Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
` Paper No. 16
`
`
` Entered: August 23, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HTC CORPORATION and HTC AMERICA, INC.,
`Petitioner,
`
`v.
`
`PARTHENON UNIFIED MEMORY ARCHITECTURE LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00847
`Patent 5,812,789
`
`
`
`Before MICHAEL R. ZECHER, JAMES B. ARPIN, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review and
`Granting Petitioner’s Second Motion for Joinder
`35 U.S.C. § 314(a), 37 C.F.R. §§ 42.108 and 42.122
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
` Paper No. 16
`
`
` Entered: August 23, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HTC CORPORATION and HTC AMERICA, INC.,
`Petitioner,
`
`v.
`
`PARTHENON UNIFIED MEMORY ARCHITECTURE LLC,
`Patent Owner.
`____________
`
`Case IPR2016-00847
`Patent 5,812,789
`
`
`
`Before MICHAEL R. ZECHER, JAMES B. ARPIN, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`DECISION
`Institution of Inter Partes Review and
`Granting Petitioner’s Second Motion for Joinder
`35 U.S.C. § 314(a), 37 C.F.R. §§ 42.108 and 42.122
`
`
`
`
`
`
`
`IPR2016-00847
`Patent 5,812,789
`
`
`I. INTRODUCTION
`On April 7, 2016, the only Petitioner entities remaining in this
`proceeding, HTC Corporation and HTC America, Incorporated (collectively,
`“HTC”), filed a Petition requesting an inter partes review of claims 1, 3–6,
`11, and 13 of U.S. Patent No. 5,812,789 (Ex. 1001, “the ’789 patent”).
`Paper 1 (“Pet.”). HTC filed its Petition along with an initial Motion for
`Joinder requesting that we join HTC as a party with Samsung Elecs. Co. v.
`Parthenon Unified Memory Architecture LLC, Case IPR2015-01944
`(“Samsung IPR”). Paper 2. As we explained in an Order dated June 8,
`2016, we instituted an inter partes review in the Samsung IPR on March 30,
`2016, and we granted a Joint Motion to Terminate the Samsung IPR on May
`25, 2016. Paper 11, 3. As a consequence, we dismissed without prejudice
`HTC’s initial Motion for Joinder and authorized HTC to file a renewed
`Motion for Joinder that seeks joinder with a Petition filed by Apple
`Incorporated (“Apple”) requesting an inter partes review of claims 1, 3–6,
`11, and 13 of the ’789 patent (Case IPR2016-00923, “Apple IPR”). On June
`15, 2016, HTC filed a Second Motion for Joinder requesting that we join
`HTC as a party with the Apple IPR. Paper 12 (“HTC Mot. for Joinder”).
`In a Decision on Institution entered concurrently herewith, we
`institute an inter partes review in the Apple IPR as to claims 1, 3–6, 11, and
`13 of the ’789 patent. See Apple IPR, Paper 10 (“Apple IPR Dec. on Inst.”).
`The Petition filed in this proceeding is essentially the same as the Petition
`filed in the Apple IPR. Compare Apple IPR, Paper 2, 1–48, with Pet. 1–49.
`HTC, however, represents that is willing to limit the asserted grounds of
`unpatentability (“grounds”) in this proceeding to only those grounds that we
`determine satisfy the “reasonable likelihood” threshold standard for
`
`
`
`2
`
`
`
`IPR2016-00847
`Patent 5,812,789
`
`institution in the Apple IPR. HTC Mot. for Joinder 3; Apple IPR Dec. on
`Inst. 17. HTC also represents that, if it is allowed to join the Apple IPR, it
`will assume an “understudy,” i.e., a passive, role and only assume an active
`role in the event that Apple reaches a settlement agreement with Patent
`Owner, Parthenon Unified Memory Architecture Limited Liability
`Corporation (“Parthenon”).1 HTC Mot. for Joinder 6.
`Parthenon waived its right to file a Preliminary Response in this
`proceeding. Paper 9. Parthenon also did not file an opposition to HTC’s
`renewed Motion for Joinder.
