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
`
`__________________________________
`
`RENEWED MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c),
`37 C.F.R. §§ 42.22, AND 42.122(b)
`
`
`
`
`
`
`
`__________________________________
`
`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
`
`__________________________________
`
`RENEWED MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c),
`37 C.F.R. §§ 42.22, AND 42.122(b)
`
`
`
`
`
`
`I.
`
`INTRODUCTION
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`U.S. Patent No. 5,182,789
`ZTE Renewed Motion for Joinder
`
`On February 26, 2016, ZTE USA, Inc. (“Petitioner”) submitted a Petition for
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`Inter Partes Review of U.S. Patent No. 5,182,789 (“the ’789 Patent”) (“Petition”)
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`based on grounds identical to those asserted in Samsung Elecs. Co., Ltd. v.
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`Parthenon Unified Memory Architecture, LLC, IPR2015-01944 (“the Samsung
`
`IPR”). Petitioner concurrently filed a Motion for Joinder seeking to join this
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`petition with the Samsung IPR. On May 25, 2016, the Samsung IPR was
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`terminated while the Motion for Joinder was pending. On June 8, 2016, the Board
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`dismissed Petitioner’s Motion for Joinder without prejudice and authorized
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`Petitioner to file a renewed Motion for Joiner to join Apple Inc. v. Parthenon
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`Unified Memory Architecture, LLC, IPR2016-00923 (“the Apple IPR”). IPR2016-
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`00664 (“664 IPR”), Paper 10. The Apple IPR is also identical to the Samsung IPR.
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`Pursuant to 35 U.S.C. § 315(c), Petitioner respectfully moves that this
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`Petition be instituted and joined with the Apple IPR, for which an institution
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`decision is pending. The Petition is a copy of the Apple IPR petition in all material
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`aspects, challenging the same claims of the ’789 Patent on the same grounds while
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`relying on the same prior art and evidence. Joining the Petition to the Apple IPR
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`will result in a consolidated IPR with two petitioners—Apple Inc. and Petitioner—
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`thereby promoting an efficient determination of the validity of the ’789 Patent.
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`Petitioner requests that the institution of this Petition be limited solely to the
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`2
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`
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`grounds that will be instituted in the Apple IPR, and further requests an
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`U.S. Patent No. 5,182,789
`ZTE Renewed Motion for Joinder
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`opportunity to join the Apple IPR as an “understudy,” only assuming an active role
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`in the event Apple settles with Parthenon Unified Memory Architecture LLC
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`(“Parthenon”). Thus, Petitioner does not seek to alter the grounds upon which the
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`Board has already considered, or is currently considering, in instituting the Apple
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`IPR, and joinder will have no impact on the prospective schedule in the Apple IPR.
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`Accordingly, Petitioner respectfully requests that this motion for joinder to
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`the Apple IPR be granted.
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`II. BACKGROUND AND RELATED PROCEEDINGS
`Parthenon is the owner of the ’789 Patent. In 2014 and 2015, Parthenon
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`sued nine (9) different companies, including Petitioner and Apple, for allegedly
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`infringing the ’789 Patent (the “Underlying Litigation”). Apple filed its petition
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`for inter partes review of the ’789 Patent on April 20, 2016. Parthenon waived its
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`preliminary response on May 26, 2016. The Board has not yet decided to institute
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`the Apple IPR. Petitioner here moves for joinder with the Apple IPR.
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`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
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`request for joinder. 35 U.S.C. § 315(b). The Board has discretion to join a
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`properly filed IPR petition to an IPR proceeding. 35 U.S.C. § 315(c); 37 C.F.R.
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`3
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`
`
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`§ 42.122(b); see also Dell Inc. v. Network-1 Sec. Solutions, Inc., IPR2013-00385,
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`U.S. Patent No. 5,182,789
`ZTE Renewed Motion for Joinder
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`Paper 19, at 4-6; Sony Corp. v. Yissum Res. & Dev. Co. of the Hebrew Univ. of
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`Jerusalem, IPR2013-00326, Paper 15, at 3-4; Microsoft Corp. v. Proxyconn, Inc.,
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`IPR2013-00109, Paper 15, at 3-4. “The Board will determine whether to grant
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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-
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`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
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`joinder should:
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`(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.
`
`B.
`
`Joinder will not impact the schedule or the Board’s ability to
`complete the review within the one-year period
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`Joinder in this case will not impact the Board’s ability to complete its review
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`in a timely manner. Section 316(a)(11) provides that IPR proceedings should be
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`completed and the Board’s final decision issued within one year of institution of
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`the review. See also 37 C.F.R. § 42.100(c). Here, joinder will not affect the
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`4
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`
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`Board’s ability to issue its final determination within one year because Petitioner
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`U.S. Patent No. 5,182,789
`ZTE Renewed Motion for Joinder
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`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
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`the Apple IPR is instituted be herein instituted, which are verbatim copies of the
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`invalidity grounds asserted in the Apple IPR petition.
