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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Huawei Device Co., Ltd.
`Petitioner,
`
`v.
`
`Papst Licensing GmbH & Co., KG,
`Patent Owner
`
`Case No. To Be Assigned
`Patent No. 8,504,746
`
`PETITIONER’S MOTION FOR JOINDER PURSUANT TO
`35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22 and 42.122(b)
`
` DC: 6329949-1
`
`
`
`TABLE OF CONTENTS
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`Page
`
`TABLE OF AUTHORITIES .................................................................................... ii
`
`I.
`
`II.
`
`STATEMENT OF PRECISE RELIEF REQUESTED .................................. 1
`
`BACKGROUND AND RELATED PROCEEDINGS .................................. 3
`
`III.
`
`STATEMENT OF REASONS FOR RELIEF REQUESTED ....................... 4
`
`A.
`
`B.
`
`Legal Standard ...................................................................................... 5
`
`Joinder Is Appropriate .......................................................................... 6
`
`1.
`
`2.
`
`3.
`
`Huawei’s Petition is Substantively Identical to the Canon
`Petition. ...................................................................................... 7
`
`Joinder Will Not Impact the Canon IPR Trial Schedule. .......... 8
`
`Huawei Agrees to Consolidated Filings and Discovery .......... 10
`
`IV. PROPOSED ORDER ................................................................................... 11
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`V.
`
`CONCLUSION ............................................................................................. 11
`
`
`
`
`
`
`
`
`i
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`
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`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Canon Inc. et al. v. Papst Licensing GmbH & Co., KG,
`IPR2016-01211, (Dec. 15, 2016) .................................................................passim
`
`Mylan Pharms. Inc. v. Novartis AG, et al.,
`IPR2015- 00268, Paper 17 (Apr. 10, 2015) .......................................................... 7
`
`Dell, Inc. v. Network-1 Security Sols., Inc.,
`IPR2013-00385, Paper 17 (July 29, 2013) ....................................................... 5, 6
`
`In re Papst Licensing Dig. Camera Pat. Litig.,
`MDL 1880, No. 1-07-mc-00493 (D.D.C. 2016) .................................................. 3
`
`Kyocera Corp. et al. v. Softview LLC,
`IPR2013-00004, Paper 15 (Apr. 24, 2013) ........................................................... 5
`
`Motorola Mobility LLC v. Softview LLC,
`IPR2013-00256, Paper 10 (June 20, 2013) ........................................................... 7
`
`Papst Licensing GmbH & Co. KG v. Apple Inc.,
`Case No. 6-15-cv-1095 (E.D. Tex. 2015) ............................................................. 2
`
`Papst Licensing GmbH & Co. KG v. Huawei Technologies Co., Ltd. et
`al.,
`Case No. 6-15-cv-1115 (E.D. Tex. 2015) ............................................................. 4
`
`Sony Corp., et al. v. Memory Integrity, LLC,
`IPR2015-01353, Paper 11 (Oct. 15, 2015) ..................................................... 7, 10
`
`Statutes
`
`35 U.S.C. § 315(c) ............................................................................................. 1, 4, 5
`
`35 U.S.C. § 316(a)(11) ............................................................................................... 8
`
`35 U.S.C. § 316(b) ..................................................................................................... 6
`
`
`
`ii
`
`
`
`Leahy-Smith America Invents Act, 35 U.S.C. § 315(c) (2011) ................................ 5
`
`Other Authorities
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`37 C.F.R. § 1.7(a) ....................................................................................................... 2
`
`37 C.F.R. § 42.1(b) .................................................................................................... 6
`
`37 C.F.R. § 42.22 ................................................................................................... 2, 4
`
`37 C.F.R. § 42.100(c) ................................................................................................. 8
`
`37 C.F.R. § 42.122(b) ............................................................................................ 2, 4
`
`157 CONG. REC. S1376 (daily ed. Mar. 8, 2011) (statement of Sen.
`Kyl) ....................................................................................................................... 8
`
`
`
`
`
`
`
`iii
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`
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`I.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Petitioner Huawei Device Co., Ltd. (“Huawei”) submits this Motion for
`
`Joinder concurrently with a Petition for inter partes review (“IPR”) of U.S. Patent
`
`No. 8,504,746 (“Petition”) based on grounds identical to those presented in Canon
`
`Inc. et al. v. Papst Licensing GmbH & Co., KG, IPR2016-01211 (the “Canon
`
`IPR”). The Canon IPR was instituted on December 15, 2016. Canon IPR, Paper
`
`11 (Decision Granting Institution of Inter Partes Review) (Dec. 15, 2016), at 2, 21.
