Paper No. 8
`Filed December 5, 2016
`
`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
`
`
`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c) AND/OR
`CONSOLIDATION UNDER § 315(d) WITH
`CASE NO. IPR2016-00981
`
`
`
`
`
`
`
`
`
`
`Filed December 5, 2016
`
`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
`
`
`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c) AND/OR
`CONSOLIDATION UNDER § 315(d) WITH
`CASE NO. IPR2016-00981
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2016-01349
`Patent 8,218,481 B2
`
`I.
`
`RELIEF REQUESTED
`
`
`
`Petitioner, ZTE (USA) Inc. (“ZTE”), respectfully moves the Board for joinder
`
`and/or consolidation of the petition filed as Paper 2 in the present proceeding with
`
`the previously instituted inter partes review (“IPR”) styled Apple Inc. v. Evolved Wireless
`
`LLC, Case No. IPR2016-00981 (“the Apple/Microsoft proceeding”).
`
`ZTE’s petition in the present proceeding (filed on July 5, 2016 as Paper 2)
`
`challenges the same claims and relies on the same arguments, the same evidence, and
`
`virtually identical prior art to those presented in the Apple/Microsoft petition. Joinder
`
`will efficiently resolve the challenges to the claims in a single proceeding without
`
`significantly impacting the schedule or the parties in the Apple/Microsoft proceeding.
`
`ZTE agrees to consolidated discovery and briefing, and agrees to accept a limited role,
`
`with counsel for Apple and Microsoft acting as the lead counsel.
`
`ZTE files this motion before the Board’s institution decision because Patent
`
`Owner’s preliminary response asks the Board to dismiss ZTE’s petition as “redundant”
`
`under 35 U.S.C. § 325(d) (see Paper 6 at 16-17), notwithstanding that: (i) ZTE is not a
`
`party to the Apple/Microsoft proceeding; (ii) joinder or consolidation would place no
`
`significant burden on the parties or Board (and Patent Owner has identified none); and
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`(iii) ZTE’s petition expressly states that “Petitioner would support joinder of the
`
`present proceeding with the 981 proceeding so long as Petitioner is not precluded
`
`from relying upon the additional evidence and arguments provided in the present
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`1
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`Case IPR2016-01349
`Patent 8,218,481 B2
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`petition.” See Paper 2 at 66.
`
`ZTE’s counsel conferred with counsel for Patent Owner and counsel for the
`
`Apple and Microsoft petitioners. Apple and Microsoft’s counsel indicated that they do
`
`not oppose this motion. Patent Owner’s counsel indicated that Patent Owner takes no
`
`position on the motion at this time.
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`
`
`
`1.
`
`On May 2, 2016, Apple, Inc., Microsoft Corporation, Microsoft Mobile
`
`Oy, and Microsoft Mobile Inc. filed an IPR petition in the Apple/Microsoft
`
`proceeding, seeking institution of an IPR of claims 1-4, 6, 8-11, 13, 15, and 16 of U.S.
`
`Patent No. 8,218,481 (“the 481 patent”). See IPR2016-00981, Paper 2 at 1.
`
`
`
`2.
`
`The Apple/Microsoft petition challenged those claims on the grounds
`
`identified in the table below. Id. at 3-4. Of particular relevance to this motion is the
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`secondary reference known as “Tan,” which refers to U.S. Provisional Application No.
`
`60/759,697 in the Apple/Microsoft petition. Id. at 4. Because Grounds 1C, 1D, 2C,
`
`and 2D rely on Tan as a secondary reference, this motion refers to them as the “Tan-
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`based grounds” and to the remaining grounds as the “non-Tan-based grounds.”
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`2
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`Case IPR2016-01349
`Patent 8,218,481 B2
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`3.
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`After the Apple/Microsoft petition was filed and before Patent Owner
`
`filed its preliminary response in the Apple/Microsoft proceeding, ZTE independently
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`analyzed the Apple/Microsoft petition and determined that the Tan provisional
`
`application does not qualify as a prior art “patent” or “printed publication” under pre-
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`AIA 35 U.S.C. § 102. By contrast, ZTE determined that U.S. Patent No. 8,000,305 B2
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`(“the Tan patent”), which claims priority to the Tan provisional application, does
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`qualify as a prior art patent under § 102(e).
`
`4.
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`On July 5, before Patent Owner filed its preliminary response to the
`
`Apple/Microsoft petition, ZTE filed its petition in the present proceeding. See Paper
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`2. The ZTE petition challenges the same claims, relies on the same evidence including
`
`the same expert declaration, and presents the same grounds as the Apple/Microsoft
`
`petition, with two minor exceptions: (1) the ZTE petition relies on the Tan patent,
`
`rather than the Tan provisional application, as a secondary reference; and (2) the ZTE
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`petition includes an analysis and offers a second expert declaration to satisfy the
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`3
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`Case IPR2016-01349
`Patent 8,218,481 B2
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`procedural requirement under Dynamic Drinkware, LLC v. National Graphics, Inc., 800
`
`F.3d 1375 (Fed. Cir. 2015), of showing that the Tan patent is prior art under § 102(e).
