UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`
`Samsung Electronics, Co., Ltd.,
`Samsung Electronics America, Inc., and
`Samsung Semiconductor, Inc.
`Petitioner,
`
`v.
`
`Raytheon Company,
`Patent Owner
`_______________
`
`Case IPR2016-00962
`
`Patent 5,591,678
`_______________
`
`PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER
`
`
`
`
`
`
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`
`Samsung Electronics, Co., Ltd.,
`Samsung Electronics America, Inc., and
`Samsung Semiconductor, Inc.
`Petitioner,
`
`v.
`
`Raytheon Company,
`Patent Owner
`_______________
`
`Case IPR2016-00962
`
`Patent 5,591,678
`_______________
`
`PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER
`
`
`
`
`
`
`
`
`EXHIBIT LIST
`
`
`DESCRIPTION
`
`Defendants’ Invalidity Contentions and Disclosures
`Pursuant to Patent Rules 3-3 and 3-4, October 2, 2015
`
`
`
`i
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`EXHIBIT
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`2001
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`
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`I.
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`II.
`
`TABLE OF CONTENTS
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`
`Page(s)
`
`
`BACKGROUND AND RELATED MATTERS ............................................ 2
`
`ARGUMENT OPPOSING JOINDER ............................................................ 4
`
`A.
`
`B.
`
`The Petition Was Filed After the One-Year Bar Date .......................... 4
`
`The Petition is a Serial Petition that Presents the Same
`Arguments as the 0209 IPR ................................................................... 5
`
`C.
`
`Samsung has not Demonstrated that Joinder is Appropriate ................ 7
`
`III. CONCLUSION ................................................................................................ 9
`
`
`
`ii
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`
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`TABLE OF AUTHORITIES
`
`
`CASES
`Initiative for Responsibility In Drug Pricing LLC v. Wyeth LLC,
`IPR2014-01259, Paper No. 8 (PTAB February 13, 2015) ................................... 6
`
`Page(s)
`
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Limited,
`IPR2013-00324, Paper No. 19 (PTAB November 21, 2013) ............................... 6
`
`LG Electronics, Inc. v. ATI Technologies ULC,
`IPR2015-01620, Paper No. 10 (PTAB February 2, 2016) ................................... 8
`
`Maxlinear, Inc. v. Cresta Technology Corp.,
`IPR2015-00593, Paper No. 9 (PTAB August 14, 2015) .................................. 6, 7
`
`Medtronic, Inc. v. Nuvasive, Inc.,
`IPR2014-00487, Paper No. 8 (PTAB September 11, 2014) ................................. 6
`
`Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc.,
`IPR2014- 00436, Paper No. 17 (PTAB June 19, 2014) ....................................... 6
`
`Mylan Pharmaceuticals Inc. v. Novartis AG
`IPR2014-00550, Paper No. 11 (PTAB October 15, 2015) ................................... 8
`
`Mylan Pharmaceuticals Inc. v. Novartis AG
`IPR2015-00268, Paper Nos 7, 17 (PTAB April 10, 2015) ............................... 7,8
`
`Samsung v. Raytheon,
`IPR2016-00739, Paper Nos. 1, 4 (PTAB March 10 and 21, 2016) ...................... 3
`
`Sony Corp., et al. v. Memory Integrity, LLC,
`IPR2015-01353, Paper No. 11 (PTAB October 15, 2015) ................................... 7
`
`Sony v. Raytheon,
`IPR2015-01201, Paper Nos. 2, 6 (PTAB May 14 and December 3, 2015) ......... 3
`
`Sony v. Raytheon,
`IPR2016-00209, Paper Nos. 2, 12 (PTAB November 18, 2015
`and March 29, 2016) ......................................................................................... 3, 8
`
`iii
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`
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`Unified Patents, Inc. v. PersonalWeb Technologies, LLC,
`IPR2014-00702, Paper 12, 13 (PTAB July 24, 2014) .......................................... 5
`
`ZTE Corp. v. Contentguard Holdings Inc.,
`IPR2013-00454, Paper No. 12 (PTAB September 25, 2013) ............................... 5
`
`STATUTES
`
`35 U.S.C. 315 (c) ....................................................................................................... 4
`
`35 USC 315(e)(2) ....................................................................................................... 1
`
`LEGISLATIVE MATERIALS
`
`157 Cong. Rec. S1376 (daily ed. Mar. 8, 2011) ........................................................ 8
`
`H.R. Rep. No. 112-98, pt. 1 (2011)............................................................................ 7
`
`CODE OF FEDERAL REGULATIONS
`
`37 C.F.R. 42.20(c) ...................................................................................................... 4
`
