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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`APPLE INC., MICROSOFT CORPORATION, MICROSOFT MOBILE OY,
`AND MICROSOFT MOBILE INC. (f/k/a NOKIA INC.)
`Petitioner
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`v.
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`EVOLVED WIRELESS LLC,
`Patent Owner
`______________________
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`
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`Case IPR2017-00068
`Patent 8,218,481
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`______________________
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`PETITIONER’S MOTION FOR JOINDER
`UNDER 35 U.S.C. § 315(c) AND 27 C.F.R. § 42.122(b), AND
`REQUEST FOR SHORTENED RESPONSE TIME FOR
`PATENT OWNER’S PRELIMINARY RESPONSE
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`______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________________
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`APPLE INC., MICROSOFT CORPORATION, MICROSOFT MOBILE OY,
`AND MICROSOFT MOBILE INC. (f/k/a NOKIA INC.)
`Petitioner
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`v.
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`EVOLVED WIRELESS LLC,
`Patent Owner
`______________________
`
`
`
`Case IPR2017-00068
`Patent 8,218,481
`
`______________________
`
`
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`
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`PETITIONER’S MOTION FOR JOINDER
`UNDER 35 U.S.C. § 315(c) AND 27 C.F.R. § 42.122(b), AND
`REQUEST FOR SHORTENED RESPONSE TIME FOR
`PATENT OWNER’S PRELIMINARY RESPONSE
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`Attorney Docket No. 00035-0010IP2
`IPR of U.S. Patent No. 8,218,481
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`RELIEF REQUESTED
`I.
`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Apple, Inc.,
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`Microsoft Corporation, Microsoft Mobile Oy, and Microsoft Mobile Inc. (f/k/a
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`Nokia Inc.), Inc. (“Petitioner”) hereby moves for joinder of any proceeding
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`resulting from its new Petition for Inter Partes Review (“IPR”) of United States
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`Patent No. 8,218,481 (“the ’481 patent”) — filed concurrently with this Motion—
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`with the recently instituted IPR for the ’481 patent, IPR2016-00758, naming ZTE
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`(USA) Inc., HTC Corporation, and HTC America, Inc. (hereinafter collectively
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`“ZTE and HTC”) as petitioner.
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`In conjunction with this request for joinder, Petitioner respectfully requests
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`that the Board specify a shortened response period in which Patent Owner Evolved
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`Wireless, LLC (“Patent Owner”) may file a Preliminary Response to this new
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`Petition. The new Petition includes only the grounds filed in IPR2016-00758 and
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`is substantively identical on those grounds.1 Given the identity of issues presented
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`by this new Petition and those raised by ZTE and HTC in the prior co-pending
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`1 The petitions, of course, are not wholly identical. The present Petition has been
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`updated to account for the formalities of a different Petitioner and real parties in
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`interest, the related matters have been updated, and there are nominal clerical
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`changes.
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`
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`1
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`
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`Attorney Docket No. 00035-0010IP2
`IPR of U.S. Patent No. 8,218,481
`proceeding, the proposal for a shortened response period does not impose an undue
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`burden on Patent Owner. Moreover, in establishing a shortened deadline, the
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`Board will provide itself with more time before the institution decision is due to
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`consider any additional information furnished by Patent Owner in its Preliminary
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`Responses to the new Petition, if any is raised.
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`Even if the Board declines to establish the proposed shortened response
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`deadline for the Preliminary Response, Petitioner nevertheless maintains its motion
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`for joinder.
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`II.
`1.
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`STATEMENT OF MATERIAL FACTS
`On March 23, 2016, ZTE and HTC filed a Petition for Inter Partes
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`Review of US Patent No. 8,218,481, challenging claims 1-4, 6, 8-11 and 13 under
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`§102(a), §102(b), and §103(a). On June 29, 2016, Patent Owner filed its
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`Preliminary Responses in IPR2016-00758. On September 16, 2016, the Board
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`issued an institution decision and scheduling order in IPR2016-00758.
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`2.
