`571-272-7822
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`
`
`
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`Paper No. 12
`Entered: December 21, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC., MICROSOFT CORPORATION,
`MICROSOFT MOBILE OY,
`MICROSOFT MOBILE INC. (f/k/a NOKIA, INC.),
`HTC CORPORATION, HTC AMERICA, INC.,
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`and ZTE (USA) INC.,
` Petitioners,1
`
`v.
`
`EVOLVED WIRELESS LLC,
`Patent Owner.
`____________
`
`Cases IPR2016-00758, IPR2016-00981, IPR2016-01342,
`IPR2016-01349, IPR2017-00068, and IPR2017-00106
`Patent 8,218,481 B2
`____________
`
`
`
`
`
`Before CHRISTOPHER L. CRUMBLEY, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`
`
`1 This case caption is for the purposes of this consolidated Order only. Not
`all listed Petitioners are a Petitioner in each case listed in the caption. The
`parties are not to use this caption unless expressly authorized by the Board.
`
`
`
`IPR2016-00758, IPR2016-00981, IPR2016-01342,
`IPR2016-01349, IPR2017-00068, IPR2017-00106
`Patent 8,218,481 B2
`
`This Order is entered in six related inter partes review proceedings
`filed by various Petitioners, each challenging claims of U.S. Patent No.
`8,218,481 B2. The Board has instituted trial in two of the proceedings,
`namely IPR2016-00758 and IPR2016-00981; a decision whether to institute
`trial has not been reached in the other four cases. Though filed by different
`Petitioners, the Petitions in IPR2016-00758 and IPR2016-01342 are similar,
`as are the Petitions in IPR2016-00981 and IPR2016-01349. The Petitioners
`in IPR2017-00068 and IPR2017-00106 seek joinder with IPR2016-00758.
`
`The parties contacted the Board via e-mail, requesting a conference
`call to discuss a proposal to streamline and synchronize consideration of the
`various Petitions. A conference call was held on December 19, 2016, among
`counsel for the involved Petitioners, counsel for Patent Owner Evolved
`Wireless LLC, and Judges Saindon, Crumbley, Boucher, Chen, and
`McMillin.
`
`During the call, the parties collectively proposed that—if trial is
`instituted in IPR2016-01342 and IPR2016-01349—the Board consolidate,
`pursuant to 35 U.S.C. § 315(d), IPR2016-01342 with IPR2016-00758 and
`IPR2016-01349 with IPR2016-00981. The consolidated proceedings would
`be considered together, and the Board would issue a single Final Written
`Decision for each pair of consolidated cases.
`
`The Petitioners also proposed a synchronized schedule for the
`consolidated proceedings. Counsel for Patent Owner agreed in principle to
`the Board adopting a single schedule, but noted that the proposed schedule
`included an oral argument date after the one-year deadline for issuing a Final
`Written Decision in IPR2016-00758. The parties and Board discussed
`various options for resolving this conflict, including adjusting or extending
`2
`
`
`
`
`
`IPR2016-00758, IPR2016-00981, IPR2016-01342,
`IPR2016-01349, IPR2017-00068, IPR2017-00106
`Patent 8,218,481 B2
`
`the date of the Final Written Decision pursuant to 35 U.S.C. § 316(a)(11).
`The parties also agreed to propose an alternative schedule that did not
`require extending the one-year deadline.
`
`With respect to the Motions for Joinder in IPR2017-00068 and
`IPR2017-00106, the Petitioners in those proceedings clarified that, in their
`Replies supporting the Motions, they had agreed to withdraw from the
`Petition any claim on which trial was not instituted in IPR2016-00758. See
`IPR2017-00068, Paper 8, 1; IPR2017-00106, Paper 10, 1. The Board
`requested that the Petitioners in these cases file a paper in each case
`expressly requesting dismissal of the Petitions as to these claims, and
`counsel agreed. The paper should indicate whether Patent Owner opposes
`the request, but no responsive briefing is authorized at this time. Counsel for
`Patent Owner agreed that, if the non-instituted claims are dismissed from the
`Petitions in the joinder cases, Patent Owner does not oppose joinder of
`Petitioners to IPR2016-00758.
`
`The Board thanked the parties for their efforts to promote the efficient
`resolution of these matters, and the call was adjourned.
`
`In light of the foregoing, it is hereby
`ORDERED that the parties shall, on or before December 30, 2016,
`provide to the Board via e-mail an alternative proposed schedule for the
`consolidated proceedings that maintains the September 16, 2017 Final
`Written Decision date in IPR2016-00758; and
`FURTHER ORDERED that, if the Petitioners in IPR2017-00068 and
`IPR2017-00106 wish the Board to dismiss their Petitions as to certain claims
`
`
`
`3
`
`
`
`IPR2016-00758, IPR2016-00981, IPR2016-01342,
`IPR2016-01349, IPR2017-00068, IPR2017-00106
`Patent 8,218,481 B2
`
`for which trial was not instituted in IPR2016-00758, they shall file a paper
`expressly requesting such dismissal on or before December 30, 2016.
`
`
`
`PETITIONER:
`Charles M. McMahon (IPR2016-00758, 01342, 01349)
`cmcmahon@mwe.com
`
`Hersh H. Mehta
`hmehta@mwe.com
`
`Stephen S. Korniczky (IPR2016-00758)
`skorniczky@sheppardmullin.com
`
`Martin Bader
`mbader@sheppardmullin.com
`
`Ericka J. Schulz
`eschulz@sheppardmullin.com
`
`W. Karl Renner (IPR2016-00981, IPR2017-00068)
`IPR00035-0010IP1@fr.com
`
`Roberto J. Devoto
`PTABInbound@fr.com
`James M. Glass (IPR2016-01342, IPR2017-00106)
`jimglass@quinnemanuel.com
`
`John McKee
`johnmckee@quinnemanuel.com
`
`Todd M. Briggs
`toddbriggs@quinnemanuel.com
`
`
`
`
`4
`
`
`
`IPR2016-00758, IPR2016-00981, IPR2016-01342,
`IPR2016-01349, IPR2017-00068, IPR2017-00106
`Patent 8,218,481 B2
`
`
`Kevin P.B. Johnson (IPR2016-01342)
`kevinjohnson@quinnemanuel.com
`
`PATENT OWNER:
`Cyrus A. Morton
`cmorton@robinskaplan.com
`
`Ryan M. Schultz
`rschultz@robinskaplan.com
`
`
`
`5