UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`APPLE INC., MICROSOFT CORPORATION, MICROSOFT MOBILE OY,
`AND MICROSOFT MOBILE INC. (f/k/a NOKIA INC.),
`
`Petitioner,
`
`V.
`
`EVOLVED WIRELESS LLC,
`
`Patent Owner
`
`_____________________
`
`Case IPR2017-00068
`Patent 8,218,481
`
`_____________________
`
`
`
`PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION FOR JOINDER, AND TO
`PETITIONER’S REQUEST FOR SHORTENED
`RESPONSE TIME FOR PATENT OWNER’s
`PRELIMINARY RESPONSE
`
`
`
`
`
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`APPLE INC., MICROSOFT CORPORATION, MICROSOFT MOBILE OY,
`AND MICROSOFT MOBILE INC. (f/k/a NOKIA INC.),
`
`Petitioner,
`
`V.
`
`EVOLVED WIRELESS LLC,
`
`Patent Owner
`
`_____________________
`
`Case IPR2017-00068
`Patent 8,218,481
`
`_____________________
`
`
`
`PATENT OWNER’S OPPOSITION TO
`PETITIONER’S MOTION FOR JOINDER, AND TO
`PETITIONER’S REQUEST FOR SHORTENED
`RESPONSE TIME FOR PATENT OWNER’s
`PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
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`Page
`
`TABLE OF CONTENTS ........................................................................................... i
`I.
`Introduction ...................................................................................................... 1
`II.
`Statement of Material Facts .............................................................................. 2
`III. The Board Should Deny Petitioner’s Motion Because Petitioner
`Already Elected Grounds in IPR2016-00981 .................................................. 3
`A.
`Legal Standard ....................................................................................... 4
`B.
`Petitioner Has Failed to Meet Its Burden of Setting Forth the
`Reasons that Joinder is Appropriate ...................................................... 4
`IV. The Board Should Deny Petitioner’s Motion as to Ground 2, Claims 4
`and 11, Because the Board Did Not Institute Those Grounds in
`IPR2016-00758 ................................................................................................ 5
`A.
`Petitioner’s Grounds for Instituting Claims 4 and 11 are
`Identical to Rejected Grounds in the Underlying Petition .................... 6
`Petitioner Has Failed to Meet Its Burden of Setting Forth the
`Reasons that Joinder is Appropriate with Respect to Ground 2,
`Claims 4 and 11 ..................................................................................... 7
`V. The Board Should Deny Petitioner’s Request for a Shortened
`Response Time for Patent Owner’s Preliminary Response............................. 8
`A.
`Petitioner’s Request Is an Improper Motion Because the Board
`Has Not Authorized the Motion ............................................................ 9
`Petitioner’s Proposed Shortened Schedule Provides Inadequate
`Time for Patent Owner to Oppose the Motion ...................................... 9
`VI. Conclusion ......................................................................................................10
`
`
`B.
`
`B.
`
`
`
`
`
`i
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`
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`
`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Bungie, Inc., v. Acceleration Bay, LLC,
`IPR2015-00567, Decision Granting Motion for Joinder in Part,
`Paper 11 (PTAB July 7, 2016) .............................................................................. 4
`
`Dot Hill Systems Corp. v. Crossroads Systems, Inc.,
`IPR2015-00822, Decision Granting Motion for Joinder in Part,
`Paper 18 (PTAB Sept. 17, 2015) .......................................................................... 8
`
`Ion Geophysical Corp. and Ion Int’l S.A.R.L. v. Westerngeco LLC,
`IPR2015-00567, Decision Granting Motion for Joinder in Part,
`Paper 14 (PTAB Apr. 23, 2015) ........................................................................... 8
`
`LG Electronics, Inc. v. ATI Technologies ULC,
`IPR2015-01620, Decision Denying Motion for Joinder,
`Paper 10 (PTAB Feb. 2, 2016) ............................................................................. 4
`
`Noven Pharmaceuticals Inc. v. Novartis AG and LTS Lohmann
`Therapie-Systeme AG,
`IPR2014-00550, Decision Granting Motion for Joinder,
`Paper 38 (PTAB Apr. 10, 2015) ........................................................................... 7
`
`Sony Corp., et al. v. Memory Integrity, LLC,
`IPR2015-01353, Decision Granting Motion for Joinder
`Paper 11, (PTAB Oct. 15, 2015) ........................................................................... 7
`
`Sony Corp., et al. v. Memory Integrity, LLC,
`IPR2015-01376, Decision Granting Motion for Joinder in Part,
`Paper 12, (PTAB Sept. 29, 2015) ......................................................................... 8
`
`Other Authorities
`
`37 C.F.R. § 42.20(c) ................................................................................................... 4
`
`
`
`ii
`
`
`
`
`
`I.