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`On October 14 2016, Petitioner filed this Petition for Inter Partes
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`Review (“IPR”) of US Patent No. 8,218,481, challenging claims 1-4, 6, 8-11 and
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`13 under §102(a), §102 (b) and §103(a).
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`3.
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`This new Petition for IPR challenges the same claims of the ’481
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`patent using the same grounds as ZTE and HTC’s previous Petition for IPR of the
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`2
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`
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`Attorney Docket No. 00035-0010IP2
`IPR of U.S. Patent No. 8,218,481
`’481 patent (i.e., IPR2016-00758). Moreover, as noted above, this new Petition is
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`substantively identical as to those grounds, and presents no new issues.
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`III. DISCUSSION
`The requested joinder will serve to secure the just, speedy, and inexpensive
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`resolution of these proceedings. Under 35 U.S.C. § 315(c):
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`If the Director institutes an inter partes review, the Director, in his or
`her discretion, may join as a party to that inter partes review any
`person who properly files a petition under section 311 that the
`Director, after receiving a preliminary response under section 313 or
`the expiration of the time for filing such a response, determines
`warrants the institution of an inter partes review under section 314.
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`In addition, 37 C.F.R. § 42.122(b) provides that “[j]oinder may be requested
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`by a patent owner or petitioner. Any request for joinder must be filed, as a motion
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`under § 42.22, no later than one month after the institution date of any inter partes
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`review for which joinder is requested.”
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`This Motion is timely under § 42.122(b) because ZTE and HTC’s Petition
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`for IPR was instituted on September 16, 2016. Moreover, at the time of this filing,
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`IPR2016-00758 is pending.
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`The Board has further provided that a motion for joinder should: (1) set forth
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`the reasons why joinder is appropriate; (2) identify any new grounds of
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`unpatentability asserted in the petition; (3) explain what impact (if any) joinder
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`3
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`Attorney Docket No. 00035-0010IP2
`IPR of U.S. Patent No. 8,218,481
`would have on the trial schedule of the existing proceeding; and (4) address
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`specifically how briefing and discovery may be simplified. See, e.g., Kyocera
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`Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (Apr. 24, 2013). Analysis of
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`these factors here warrants the Board’s use of its discretion to grant the requested
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`joinder.
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`A.
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`Joinder is Appropriate Because Both Proceedings Involve the Same
`Prior Art, the Same Claims, and the Same Grounds of Unpatentability
`– No New Grounds Are Presented
`The challenged claims and grounds of Petitioner’s petition are substantively
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`identical to claims and grounds presented in the petition filed by ZTE and HTC
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`(IPR2016-00758). The same prior art, and even the same expert and expert
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`declaration, are used in both proceedings. Petitioner proposes no new grounds of
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`unpatentability. This strongly supports application of joinder.
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`Moreover, if joined, Petitioner agrees to take an “understudy” role as
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`petitioners in other similarly joined proceedings have taken. See IPR2015-01353,
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`Decision, paper 11 at 6 (October 5, 2015), granting institution and joinder where
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`petitioner requested an “understudy role”. See also, IPR2014-00550, paper 38 at 5
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`(April 10, 2015).
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`Accordingly, for at least the reasons outlined in this motion, any proceeding
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`resulting from Petitioner’s new IPR petition should appropriately be joined to the
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`4
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`
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`Attorney Docket No. 00035-0010IP2
`IPR of U.S. Patent No. 8,218,481
`proceeding resulting from ZTE and HTC’s instituted petition for IPR of the ’481
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`patent (i.e., IPR2016-00758).
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`B. Given Its Early Stage, Joinder Should Not Have Any Impact on the
`Trial Schedule of the Existing Proceeding
`ZTE and HTC’s previous IPR petition of the ’481 patent was just instituted
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`on September 16, 2016. Petitioner hereby expressly consents to the existing trial
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`schedule in IPR2016-00758.
