IPR2017-00106
`IPR of U.S. Patent No. 8,218,481
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`Samsung Electronics Co., Ltd., and
`Samsung Electronics America, Inc.,
`
`Petitioner
`
`v.
`
`Evolved Wireless LLC,
`
`Patent Owner
`
`
`
`MOTION FOR JOINDER UNDER
`35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b)
`TO INTER PARTES REVIEW OF IPR2016-00758
`
`Case No. IPR2017-00106
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`IPR of U.S. Patent No. 8,218,481
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`Samsung Electronics Co., Ltd., and
`Samsung Electronics America, Inc.,
`
`Petitioner
`
`v.
`
`Evolved Wireless LLC,
`
`Patent Owner
`
`
`
`MOTION FOR JOINDER UNDER
`35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b)
`TO INTER PARTES REVIEW OF IPR2016-00758
`
`Case No. IPR2017-00106
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`IPR2017-00106
`IPR of U.S. Patent No. 8,218,481
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`STATEMENT OF PRECISE RELIEF REQUESTED ....................................................... 1
`
`STATEMENT OF MATERIAL FACTS .................................................................................. 3
`
`III.
`
`STATEMENT OF REASONS FOR RELIEF REQUESTED .......................................... 4
`
`A.
`
`B.
`
`C.
`
`1.
`
`2.
`
`3.
`
`Legal Standard ......................................................................................................................... 4
`
`Petitioner’s Motion for Joinder is Timely ........................................................................... 5
`
`Each Factor Weighs in Favor of Joinder ............................................................................ 5
`
`Joinder is Appropriate and Petitioner Presents No New Grounds ................................ 5
`
`Joinder Will Not Negatively Impact the 758 Proceeding Trial Schedule ...................... 7
`
`Procedures to Simplify Briefing and Discovery ................................................................. 8
`
`D.
`
`Joinder Will Not Prejudice the Parties to the 758 Proceeding....................................... 10
`
`IV.
`
`CONCLUSION ................................................................................................................................. 10
`
`
`
`i
`
`
`
`IPR2017-00106
`IPR of U.S. Patent No. 8,218,481
`
`I.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc.
`
`(“Samsung”) (collectively “Petitioner”) respectfully submit this Motion for Join-
`
`der, together with a petition (the “Samsung Petition”) for inter partes review of
`
`U.S. Patent No. 8,281,481 (“the ’481 patent”) filed concurrently herewith,
`
`IPR2017-00106 (the “Samsung Petition”). Pursuant to 35 U.S.C. § 315(c) and 37
`
`C.F.R. § 42.122(b), Petitioner requests institution of an inter partes review and
`
`joinder with the inter partes review proceeding IPR2016-00758 filed by ZTE
`
`(USA) Inc. (“ZTE”) and HTC Corporation and HTC America, Inc. (“HTC”) (the
`
`“758 Proceeding”), which was instituted on September 16, 2016 and concerns the
`
`same ’481 patent. Petitioner timely filed this motion within one month of the insti-
`
`tution of the 758 Proceeding. See 37 C.F.R. § 42.122(b); Taiwan Semiconductor
`
`Manufacturing Co., Ltd. v. Zond, LLC, IPR2014-00781, Paper 5 at 3 (“[P]rior au-
`
`thorization for filing a motion for joinder—prior to one month after the institution
`
`date of any inter partes review for which joinder is requested—is not required.”)
`
`Joinder will efficiently resolve the challenges to the ’481 patent in the 758
`
`Proceeding, and will neither impact the substantive issues or schedule in that pro-
`
`ceeding, nor prejudice the parties in the 758 Proceeding. The Samsung Petition
`
`raises the same grounds of unpatentability for which the 758 Proceeding was insti-
`
`tuted, challenges the same claims, and relies on the same prior art, arguments and
`
`
`
`1
`
`
`
`IPR2017-00106
`IPR of U.S. Patent No. 8,218,481
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`evidence presented in ZTE and HTC’s petition for inter partes review. Indeed, in
`
`an effort to avoid multiplication of issues before the Board, the Samsung Petition
`
`duplicates the challenges presented on the instituted grounds in the 758 Proceeding
`
`and it relies on the same supporting expert declaration. In addition, Petitioner ex-
`
`plicitly agrees to consolidated discovery and briefing as described below, and is
`
`willing to accept a limited role with ZTE’s counsel acting as the lead counsel as
`
`long as ZTE and HTC remain in the proceeding. 1 Accordingly, Petitioner submits
`
`that joinder is appropriate because it will not prejudice the parties or impact the
`
`substantive issues and schedule in the 758 Proceeding, while efficiently resolving
`
`in a single proceeding the question of the ’481 patent’s validity based on the insti-
`
`tuted grounds of the 758 Proceeding.
