Trials@uspto.gov
`Tel: 571-272-7822
`
`
`Paper 14
`Entered: February 23, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZTE (USA) INC.,
` Petitioner,
`
`v.
`
`EVOLVED WIRELESS LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01349
`Patent 8,218,481 B2
`____________
`
`Before WILLIAM V. SAINDON, PETER P. CHEN, and
`TERRENCE W. McMILLIN, Administrative Patent Judges
`
`McMILLIN, Administrative Patent Judge
`
`
`Decision
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b)
`
`
`
`Tel: 571-272-7822
`
`
`Paper 14
`Entered: February 23, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZTE (USA) INC.,
` Petitioner,
`
`v.
`
`EVOLVED WIRELESS LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01349
`Patent 8,218,481 B2
`____________
`
`Before WILLIAM V. SAINDON, PETER P. CHEN, and
`TERRENCE W. McMILLIN, Administrative Patent Judges
`
`McMILLIN, Administrative Patent Judge
`
`
`Decision
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b)
`
`
`
`
`IPR2016-01349
`Patent 8,218,481 B2
`
`
`I.
`INTRODUCTION
`Petitioner, ZTE (USA) Inc. (“ZTE”), requested joinder of this
`proceeding with IPR2016-00981. Patent Owner, Evolved Wireless LLC
`(“Evolved Wireless”), does not oppose joinder. For the reasons given
`below, we grant the motion for joinder.
`II. GRANT OF MOTION FOR JOINDER
`On July 5, 2016, ZTE filed a Petition requesting an inter partes
`review of claims 1–4, 6, 8–11, 13, 15, and 16 of U.S. Patent No. 8,218,481
`B2 (Ex. 1001, “the ’481 patent”). Paper 2. On January 12, 2017, the Board
`instituted trial on all the challenged claims. Paper 11.
`On December 5, 2016, ZTE filed a “Motion for Joinder Under
`35 U.S.C. § 315(c) and/or Consolidation under § 315(d) with Case No.
`IPR2016-00981.” Paper 8 (“Motion for Joinder”). On December 19, 2016,
`Evolved Wireless filed “Patent Owner’s Opposition to Petitioner’s Motion
`for Joiner and/or Consolidation with Case No. IPR2016-00981.” On
`December 29, 2016, we received a communication which stated that ZTE
`has filed a motion to consolidate and/or join IPR2016-00981 with IPR2016-
`01349, and that Patent Owner has confirmed that it would not oppose joinder
`if the Board institutes in IPR2016-001349. Paper 9. On January 12, 2017,
`ZTE filed its “Reply in Support of Petitioner’s Motion for Joinder and/or
`Consolidation with Case No. IPR2016-00981” which stated:
`Petitioner’s joinder/consolidation motion (Paper 8) is now
`unopposed. Specifically after filing its opposition (Paper 9),
`Patent Owner represented that if the Board institutes an IPR in
`this proceeding
`then Patent Owner would not oppose
`joinder/consolidation with the instituted proceeding in IPR2016-
`00981. (Paper 10 at 2–3; 12/29/16 C. McMahon E-Mail to
`Board.) Today the Board instituted an IPR in the present
`
`
`
`IPR2016-01349
`Patent 8,218,481 B2
`
`
`proceeding (Paper 11). Therefore, the Board should join or
`consolidate the present proceeding with IPR2016-00981.
`
`Paper 13, 1. Thus, although Evolved Wireless previously indicated it
`opposed joinder (Paper 9), the Board understands that Evolved Wireless
`currently does not oppose joinder (Paper 13).
`The Motion for Joinder was timely because joinder was requested no
`later than one month after the institution date of IPR2016-00981, i.e.,
`November 3, 2016.1 See 37 C.F.R. § 42.122(b).
`The statutory provision governing joinder in inter partes review
`proceedings is 35 U.S.C. § 315(c), which reads:
`If the Director institutes an inter partes review, the Director, in
`his or her discretion, may join as a party to that inter partes
`review any person who properly files a petition under section 311
`that the Director, after receiving a preliminary response under
`section 313 or the expiration of the time for filing such a
`response, determines warrants the institution of an inter partes
`review under section 314.
`
`
`By regulation, the Director’s discretion has been delegated to the board.
`37 C.F.R. § 42.4(a). A motion for joinder should generally (1) set forth
`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. ZTE’s
`Motion for Joinder addresses each of the above factors. Motion for Joinder
`6–10. ZTE argues:
`The ZTE petition [in this proceeding] challenges the same claims
`and relies on the same arguments, same evidence including the
`
`1 December 3, 2016, was a Saturday and December 4, 2016, was a Sunday.
`
`
`
`IPR2016-01349
`Patent 8,218,481 B2
`
`
`same expert declaration, and substantively identical prior art as
`those presented in the Apple/Microsoft proceeding [IPR2016-
`00981]. Indeed, as Patent Owner acknowledges, the only
`relevant difference between ZTE’s petition and
`the
`Apple/Microsoft petition is that the ZTE petition uses the Tan
`patent, rather than the Tan provisional, as a secondary reference
`in order to correct a minor procedural defect. See Paper 7 at 16.
