`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`———————
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`———————
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`
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`APPLE INC.,
`Petitioner,
`
`v.
`
`PARTHENON UNIFIED MEMORY ARCHITECTURE LLC,
`Patent Owner
`
`———————
`
`U.S. Patent No. 5,812,789
`Case No: IPR2016-00923
`———————
`
`
`
`PETITIONER’S MOTION FOR JOINDER
`UNDER 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22, and 42.122(b)
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`
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`Petitioner’s Motion for Joinder
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`TABLE OF CONTENTS
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`I.
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`STATEMENT OF RELIEF REQUESTED ...................................................... 1
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`II. STATEMENT OF MATERIAL FACTS .......................................................... 2
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`III. STATEMENT OF REASONS FOR REQUESTED RELIEF .......................... 3
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`A. Legal Standards ........................................................................................ 3
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`B. Apple’s Motion for Joinder is Timely ...................................................... 4
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`C.
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`Joinder is Appropriate .............................................................................. 4
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`1. No New Grounds of Unpatentability in the Petition ........................ 6
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`2. No Impact on the Schedule for the Existing IPR Proceeding .......... 7
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`3. Briefing and Discovery Will be Simplified ..................................... 8
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`4. No Prejudice to Patent Owner .......................................................... 9
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`IV. CONCLUSION ................................................................................................ 10
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`I.
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`Petitioner’s Motion for Joinder
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`STATEMENT OF RELIEF REQUESTED
`Petitioner Apple Inc. (“Apple”) respectfully submits this Motion for Joinder
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`together with a Petition for Inter Partes Review of U.S. Patent No. 5,812,789
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`(“Apple’s Petition”). Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b),
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`Apple requests inter partes review and joinder with Samsung Elecs. Co., Ltd., et al.
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`v. Parthenon Unified Memory Architecture, LLC, IPR2015-01944 (“the Samsung
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`IPR”), which was instituted on March 30, 2016. Apple’s Petition is substantively
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`identical to the petition in the Samsung IPR—challenging the same claims of the
`
`’789 Patent on the same grounds while relying on the same prior art, arguments,
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`and evidence. Additionally, if joined, Apple will assume an “understudy” role,
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`only materially participating in the event Samsung is dismissed from the
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`proceeding. The instant Motion for Joinder and accompanying Petition are being
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`filed within one month of the decision instituting trial in the Samsung IPR, and are
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`therefore timely. Counsel for Apple has conferred with counsel for Samsung, and
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`Samsung does not oppose joinder.
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`Joinder is appropriate here because (i) Apple’s Petition is substantively
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`identical to the petition in the Samsung IPR, (ii) Apple will assume an understudy
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`role in the joined trial, eliminating any impact on the existing trial schedule, and
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`(iii) Apple agrees to consolidated filings and relies upon the same expert
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`1
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`
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`declaration as relied upon in the Samsung IPR, simplifying briefing and discovery.
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`Petitioner’s Motion for Joinder
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`Accordingly, joinder will provide for a just, speedy, and inexpensive determination
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`of related proceedings.
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`Apple is filing this petition and joinder motion to ensure that the instituted
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`Samsung IPR reaches a final decision in the event Samsung settles with Patent
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`Owner. In that regard, if a Motion to Terminate is filed in the Samsung IPR and is
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`considered before the Board considers this joinder motion, Apple respectfully
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`requests that the Board dismiss only the petitioner, at least until the instant motion
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`can be considered. Doing so lowers the likelihood that the Board will have to
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`reconsider the same issues in a subsequent trial.
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`Accordingly, Apple respectfully requests that the Board grant this motion for
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`joinder.
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`II.
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`STATEMENT OF MATERIAL FACTS
`1.
`The owner of the ’789 Patent, Parthenon Unified Memory
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`Architecture LLC (“Parthenon”), has filed suit against nine different companies—
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`including Apple and Samsung—alleging infringement of the ’789 Patent in the
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`United States District Court for the Eastern District of Texas (the “Concurrent
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`Litigation”).
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`2.