`37 C.F.R. 42.122(b) ................................................................................................... 4
`
`
`
`iv
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`Raytheon Company (“Patent Owner”), respectfully requests that the Board
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`deny Petitioner’s Motion for Joinder because it abuses the IPR process and impairs
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`judicial economy. The petition is the fourth in a coordinated series of petitions
`
`(first two by Sony, latter two by Samsung) attacking U.S. Patent No. 5,591,678
`
`(“678 Patent”). Petitioner is a co-defendant with Sony in underlying litigation in
`
`the Eastern District of Texas, which has been stayed pending this Board’s decision
`
`in the first petition filed by Sony. The Board has scheduled the two Sony IPRs for
`
`final hearing on October 13, 2016. Samsung did not join either of Sony’s IPR
`
`petitions, but later agreed to be estopped under 35 USC 315(e)(2) in order to gain
`
`the district court’s stay order. Now, after obtaining the stay, Samsung filed this
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`petition more than a year after it was served with the ED Texas complaint alleging
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`infringement of the 678 Patent so that it can belatedly be a party with Sony.
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`This petition adds nothing to the ongoing second Sony IPR and its joinder is
`
`not warranted. Petitioner admittedly copies Sony’s second IPR yet gives no
`
`explanation why it could not have filed this duplicate petition earlier. The Board
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`has repeatedly exercised its discretion to deny duplicative, harassing and, late-filed
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`petitions. Because Petitioner has not met its burden to establish that joinder is
`
`warranted, its motion should be denied.
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`1
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`I.
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`BACKGROUND AND RELATED MATTERS
`
`The 678 Patent, titled “Process of Manufacturing a Microelectronic Device
`
`
`
`Using a Removable Support Substrate and Etch-Stop,” relates to a method for
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`making a semiconductor device developed by engineers at Hughes Corporation
`
`(later acquired by Raytheon). Ex. 1001. The patented method permits, inter alia,
`
`the fabrication of high resolution image sensors known as back-side illuminated
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`sensors. Raytheon has used the invention in the 678 Patent to make high-
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`resolution image sensors for defense and space applications. Many years after the
`
`invention, manufacturers of cameras, computers, and smart phones, in an effort to
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`improve the resolution of cameras in their products, began using sensors made by
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`the inventive process claimed in the 678 Patent.
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`
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`On March 6, 2015, Patent Owner asserted the 678 Patent against Petitioner
`
`and several other defendants in Raytheon Company v. Sony Corporation, et al.,
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`C.A. No. 2:15-cv-342, (E.D. Tex.) and Raytheon Company v. Samsung Electronics
`
`Co., Ltd. et al., C.A. No. 2-15-cv-00341 (E.D. Tex.) (collectively referred to as the
`
`“Litigation”). The defendants in the Litigation, including Petitioner (Samsung),
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`are coordinating with respect to defenses, and submitted joint invalidity
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`contentions asserting that the 678 Patent is invalid as anticipated and/or obvious in
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`light of eighty (80) alleged prior art references. Ex. 2001.
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`2
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`
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`On May 14, 2015, Sony filed a petition for inter partes review of claims 1-
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`
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`18 of the 678 Patent, alleging six separate grounds based on eleven different
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`references. Sony v. Raytheon, IPR2015-01201, Paper No. 2, at 2, 36. The Board
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`instituted review of claims 1-18 based on six grounds and numerous references.
