`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
`
`
`
`Case No. IPR2017-00106
`Patent 8,218,481
`
`
`
`
`
`PETITIONERS’ REPLY TO PATENT OWNER’S OPPOSITION
`TO MOTION FOR JOINDER
`
`02198-00033/8677164.1
`
`
`
`IPR2017-00106
`IPR of U.S. Patent No. 8,218,481
`
`Patent Owner argues in its November 14 Opposition that Petitioners’ Motion
`
`for Joinder should be denied because the instant petition (IPR2017-00106) (“106
`
`Proceeding”) includes claims 4 and 11 in Ground 2, which the Board did not insti-
`
`tute in the underlying IPR2016-000758 proceeding (“758 Proceeding”). After fil-
`
`ing of the Patent Owner’s Opposition, the parties conferred and resolved Patent
`
`Owner’s concerns with respect to joinder. Specifically, on November 29, Patent
`
`Owner agreed to limit its opposition to only those grounds and claims that were not
`
`instituted in the 758 Proceeding. Petitioners subsequently agreed not to seek join-
`
`der for claims not instituted in the 758 Proceeding—i.e., Petitioners are not seeking
`
`joinder as to Ground 2, claims 4 and 11.
`
`Patent Owner confirmed the parties’ understanding via e-mail on December
`
`12, 2016:
`
`“Samsung may inform the Board that Patent Owner’s
`
`opposition is only limited to those grounds/claims that
`
`were not instituted in IPR2016-00758.”
`
`Accordingly, the remaining claims in the instant petition are now identical to
`
`those instituted in the 758 Proceeding and Petitioners’ Motion for Joinder now
`
`stands unopposed by Patent Owner. Joinder is appropriate in these circumstances.
`
`See Sierra Wireless America, Inc. et al v. M2M Solutions LLC, IPR2016-01073,
`
`Paper 17 at 8.
`
`02198-00033/8677164.1
`
`1
`
`
`
`IPR2017-00106
`IPR of U.S. Patent No. 8,218,481
`
`In light of the foregoing, Petitioners request that the Board institute an IPR
`
`on the remaining grounds in the 106 Proceeding and grant their Motion for Joinder
`
`with the ZTE (USA) Inc., HTC Corporation, and HTC America, Inc. v. Evolved
`
`Wireless, LLC, IPR2016-00758 proceeding with respect to the instituted grounds.
`
`
`
`Date: December 14, 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
`T: (212) 849-7000
`F: (212) 849-7100
`jimglass@quinnemanuel.com
`
`Attorney for Petitioners Samsung Electronics Co.,
`Ltd. and Samsung Electronics America, Inc.
`
`02198-00033/8677164.1
`
`2
`
`
`
`IPR2017-00106
`IPR of U.S. Patent No. 8,218,481
`
`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(e))
`
`
`
`The undersigned hereby certifies that the above-captioned “PETITIONERS’
`
`REPLY TO PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER”
`
`was served in its entirety on December 14, 2016, upon the following parties:
`
`Counsel for Patent Owner in IPR2017-00106 and 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
`Telephone: (312) 984-7764
`Fax: (312) 984-7700
`cmcmahon@mwe.com
`hmehta@mwe.com
`
`Stephen S. Korniczky (Reg. 34,853)
`skorniczky@sheppardmullin.com
`Martin Bader (Reg. 54,736)
`mbader@sheppardmullin.com
`Ericka J. Schulz (Reg. 60,665)
`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
`
`
`
`
`02198-00033/8677164.1
`
`1
`
`
`
`Date: December 14, 2016
`
`
`
`IPR2017-00106
`IPR of U.S. Patent No. 8,218,481
`
`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.
`
`02198-00033/8677164.1
`
`2
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