`
`
`1 Petitioner notes that on October 14, 2016, Apple Inc. (“Apple”) and Microsoft
`
`Corporation, Microsoft Mobile Oy, and Microsoft Mobile Inc. (f/k/a Nokia Inc.)
`
`(“Microsoft”) also filed a motion requesting joinder to the 758 Proceeding
`
`(IPR2017-00068). In the event that Apple and Microsoft’s motion for joinder is
`
`granted, Petitioner agrees to the same procedures for simplified briefing and dis-
`
`covery discussed herein and, in the event that parties to the 758 Proceeding settle,
`
`Petitioner agrees to work with Apple and Microsoft to determine which counsel
`
`will serve as the lead counsel in the proceedings.
`
`
`
`2
`
`
`
`IPR2017-00106
`IPR of U.S. Patent No. 8,218,481
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`
`1. The ’481 patent is entitled “Method of Transmitting Data in a Mobile
`
`Communication System” and lists Yeong Hyeon Kwon et al. as inventors. The
`
`’481 patent issued on July 10, 2012. Evolved Wireless, LLC (the “Patent Owner”)
`
`is believed to have all rights, title, and interest in ’481 patent.
`
`2. On June 25, 2015, Patent Owner filed civil actions against multiple
`
`Defendants in the United States District Court for the District of Delaware assert-
`
`ing the ’481 patent, along with other patents, including actions against ZTE in Civ-
`
`il Action No. 1:15-cv-00546-SLR-SRF, against Samsung in Civil Action No. 1:15-
`
`cv-00545-SLR-SRF, against HTC in Civil Action No. 1:15-cv-00543-SLR-SRF,
`
`against Apple in Civil Action No. 1:15-cv-00542-SLR-SRF, and against Microsoft
`
`in Civil Action No. 1:15-cv-00547-SLR-SRF. A jury trial concerning the ’481 pa-
`
`tent as well as other patents is currently scheduled for February 5, 2018.
`
`3. On March 23, 2016, ZTE and HTC filed a petition for inter partes re-
`
`view requesting cancellation of claims 1-4, 6, 8-11, and 13 of the ’481 patent,
`
`which was assigned Case No. IPR2016-00758 (the “758 Proceeding”).
`
`4. On September 16, 2016, the Board instituted inter partes review in the
`
`758 Proceeding, finding that a reasonable likelihood existed that the ZTE and
`
`HTC’s petition would prevail in showing the unpatentability of claims 1-3, 6, 8-10,
`
`and 13 of the ’481 patent.
`
`
`
`3
`
`
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`IPR2017-00106
`IPR of U.S. Patent No. 8,218,481
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`5. On October 14, 2016, Apple and Microsoft filed a petition and motion
`
`for joinder in the 758 Proceeding. Apple’s petition has been assigned Case No.
`
`IPR2017-00068 (the “068 Proceeding”). No decision has been rendered in the 068
`
`Proceeding.
`
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`
`A. Legal Standard
`
`The Board has the authority under 35 U.S.C. § 315(c) to join a properly filed
`
`inter partes review petition to an instituted inter partes review proceeding. See 35
`
`U.S.C. § 315(c). Any request for joinder must be filed no later than one month af-
`
`ter the institution date of any inter partes review for which joinder is requested.
`
`See 37 C.F.R. § 42.122(b). In deciding whether to exercise its discretion, the
`
`Board considers factors including: (1) the reasons why joinder is appropriate; (2)
`
`whether the new petition presents any new grounds of unpatentability; (3) what
`
`impact, if any, joinder would have on the trial schedule for the existing review; and
`
`(4) how briefing and discovery may be simplified. See Macronix Int’l Co. v. Span-
`
`sion, IPR2014-00898, Paper 13, at 4 (PTAB Aug. 13, 2014) (citing Kyocera Cor-
`
`poration v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB April 24, 2013));
`
`Perfect World Entertainment, Inc. v. Uniloc USA, Inc., et al., IPR2015-01026, Pa-
`
`per 10 at 4 (PTAB Aug. 3, 2015); Mylan Pharmaceuticals Inc. v. Novartis AG, et
`
`al., IPR2015-00265, Paper 17 at 4 (PTAB April 10, 2015); Ciena Corp., et al. v.