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`IPR2015-01201 at Paper No. 6, at 23-24.
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`
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`On November 18, 2015, Sony filed a second petition alleging unpatentability
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`of claims 1-18 of the 678 Patent based on eight grounds and seven references. Sony
`
`v. Raytheon, IPR2016-00209, Paper No. 2. The Board instituted review of claims
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`1-18 based on eight grounds and numerous references. IPR2016-00209, Paper No.
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`12 (referred to herein as the “0209 IPR”). The Board has scheduled the final
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`hearing for both Sony IPRs on October 13, 2016.
`
`
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`On March 10, 2016, Samsung filed a petition for inter partes review of
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`claims 1-18 of the 678 Patent, alleging seven separate grounds based on numerous
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`references. Samsung v. Raytheon Co., IPR2016-00739, Paper No. 1. A
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`preliminary response to the petition is due on June 21, 2016. Id. at Paper 4.
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`
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`On April 28, 2016, Samsung filed a petition in the present proceeding
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`seeking inter partes review of claims 1-18 of the 678 Patent based on the same
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`grounds pending in the 0209 IPR. Paper No. 2. Samsung also filed the present
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`motion for joinder (Paper No. 4; “Motion”).
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`3
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`
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`II. ARGUMENT OPPOSING JOINDER
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`The decision to grant joinder is discretionary. 35 U.S.C. 315 (c); 37 C.F.R.
`
`42.122(b). The Board should deny joinder because Petitioner fails to meet its
`
`burden under 37 C.F.R. 42.20(c) to demonstrate that joinder is appropriate.
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`A. The Petition Was Filed After the One-Year Bar Date
`Samsung filed the present petition more than one year after being served
`
`
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`with a complaint alleging infringement of the 678 Patent. In its Motion, Samsung
`
`does not explain why it could not have filed its petition in a timely fashion.
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`Indeed, Samsung was well aware of the prior art cited in the petition long before
`
`filing the petition. All of the references supporting the grounds presented by
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`Samsung in its petition were cited either in the joint invalidity contentions served
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`in the Litigation on October 2, 2015 or the 678 Patent’s file wrapper, served on
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`July 16, 2015. Compare Paper No. 1, at 3-4 with Ex. 2001, at 7-9 (relevant
`
`portions highlighted), and Ex 1009, and 1011 at p. 5.1 Samsung therefore had
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`access to these references well before the one year bar. Samsung's motion
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`provides no explanation for why it could not have filed its petition sooner.
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`Although Samsung asserts that its joinder motion is technically timely under 37
`
`C.F.R. 42.122(b), the Board has considered the fact that a petition was filed outside
`
`
`1 U.S. Patent No. 4,169,000 (“Riseman II”) cited in the 678 Patent’s file wrapper is
`a division of Ex. 1009 (“Riseman”) and contains the same disclosures.
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`4
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`
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`the one-year bar date as a factor in denying institution where a petitioner has filed a
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`late petition coupled with a motion for joinder. ZTE Corp. and ZTE (USA) Inc. v.
`
`Contentguard Holdings Inc., IPR2013-00454, Paper No. 12, at 5 (PTAB
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`September 25, 2013).
`
`B.
`
`The Petition is a Serial Petition that Presents the Same Arguments as
`the 0209 IPR
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`As shown above, the petition is the fourth in a group of serial petitions filed
`
`by defendants in the Litigation. The 678 patent is already subject to IPRs under
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`fourteen separate grounds based on numerous prior art references. Samsung
`
`admits that the present petition is substantially identical to the petition in the 0209
`
`IPR. Motion at 5. Indeed, Samsung relies on the fact that the Petition is
`
`substantively identical to the petition in the 0209 IPR in seeking joinder. But see
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`Unified Patents, Inc. v. PersonalWeb Technologies, LLC, et al., IPR2014-00702,
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`Paper No. 12, at 4 (PTAB July 24, 2014) (denying joinder despite Petitioner's
`
`assertion that the two proceedings have nearly identical petitions, and noting that
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`joinder is discretionary, and not automatic).
