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
`
`Case IPR2016-00670
`
`Patent No. 7,777,753
`
`ZTE’S REPLY TO PATENT OWNER’S OPPOSITION TO PETITIONER’S
`
`MOTION FOR JOINDER
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ZTE USA, Inc.
`Petitioner
`
`V.
`
`PARTHENON UNIFIED MEMORY ARCHITECTURE LLC
`
`Patent Owner
`
`Case IPR2016-00670
`
`Patent No. 7,777,753
`
`ZTE’S REPLY TO PATENT OWNER’S OPPOSITION TO PETITIONER’S
`
`MOTION FOR JOINDER
`
`
`
`Case IPR20l6-00670
`
`Patent No. 7,777,753
`
`Patent Owner’s true reason for opposing ZTE’s joinder request is to gain an
`
`inequitable advantage over ZTE. Patent Owner does not dispute that j oinder would
`
`conserve the resources of the Board, Patent Owner, and Petitioner, or that the
`
`Board has discretion to “waive or suspend a requirement [of the rules],” including
`
`37 C.F.R. § 42.l22(b). Instead, Patent Owner argues that the rules should apply
`
`with absolute formalism—hiding its true motive to keep ZTE out of the proceeding
`
`at the PTAB but also bind ZTE to the PTAB proceeding’s outcome. Such a result
`
`would be unjust given the short delay (caused by a change in counsel) and that
`
`ZTE was within its statutory timeframe to file its own petition within a year from
`
`service of the complaint.
`
`1.
`
`PATENT 0WNER’S RE UESTS ARE INE UITABLE
`
`Petitioner merely requests that the Board grant its request as an understudy
`
`to avoid duplicative proceedings, and does not raise or introduce any additional
`
`arguments, briefing, or need for discovery. Patent Owner, however, inexplicably
`
`requests that (1) Petitioner not be joined with the HTC IPR; (2) Petitioner’s IPR
`
`not be instituted; and (3) Petitioner agrees to be estopped from asserting arguments
`
`used in the HTC IPR at the district court. Patent Owner’s requests are unjust, and
`
`Patent Owner cannot have it both ways.
`
`If Petitioner cannot join the HTC IPR, and its Petition is not instituted, then
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`Petitioner will not be estopped from asserting arguments from the HTC IPR at the
`
`
`
`Case IPR2016-00670
`
`Patent No. 7,777,753
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`district court. Mindful of this, during a Meet and Confer associated with the
`
`underlying litigation, Patent Owner nevertheless requested that Petitioner agree to
`
`waive any arguments brought in the HTC IPR proceedings. Asking for waiver in
`
`lieu of estoppel, while opposing Petitioner’s participation in IPR proceedings,
`
`shows Patent Owner’s true motive.
`
`The requested determination by the Board will directly impact whether the
`
`underlying litigation in the Eastern District of Texas will be stayed. “District
`
`courts typically consider .
`
`.
`
`. whether the stay will likely result in simplifying the
`
`case before the court.” NFC Tech. LLC v. HTCAm., Inc., No. 2: 13-cv-1058-WCB,
`
`2015 WL 1069111, at *2 (E.D. Tex. Mar. 11, 2015) (Bryson, J.) (citing Lennon
`
`Image Techs., LLC v. Macy's Retail Holdings, Inc., No. 2: 13—cv—235, 2014 WL
`
`4652117, at *2 (E.D. Tex. Sept. 17, 2014) (Gilstrap, J.)). “Congress intended to
`
`place ‘a very heavy thumb on the scale in favor of a stay being granted,
`
`since
`
`737
`
`“inter partes review was intended to provide a ‘faster, less costly altemative[] to
`
`civil litigation to challenge patents.”’ Id. at *5 (quoting Sen. Chuck Grassley).
`
`Furthermore, Judge Gilstrap is reluctant to grant stays unless a defendant will be
`
`bound by estoppel, See, e.g., Vz'rtuaZAgz'Zz'ly Inc. v. Salesforcecom, Inc., 759 F.3d
`
`1307 (Fed. Cir. 2014) (where the Circuit Court reversed the United States District
`
`Court for the Eastern District of Texas, J. Rodney Gilstrap, J., 2014 WL 94371, for
`
`denying a request for a stay pending PTAB review). With this in mind, Petitioner
`
`
`
`Case IPR2016-00670
`
`Patent No. 7,777,753
`
`strongly urges the Board to allow Petitioner to assume an understudy role in the
`
`aforementioned proceedings in the interest ofjustice.
`
`2.