`
`Introduction
`
`Patent Owner, Evolved Wireless, LLC, respectfully requests that the Board
`
`deny Petitioner Apple, Inc., Microsoft Corporation, Microsoft Mobile Oy, and
`
`Microsoft Mobile Inc. (f/k/a Nokia Inc.), Inc.’s Motion to Join IPR2016-00758 (the
`
`“Instituted Petition”) and Request for Shortened Response Time for Patent
`
`Owner’s Preliminary Response (“POPR”). Petitioner’s petition for inter partes
`
`review of U.S. Patent No. 8,218,481 (the “’481 Patent”) – IPR2017-00068 – filed
`
`concurrently with Petitioner’s Motion for Joinder, relies on three grounds that were
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`previously addressed by the Board in IPR2016-00758, including a ground that the
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`Board denied in part. Petitioner seeks to reintroduce these previously rejected
`
`arguments without any justification. In addition, Petitioner intentionally chose not
`
`to assert these grounds earlier, before the one-year filing window closed, when it
`
`submitted its own Petition for inter partes review in IPR2016-00981. Petitioner
`
`also requests a shortened response time for Patent Owner’s Preliminary Response,
`
`despite delaying its own filing by more than one year. Petitioner’s motion and
`
`request should be denied.
`
`
`
`1
`
`
`
`
`
`
`
`II.
`
`Statement of Material Facts
`
`1. Over a year ago, Patent Owner concurrently filed patent infringement
`
`litigations against Petitioner and the Original Petitioner1 in the Instituted Petition
`
`asserting the ’481 Patent and other related patents. See Evolved Wireless, LLC v.
`
`Apple Inc., Case No. 15-542-SLR-SRF (D. Del., filed June 26, 2015); Evolved
`
`Wireless, LLC v. HTC Corp., Case No. 14-543-SLR-SRF (D. Del., filed June 26,
`
`2015); and Evolved Wireless, LLC v. ZTE (USA) Inc., Case No. 15-546-SLR-SRF
`
`(D. Del., filed June 26, 2015); Evolved Wireless, LLC v. Microsoft Corp., et al,
`
`Case No. 15-cv-547-SLR (D. Del., filed June 26, 2015).
`
`2. On March 23, 2016, Original Petitioner filed a petition for inter partes
`
`review of the ’481 Patent, in IPR2016-00758. The Board denied institution on
`
`some of the claims. See generally, IPR2016-00758, Paper 12.
`
`3. On May 5, 2016, Petitioner filed a petition for inter partes review of the
`
`’481 Patent, in IPR2016-00981. The Board recently issued an Institution Decision
`
`in that matter which instituted proceedings as to certain grounds and denied
`
`institution as to others. See generally, IPR2016-00981, Paper 10 (Nov. 3, 2016).
`
`
`
`1 “Original Petitioner” refers collectively to HTC Corporation, HTC America, Inc.,
`
`and ZTE (USA), Inc.
`
`2
`
`
`
`
`
`
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`4. On September 16, 2016, the Board instituted proceedings in IPR2016-
`
`00758 against claims 1, 2, 8, and 9 based on an anticipation ground under the non-
`
`patent reference Panasonic 7922 and claims 3 and 10 on an obviousness ground
`
`under Panasonic 792 and the non-patent reference Panasonic 1143. IPR2016-
`
`00758, Paper 12. The Board also instituted proceedings against claims 6 and 13 on
`
`an obviousness ground under Panasonic 792, Panasonic 114, and the non-patent
`
`reference Chu.4 IPR2016-00758, Paper 12. The Board rejected Original
`
`Petitioner’s ground challenging claims 4 and 11 as obvious over the combination
`
`of Panasonic 792 and Panasonic 114. IPR2016-00758, Paper 12.
