Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 24
`Entered: February 23, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`APPLE, INC., HTC CORPORATION, HTC AMERICA, INC.,
`MICROSOFT CORPORATION, MICROSOFT MOBILE OY,
`MICROSOFT MOBILE INC., SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and ZTE (USA) INC.,
` Petitioner,
`
`v.
`
`EVOLVED WIRELESS LLC,
`Patent Owner.
`____________
`
`Case IPR2016-007581, IPR2016-01342, IPR2016-013492
`Patent 8,218,481 B2
`____________
`
`Before WILLIAM V. SAINDON, CHRISTOPHER L. CRUMBLEY,
`PETER P. CHEN, and TERRENCE W. McMILLIN, Administrative Patent
`Judges
`
`McMILLIN, Administrative Patent Judge
`
`
`CONSOLIDATION ORDER
`35 U.S.C. § 315(d); 37 C.F.R. § 42.122(a)
`
`
`1 IPR2017-00068 and IPR2017-00106 have been joined with IPR2016-
`00758.
`2 IPR2016-00981 has been joined with IPR2016-01349.
`
`
`Tel: 571-272-7822
`
`Paper 24
`Entered: February 23, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`APPLE, INC., HTC CORPORATION, HTC AMERICA, INC.,
`MICROSOFT CORPORATION, MICROSOFT MOBILE OY,
`MICROSOFT MOBILE INC., SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and ZTE (USA) INC.,
` Petitioner,
`
`v.
`
`EVOLVED WIRELESS LLC,
`Patent Owner.
`____________
`
`Case IPR2016-007581, IPR2016-01342, IPR2016-013492
`Patent 8,218,481 B2
`____________
`
`Before WILLIAM V. SAINDON, CHRISTOPHER L. CRUMBLEY,
`PETER P. CHEN, and TERRENCE W. McMILLIN, Administrative Patent
`Judges
`
`McMILLIN, Administrative Patent Judge
`
`
`CONSOLIDATION ORDER
`35 U.S.C. § 315(d); 37 C.F.R. § 42.122(a)
`
`
`1 IPR2017-00068 and IPR2017-00106 have been joined with IPR2016-
`00758.
`2 IPR2016-00981 has been joined with IPR2016-01349.
`
`
`
`IPR2016-000758, IPR2016-01342, IPR2016-01349
`Patent 8,218,481 B2
`
`
`Six petitions for inter partes review of U.S. Patent No. 8,218,481 B2
`(“the ’481 patent”) have been filed: IPR2016-00758, IPR2016-00981,
`IPR2016-01342, IPR2016-01349, IPR2017-00068, and IPR2017-00106.
`Decisions to institute trial have been rendered in each of these proceedings.
`In addition, IPR2016-00758, IPR2017-00068, and IPR2017-00106 have
`been joined, and IPR2016-00981 and IPR2016-01349 have been joined.
`On December 19, 2016, a conference call was held among counsel for
`the Petitioners in all six of the proceedings related to the ’481 patent;
`counsel for Patent Owner; and Judges Saindon, Crumbley, Boucher, Chen,
`and McMillin. During the conference call, consolidation of the proceedings
`related to the ’481 patent was discussed, and we requested that the parties
`further consider and discuss ways to promote the efficient resolution of these
`proceedings. An Order to that effect was entered in which the parties were
`ordered to provide us with alternative proposals and schedules for the
`proceedings. See, e.g., IPR2016-00758, Paper 20. On December 29, 2016,
`we received an email setting forth alternative proposals and schedules
`including a “Joint Scheduling Proposal” from the parties. Pursuant to the
`“Joint Scheduling Proposal,” the parties request that the proceedings be
`
`2
`
`
`
`IPR2016-000758, IPR2016-01342, IPR2016-01349
`Patent 8,218,481 B2
`
`consolidated and a single schedule be set in the proceedings relating to the
`’481 patent. Id.
`Under 35 U.S.C. § 315(d)3 and 37 C.F.R. § 42.112(a),4 when there are
`multiple proceedings involving the same patent, the Board may consolidate
`the proceedings. In the case of joinder, the Board has the authority to
`modify the schedule including the 1 year final determination time period.
`See 35 U.S.C. § 316(a)(11); 37 C.F.R. § 42.100(c).
`
`On the record before us, in particular the agreement between the
`parties, and in order to more efficiently resolve the pending proceedings
`relating to the ’481 patent, we hereby consolidate IPR2016-00758, IPR2016-
`01342, and IPR2016-01349.