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`
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`The Board has repeatedly and consistently exercised its discretion to deny
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`duplicative, late-filed petitions that rely on the same prior art to challenge the same
`
`claims. See, e.g., IPR2014-00702, Paper No. 13, at 7 (denying third-party petition
`
`challenging same claims using same prior art and arguments as an ongoing IPR);
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`5
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`IPR2013-00454, Paper No. 12, at 7 (rejection of duplicative petition was “just and
`
`appropriate” in order to secure “just, speedy, and inexpensive resolution” of IPR
`
`proceeding); Medtronic, Inc. v. Nuvasive, Inc., IPR2014-00487, Paper No. 8, at 6
`
`(PTAB September 11, 2014); Medtronic, Inc. v. Robert Bosch Healthcare Systems,
`
`Inc., IPR2014- 00436, Paper No. 17, at 12 (PTAB June 19, 2014); Intelligent Bio-
`
`Systems, Inc. v. Illumina Cambridge Limited, IPR2013-00324, Paper No. 19, at 7
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`(PTAB November 21, 2013).
`
`
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`Samsung justifies its motion by asserting that it will not take an active role
`
`unless Sony (the first petitioner) ceases to participate in the 0209 IPR. Motion at 8.
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`But the Board has rejected a potential settlement of a first IPR as a justification to
`
`allow a second petitioner to file a serial petition. In Maxlinear, Inc. v. Cresta
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`Technology Corp., IPR2015-00593, Paper No. 9, at 5 (PTAB August 14, 2015), the
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`petitioner presented substantially identical arguments to those pending in a related
`
`proceeding, and the petitioner proposed that the second petition be held in
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`abeyance until and unless a settlement of the related proceeding occurred. The
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`Board denied institution, and noted that the IPR process should not be used as a
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`tool for harassment. Id.; see also Initiative for Responsibility In Drug Pricing LLC
`
`v. Wyeth LLC, IPR2014-01259, Paper No. 8, at 6 (PTAB February 13, 2015)
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`(rejecting substantively similar second petition where the justification for its filing
`
`was the possibility that the Patent Owner would settle with the first Petitioner).
`
`6
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`The defendants in the Litigation are using the IPR process as a tool to harass Patent
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`Owner by filing serial IPRs attacking the 678 patent, and the Motion should be
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`denied for this reason. IPR2015-00593, Paper No. 9, at 5, citing H.R. Rep. No.
`
`112-98, pt. 1, at 48 (2011) (“While this amendment is intended to remove current
`
`disincentives to current administrative processes, the changes made by it are not to
`
`be used as tools for harassment or a means to prevent market entry through
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`repeated attacks on the validity of a patent.”)
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`C.
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`Samsung has not Demonstrated that Joinder is Appropriate
`
`
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`As noted above, Samsung has not justified the filing of its late petition
`
`including the same grounds as those already pending in the 0209 IPR. Samsung
`
`asserts that its Motion is proper, however, because it has agreed to take an
`
`understudy role in the proceeding. Motion at 7-8. Samsung relies on two Board
`
`decisions in support of its Motion, and asserts that the Board has allowed joinder in
`
`similar circumstances. Motion at 4, 8 (citing Sony Corp., et al. v. Memory
`
`Integrity, LLC, IPR2015-01353, Paper No. 11 (PTAB October 15, 2015), and
`
`Mylan Pharmaceuticals Inc. v. Novartis AG and LTS Lohmann Therapie-Systeme
`
`AG IPR2014-00550, Paper No. 382 (PTAB April 10, 2015)). In both cases,
`
`
`2 Patent Owner believes that the correct citation for this decision is IPR2015-
`
`00268, Paper No. 17.