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`On June 5, 2015, Apple was served with a complaint captioned
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`2
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`
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`Parthenon Unified Memory Architecture LLC v. Apple Inc., 2:15-cv-00621
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`Petitioner’s Motion for Joinder
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`alleging infringement of the ’789 Patent.
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`3.
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`On September 22, 2015, Samsung Electronics Co., Ltd. and Samsung
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`Electronics America, Inc. (collectively “Samsung”) timely filed a Petition for Inter
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`Partes Review challenging claims 1, 3-6, 11, and 13 of the ’789 Patent. See
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`Samsung Elecs. Co., Ltd., et al. v. Parthenon Unified Memory Architecture, LLC,
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`IPR2015-01944, Paper 2 (PTAB Sept. 22, 2015).
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`4.
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`On March 30, 2016, the Board entered a Decision instituting an inter
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`partes review of claims 1, 3-6, 11, and 13 of the ’789 Patent. See Samsung,
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`IPR2015-01944, Paper 7.
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`5.
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`Apple’s Petition and this motion for joinder are being filed within one
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`month of the institution date of the Samsung IPR.
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`III. STATEMENT OF REASONS FOR REQUESTED RELIEF
`A. Legal Standards
`The Board has authority under 35 U.S.C. § 315(c) to join a party who files a
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`proper inter partes review petition to a previously-instituted inter partes review
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`proceeding. This authority is discretionary. 35 U.S.C. § 315(c); 37 C.F.R. §
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`42.122. The moving party has the burden of proof and should: (1) set forth the
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`reasons why joinder is appropriate; (2) identify any new grounds of unpatentability
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`asserted in the petition; (3) explain what impact (if any) joinder would have on the
`3
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`
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`trial schedule for the existing review; and (4) address specifically how briefing and
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`Petitioner’s Motion for Joinder
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`discovery may be simplified. Dell Inc. v. Network-1 Sec. Solutions, Inc, IPR2013-
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`00385, Paper 17 at 3-4 (PTAB July 29, 2013).
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`The legislative history of the AIA suggests that the joinder may be granted
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`as a matter of right where the later petitioner files an identical petition with
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`identical grounds of unpatentability. See 157 CONG. REC. S1376 (daily ed. Mar.
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`8, 2011) (statement of Sen. Kyl) (“The Office anticipates that joinder will be
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`allowed as of right-if an inter partes review is instituted on the basis of a petition,
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`for example, a party that files an identical petition will be joined to that
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`proceeding, and thus allowed to file its own briefs and make its own arguments.”)
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`(emphasis added).
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`B. Apple’s Motion for Joinder is Timely
`A Motion for Joinder is timely if the moving party files within one month of
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`institution of the inter partes review for which joinder is requested. 37 C.F.R. §
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`42.122(b). This motion is timely as it is being filed within one month of the
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`institution of the Samsung IPR on March 30, 2016. Additionally, this Motion for
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`Joinder is being filed before any motions requesting termination of the Samsung
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`IPR have been filed.
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`C.
`Joinder is Appropriate
`Although joinder is discretionary, it is appropriate here because Apple’s
`4
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`Petition does “not present issues that might complicate or delay” the existing
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`Petitioner’s Motion for Joinder
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`Samsung IPR. See Enzymotec Ltd. v. Neptune Techs & Bioresources, Inc.,
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`IPR2014-00556, Paper 19 at 6 (July 9, 2014) (“we are mindful of a policy
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`preference for joining a party that does not present new issues that might
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`complicate or delay an existing proceeding”). In fact, because Apple’s Petition is
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`substantively identical to the petition upon which the Samsung IPR was instituted,
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`joinder would secure the just, speedy, and inexpensive resolution of the related
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`proceedings. Joinder would have little, if any, impact on the Samsung IPR because
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`no new grounds would be added, the schedule would not be affected, no additional
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`briefing or discovery would be required, and no additional burdens would be
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`placed on Patent Owner, as detailed below.