`Accordingly, it is hereby:
`ORDERED that IPR2016-00758, IPR2016-01342, and IPR2016-
`01349 are consolidated for trial;
`FURTHER ORDERED that all future filings shall be made in
`IPR2016-00758, using the combined case caption as attached to this
`decision;
`
`
`3 35 U.S.C. § 315(d) provides: “Notwithstanding sections 135(a), 251, and
`252, and chapter 30, during the pendency of an inter partes review, if
`another proceeding or matter involving the patent is before the Office, the
`Director may determine the manner in which the inter partes review or other
`proceeding or matter may proceed, including providing for stay, transfer,
`consolidation, or termination of any such matter or proceeding.”
`
` 37 C.F.R. § 42.122(a) provides: “Where another matter involving the
`patent is before the Office, the Board may during the pendency of the inter
`partes review enter any appropriate order regarding the additional matter
`including providing for the stay, transfer, consolidation, or termination of
`any such matter.”
`
` 4
`
`3
`
`
`
`IPR2016-000758, IPR2016-01342, IPR2016-01349
`Patent 8,218,481 B2
`
`
` FURTHER ORDERED that the respective grounds for trial in
`IPR2016-00758, IPR2016-01342, and IPR2016-01349 remain unchanged,
`and trial in the consolidated IPR2016-00758 proceeding shall proceed on the
`following grounds of unpatentability:
`1. Whether claims 1, 2, 8, and 9 are unpatentable under 35 U.S.C.
`§ 102(a) or (b) as having been anticipated by Panasonic 792;
`2. Whether claims 3 and 10 are unpatentable under 35 U.S.C.
`§ 103(a) as having been obvious over Panasonic 792 and
`Panasonic 114;
`3. Whether claims 6 and 13 are unpatentable under 35 U.S.C.
`§ 103(a) as having been obvious over Panasonic 792, Panasonic
`114, and Chu;
`4. Whether claims 1 and 2 are unpatentable under 35 U.S.C. § 102(a)
`and (b) as having been anticipated by Panasonic 700;
`5. Whether claim 3 is unpatentable under 35 U.S.C. § 103(a) as
`having been obvious over Panasonic 700 and Panasonic 114;
`6. Whether claims 4 and 6 are unpatentable under 35 U.S.C. § 103(a)
`as having been obvious over Panasonic 700, Panasonic 114, and
`Chu;
`7. Whether claims 8 and 9 are unpatentable under 35 U.S.C. § 103(a)
`as having been obvious over Panasonic 700 and Motorola 595;
`8. Whether claim 10 is unpatentable under 35 U.S.C. § 103(a) as
`having been obvious over Panasonic 700, Panasonic 114, and
`Motorola 595;
`9. Whether claims 11 and 13 are unpatentable under 35 U.S.C.
`§ 103(a) as having been obvious over Panasonic 700, Panasonic
`114, Chu, and Motorola 595;
`10. Whether claims 1 and 15 are unpatentable under 35 U.S.C.
`§ 102(a) and (b) as having been anticipated by IEEE802.16-2004;
`
`11. Whether claims 1 and 15 are unpatentable under 35 U.S.C.
`§ 103(a) as having been obvious over IEEE802.16-2004 and
`IEEE802.16e-2005;
`
`4
`
`
`
`IPR2016-000758, IPR2016-01342, IPR2016-01349
`Patent 8,218,481 B2
`
`
`12. Whether claims 2–4 and 6 are unpatentable under 35 U.S.C.
`§ 103(a) as having been obvious over IEEE802.16-2004 and Tan;
`
`13. Whether claims 2–4 and 6 are unpatentable under 35 U.S.C.
`§ 103(a) as having been obvious over IEEE802.16-2004,
`IEEE802.16e-2005, and Tan;
`
`14. Whether claims 8 and 16 are unpatentable under 35 U.S.C.
`§ 103(a) as having been obvious over IEEE802.16-2004 and Chou;
`
`15. Whether claims 8 and 16 are unpatentable under 35 U.S.C.
`§ 103(a) as having been obvious over IEEE802.16-2004,
`IEEE802.16e-2005, and Chou;
`
`16. Whether claims 9–11 and 13 are unpatentable under 35 U.S.C.
`§ 103(a) as having been obvious over IEEE802.16-2004, Chou,
`and Tan; and
`
`17. Whether claims 9–11 and 13 are unpatentable under 35 U.S.C.