`
`
`
`4
`
`
`
`IPR2017-00106
`IPR of U.S. Patent No. 8,218,481
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`Capella Photonics, Inc., IPR2015-01958, Paper 11 (PTAB April 1, 2016).
`
`B. Petitioner’s Motion for Joinder is Timely
`
`This Motion for Joinder is timely because it is filed within one month of the
`
`September 16, 2016 institution decision in the 758 Proceeding. See 37 C.F.R. §
`
`42.122(b). The one-year bar set forth in 37 C.F.R. § 42.101(b) does not apply when
`
`a petition is filed concurrently with a motion for joinder, as is currently the case
`
`here with the Samsung Petition. Id.
`
`C. Each Factor Weighs in Favor of Joinder
`
`Each of the four factors to be considered by the Board in ruling on this mo-
`
`tion weighs in favor of joinder. As explained in further detail below, joinder is
`
`proper because the Samsung Petition does not present any new grounds of un-
`
`patentability, is substantively identical to the ZTE and HTC petition, will have
`
`minimal impact, if any, on the trial schedule, briefing and discovery in the 758
`
`Proceeding, and allows all issues to be resolved in a single proceeding before the
`
`Board. Petitioner further agrees to take on a limited role in the proceeding.
`
`1. Joinder is Appropriate and Petitioner Presents No New
`Grounds
`
`Joinder with the 758 Proceeding is appropriate because the Samsung Petition
`
`involves the same patent, challenges the same claims, and relies on the same prior
`
`
`
`5
`
`
`
`IPR2017-00106
`IPR of U.S. Patent No. 8,218,481
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`art, arguments and expert declaration presented in the 758 Proceeding.2 Important-
`
`ly, the Samsung Petition does not raise any new grounds of unpatentability. Fur-
`
`ther, the Samsung Petition relies on the same grounds from the ZTE and HTC peti-
`
`tion on which the Board instituted review on September 16, 2016, and is substan-
`
`tively identical to the ZTE and HTC Petition. Indeed, the substantive challenges
`
`presented in the Samsung Petition are copied verbatim from the ZTE and HTC pe-
`
`tition and rely on the same supporting expert declaration. The primary differences
`
`between the Samsung Petition and the ZTE and HTC petition relate to minor for-
`
`malities associated with the parties involved with filing the petitions and references
`
`to related proceedings. The Samsung Petition presents the same arguments, expert
`
`declaration, and prior art presented in the ZTE and HTC petition; it does not add to
`
`or alter any argument that has already been considered by the Board. Accordingly,
`
`because these proceedings are substantively identical, joining this proceeding with
`
`the 758 Proceeding is appropriate and allows the Board to efficiently resolve the
`
`instituted grounds in a single proceeding. See Sierra Wireless America, Inc. et al
`
`v. M2M Solutions LLC, IPR2016-01073, Paper 17 at 8 (PTAB September 29,
`
`2016) (quoting 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
`
`
`2 The Samsung Petition is submitted with the same Exhibits as those submitted
`
`with the 758 Proceeding.
`
`
`
`6
`
`
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`IPR2017-00106
`IPR of U.S. Patent No. 8,218,481
`
`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, and thus allowed to file
`
`its own briefs and make its own arguments.”)) (emphasis original).