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`unless the information presented in the Petition shows “there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” For the reasons discussed below, we
`institute an inter partes review as to claims 1, 3–6, 11, and 13 of the ’789
`patent, but only based on the same grounds instituted in the Apple IPR. We
`also grant HTC’s Second Motion for Joinder.
`
`
`II. INSTITUTION OF INTER PARTES REVIEW
`In the Apple IPR, we instituted an inter partes review as to claims 1,
`3–6, 11, and 13 of the ’789 patent based on the following grounds: (1)
`claims 1, 3, 5, 11, and 13 as anticipated under 35 U.S.C. § 102(e) by
`Lambrecht; 2 (2) claim 4 as unpatentable under 35 U.S.C. § 103(a) over the
`
`
`1 For example, in its understudy role, HTC may not file any paper in the
`Apple IPR independent of Apple, absent our express authorization.
`2 U.S. Patent No. 5,682,484, filed Nov. 20, 1995, issued Oct. 28, 1997
`(Ex. 1032, “Lambrecht”).
`
`
`
`3
`
`
`
`IPR2016-00847
`Patent 5,812,789
`
`combination of Lambrecht and Artieri;3 and (3) claim 6 as unpatentable
`under § 103(a) over the combination of Lambrecht and Moore.4 Apple IPR
`Dec. on Inst. 11–14, 17. As we indicated previously, the Petition filed in
`this proceeding is essentially the same as the Petition filed in the Apple IPR,
`and HTC is willing to limit the asserted grounds in this proceeding to only
`those grounds that we determine satisfy the “reasonable likelihood”
`threshold standard for institution in the Apple IPR. HTC Mot. for Joinder 3;
`Apple IPR Dec. on Inst. 11–14, 17.
`As we explain below, we grant HTC’s Second Motion for Joinder.
`Given that we are granting HTC’s Second Motion for Joinder, and
`Parthenon has waived its right to file a Preliminary Response in this
`proceeding, we conclude that the information presented in the Petition
`establishes that there is a reasonable likelihood that HTC would prevail in
`challenging claims 1, 3, 5, 11, and 13 of the ’789 patent as unpatentable
`under § 102(e), and claims 4 and 6 of the ’789 patent as unpatentable under
`§ 103(a). Pursuant to § 314, we institute an inter partes review as to these
`claims of the ’789 patent, but only based on the same grounds instituted in
`the Apple IPR.
`
`
`III. GRANTING HTC’S MOTION FOR JOINDER
`Based on authority delegated to us by the Director, we have discretion
`to join an inter partes review with another inter partes review under, subject
`to certain exceptions not present here. 35 U.S.C. § 315(c). The regulatory
`
`3 U.S. Patent No. 5,579,052, filed May 24, 1994, issued Nov. 26, 1996
`(Ex. 1036, “Artieri”).
`4 Gordon E. Moore, Cramming more components onto integrated circuits,
`38 ELECTRONICS (1965) (Ex. 1035, “Moore”).
`4
`
`
`
`
`
`IPR2016-00847
`Patent 5,812,789
`
`provisions governing an inter partes review proceeding address the
`appropriate timeframe for filing a motion for joinder. Section 42.122(b) of
`Title 37 of the Code of Federal Regulations provides, in relevant part, “[a]ny
`request for joinder must be filed, as a motion under § 42.22, no later than
`one month after the institution date of any inter partes review for which
`joinder is requested.”
`
`The Petition was accorded a filing date of April 7, 2016 (Paper 4, 1),
`and the Second Motion for Joinder was filed on June 15, 2016. As such,
`HTC’s Second Motion for Joinder was filed timely because joinder was
`requested no later than one month after the institution date of the Apple IPR.
