`
`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. 5,960,464
`
`Case IPR No. IPR2016-00665
`
`__________________________________
`
`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. 5,960,464
`ZTE Motion for Joinder
`
`ZTE USA, Inc. (“Petitioner”) submits concurrently herewith a Petition for
`
`Inter Partes Review of U.S. Patent No. 5,960,464 (“the ’464 Patent”) (“Petition”)
`
`based on grounds identical to those asserted in Samsung Elecs. Co., Ltd. v.
`
`Parthenon Unified Memory Architecture, LLC, IPR2015-01946 (“the Samsung
`
`IPR”).
`
`Pursuant to 35 US.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 ’464 Patent on the same
`
`grounds while relying on the same prior art and evidence. Joining the Petition to
`
`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 ’464 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
`
`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
`
`
`
`
`is currently considering, in instituting the Samsung IPR, and joinder will have no
`
`U.S. Patent No. 5,960,464
`ZTE Motion for Joinder
`
`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 ’464 Patent. In 2014 and 2015, Parthenon
`
`sued nine (9) different companies, including Petitioner and Samsung, for allegedly
`
`infringing the ’464 Patent (the “Underlying Litigation”). Samsung filed its petition
`
`for inter partes review of the ’464 Patent on September 22, 2015. Parthenon filed
`
`its preliminary response on December 31, 2015. The Board has not yet decided to
`
`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
`
`U.S. Patent No. 5,960,464
`ZTE Motion for Joinder
`
`joinder on a case-by-case basis, taking into account the particular facts of each
`
`case, substantive and procedural issues, and other considerations.” Dell, IPR2013-
`
`00385, Paper 19, at 3. The movants bear the burden of proof in establishing
`
`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
`
`42.122 states that a motion for joinder shall be filed within one month from the
`
`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
`
`3
`
`
`
`
`the one year time bar of Section 315(b) because it is accompanied by this motion
`
`U.S. Patent No. 5,960,464
`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
`
`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. 5,960,464
`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. 5,960,464
`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 ’464 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. 5,960,464
`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 1-4, 7-13, 16-24, 32-36, and 40 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 ’464 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 or Samsung
`
`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. 5,960,464
`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. 5,960,464 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
`
`
`
`
`
`
`
`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
`
`
`
`9
`
`
`
`
`
`
`
`
`
`
`Dated: February 26, 2016
`
`
`U.S. Patent No. 5,960,464
`ZTE Motion for Joinder
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`/Ashley F. Cheung/
`Ashley F. Cheung
`Case Manager
`
`Finnegan, Henderson, Farabow, Garrett &
`Dunner, LLP
`
`10
`
`
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