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`Given that Petitioner will assume an understudy role, its presence will not
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`introduce any additional arguments, briefing, or need for discovery.
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`Petitioner only offers identical support that Apple has also introduced. For
`
`example, Petitioner petition relies on the same expert witness as the Apple IPR, Dr.
`
`Harold Stone. Petitioner has not submitted a new declaration.
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`Parthenon has waived a preliminarily response to the grounds asserted in the
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`instant Petition and the Apple IPR on May 26, 2016. 664 IPR, Paper 9 (May 26,
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`2016); Apple IPR, Paper 8 (May 26, 2016). Thus, Petitioner submits that the
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`Board proceeds.
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`Further, for efficiency’s sake, Petitioner will:
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`1. Adhere to all applicable deadlines in the Apple IPR;
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`2. Submit “consolidated” filings with the Apple, as set forth above in the
`
`statement of precise relief requested;
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`3. Refrain from requesting or reserving any additional depositions or
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`deposition time;
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`5
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`
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`U.S. Patent No. 5,182,789
`ZTE Renewed Motion for Joinder
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`4. Refrain from requesting or reserving additional oral hearing time; and
`
`5. Assume an understudy role as long as Apple remains in the
`
`proceeding.1
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`In view of these provisions, joinder should not affect the trial schedule.
`
`C.
`
`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 Apple 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.
`
`
`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
`
`
`
`
`Thus, if Parthenon were to reach a settlement with Apple, the Apple IPR could
`
`U.S. Patent No. 5,182,789
`ZTE Renewed Motion for Joinder
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`terminate without proceeding to a final written decision.
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`Indeed, if the Board terminated the Apple IPR, Petitioner would have to
`
`reargue the exact same arguments that Apple has already asserted are reasonably
`
`likely to prevail in the Apple IPR petition. Arguments related to both claim
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`construction and validity will have to be briefed and considered again, thereby
`
`increasing the work for both Petitioner and Parthenon.
`
`The potential for inconsistency would be also heightened because Petitioner
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`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
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`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.
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`Consider further that if the Board permits Petitioner to join the Apple IPR,
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`and the ’789 Patent is upheld in a final decision, Petitioner will be estopped from
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`further challenging the validity of the patent on these grounds, avoiding
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`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
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`prejudice to Petitioner, joinder is appropriate.
`
`7
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`
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`U.S. Patent No. 5,182,789
`ZTE Renewed Motion for Joinder
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`D. Because no new grounds are advanced in the Petition, joinder will
`not prejudice Parthenon
`
`Granting joinder and permitting Petitioner to assume the understudy role
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`will not prejudice Parthenon or Apple. Petitioner raises no issues that are not
`
`already before the Board, such that joinder would not affect the Apple IPR or the
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`content of Parthenon’s preliminary response. Petitioner’s understudy role ensures
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`that Parthenon will not suffer any additional costs. Indeed, Petitioner will only
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`assume the role of lead counsel if Apple and Parthenon reach a settlement
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`agreement. Petitioners have done everything conceivable to minimize the burden
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`on the other parties in the Apple IPR in exchange for the opportunity to be a part of
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`the Apple IPR.
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`IV. Conclusion
`For the foregoing reasons, Petitioner respectfully requests that their Petition
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`for Inter Partes Review of U.S. Patent No. 5,812,789 be granted and that the
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`proceedings be joined with the Apple IPR.
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`Although Petitioner believes that no fee is required for this Motion, the
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`Commissioner is hereby authorized to charge any additional fees which may be
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`required for this Motion to Deposit Account No. 06-0916.
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`8
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`
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`Dated: June 15, 2016
`
`U.S. Patent No. 5,182,789
`ZTE Renewed Motion for Joinder
`
`
`
`
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`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.
`
`9
`
`
`
`U.S. Patent No. 5,182,789
`ZTE Renewed Motion for Joinder
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing RENEWED
`
`
`
`MOTION FOR JOINDER UNDER 37 C.F.R. §§ 42.22 AND 42.122(b) was
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`filed on the PRPS and served on June 15, 2016, via email directed to counsel of
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`record for the Patent Owner at the following:
`
`Masood Anjom
`manjom@azalaw.com
`(Pending Pro Hac Vice Motion)
`
`Amir alavi
`aalavi@azalaw.com
`
`Scott Clark
`sclark@azalaw.com
`
`Michael McBride
`Mmcbride@azalaw.com
`(Pending Pro Hac Vice Motion)
`
`AHMAD, ZAVITSANOS, ANAIPAKOS, ALAVI & MENSING P.C.
`3460 One Houston Center
`1221 McKinney Street
`Houston, TX 77010
`
`
`
`Dated: June 15, 2016
`
`
`
`
`
`
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`Respectfully submitted,
`
`
`
`
`
`
`
`/Ashley F. Cheung/
`Ashley F. Cheung
`Case Manager
`
`Finnegan, Henderson, Farabow, Garrett &
`Dunner, LLP
`
`10
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