`
`
`
`4. Petitioner here indiscriminately seeks institution and joinder of all
`
`grounds presented in the IPR2016-00758 petition, including the grounds that the
`
`Board expressly rejected, and requests a shortened POPR response time.
`
`III. The Board Should Deny Petitioner’s Motion Because Petitioner Already
`Elected Grounds in IPR2016-00981
`
`The Board should deny Petitioner’s Motion for Joinder because Petitioner
`
`had every opportunity to make these arguments in its previous IPR petition
`
`regarding the ’481 Patent and elected not to do so.
`
`
`2 See IPR2016-00758, Ex. 1002 (identical to IPR2017-00068, Ex. 1002).
`
`3 See IPR2016-00758, Ex. 1003 (identical to IPR2017-00068, Ex. 1003).
`
`4 See IPR2016-00758, Ex. 1004 (identical to IPR2017-00068, Ex. 1004).
`
`3
`
`
`
`
`
`A. Legal Standard
`Whether to grant joinder must be determined on a “case-by-case basis,
`
`taking into account the particular facts of each case” and may be “authorized when
`
`warranted, but the decision to grant joinder is discretionary.” LG Electronics, Inc.
`
`v. ATI Technologies ULC, IPR2015-01620, Paper 10, at 5 (Feb. 2, 2016) (citation
`
`omitted). As the moving party, Petitioner “has the burden of proof to establish that
`
`it is entitled to the requested relief.” 37 C.F.R. § 42.20(c). “A motion for joinder
`
`should (1) set forth the reasons joinder is appropriate; (2) identify any new grounds
`
`of unpatentability asserted in the petition; (3) explain what impact (if any) joinder
`
`would have on the trial schedule for the existing review; and (4) address
`
`specifically how briefing and discovery may be simplified.” Bungie, Inc., v.
`
`Acceleration Bay, LLC, IPR2015-00567, Paper 11, at 11 (July 7, 2016).
`
`B. Petitioner Has Failed to Meet Its Burden of Setting Forth the Reasons
`that Joinder is Appropriate
`Petitioner filed its first petition for inter partes review within one year of
`
`service of Patent Owner’s complaint alleging infringement, in IPR2016-00981.
`
`Petitioner was fully aware of the 758 Petition when it filed the 981 Petition.
`
`Petitioner did not, however, rely on the grounds advanced in the instant Petition
`
`and seek joinder then. Instead, Petitioner made the strategic decision to assert
`
`distinct grounds from the 758 Petition in order to avoid being redundant to the 758
`
`Petition. See IPR2016-00981, Petition for Inter Partes Review, Paper 2, at 2 (May
`4
`
`
`
`
`
`2, 2016).
`
`Now, however, Petitioner seeks to rely on the grounds advanced in the 758
`
`Petition, more than a year after service of the complaint. Petitioner has not
`
`explained why it chose not to assert these arguments in its first petition. Instead,
`
`Petitioner summarily concludes that joinder is appropriate because it now brings
`
`substantively identical claims and grounds—including rejected grounds—in its
`
`second petition over the ’481 Patent. But Petitioner had every opportunity to
`
`advance these grounds before the one-year window closed and elected not to do so.
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`Petitioner has failed to meet its burden of setting forth the reasons why
`
`joinder is appropriate. The Board should exercise its discretion to deny Petitioner’s
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`Motion for Joinder, because Petitioner already submitted a timely petition in which
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`it elected not to incorporate the grounds it raises here, including grounds the Board
`
`has already explicitly rejected.
`
`IV. The Board Should Deny Petitioner’s Motion as to Ground 2, Claims 4
`and 11, Because the Board Did Not Institute Those Grounds in
`IPR2016-00758
`
`The Board should deny the motion in its entirety. Even if it does not,
`
`however, the Board should deny Petitioner’s Motion for Joinder with respect to
`
`Ground 2, claims 4 and 11, alleging obviousness in view of Panasonic 792 and
`
`Panasonic 114, because the Board has already rejected these grounds.
`
`5
`
`
`
`
`
`A. Petitioner’s Grounds for Instituting Claims 4 and 11 are Identical to
`Rejected Grounds in the Underlying Petition
`
`Petitioner challenges claims 4 and 11 as obvious over the combination of
`
`Panasonic 792 and Panasonic 114, despite the Board rejecting those grounds in
`
`Original Petitioner’s petition. IPR2017-00068, Paper 1; IPR2016-00758, Paper 12.
