ORDERED that the Patent Owner Preliminary Responses
`in these proceedings must be filed or waived by May 26, 2016.
`
`3
`
`
`
`IPR2016-00848 (Patent 5,960,464)
`IPR2016-00923 (Patent 5,812,789)
`IPR2016-00924 (Patent 5,960,464)
`
`IPR2016-00664 (Patent 5,812,789)
`IPR2016-00665 (Patent 5,960,464)
`IPR2016-00847 (Patent 5,812,789)
`
`For PETITIONERS:
`Lionel M. Lavenue
`Shaobin Zhu
`Carlos J. Rosario
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP
`lionel.lavenue@finnegan.com
`shaobin.zhu@finnegan.com
`carlos.rosario@finnegan.com
`
`Joseph A. Micallef
`Samuel A. Dillion
`SIDLEY AUSTIN LLP
`jmicallef@sidley.com
`samuel.dillon@sidley.com
`
`Andrew S. Ehmke
`David W. O’Brien
`HAYNES AND BOONE, LLP
`andy.ehmke.ipr@haynesboone.com
`david.obrien.ipr@haynesboone.com
`
`
`
`For PATENT OWNER:
`
`Massod Anjom
`Scott Clark
`AHMAD, ZAVITSANOS, ANAIPAKOS, ALAVI & MENSING P.C.
`manjom@azalaw.com
`sclark@azalaw.com
`
`
`
`4