`
`2. Joinder Will Not Negatively Impact the 758 Proceeding Trial
`Schedule
`
`35 U.S.C. § 316(a)(11) provides that “the final determination in an inter
`
`partes review be issued not later than one year after the date on which the Director
`
`notices the institution of a review.” See also 37 C.F.R. § 42.100(c). Joinder in this
`
`case will not impact this mandate and will not even require modification of the ex-
`
`isting scheduling order. See, 758 Proceeding, Paper 13 (Scheduling Order). As
`
`explained above, the Samsung Petition is substantively identical with respect to the
`
`instituted grounds contained in the ZTE and HTC petition. Thus, the Preliminary
`
`Response already filed by Patent Owner in the 758 Proceeding addresses any and
`
`all issues in the Samsung Petition. See 758 Proceeding, Paper 9 (Patent Owner’s
`
`Preliminary Response). Furthermore, there are no new issues for Patent Owner to
`
`address and Patent Owner will not be required to file additional responses or argu-
`
`ments. Consequently, the Patent Owner response will also not be impacted; join-
`
`ing Petitioner to this proceeding will not require any additional analysis by Patent
`
`Owner beyond what they will already undertake to respond to the ZTE and HTC
`
`petition. Also, since the Samsung Petition relies on the same expert declaration,
`
`only a single deposition is needed for the proposed joined proceeding in connec-
`
`
`
`7
`
`
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`IPR2017-00106
`IPR of U.S. Patent No. 8,218,481
`
`tion with both the ZTE and HTC petition and the Samsung Petition. For efficien-
`
`cy’s sake, if joined, Petitioner further agrees to consolidated discovery with ZTE
`
`and HTC’s counsel acting as the lead counsel so long as PAN remains in the pro-
`
`ceeding.3
`
`For at least the reasons set forth above, there is no reason to delay or alter
`
`the schedule already present in the 758 Proceeding, and Petitioner explicitly con-
`
`sents to that schedule. Accordingly, joinder of these proceedings will not negative-
`
`ly impact the 758 Proceeding trial schedule.
`
`3. Procedures to Simplify Briefing and Discovery
`
`As discussed above, Petitioner offers no new grounds for invalidity and Peti-
`
`tioner does not anticipate that its presence will introduce any additional arguments,
`
`briefing or need for discovery. As long as ZTE and HTC remain active partici-
`
`pants in the 758 Proceeding, Petitioner is willing to accept a limited role and agree
`
`to: (1) consolidate filings with ZTE and HTC; (2) refrain from raising any new
`
`grounds not already considered by the Board in the 758 Proceeding; (3) be bound
`
`by any agreement between Patent Owner and ZTE and HTC concerning discovery
`
`
`3 As referenced in footnote 1, in the event that Apple and Microsoft are joined and
`
`ZTE and HTC settle with Patent Owner, Samsung agrees to work with Apple and
`
`Microsoft to determine which counsel will replace ZTE’s counsel as the lead coun-
`
`sel in the consolidated proceedings.
`
`
`
`8
`
`
`
`IPR2017-00106
`IPR of U.S. Patent No. 8,218,481
`
`and/or depositions; (4) limit any direct, cross-examination or redirect time beyond
`
`that permitted for ZTE and HTC under either 37 C.F.R. § 42.53 or any agreement
`
`between ZTE and HTC and the Patent Owner, such that Petitioner’s participation
`
`in the 758 Proceeding does not result in any additional time being required for any
`
`deposition; and (5) limit any presentation at oral hearing to unused time previously
`
`allocated to ZTE and HTC.4 By accepting this limited role, both the Board and
`
`parties will be able to comply with the existing schedule in the 758 Proceeding and
`
`avoid any duplication of efforts. The Board has consistently granted joinder mo-
`
`tions allowing Petitioners to take a similar role as that proposed by Petitioner in
`
`this proceeding.5 Accordingly, Petitioner requests that the Board grant Petitioner’s
`
`
`4 In the event that Apple and Microsoft’s motion for joinder is also granted, Peti-
`
`tioner agrees to the same procedures for simplified briefing and discovery or other
`
`reasonable conditions for the conduct of the combined, joined proceedings that are
`
`deemed appropriate by the Board.
`
`5 See, e.g., Ciena Corp., et al. v. Capella Photonics, Inc., IPR2015-01958, Paper 11
`
`(PTAB April 1, 2016); Sony Corp., et al. v. Memory Integrity, LLC, IPR2015-
`
`01376, Paper 12 at 16-20 (PTAB Sept. 29, 2015); Ciena Corp., et al. v. Capella
`
`Photonics, Inc., IPR2015-00894, Paper 12 (PTAB Sept. 22, 2015); Dell Inc. v.
`
`Network-1 Security Solutions, Inc., IPR2013-00385, Paper 17 (PTAB July 29,
`
`2013).
`
`
`
`9
`
`
`
`IPR2017-00106
`IPR of U.S. Patent No. 8,218,481
`
`motion for joinder, particularly in light of the foregoing procedural safeguards and
`
`limited role that Petitioner is willing to accept in this proceeding.