`
`Joinder of such non-instituted claims should not be permitted.
`
`Petitioner presents the very same arguments that the Board previously
`
`rejected in the Instituted Petition when denying institution as to Claims 4 and 11.
`
`As Petitioner concedes in its Motion for Joinder, “[t]he challenged claims and
`
`grounds of Petitioner’s petition are substantively identical to claims and grounds
`
`presented in the petition filed by ZTE and HTC (IPR2016-00758). The same prior
`
`art, and even the same expert and expert declaration, are used in both proceedings.
`
`Petitioner proposes no new grounds of unpatentability.” IPR2017-00068, Paper 2.
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`In short, Petitioner freely admits that it has recycled Original Petitioner’s petition.
`
`The Board denied Original Petitioner institution of claims 4 and 11, because
`
`“ZTE ha[d] not demonstrated a reasonable likelihood of establishing that claims 4
`
`and 11 would have been obvious over the combination of Panasonic 792 and
`
`Panasonic 114.” IPR2016-00758, Paper 12, at 16. The same result must apply here.
`
`Petitioner seeks to impermissibly reintroduce these non-instituted grounds, despite
`
`the Board’s previous ruling.
`
`6
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`
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`
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`B. Petitioner Has Failed to Meet Its Burden of Setting Forth the Reasons
`that Joinder is Appropriate with Respect to Ground 2, Claims 4 and
`11
`
`In both its Petition and its Motion for Joinder, Petitioner provides no new
`
`reasons the Board should institute claims 4 and 11 beyond Original Petitioner’s
`
`recycled and rejected arguments, and none of the case law cited by Petitioner
`
`supports joinder under these circumstances.
`
`Petitioner supports its request for Joinder with cases in which the petitioner
`
`raised solely the instituted grounds from the prior proceeding, unlike Petitioner’s
`
`present Motion. See Sony Corp., et al. v. Memory Integrity, LLC, IPR2015-01353,
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`Paper 11, at 3 (Oct. 15, 2015); Noven Pharmaceuticals Inc. v. Novartis AG and
`
`LTS Lohmann Therapie-Systeme AG, IPR2014-00550, Paper 38 (Apr. 10, 2015)
`
`(originally Mylan Pharmaceuticals Inc. v. Novartis AG and LTS Lohmann
`
`Therapie-Systeme AG, IPR2015-00268, Paper 17). None of these cases considered
`
`grounds not instituted in the underlying petition. Indeed, in Noven
`
`Pharmaceuticals Inc., the Board (and Patent Owner) noted that Petitioner Mylan
`
`Pharmaceuticals expressly asserted that it “seeks institution only as to the three
`
`grounds of invalidity already instituted by the Board in the Noven IPR.”
`
`IPR2014-00550, Paper 38, at 3 (emphasis original). In other words, that petitioner
`
`intentionally did not raise previously rejected grounds. Petitioner makes no such
`
`disclaimer here, instead requesting a blanket joinder and institution, including the
`
`7
`
`
`
`
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`previously rejected grounds.
`
`Moreover, the Board routinely prohibits previously rejected grounds from
`
`proceeding in a joined case when those grounds are raised a second time by the
`
`new petitioner. See Bungie, Inc. v. Acceleration Bay, LLC, IPR2016-00936, Paper
`
`11, at 2 (July 7, 2016); Sony Corp., et al. v. Memory Integrity, LLC, IPR2015-
`
`01376, Paper 12, at 2-3, 14-15 (Sept. 29, 2015); Dot Hill Systems Corp. v.
`
`Crossroads Systems, Inc., IPR2015-00822, Paper 18, at 6 (Sept. 17, 2015); Ion
`
`Geophysical Corp. and Ion Int’l S.A.R.L. v. Westerngeco LLC, IPR2015-00567,
`
`Paper 14, at 3 (Apr. 23, 2015). Petitioner has provided no case law or rationale for
`
`instituting and joining Ground 2, Claims 4 and 11. Petitioner presents the exact
`
`same argument for instituting Ground 2, Claims 4 and 11 that the Board has
`
`already found insufficient. The Board should apply its previous rejection of that
`
`argument here.