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`Further, since the grounds and prior art are identical to those instituted in
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`IPR2016-00758, there are no new issues for Patent Owner to address. Thus, by
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`shortening the period of Patent Owner’s Preliminary Response in this proceeding,
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`the Board need not alter the schedule already set in the instituted proceeding (i.e.,
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`IPR2016-00758). In other words, the proposed joinder will not have any dilatory
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`impact on the schedule of the instituted proceeding.
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`Moreover, as noted previously, Patent Owner will already be required to
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`address the same grounds of unpatentability in both IPR petitions. In the ZTE and
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`HTC IPR petition, Patent Owner’s Response to the Petition (Due Date 1) is
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`December 9, 2016. See IPR2016-00758, Paper 13, p. 7. Accordingly, Patent
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`Owner will experience little, if any, prejudice as a result of the accelerated due date
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`of its Preliminary Response to Petitioner’s new Petition, because Patent Owner
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`5
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`Attorney Docket No. 00035-0010IP2
`IPR of U.S. Patent No. 8,218,481
`will have been considering and preparing a response to the same grounds with
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`regard to the challenged claims for over two months.
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`C.
`Joinder Will Simplify Briefing and Discovery
`Joining the two IPR petitions will simplify discovery. Both IPR petitions
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`share a common expert (Dr. Paul S. Min)2. Accordingly, joining Petitioner’s new
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`IPR petition of the ’481 patent to ZTE and HTC’s IPR petition will allow for
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`common discovery with regard to Dr. Min (e.g., a common date for depositions).
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`Also as noted above, if joined, Petitioner agrees to take an “understudy” role
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`as petitioners in other, similarly joined proceedings have taken. In other words, so
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`long as ZTE and HTC maintain their IPR, all filings by Petitioner in the joined
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`proceeding will be consolidated with the filings of ZTE and HTC, unless a filing
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`solely concerns issues that do not involve ZTE or HTC; Petitioner will not
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`introduce any argument or discovery not introduced by ZTE and HTC; and
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`Petitioner assents to ZTE and HTC leading any depositions associated with the
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`joined proceeding. Thus, if joined, there will be only one set of briefing on the
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`2 Notably, Petitioner is simply refiling the declaration prepared and originally filed
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`by ZTE and HTC in IPR2016-00758. At this time, Petitioner has not separately
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`engaged Dr. Min with respect to this IPR.
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`6
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`Attorney Docket No. 00035-0010IP2
`IPR of U.S. Patent No. 8,218,481
`issues, rather than briefing from both ZTE and HTC and Petitioner. Petitioner will
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`assume the primary role only if ZTE and HTC cease to participate.
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`IV. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests that the Board
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`grant joinder of the trial resulting from institution of the new Petition filed
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`concurrently with this Motion, with the trial resulting from institution of ZTE and
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`HTC’s previously filed Petition for Inter Partes Review of the ’481 patent (i.e.,
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`IPR2016-00758). In addition, Petitioner respectfully requests a shortened period
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`of one month (i.e., November 14, 2016 for a Patent Owner Preliminary Response.
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`Respectfully submitted,
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`
`
` /W. Karl Renner/
`W. Karl Renner, Reg. No. 41,265
`Roberto J. Devoto, Reg. No. 55,108
`Fish & Richardson P.C.
`P.O. Box 1022
`Minneapolis, MN 55440-1022
`T: 202-626-6447
`F: 202-783-2331
`Attorney for Petitioner
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`7
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`Date:October 14, 2016
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`Attorney Docket No. 39959-0009IP1
`IPR of U.S. Patent No. 7,864,481
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`CERTIFICATE OF SERVICE
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`
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`Pursuant to 37 CFR §§ 42.6(e)(4)(i) et seq. and 42.105(b), the undersigned
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`certifies that on October 14, 2016, a complete and entire copy of this Motion for
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`Joinder was provided via Federal Express, to the Patent Owner by serving the
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`correspondence address of record as follows:
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`Jason H. Vick
`Sheridan Ross, PC
`1560 Broadway, Suite # 1200
`Denver CO 80202
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`/Diana Bradley/
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`Diana Bradley
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(858) 678-5667
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