`
`D. Joinder Will Not Prejudice the Parties to the 758 Proceeding
`
`Patent Owner is not prejudiced as all of the issues raised by Petitioner are al-
`
`ready known to Patent Owner. Further, Patent Owner is not expected to incur any
`
`additional burden as a result of this joinder. This is particularly true in light of the
`
`limited role that Petitioner proposes to undertake in the joined proceedings. Join-
`
`der will allow the Board to address the same patent validity questions in a single
`
`proceeding within a statutory deadline without adding costs or burdens on any of
`
`the parties.
`
`IV. CONCLUSION
`
`Based on the factors outlined above, Petitioner requests the Board grant the
`
`Samsung Petition for Inter Partes Review of U.S. Patent No. 8,218,481 (IPR2017-
`
`00106) and grant joinder with the ZTE (USA) Inc., HTC Corporation, and HTC
`
`America, Inc. v. Evolved Wireless, LLC, IPR2016-00758 proceeding.
`
`
`
`Date: October 17, 2016
`
`
`Respectfully submitted,
`
`By: /s/ James M. Glass
`James M. Glass (Reg. 46,729)
`QUINN EMANUEL URQUHART &
`SULLIVAN
`51 Madison Ave., 22nd Fl.
`New York, NY 10010
`
`
`
`10
`
`
`
`IPR2017-00106
`IPR of U.S. Patent No. 8,218,481
`
`T: (212) 849-7000
`F: (212) 849-7100
`jimglass@quinnemanuel.com
`
`Attorney for Petitioners Samsung Electronics Co.,
`Ltd. and Samsung Electronics America, Inc.
`
`
`
`11
`
`
`
`IPR2017-00106
`IPR of U.S. Patent No. 8,218,481
`
`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(e), 42.105(a))
`
`
`
`The undersigned hereby certifies that the above-captioned “MOTION FOR
`
`JOINDER UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b)
`
`TO INTER PARTES REVIEW OF IPR2016-00758” was served in its entirety on
`
`October 17, 2016, upon the following parties:
`
`Attorney of Record for U.S. Patent No. 8,218,481, via FedEx Overnight
`Delivery:
`
`
`Jason H. Vick
`SHERIDAN ROSS, PC
`Suite # 1200
`1560 Broadway
`Denver, CO 80202
`
`Counsel for Patent Owner in IPR2016-00758, via electronic mail:
`
`
`
`Cyrus A. Morton (Reg. 44,954)
`Ryan M. Schultz (Reg. 65,134)
`ROBINS KAPLAN LLP
`2800 LaSalle Plaza
`800 LaSalle Ave
`Minneapolis, MN 55402
`Telephone: (612) 349-8500
`Fax: (612) 339-4181
`CMorton@robinskaplan.com
`RSchultz@robinskaplan.com
`Evolved_RK_Team@robinskaplan.com
`
`
`Counsel for Petitioners in IPR2016-00758, via electronic mail:
`
`Charles M. McMahon (Reg. 44,926)
`Hersh H. Mehta (Reg. 62,336)
`MCDERMOTT WILL & EMERY
`227 W. Monroe
`Chicago, IL 60606
`
`Stephen S. Korniczky (Reg. 34,853)
`skorniczky@sheppardmullin.com
`Martin Bader (Reg. 54,736)
`mbader@sheppardmullin.com
`Ericka J. Schulz (Reg. 60,665)
`
`
`
`1
`
`
`
`IPR2017-00106
`IPR of U.S. Patent No. 8,218,481
`
`eschulz@sheppardmullin.com
`SHEPPARD,MULLIN, RICHTER &
`HAMPTON, LLP
`12275 El Camino Real, Suite 200
`San Diego, CA 92130
`Telephone: (858) 720-8900
`Fax: (858) 720-4882
`
`
`Respectfully submitted,
`
`By: /s/ James M. Glass
`James M. Glass (Reg. 46,729)
`QUINN EMANUEL URQUHART &
`SULLIVAN
`51 Madison Ave., 22nd Fl.
`New York, NY 10010
`T: (212) 849-7000
`F: (212) 849-7100
`jimglass@quinnemanuel.com
`
`Attorney for Petitioners Samsung Electron-
`ics Co., Ltd. and Samsung Electronics
`America, Inc.
`
`Telephone: (312) 984-7764
`Fax: (312) 984-7700
`cmcmahon@mwe.com
`hmehta@mwe.com
`
`
`
`Date: October 17, 2016
`
`
`
`
`
`2
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