`
`Pursuant to 35 U.S.C. § 315(c), Huawei respectfully requests and moves that its
`
`Petition be instituted and joined with the Canon IPR, under the exact same trial
`
`schedule. The petitioners in the Canon IPR do not object to Huawei’s request for
`
`joinder.
`
`Huawei notes that LG Electronics, Inc. (“LG”) filed a similar petition and
`
`motion for joinder, with respect to the Canon IPR, on January 13, 2017. See
`
`IPR2017-00678, Papers 1 (petition) and 3 (motion). Huawei’s present motion for
`
`joinder should be granted for substantially the same reasons as LG’s motion, as set
`
`forth below.
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`Joinder is appropriate because: (a) Huawei’s Petition includes the same
`
`substance as the petition in the Canon IPR (“Canon Petition”); (b) joinder will have
`
`no impact on the existing schedule in the Canon IPR; and (c) joinder will promote
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`1
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`
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`the efficient resolution of issues, specifically whether U.S. Patent No. 8,504,746
`
`(“the ’746 patent”) is unpatentable over well-known prior art.
`
`Absent joinder, Huawei will be prejudiced. In view of the potential impact
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`on pending litigation against Huawei brought by Patent Owner relative to the ’746
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`patent and other related patents, Huawei has a significant interest in the underlying
`
`patentability determination at issue in the Canon IPR. Joinder would protect
`
`Huawei’s interests without affecting the scheduling or complexity of the pending
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`Canon IPR, and without prejudice to the petitioners in the Canon IPR (“Canon
`
`Petitioners”) or to Patent Owner. In light of the fact that Huawei’s Petition raises
`
`the same grounds of unpatentability over the same prior art, and that the Canon
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`Petitioners are willing to agree to Huawei’s joinder, joinder with the Canon IPR is
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`appropriate.
`
`Huawei’s present motion for joinder is timely under 37 C.F.R. § 42.22, 37
`
`C.F.R. § 42.122(b), and 37 C.F.R. § 1.7, because it is submitted effectively within
`
`one month of December 15, 2016, the date on which the Canon IPR was instituted.
`
`Canon IPR, Paper 11.1
`
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`1 January 15, 2017 was a Sunday. Given the intervening holiday of Martin Luther
`
`King, Jr. Day on January 16, this motion is being filed on the next succeeding
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`business day which is not a Saturday, Sunday, or a Federal holiday. See 37
`
`
`
`2
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`
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`II.
`
`BACKGROUND AND RELATED PROCEEDINGS
`
`On June 17, 2016, the Canon Petitioners filed a petition (the Canon Petition)
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`for inter partes review of the ’746 patent. On December 15, 2016, the Board
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`issued a decision instituting inter partes review of the ’746 patent based on the
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`Canon Petition. Canon IPR, Paper 11. Huawei’s Petition presents the same
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`grounds of unpatentability, the same prior art, and the same expert evidence as the
`
`Canon Petition.
`
`The Canon Petitioners are defendants in a multi-district litigation pending
`
`before the U.S. District Court for the District of Columbia2 in which Patent Owner
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`asserts infringement of the ’746 patent and related patents. The Canon Petitioners
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`have filed six (6) petitions for inter partes review of the ’746 patent. Three (3) of
`
`
`C.F.R. § 1.7(a); IPR2016-01665, Paper No. 8 (granting motion for joinder when
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`the petition and motion for joinder were filed on the next business day after the one
`
`month date).
`
`2 In re Papst Licensing Dig. Camera Pat. Litig., MDL 1880, No. 1-07-mc-00493
`
`(D.D.C. 2016).
`
`3
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`
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`those petitions have been granted at least in-part and proceedings have been
`
`instituted for the ’746 patent.3
`
`Petitioner Huawei is a defendant in a different litigation pending before the
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`U.S. District Court for the Eastern District of Texas.4 In that Texas litigation,
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`Patent Owner again asserts infringement of the ’746 patent and related patents.
`
`Huawei has filed four petitions for inter partes review of patents involved in that
`
`litigation.5
`
`III.
`
`STATEMENT OF REASONS FOR RELIEF REQUESTED
`
`Huawei respectfully requests that the Board exercise its discretion and grant
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`joinder of the instant petition with the Canon IPR pursuant to 35 U.S.C. § 315(c),
`
`37 C.F.R. § 42.22, and 37 C.F.R. § 42.122(b). In support of this Motion, Huawei
`
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`3 The instituted IPRs filed by the Canon Petitioners for the ’746 patent are
`
`IPR2016-01200, IPR2016-01211, and IPR2016-01213.