`
`
`Motion for Joinder 6. In IPR2016-0981, the Petitioners, Apple Inc.,
`Microsoft Corporation, Microsoft Mobile Oy, and Microsoft Mobile, Inc.
`(“Apple and Microsoft”), relied on a US provisional patent application in
`challenging dependent claims 2–4, 6, 9–11 of the ’481 patent. IPR2016-
`00981, Paper 4, 4–5. As US provisional patent applications are not prior art,
`the Board did not institute trial on dependent claims 2–4, 6, 9–11 of the ’481
`patent. IPR2016-00981, Paper 10, 20–21. In this proceeding, ZTE relies on
`US Patent No. 8,800,305 B2 (the “Tan patent”) in challenging claims 2–4, 6,
`9–11 of the ’481 patent (Paper 2, 6). In this proceeding, Evolved Wireless
`did not separately address ZTE’s challenge to claims 2–4, 6, 9–11 (see
`generally Prelim. Resp.) and the Board instituted trial on those dependent
`claims (Paper 11, 26).
`If joinder is granted, ZTE anticipates participating in the proceeding
`in a limited capacity. Motion for Joinder 1 (“ZTE . . . agrees to accept a
`limited role, with counsel for Apple and Microsoft acting as the lead
`counsel.”). ZTE agrees to:
`(1) consolidate filings with Apple and Microsoft; (2) refrain from
`raising any new grounds not already considered by the Board in
`the Apple/Microsoft proceeding [IPR2016-00981]; (3) be bound
`by any agreement between Patent Owner and Apple and
`Microsoft concerning discovery and/or depositions; (4) limit any
`direct, cross-examination or redirect time beyond that permitted
`
`
`
`IPR2016-01349
`Patent 8,218,481 B2
`
`
`for Apple and Microsoft under either 37 C.F.R. § 42.53 or any
`agreement between Apple and Microsoft and the Patent Owner,
`such that Petitioner’s participation in the Apple/Microsoft
`proceeding does not result in any additional time being required
`for any deposition; and (5) limit any presentation at oral hearing
`to unused time previously allocated to Apple and Microsoft.
`
`Id. at 8–9.
`
`With regard to the trial schedule, joinder will require modification of
`the schedules entered in IPR2016-00981 and this proceeding. We have 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). We note
`that Evolved Wireless has withdrawn its opposition to joinder and that all
`the parties to this proceeding and IPR2016-00981 have agreed to a modified
`schedule which we adopt in the Revised Scheduling Order being entered on
`the same day as this Decision.
`On the record before us, in particular the agreement between the
`parties, and having weighed the factors related to joinder, we exercise our
`discretion to granting the Motion for Joinder. As the more complete record
`exists in this proceeding, especially relating to the Tan patent, we order that
`the Petitioners in IPR2016-00981 shall be added as parties to this proceeding
`and this proceeding shall continue after joinder.
`
`
`
`
`
`IPR2016-01349
`Patent 8,218,481 B2
`
`
`III. ORDER
`
`It is hereby:
`ORDERED that the Motion for Joinder with IPR2016-00981 is
`granted;
`FURTHER ORDERED that Apple Inc., Microsoft Corporation,
`Microsoft Mobile Oy, and Microsoft Mobile, Inc. are joined as petitioners in
`IPR2016-01349;
` FURTHER ORDERED that the grounds for trial in IPR2016-01349
`remain unchanged;
`FURTHER ORDERED that the case caption in IPR2016-01349 shall
`be changed to reflect joinder of Apple Inc., Microsoft Corporation,
`Microsoft Mobile Oy, and Microsoft Mobile, Inc. as petitioners;
`FURTHER ORDERED that the Revised Scheduling Order entered in
`the consolidated IPR2016-007582 shall supersede the scheduling orders in
`IPR2016-00981 (Paper 11) and IPR2016-01349 (Paper 12); and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2016-00981.
`
`
`
`2 IPR2016-01349 is being consolidated with IPR2016-00758 and IPR2016-
`01342 which also relate to the ’481 patent.
`
`
`
`IPR2016-01349
`Patent 8,218,481 B2
`
`PETITIONER:
`
`Charles M. McMahon
`Hersh H. Mehta
`MCDERMOTT WILL & EMERY
`cmcmahon@mwe.com
`hmehta@mwe.com
`
`W. Karl Renner
`Roberto J. Devoto
`FISH & RICHARDSON P.C.
`IPR00035-0010IP1@fr.com
`PTABInbound@fr.com
`
`PATENT OWNER:
`
`Cyrus Morton
`Ryan Schultz
`ROBINS KAPLAN LLP
`cmorton@robinskaplan.com
`rschultz@robinskaplan.com
`evolved_rk_team@robinskaplan.com
`
`
`
`
`
`
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