Paper No. 10
`
`
`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.
`
`Patent No. 5,591,678
`Issued: January 7, 1997
`Filed: June 7, 1995
`Inventors: Joseph J. Bendik, Gerard T. Malloy, Ronald M. Finnila
`Title: PROCESS OF MANUFACTURING A MICROELECTRIC DEVICE
`USING A REMOVABLE SUPPORT SUBSTRATE AND ETCH-STOP
`________________________
`
`Inter Partes Review No. IPR2016-00962
`
`REPLY IN SUPPORT OF MOTION FOR JOINDER UNDER
`35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 and 42.122(b)
`TO RELATED INTER PARTES REVIEW IPR2016-00209
`
`
`
`
`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.
`
`Patent No. 5,591,678
`Issued: January 7, 1997
`Filed: June 7, 1995
`Inventors: Joseph J. Bendik, Gerard T. Malloy, Ronald M. Finnila
`Title: PROCESS OF MANUFACTURING A MICROELECTRIC DEVICE
`USING A REMOVABLE SUPPORT SUBSTRATE AND ETCH-STOP
`________________________
`
`Inter Partes Review No. IPR2016-00962
`
`REPLY IN SUPPORT OF MOTION FOR JOINDER UNDER
`35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 and 42.122(b)
`TO RELATED INTER PARTES REVIEW IPR2016-00209
`
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`
`
`
`
`
`I.
`
`II. ANALYSIS ...................................................................................................... 2
`
`A.
`
`Samsung’s joinder request is timely and raises no new issues and
`
`would not complicate the proceedings in the Sony IPR. ...................... 2
`
`B.
`
`Joinder is in the public interest and will not frustrate the just,
`
`speedy, and inexpensive resolution of the Sony IPR. ........................... 4
`
`III. CONCLUSION ................................................................................................ 5
`
`
`
`ii
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`The Board routinely grants motions for joinder where the party seeking
`
`joinder introduces identical arguments and the same grounds raised in the existing
`
`proceeding. See, e.g., Perfect World Entm’t, Inc. v. Uniloc USA, Inc., et al.,
`
`IPR2015-01026, Paper 10, (PTAB Aug. 3, 2015); Fujitsu Semiconductor Limited
`
`v. Zond, LLC, IPR2014-00845, Paper 14 (PTAB Oct. 2, 2014); Enzymotec Ltd. v.
`
`Neptune Technologies & Bioresources, Inc., IPR2014-00556, Paper 19 (PTAB Jul.
`
`9, 2014). This is the exact situation here, and Samsung’s motion for joinder should
`
`be granted consistent with the Board’s “policy preference for joining a party that
`
`does not present new issues that might complicate or delay an existing
`
`proceeding.” Enzymotec, IPR2014-00556, Paper 19, at 5; see also 157 Cong. Rec.
`
`S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (“The Office anticipates
`
`that joinder will be allowed as of right – if an inter partes review is instituted on
`
`the basis of a petition, for example, a party that files an identical petition will be
`
`joined to that proceeding . . .”)) (emphasis added).
`
`Joinder is also routinely granted when the petitioner files a petition and
`
`motion for joinder within 30 days of the institution of trial in the existing
`
`proceeding. Nintendo of Am., Inc., et al. v. Babbage Holdings, LLC, IPR2015-
`
`00568, Paper 12 (PTAB Mar. 18, 2015)). Because Samsung timely filed its petition
`
`and motion for joinder within one month of the March 29, 2016 institution of
`
`1
`
`
`
`
`
`Sony’s IPR and Samsung’s request for joinder is typical and routine, Samsung’s
`
`motion for joinder should be granted.
`
`II. ANALYSIS
`
`A.
`
`Samsung’s joinder request is timely, raises no new issues and
`would not complicate the proceedings in the Sony IPR.
`
`Patent Owner argues that Samsung’s joinder motion should be denied
`
`because Samsung’s copied petition accompanying the joinder motion is untimely.
`
`Patent Owner is wrong.
`
`The Board routinely grants joinder in cases where, as here, the petition of the
`
`party seeking joinder “asserts identical grounds of unpatentability, challenging the
`
`same claims” of the challenged patent. Fujitsu, Paper 14 at 4. Here, Samsung’s
`
`petition is substantively identical to the petition filed in the Sony IPR and Samsung
`
`has submitted substantially the same supporting declaration as did Sony. By
`
`joining the two proceedings, the substantive issues would not be unduly
`
`complicated. See Perfect World, IPR2015-01026, Paper 10 at 5-6 (granting joinder
`
`where petitioner brought the same challenges presented by the existing IPR). In
`
`fact, joinder would avoid duplication and promote the efficient resolution of both
`
`proceedings because Patent Owner would address the challenges in a single
`
`proceeding. Id.
`
`In opposing Samsung’s joinder motion, Patent Owner conflates the distinct
`
`statutory frameworks for filing an IPR petition in the first instance, with filing a
`
`2
`
`
`
`
`
`motion for joinder to a timely filed IPR petition by another party. Here, Samsung
`
`has timely filed its joinder motion. Patent Owner’s response is not due until June
`
`15, 2016. See Sony IPR, Scheduling Order, Paper 13; see also Perfect World,
`
`IPR2015-01026, Paper 10 at 6 (granting joinder despite patent owner’s argument
`
`that the existing IPR has reached its substantive stages). Samsung is only taking an
`
`understudy role in the Sony IPR and is not participating in the Sony IPR discovery.
`
`Samsung has no intention to duplicate any discovery conducted (or anticipated) in
`
`the Sony IPR. Rather, Samsung simply seeks to join the ongoing Sony IPR,
`
`adopting its “understudy” role upon the grant of joinder.