`
`V. The Board Should Deny Petitioner’s Request for a Shortened Response
`Time for Patent Owner’s Preliminary Response
`
`In addition to denying Petitioner’s Motion for Joinder, the Board should
`
`deny Petitioner’s “request” for a shortened POPR response time (“Motion to
`
`Shorten”). Petitioner intentionally did not include these grounds in its first petition.
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`After waiting over a year to assert these grounds, Petitioner now seeks to
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`unreasonably accelerate Patent Owner’s response time, without citing any Board
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`8
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`
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`precedent for doing so. The Board should deny this request.
`
`A. Petitioner’s Request Is an Improper Motion Because the Board Has
`Not Authorized the Motion
`
`Petitioner’s Motion to Shorten is improper. “A motion will not be entered
`
`without Board authorization. Authorization may be provided in an order of general
`
`applicability, e.g., a scheduling order entered at the start of the trial, or during the
`
`preceding [sic] after conferring with the Board.” America Invents Act (AIA)
`
`Frequently Asked Questions, USPTO, Inter Partes Review – Other, Question 28,
`
`https://www.uspto.gov/patent/laws-and-regulations/america-invents-act-
`
`aia/america-invents-act-aia-frequently-asked#3236 (last visited Nov. 7, 2016).
`
`Petitioner procedurally justifies its Motion for Joinder by citing to Board precedent
`
`authorizing such motions. But Petitioner provides no basis of authority for its
`
`Motion to Shorten. Petitioner could have conferred with the Board to gain
`
`authorization to request a shortened response time and chose not to do so. Because
`
`the Board has not authorized Petitioner’s motion to shorten Patent Owner’s POPR
`
`response time, the Board should deny that motion.
`
`B. Petitioner’s Proposed Shortened Schedule Provides Inadequate Time
`for Patent Owner to Oppose the Motion
`
`If the Board determines that Petitioner has received some form of
`
`authorization for its Motion to Shorten, the Board should still deny the Motion
`
`because the proposed schedule is unreasonable. Petitioner proposes that Patent
`9
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`
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`Owner be required to submit its POPR by November 14, 2016. But Petitioner filed
`
`its Motion to Shorten on October 14, 2016. A Patent Owner’s opposition to a
`
`motion is due one month after the motion is filed—in this case, on November 14,
`
`2016. Petitioner’s proposed schedule would require Patent Owner to submit its
`
`POPR by the same deadline, leaving Patent Owner no meaningful opportunity to
`
`be heard on Petitioner’s Motion to Shorten. Under Petitioner’s proposed schedule,
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`Patent Owner would have to submit a POPR without waiting for the Board to
`
`consider Patent Owner’s opposition to Petitioner’s proposed schedule. Even if the
`
`Board finds Petitioner’s Motion to Shorten to be authorized, the Board should still
`
`deny Petitioner’s proposed POPR due date.
`
`VI. Conclusion
`For the reasons outlined above, Patent Owner respectfully requests that the
`
`Board deny Petitioner’s Motion for Joinder. If the Board does not deny Petitioner’s
`
`Motion for Joinder in full, then Patent Owner respectfully requests that the Board
`
`deny, in part, Petitioner’s Motion for Joinder as it relates to Ground 2, Claims 4
`
`and 11 of the underlying petition for inter partes review. Patent Owner also
`
`respectfully requests that the Board deny Petitioner’s Request for Shortened
`
`Response Time for Patent Owner’s Preliminary Response.
`
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`Dated: November 14, 2016.
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`Respectfully Submitted,
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`10
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`s/ Ryan M. Schultz
`Registration No. 65,134
`Robins Kaplan LLP
`800 LaSalle Avenue
`2800 LaSalle Plaza
`Minneapolis, MN 55402-2015
`
`11
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`CERTIFICATE OF SERVICE
`
`I hereby certify that on this November 14, 2016, a copy of this Patent
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`Owner’s Opposition to Petitioner’s Motion for Joinder has been served in its
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`entirety by electronic mail to the Petitioners:
`
`IPR00035-0010IP1@fr.com
`PTABInbound@fr.com
`renner@fr.com
`devoto@fr.com
`dsmith@fr.com
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`Dated: November 14, 2016
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`Respectfully submitted,
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`s/ Ryan M. Schultz
`Registration No. 65,134
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`Attorney for Patent Owner
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`1
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