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`Apple is filing this joinder motion to ensure that the instituted Samsung IPR
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`reaches a final decision in the event Samsung settles with Patent Owner and is
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`dismissed from the review. In that regard, an inter partes review “shall be
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`terminated with respect to any petitioner upon the joint request of the petitioner
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`and the patent owner.” 35 U.S.C. § 317(a). The Board, at its discretion, “may
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`terminate the review” if no petitioner remains. Id. In previous proceedings, the
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`Board has exercised its discretion not to terminate a review after dismissing the
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`petitioner because of a pending joinder motion in a related proceeding. See
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`5
`
`
`
`
`
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`MediaTek Inc., et. al. v. Bandspeed, Inc., IPR2015-00314, Paper 20 at 3 (PTAB
`
`Petitioner’s Motion for Joinder
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`Sept. 17, 2015) (“We exercise the discretion afforded under 35 U.S.C. § 317(a) to
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`decline, at this time, to terminate these proceedings with respect to Patent Owner”).
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`Specifically, in MediaTek, the Board, after noting that the joinder motion was filed
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`before the motion to terminate, chose to wait until after ruling on the joinder
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`motion to consider whether to terminate the review entirely. Id.
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`Here, if a motion to terminate is filed in the Samsung IPR and Samsung is
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`dismissed before this joinder motion has been decided, Apple respectfully requests
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`that the Board exercise its discretion and decline termination of Patent Owner at
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`least until the instant motion is considered. If the Samsung IPR is completely
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`terminated before joinder can be effectuated, a proceeding with identical grounds
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`of unpatentability would begin anew requiring the parties to expend resources
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`rearguing the same issues.
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`Accordingly, joinder is appropriate because it eliminates the possibility of
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`duplicate efforts and ensures a just, speedy, and inexpensive resolution of these
`
`proceedings.
`
`1.
`
`No New Grounds of Unpatentability in the Petition
`
`Apple’s Petition is substantively identical to the petition in the Samsung
`
`IPR. In particular, Apple’s Petition challenges the same claims (1, 3-6, 11, and 13)
`
`6
`
`
`
`
`
`
`under the same grounds, while relying on the same arguments, expert declaration,
`
`Petitioner’s Motion for Joinder
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`and evidence. Because the Board instituted a subset of the grounds requested in the
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`Samsung IPR (see Samsung, IPR2015-01944, Paper 7 at 21), Apple requests that
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`only those grounds instituted in the Samsung IPR be instituted in the present
`
`proceeding. Accordingly, no new claims and no new grounds will be added to the
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`Samsung IPR as a result of the Board allowing joinder. Denial of joinder, however,
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`would result in parallel proceedings involving identical grounds of unpatentability
`
`and needless duplication of effort.
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`2.
`
`No Impact on the Schedule for the Existing IPR Proceeding
`
`Because Apple’s Petition challenges no additional claims and raises no new
`
`grounds of unpatentability, joinder should have no impact on the trial schedule of
`
`the Samsung IPR. Apple will adhere to all applicable deadlines set forth in the
`
`Samsung IPR Scheduling Order and will coordinate with Samsung’s counsel to
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`consolidate filings. Additionally, no additional expert discovery will be needed as
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`Apple’s Petition relies upon the same declaration testimony from the same expert,
`
`Dr. Harold Stone, as relied upon by the petition in the Samsung IPR.
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`Additionally, if joined, Apple will assume an “understudy” role and not
`
`materially participate in the joined proceedings unless and until the petitioner in
`
`the joined proceeding is dismissed, as may occur in the event of settlement. As an
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`7
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`
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`understudy participant, Apple will not file additional briefs outside of the
`
`Petitioner’s Motion for Joinder
`
`consolidated filings, will not request any additional deposition time, and will not
`
`request any additional oral hearing time.1 In the event the Samsung IPR is
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`terminated with respect to the petitioner, Apple intends to “step into the shoes” of
`
`the dismissed petitioner and materially participate in the joined proceedings.
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`Accordingly, for the reasons above, joinder of Apple to the Samsung IPR
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`will not unduly affect the Board’s ability to complete its review and issue a final
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`decision within the statutory time limits under 35 U.S.C. § 316(a)(11) and 37
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`C.F.R. § 42.100(c).