`
`See Paper 2 at 3-10.
`
`
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`5.
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`On August 4, Patent Owner filed its preliminary response in the
`
`Apple/Microsoft proceeding. See IPR2016-00981, Paper 9. Among other things,
`
`Patent Owner argued that the Board should not institute on the Tan-based grounds
`
`because the Tan provisional application does not qualify as a prior art patent or
`
`printed publication. Id. at 27-29.
`
`6.
`
`On October 19, Patent Owner filed its preliminary response in the
`
`present proceeding. See Paper 7. Patent Owner stated:
`
`in the 981
`instant Petition and the petition
`“The
`Proceeding present the same eight Grounds based on the
`same references. The only difference between the two sets
`of Grounds is that the Petitioners in the 981 Proceeding
`erroneously attempted to rely on the Tan provisional
`application for Grounds 1C, 1D, 2C, and 2D, whereas the
`instant Petition attempts to rely upon an issued Tan patent
`that claims priority to the Tan provisional application for
`the same Grounds.”
`
`Id. at 16 (internal citations omitted).
`
`7.
`
`On November 6, the Board entered an institution decision in the
`
`Apple/Microsoft proceeding. See IPR2016-00981, Paper 10. The Board instituted an
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`4
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`Case IPR2016-01349
`Patent 8,218,481 B2
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`IPR on the non-Tan-based grounds. See id. at 22. However, the Board declined to
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`institute an IPR on the Tan-based grounds on the basis that the Tan provisional
`
`application is not a prior art “patent” or “printed publication” under § 102.1 See id. at
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`20-21.
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`III. ARGUMENT
`
`
`
`
`
`A.
`
`This motion is timely.
`
`ZTE files this motion in accordance with the time restrictions set forth in 37
`
`C.F.R. §§ 42.122(b), 1.7(a), and 42.1.
`
`
`
`B.
`
`Joinder is appropriate here.
`
`Under 35 U.S.C. § 315(c), the Board has authority to join a properly filed IPR
`
`petition to an instituted IPR. In deciding whether to exercise its discretion, the Board
`
`considers several factors: (i) whether the new petition presents any new grounds of
`
`1
`Also pending before the Board are two original proceedings (IPR2016-00758, -
`
`1342) challenging claims of the 481 patent and two other proceeding (IPR2017-00068,
`
`-00106) seeking joinder with the original proceedings. Those proceedings involve
`
`different prior art references, different evidence, and fewer challenged claims than the
`
`present proceeding and the 981 proceeding. Following the Board’s guidance during
`
`the October 18 initial conference call in connection with IPR2016-00758, the parties
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`have conferred and continue to confer about ways to streamline the proceedings
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`involving the 481 patent.
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`5
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`Patent 8,218,481 B2
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`unpatentability; (ii) what impact, if any, joinder would have on the trial schedule for the
`
`existing review; and (iii) how briefing and discovery may be simplified. See Macronix Int’l
`
`Co. v. Spansion, IPR2014-00898, Paper 13 at 4 (P.T.A.B. Aug. 13, 2014). Here, each
`
`factor weighs in favor of joinder.
`
`i.
`
`Factor 1: The ZTE petition presents the same grounds as the
`Apple/Microsoft petition.
`The ZTE petition challenges the same claims and relies on the same arguments,
`
`same evidence including the same expert declaration, and substantively identical prior
`
`art as those presented in the Apple/Microsoft proceeding. 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. The Board has granted joinder even where two proceedings
`
`involved different grounds based on substantively different prior art references. See, e.g.,
`
`Oxford Nanopore Tech. Ltd. v. Univ. of Washington, IPR2015-00057, Paper 10 at 22-24
`
`(P.T.A.B. Apr. 27, 2015). Here, the overlap is even stronger because the overlapping
`
`grounds and prior art are substantively identical. Thus, the first factor weighs in favor
`
`of joinder.
`
`ii.
`
`Factor 2: Joinder or consolidation would not significantly
`impact the trial schedule in the Apple/Microsoft proceeding.
`In the Apple/Microsoft proceeding, the Board entered a scheduling order
`
`setting an oral hearing date for July 27, 2017. See IPR2016-00981, Paper 11. A joinder
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`6
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`Case IPR2016-01349
`Patent 8,218,481 B2
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`or consolidation of the present proceeding with the Apple/Microsoft proceeding
`
`would result in a modest extension of the trial schedule. For example, the following
`
`table shows a proposed trial schedule for a joined or consolidated proceeding that
`
`extends the existing trial schedule by approximately two months.