`
`Further, Patent Owner’s reliance on ZTE Corp. and ZTE (USA) Inc. v.
`
`Contentguard Holdings, Inc., IPR2013-00454, Paper No. 12 (PTAB September 25,
`
`2013) is misplaced. In that case, unlike here, the same petitioner had sequentially
`
`filed two petitions, with the second petition having been filed outside the one year
`
`period in 35 U.S.C. §315, and after an entry of judgment in the first IPR. “In this
`
`instance” the Board stated “there no longer is a pre-existing proceeding.” Id. at 6.
`
`The Board went on to add “it would be unjust and inequitable to subject the Patent
`
`Owner to a new challenge by a Petitioner who unsuccessfully had attempted to
`
`institute inter partes review on the claims in a previous petition, if the second
`
`petition is not itself filed within the one-year period in 35 U.S.C. §315(b) and if a
`
`joinder motion has been denied.” Thus, the ZTE decision is inapposite because
`
`3
`
`
`
`
`
`Samsung is only seeking to timely join a preexisting petition filed by another party,
`
`rather than attempting the proverbial second bite at the apple.
`
`B.
`
`Joinder is in the public interest and will not frustrate the just,
`speedy, and inexpensive resolution of the Sony IPR.
`
`Patent Owner further argues that the Samsung petition accompanying its
`
`joinder motion is tantamount to a “serial” petition frowned upon by the Board.
`
`This argument, again, confuses the duplicative stand alone petition that is likely to
`
`create parallel (but identical) proceedings with a routinely granted joinder request
`
`allowing an understudy to follow along without duplicating efforts for any party.
`
`That Samsung seeks to join the petition filed by Sony does not render the
`
`accompanying Samsung petition a serial petition. Indeed, joinder here is in the
`
`public interest because it efficiently resolves questions about a patent’s validity.
`
`See Perkins v. Kwon, 886 F.2d 325, 329 (Fed. Cir. 1989) (“The public interest in
`
`the benefits of a patent system is best met by procedures that resolve
`
`administratively questions affecting patent validity that arise before the PTO.”);
`
`see also Dot Hill Sys. Corp., et al. v. Crossroads Sys., Inc., IPR2015-00825, Paper
`
`20 (Decision) at 8 (PTAB, Sept. 17, 2015) (granting motion for joinder because
`
`any potential prejudice to patent owner due to joinder “does not outweigh the
`
`prejudice to Dot Hill of losing its opportunity to challenge the claims of the”
`
`challenged patent).
`
`4
`
`
`
`
`
`Although it is correct that Sony has filed two separate IPR petitions against
`
`the patent at issue here, it remains the province of the Board to determine if the
`
`second petition is cumulative to the first one. Raytheon raised this same “serial
`
`challenges” argument in its preliminary response to Sony’s petition in the second
`
`IPR. But the Board already instituted the second IPR given the different grounds
`
`of invalidity detailed in the second petition and Sony’s “serial” filing argument
`
`has, therefore, already been rejected. Samsung’s joinder to the second Sony IPR
`
`remains timely and proper as provided under the law.1
`
`III. CONCLUSION
`
`For the foregoing reasons, Samsung respectfully requests that its petition for
`
`inter partes review of the ʼ678 Patent be instituted, and that the proceeding be
`
`joined with Sony’s IPR.
`
`Respectfully submitted,
`
`Dated:
`
`
`June 7, 2016
`
`
`
`
`
`/s/ Heath J. Briggs
`Heath J. Briggs (Reg. No. 54,919)
`Greenberg Traurig, LLP
`1200 17th Street, Suite 2400
`Denver, CO 80202
`
`
`1 Patent Owner also argues that despite Samsung’s express representation that it
`
`will only have an understudy role, there might be additional discovery or argument
`
`needed. Without a concrete example, this argument remains pure speculation and
`
`does not warrant a response given Samsung’s representations to the Board.
`
`5
`
`
`
`Telephone: (303) 572-6500
`Fax: (303) 572-6540
`Email: briggsh@gtlaw.com
`
`Patrick J. McCarthy (Reg. No. 62,762)
`Greenberg Traurig, LLP
`2101 L Street NW, Ste. 1000
`Washington, DC 20037
`Telephone: (202) 331-3100
`Fax: (202) 331-3101
`Email: mccarthyp@gtlaw.com
`
`Attorneys for Petitioner Samsung
`Electronics, Co., Ltd., Samsung Electronics
`America, Inc., and Samsung
`Semiconductor, Inc.
`
`
`
`
`
`
`
`6
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing REPLY IN
`
`SUPPORT OF MOTION FOR JOINDER was served in its entirety on June 7,
`
`2016 by filing this document through the Patent Review Processing System as well
`
`as by delivering a copy via electronic email to the attorneys of record for the Patent
`
`Owner as follows:
`
`Thomas J. Filarski
`John L. Abramic
`Daniel S. Stringfield
`Brian Fahrenbach
`Steptoe & Johnson LLP
`115 S. LaSalle St.
`Chicago, IL 60603
`Email: tfilarski@steptoe.com
`jabramic@steptoe.com
`dstringfield@steptoe.com
`bfahrenbach@steptoe.com
`678IPR@steptoe.com
`
`
`
`
`
`By:
`
`
`/s/ Heath J. Briggs
`Heath J. Briggs (Reg. No. 54,919)
`Greenberg Traurig, LLP
`1200 17th Street, Suite 2400
`Denver, CO 80202
`Telephone: (303) 572-6500
`Fax: (303) 572-6540
`Email: briggsh@gtlaw.com
`
`Attorneys for Petitioner Samsung
`Electronics, Co., Ltd., Samsung
`Electronics America, Inc., and
`Samsung Semiconductor, Inc.
`
`7
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