`
`In its Second Motion for Joinder, HTC contends that joinder is
`appropriate because this proceeding and the Apple IPR are identical because
`they involve the same patent, the same prior art references, the same expert
`declaration, and the same arguments and rationales. See HTC Mot. for
`Joinder 3–5. In other words, HTC asserts that the Petition and supporting
`evidence filed in this proceeding do not raise any new substantive challenges
`or procedural issues. See id. HTC further argues that joinder will not
`impact the schedule of the Apple IPR, thereby allowing us to complete one
`consolidated proceeding in a timely manner, because it is willing to work
`with counsel for Apple to consolidate all filings and discovery. Id. at 4–6.
`HTC also argues that, if this proceeding is joined with the Apple IPR,
`Parthenon will not suffer any prejudice because joinder effectively will
`decrease the number of papers the parties must file, reduce the time and
`expense for depositions and other discovery required for separate, parallel
`proceedings, and create certain efficiencies for both us and the parties. Id. at
`6.
`
`
`
`5
`
`
`
`IPR2016-00847
`Patent 5,812,789
`
`
`Given that Parthenon did not oppose HTC’s Second Motion for
`Joinder, and HTC agrees to consolidated filings and discovery, we conclude
`HTC has demonstrated that joinder will not unduly complicate or delay the
`Apple IPR. We, therefore, grant HTC’s Second Motion for Joinder and, as a
`result, join this proceeding with the Apple IPR.
`
`
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that, pursuant to 35 U.S.C. § 314(a) and 37 C.F.R. § 42.4,
`an inter partes review is instituted as to claims 1, 3–6, 11, and 13 of the ’789
`patent, but only based on the same grounds instituted in Case IPR2016-
`00923;
`FURTHER ORDERED that HTC’s Second Motion for Joinder is
`GRANTED, and this proceeding is joined with Case IPR2016-00923;
`FURTHER ORDERED that the grounds on which an inter partes
`review was instituted in Case IPR2016-00923 remain unchanged, and no
`other grounds are instituted in the joined proceedings;
`FURTHER ORDERED that Case IPR2016-00847 is instituted, joined,
`and administratively terminated under 37 C.F.R. § 42.72, and all further
`filings in the joined proceedings shall be made in Case IPR2016-00923;
`FURTHER ORDERED that the Scheduling Order entered in Case
`IPR2016-00923 (Paper 11) shall govern the schedule of the joined
`proceedings;
`FURTHER ORDERED that HTC’s participation in the briefing,
`depositions, and oral argument of the joined proceedings shall be subject to
`Apple’s acquiescence to HTC’s participation and, absent our express
`
`
`
`6
`
`
`
`IPR2016-00847
`Patent 5,812,789
`
`authorization, HTC shall not file papers or exhibits apart from Apple;
`FURTHER ORDERED that the roles of Apple and Parthenon in the
`joined proceedings remain unchanged;
`FURTHER ORDERED that the case caption in Case IPR2016-00923
`shall be changed to reflect the joinder with this proceeding in accordance
`with the attached example; and
`FURTHER ORDERED that a copy of this Decision be entered into
`the file of Case IPR2016-00923.
`
`
`
`7
`
`
`
`IPR2016-00847
`Patent 5,812,789
`
`For PETITIONER:
`Joseph A. Micallef
`Samuel A. Dillon
`SIDLEY AUSTIN LLP
`jmicallef@sidley.com
`samuel.dillon@sidley.com
`
`Rajeev Gupta
`Joshua Goldberg
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`raj.gupta@finnegan.com
`joshua.goldberg@finnegan.com
`
`
`For PATENT OWNER:
`
`Masood Anjom
`Scott Clark
`AHMAD, ZAVITSANOS, ANAIPAKOS, ALAVI & MENSING P.C.
`manjom@azalaw.com
`sclark@azalaw.com
`
`
`
`
`
`
`
`
`
`
`
`
`8
`
`
`
`Paper:
`Entered:
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HTC CORPORATION, HTC AMERICA, INC., and APPLE INC.,
`Petitioners,
`
`v.
`
`PARTHENON UNIFIED MEMORY ARCHITECTURE LLC,
`Patent Owner.
`____________
`
`Case IPR2016-0092315
`Patent 5,812,789
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`15 Case IPR2016-00847 has been joined with this proceeding.
`
`
`
`
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