`
`Proposed Deadline
`May 9, 2017
`
`August 9, 2017
`
`Not Applicable2
`
`August 17, 2017
`
`Event
`Date 1: Patent Owner’s
`response and motion to
`amend
`
`Date 2: Petitioner’s reply
`and opposition to Patent
`Owner’s motion to amend
`
`Date 3: Patent Owner’s
`reply in support of its
`motion to amend
`
`Date 4: Motions for
`observation, motions to
`exclude evidence, and
`request for oral argument
`
`Date 5: Responses to
`
`August 31, 2017
`
`
`2
`Patent Owner indicated that it will not move to amend the claims of the 481
`
`patent in the instituted IPR2016-00758 proceeding. See Paper 15 at 1. ZTE assumes
`
`that Patent Owner will maintain the same position in the present proceeding, making
`
`Date 3 unnecessary. But joinder is nevertheless appropriate even if Patent Owner
`
`departs from its position and Date 3 applies to extend the trial schedule.
`
`7
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`Case IPR2016-01349
`Patent 8,218,481 B2
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`observations and
`oppositions to motions to
`exclude evidence
`
`Date 6: Replies in support
`of motions to exclude
`
`September 7, 2017
`
`Date 7: Oral argument
`
`September 21, 2017
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`At most, joinder or consolidation will modestly impact the schedule here. The
`
`Board has granted joinder even where the instituted proceeding had “proceeded to a
`
`significant extent” and joinder extended the procedural schedule by approximately six
`
`months. See Oxford Nanopore, IPR2015-00057, Paper 10 at 24-27. Thus, this factor also
`
`weighs in favor of joinder.
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`
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`iii. Factor 3: Briefing and discovery will be simplified.
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`As
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`long as Apple and Microsoft remain active participants
`
`in
`
`the
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`Apple/Microsoft proceeding, ZTE is willing to accept a limited role and agree to:
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`(1) consolidate filings with Apple and Microsoft; (2) refrain from raising any new
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`grounds not already considered by the Board in the Apple/Microsoft proceeding;
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`(3) be bound by any agreement between Patent Owner and Apple and Microsoft
`
`concerning discovery and depositions; (4) limit any direct, cross-examination or
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`redirect time beyond that permitted 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
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`8
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`Case IPR2016-01349
`Patent 8,218,481 B2
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`additional time being required for any deposition; and (5) limit any presentation at oral
`
`hearing to unused time previously allocated to Apple and Microsoft. Under these
`
`circumstances, the Board has consistently granted joinder motions. See, e.g., Ciena Corp.
`
`v. Capella Photonics, Inc., IPR2015-01958, Paper 11 (P.T.A.B. Apr. 1, 2016); Sony Corp. v.
`
`Memory Integrity, LLC, IPR2015-01376, Paper 12 at 16-20 (P.T.A.B. Sep. 29, 2015); Dell
`
`Inc. v. Network-1 Security Solutions, Inc., IPR2013-00385, Paper 17 (P.T.A.B. July 29, 2013).
`
`Therefore, all three factors weigh in favor of joinder.
`
`
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`C. Consolidation is also appropriate here.
`
`The Board has authority to consolidate these proceedings independently of the
`
`statute and regulation governing joinder. See Samsung Elecs. Co., Ltd. v. Virginia
`
`Innovation Sciences, Inc., IPR2014-00557, Paper 10 at 17 (P.T.A.B. June 13, 2014) (“the
`
`instant Petition is a matter before the Office involving the same patent as in IPR2013-
`
`00571. Accordingly, for the same reasons we exercise our discretion under Section
`
`315(c) . . . we concurrently exercise our discretion under Section 315(d) and
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`consolidate this matter with pending IPR2013-00571, which involves the same
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`patent.”). For the same reasons joinder is appropriate here, ZTE respectfully submits
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`that consolidation is appropriate as well.
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`D.
`
`Joining or consolidating the proceeding would not unduly
`prejudice Patent Owner
`ZTE is prepared to accommodate any reasonable logistical or scheduling
`
`request from Patent Owner, including expedited discovery, in order to facilitate
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`Patent 8,218,481 B2
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`joinder or consolidation of the proceedings, and to allow for a final written decision
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`within one year of institution. As a result, joinder or consolidation would not cause
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`Patent Owner any undue prejudice.
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`IV. CONCLUSION
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`
`
`Petitioner requests that the Board join and/or consolidate this proceeding with
`
`the Apple/Microsoft proceeding.
`
`
`December 5, 2016
`
`Respectfully submitted,
`/Charles M. McMahon/
`Charles M. McMahon (Reg. 44,926)
`MCDERMOTT WILL & EMERY LLP
`
`Attorney for Petitioner
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`10
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`Case IPR2016-01349
`Patent 8,218,481 B2
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`CERTIFICATE OF SERVICE
`
`I certify that I sent a copy of the foregoing MOTION FOR JOINDER UNDER 35
`
`U.S.C. § 315(C) AND/OR CONSOLIDATION UNDER § 315(D) WITH CASE NO. IPR2016-
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`01177 on December 5, 2016 by electronic mail to the attorneys of record for the
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`Patent Owner at the following e-mail addresses:
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`cmorton@robinskaplan.com
`
`rschultz@robinskaplan.com
`
`/Hersh H. Mehta/
`Hersh H. Mehta (Reg. 62,336)
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