`
`7
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`
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`
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`
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`however, Patent Owner did not oppose joinder under the circumstances. IPR2015-
`
`01353, Paper No. 11, at 2; Mylan Pharmaceuticals Inc. v. Novartis AG, IPR2015-
`
`00268, Paper No. 17, at 5 (PTAB April 10, 2015). In this proceeding, Patent
`
`Owner is opposing joinder, and Samsung's cases are therefore not applicable. See
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`LG Electronics, Inc. v. ATI Technologies ULC, IPR2015-01620, Paper No. 10
`
`(PTAB February 2, 2016), citing 157 Cong. Rec. S1376 (daily ed. Mar. 8, 2011)
`
`(“when determining whether and when to allow joinder, the Office may consider
`
`factors including…consent of the patent owner”) (emphasis added).
`
`
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`Samsung alleges without explanation that no additional arguments need be
`
`made by Patent Owner if it were joined. But adding an additional party could lead
`
`to a need for additional discovery. Samsung has also not indicated that Patent
`
`Owner will not be required to provide any additional discovery as a result of
`
`joinder. Further, in its Petition, Samsung relies on the same expert declaration of
`
`Dr. Blanchard that was filed by Sony in the 0209 IPR. Paper No. 2, at 5, fn. 1. But
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`Samsung does not indicate in its Motion that it can provide discovery of Dr.
`
`Blanchard in the event that Sony no longer participates in the proceeding.
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`
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`Samsung asserts that it will agree to be bound by the understudy provisions
`
`found in IPR2014-00550, but even under those provisions, (1) Patent Owner may
`
`have to respond to filings of Samsung that solely concern issues that do not involve
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`Sony, and (2) Patent Owner's witnesses could be subject to questioning by
`
`8
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`attorneys for Sony and Samsung. See Motion at 7. Patent Owner should not be
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`subjected to the additional burden of having Samsung added to the 0209 IPR where
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`Samsung's petition is a late-filed serial petition, and where Samsung has not
`
`demonstrated that joinder is warranted.
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`III. CONCLUSION
`For the foregoing reasons, Patent Owner respectfully requests that the Board
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`exercise its discretion and deny Samsung's motion for joinder.
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`9
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`Respectfully submitted,
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`/Thomas J. Filarski Reg No 31612/
`Thomas J. Filarski
`Reg. No. 31,612
`tfilarski@steptoe.com
`John L. Abramic
`Reg. No. 51,031
`jabramic@steptoe.com
`Daniel S. Stringfield
`Reg. No. 68,677
`dstringfield@steptoe.com
`Brian Fahrenbach
`Reg. No. 72,603
`bfahrenbach@steptoe.com
`STEPTOE & JOHNSON, LLP
`115 South LaSalle Street, Suite 3100
`Chicago, IL 60603
`Telephone: 312-577-1300
`Facsimile: 312-577-1370
`
`Counsel for Raytheon Company
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`10
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`Date: May 31, 2016
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`Customer Number: 27890
`STEPTOE & JOHNSON LLP
`115 S. LaSalle St.
`Chicago, IL 60603
`Telephone: (312) 577-1252
`Facsimile: (312) 577-1370
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing
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`
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`OPPOSITION TO MOTION FOR JOINDER, was served in its entirety on May
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`31, 2016 by filing this document through the Patent Review Processing System as
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`well as by delivering a copy via electronic email to the attorneys of record for the
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`Petitioners’ as follows:
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`
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`Date: May 31, 2016
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`
` Heath J. Briggs (Reg. No. 54,919)
`Greenberg Traurig, LLP
`1200 17th Street, Suite 2400
`Denver, CO 80202
`Email: briggsh@gtlaw.com
`
`Patrick J. McCarthy (Reg. No. 62,762)
`Greenberg Traurig, LLP
`2101 L Street NW, Ste. 1000
`Washington, DC 20037
`Email: mccarthyp@gtlaw.com
`
`By:
`
`/Thomas J. Filarski, Reg No. 31612/
`Thomas J. Filarski
`Registration No. 31,612
`Steptoe & Johnson LLP
`115 S. LaSalle St.
`Chicago, IL 60603
`Telephone: 312-577-1252
`Facsimile:
`312-577-1370
`
`Counsel for Raytheon Company
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