`
`PETITIONER’S DELAY DOES NOT CAUSE HARM
`
`Joining these proceedings with the prior HTC IPR will cause absolutely no
`
`delay in the proceedings, and will not prejudice any party. The HTC IPR was
`
`instituted on January 6, 2016. Petitioner filed its motion to join on February 26,
`
`2016, only 20 days after the one month deadline under 37 C.F.R. § 42.122.
`
`Petitioner’s change of counsel was the cause for the delay, and Petitioner’s new
`
`counsel was not retained until well after the February 6, 2016 deadline. The
`
`moment Petitioner’s current counsel was hired, counsel worked diligently and with
`
`urgency to prepare and file the instant IPR Petition and motion for joinder as soon
`
`as was reasonably practicable. Petitioner’s current counsel also replaced previous
`
`counsel in the underlying litigation in the U.S. District Court for the Eastern
`
`District of Texas on March 2, 2016, which was also after the February 6 deadline.
`
`The chart below shows the timeline of the current IPR proceedings.
`
`
`
`No.
`
`Sarnsung
`
`’753
`
`HTC, LG, and
`Sarnsung
`
`June 24, 2015
`
`Sarnsung
`
`’ 3 68
`
`ZTE
`
`’045
`
`ZTE
`
`’ 753
`
`ZTE
`
`February 26,
`2016
`
`February 26,
`2016
`
`N/A
`
`February 26,
`2016
`
`N/A
`
`Case IPR2016-00670
`
`Patent No. 7,777,753
`
`Instituted
`
`2016
`
`January 6,
`2016
`
`2016
`
`N/A
`
`Response filed
`on 4/6/20 l 6
`
`Patent Owner
`Response filed
`on 4/6/20 l 6
`
`Response filed
`on 4/6/20 l 6
`
`Awaiting
`decision on
`
`motion to 'oin
`
`Awaiting
`decision on
`
`motion to 'oin
`
`Awaiting
`decision on
`
`motion to 'oin
`
`01500
`
`IPR2015-
`01501
`
`01502
`
`IPR20 l 6-
`01666
`
`IPR20 l 6-
`01667
`
`IPR20 l 6-
`01670
`
`Petitioner respectfully submits that 37 C.F.R. § 42.122 was designed to be
`
`equitable in nature and ensure a just and speedy resolution of these types of cases,
`
`and thus respectfully requests that the Board use its discretion to permit j oinder
`
`rather than allow for the possibility of another IPR proceeding.
`
`Moreover, Patent Owner’s assertion that Petitioner does not provide
`
`reasonable bases that would justify an exercise of discretion by the Board could not
`
`be farther from the truth. In fact, if granted an understudy role, Petitioner offers to
`
`jettison additional IPR proceedings on the same patent asserting the same
`
`grounds—thus assisting with the speedy and inexpensive resolution of the
`
`proceedings.
`
`
`
`Case IPR2016-00670
`
`Patent No. 7,777,753
`
`If allowed to join the proceedings, Petitioner will not file additional
`
`submissions, pose questions at depositions or oral hearing without prior
`
`permission, and only seek to become active in the IPR proceeding in the event that
`
`at least one of the Initial Petitioners settle.
`
`For the foregoing reasons, Petitioner respectfully requests that the
`
`proceedings be joined with the HTC IPR.
`
`Dated: April 16, 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.
`
`
`
`CERTIFICATE OF SERVICE
`
`Case IPR2016-00670
`
`Patent No. 7,777,753
`
`The undersigned hereby certifies that a copy of the foregoing ZTE’s Reply
`
`to Patent Owner’s Opposition to Petitioner’s Motion for Joinder was served on
`
`April 16, 2016, Via email directed to counsel of record for the Patent Owner at the
`
`following:
`
`Masood Anj om
`Registration No. 62,167
`manj om@azalaw.com
`
`Amir Alavi
`
`Pending Pro Hac Vice Motion
`aalaVi@azalaW.com
`
`Scott Clark
`
`Registration No. 51,251
`sclark@azalaw.com
`
`Michael McBride
`
`Pending Pro Hac Vice Motion
`mmcbride@azalaw.com
`
`AHMAD, ZAVITSANOS, ANAIPAKOS, ALAVI & MENSING P.C.
`1221 McKinney, Suite 2500
`Houston, TX 77010
`
`Dated: April 16, 2016
`
`/Ashley F. Cheung/
`Ashley F. Cheung
`Case Manager
`
`FINNEGAN, HENDERSON, FARABOW,
`
`GARRETT & DUNNER, LLP
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