`
`3.
`
`Briefing and Discovery Will be Simplified
`
`Given that Apple’s positions in its petition are identical to Samsung’s
`
`positions in the instituted IPR, Apple agrees to consolidated filings for all
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`substantive papers and to consolidated discovery in the joined proceeding. With
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`respect to consolidated filings, any papers jointly submitted by petitioners will not
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`exceed the normal page limits for a single party set forth in the rules. Apple, in an
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`1 While Apple will not materially participate in calls with the Board, depositions,
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`and any oral hearing, Apple anticipates that its counsel will attend such events.
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`Additionally, Apple’s understudy role does not foreclose communication between
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`Apple and other petitioners in the Samsung IPR.
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`8
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`
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`understudy role, will not file, or request to file, any separate briefs beyond the
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`Petitioner’s Motion for Joinder
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`consolidated filings. Consolidated discovery is also appropriate given that Apple
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`and Samsung are using the same expert declarant who has submitted the same,
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`identical declaration in the two proceedings. Any cross-examination of a declarant
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`produced by Patent Owner and any re-direct of a declarant produced by the joined
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`petitioners will be completed within the timeframe normally allotted by the rules.
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`Apple will not request additional cross-examination or re-direct time.
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`Additionally, with respect to any oral hearing, Samsung will be responsible
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`for the presentation before the Board. Apple will not request any additional time to
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`independently argue before the Board or attempt to submit its own demonstratives.
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`Accordingly, if joinder is granted, briefing and discovery in the joined
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`proceeding will be no more complex than if Apple had never been joined.
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`Consolidated briefing and discovery will ensure a simplified and efficient joined
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`proceeding.
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`4.
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`No Prejudice to Patent Owner
`
`Joinder of Apple to the Samsung IPR will not create any meaningful
`
`additional burden on Patent Owner. Apple’s understudy role ensures that Patent
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`Owner need not expend any additional resources above and beyond those required
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`in the current Samsung IPR. Moreover, joinder eliminates the need for Patent
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`9
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`
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`Owner to participate in parallel inter partes review proceedings instituted upon
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`Petitioner’s Motion for Joinder
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`identical grounds of patentability.
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`IV. CONCLUSION
`For the foregoing reasons, Apple respectfully requests that the Board
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`institute the instant inter partes review upon the same grounds instituted in
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`IPR2015-01944 and join the proceedings.
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`
`Dated: April 20, 2016
`HAYNES AND BOONE, LLP
`Customer No. 27683
`
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`Telephone: 214-651-5116
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`Facsimile: 214-200-0853
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`
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`Respectfully submitted,
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`
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`
`
`/Andrew S. Ehmke/
`Andrew S. Ehmke
`Lead Counsel for Petitioner
`Registration No. 50,271
`
`
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`10
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`
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`Petitioner’s Motion for Joinder
`
`
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`CERTIFICATE OF SERVICE
`The undersigned certifies that, in accordance with 37 C.F.R. § 42.6(e) and
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`37 C.F.R. § 42.105, service was made on Patent Owner as detailed below.
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`Date of service April 20, 2016
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`Manner of service FEDERAL EXPRESS
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`Documents served Petitioner’s Motion for Joinder Under 35 U.S.C. § 315(c), 37
`C.F.R. §§ 42.22, and 42.122(b)
`
`Persons served
`
`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)
`Jamie Alan Aycock, Esq. (jamieaycock@azalaw.com)
`Michael Dean McBride, Esq. (mmcbride@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
`
`Claire Abernathy Henry, Esq. (claire@wsfirm.com)
`Jack Wesley Hill, Esq. (wh@wsfirm.com)
`Thomas John Ward, Jr. (jw@wsfirm.com)
`WARD, SMITH & HILL, PLLC
`P.O. Box 1231
`1127 Judson Road, Suite 220
`Longview, TX 75606
`
`
`
`/Andrew S. Ehmke/
`Andrew S. Ehmke
`Lead Counsel for Petitioner
`Registration No. 50,271
`
`
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