`§ 103(a) as having been obvious over IEEE802.16-2004,
`IEEE802.16e-2005, Chou, and Tan;
`
`FURTHER ORDERED that the Petitioners in the consolidated
`IPR2016-00758 proceeding shall file each paper, except for a motion that
`does not involve another party, as a single, consolidated filing; shall identify
`each such filing as a consolidated filing; and any such consolidated filing
`will be subject to double the word counts and page limits set forth in
`37 C.F.R. § 42.24, although more words or pages may be granted upon a
`showing of good cause;
`FURTHER ORDERED that for any consolidated filing, if one or
`more Petitioners wishes to file an additional paper, authorization to file any
`such additional paper must be requested from the Board; and no additional
`paper may be filed unless the Board grants such authorization;
`FURTHER ORDERED that any filings by Patent Owner in the
`consolidated IPR2016-00758 proceeding shall be subject to double the word
`
`5
`
`
`
`IPR2016-000758, IPR2016-01342, IPR2016-01349
`Patent 8,218,481 B2
`
`counts and page limits set forth in 37 C.F.R. § 42.24, although more words
`or pages may be granted upon a showing of good cause;
`FURTHER ORDERED that the Petitioners in the consolidated
`IPR2016-00758 proceeding shall collectively designate one or more
`attorneys to conduct the cross-examination of any witness produced by
`Patent Owner and the redirect of any witness produced by the Petitioners;
`FURTHER ORDERED that the Petitioners in the consolidated
`IPR2016-00758 proceeding shall collectively designate one or more
`attorneys to present at the oral hearing, if requested and scheduled, in a
`consolidated argument;
`FURTHER ORDERED that the Revised Scheduling Order entered
`today in the consolidated IPR2016-00758 proceeding shall supersede the
`scheduling orders previously entered in IPR2016-00758 (Paper 13),
`IPR2016-01342 (Paper 12), and IPR2016-01349 (Paper 12), and the
`consolidated IPR2016-00758 proceeding shall be conducted in accordance
`with the Revised Scheduling Order;
`FURTHER ORDERED that, within five business days of this
`Decision, the parties shall refile in the consolidated IPR2016-00758
`proceeding, any exhibits filed in IPR2016-01342 and IPR2016-01349 but
`not filed in IPR2016-00758, using unique sequential numbers as required by
`37 C.F.R. § 42.63(c), and file updated exhibit lists pursuant to 37 C.F.R.
`§ 42.63(e); and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the records of IPR2016-00758, IPR2016-00981, IPR2016-01342,
`IPR2016-01349, IPR2017-00068, and IPR2017-00106.
`
`
`
`6
`
`
`
`IPR2016-000758, IPR2016-01342, IPR2016-01349
`Patent 8,218,481 B2
`
`PETITIONER:
`
`Charles M. McMahon
`Hersh H. Mehta
`MCDERMOTT WILL & EMERY
`cmcmahon@mwe.com
`hmehta@mwe.com
`
`Stephen S. Korniczky
`Martin Bader
`Ericka J. Schulz
`SHEPPARD, MULLIN, RICHTER & HAMPTON, LLP
`skorniczky@sheppardmullin.com
`mbader@sheppardmullin.com
`eschulz@sheppardmullin.com
`
`James M. Glass
`John McKee
`Kevin P.B. Johnson
`Todd M. Briggs
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`jimglass@quinnemanuel.com
`johnmckee@quinnemanuel.com
`kevinjohnson@quinnemanuel.com
`toddbriggs@quinnemanuel.com
`
`W. Karl Renner
`Roberto J. Devoto
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`devoto@fr.com
`IPR00035-0010IP1@fr.com
`PTABInbound@fr.com
`
`
`
`
`
`7
`
`
`
`IPR2016-000758, IPR2016-01342, IPR2016-01349
`Patent 8,218,481 B2
`
`PATENT OWNER:
`
`Cyrus Morton
`Ryan Schultz
`ROBINS KAPLAN LLP
`cmorton@robinskaplan.com
`rschultz@robinskaplan.com
`
`
`
`8
`
`
`
`
`
` 1
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`APPLE, INC., HTC CORPORATION, HTC AMERICA, INC.,
`MICROSOFT CORPORATION, MICROSOFT MOBILE OY,
`MICROSOFT MOBILE INC., SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and ZTE (USA) INC.,
` Petitioners,
`
`v.
`
`EVOLVED WIRELESS LLC,
`Patent Owner.
`____________
`
`Case IPR2016-007581
`Patent 8,218,481 B2
`____________
`
`Before CHRISTOPHER L. CRUMBLEY, PETER P. CHEN, and
`TERRENCE W. McMILLIN, Administrative Patent Judges
`
`McMILLIN, Administrative Patent Judge
`
`
` IPR2016-001342 and IPR2016-01349 have been consolidated with this
`proceeding. IPR2017-00068 and IPR2017-00106 have been joined with
`IPR2016-00758. IPR2016-00981 has been joined with IPR2016-01349.
`
`
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