`
`4 Papst Licensing GmbH & Co. KG v. Huawei Technologies Co., Ltd. et al., No. 6-
`
`15-cv-1115 (E.D. Tex. 2015) (consolidated for discovery into Papst Licensing
`
`GmbH & Co. KG v. Apple Inc., No. 6-15-cv-1095 (E.D. Tex. 2015)).
`
`5 The IPR petitions filed by Huawei are IPR2017-00415, IPR2017-00443,
`
`IPR2017-00448, and IPR2017-00449.
`
`4
`
`
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`proposes consolidated filings and other procedural accommodations designed to
`
`streamline the proceedings, as described further below.
`
`A. Legal Standard
`The Leahy-Smith America Invents Act permits joinder of IPR proceedings.
`
`The statutory provision governing joinder of IPR proceedings is 35 U.S.C. §
`
`315(c):
`
`(c) JOINDER.—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.
`
`Motions for joinder should “(1) set forth the reasons why 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.” Dell, Inc. v. Network-1 Security Sols., Inc., IPR2013-00385,
`
`Paper 17, at 4 (July 29, 2013); Kyocera Corp. et al. v. Softview LLC, IPR2013-
`
`00004, Paper 15 (Apr. 24, 2013). As part of its discretion, the Board should
`
`consider the impact of substantive and procedural issues on the proceedings, as
`
`well as other considerations, while being “mindful that patent trial regulations,
`
`5
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`
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`including the rules for joinder, must be construed to secure the just, speedy, and
`
`inexpensive resolution of every proceeding.” Dell, Inc., IPR2013-00385, Paper 17,
`
`at 3. The Board may also consider “the policy preference for joining a party that
`
`does not present new issues that might complicate or delay an existing
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`proceeding.” Id. at 10. Under this framework, for the reasons set forth in the
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`petition and the present motion, joinder of the present instant petition with the
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`Canon IPR is appropriate.
`
`Joinder Is Appropriate
`
`B.
`Joinder is appropriate in this case because it is the most expedient way to
`
`secure the just, speedy, and inexpensive resolution of the two related proceedings.
`
`See 35 U.S.C. § 316(b); 37 C.F.R. § 42.1(b). The instant petition presents the same
`
`grounds of unpatentability, the same arguments, and the same evidence presented
`
`in the Canon Petition. Given the duplicative nature of these petitions and
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`Huawei’s significant interest in the underlying patentability determination at issue,
`
`joinder of the related proceedings is appropriate and conserves Board resources.
`
`Further, Huawei will agree to consolidated filings and discovery so that Huawei
`
`will be bound by the schedule set forth in the Canon IPR.
`
`The Board has found joinder is appropriate where (1) the joinder petition is
`
`identical to the instituted petition, (2) the party joining the proceeding agrees to
`
`consolidated filings and discovery, (3) joinder will not affect the schedule in the
`
`6
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`
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`pending IPR, and (4) joinder will streamline the proceedings and increase
`
`efficiency without prejudicing the parties. See, e.g., Sony Corp., et al. v. Memory
`
`Integrity, LLC, IPR2015-01353, Paper 11 (Oct. 15, 2015) (granting LG and Sony’s
`
`motion for joinder where joinder petition presented identical grounds and identical
`
`evidence to the already instituted petition and where Sony and Huawei agreed to
`
`“understudy” role with consolidated filings and discovery); Mylan Pharms. Inc. v.
`
`Novartis AG, et al., IPR2015- 00268, Paper 17 (Apr. 10, 2015) (granting motion
`
`for joinder of substantially identical petition where petitioner agreed to
`
`consolidated filings and discovery and relied on the same expert declarations);
`
`Motorola Mobility LLC v. Softview LLC, IPR2013-00256, Paper 10 (June 20,
`
`2013) (granting motion for joinder under similar circumstances). This Petition and
`
`Motion is no different.
`
`1. Huawei’s Petition is Substantively Identical to the Canon
`Petition.
`
`The instant petition contains the same substance presented in the petition in
`
`the Canon IPR. Huawei’s petition challenges the same patent claims, contains the
`
`same grounds of unpatentability, and is the same in all substantive aspects as the
`
`instituted Canon IPR.
`
`Huawei’s petition contains the same analysis and exhibits, and relies on the
`
`same expert opinion—that of Dr. Paul F. Reynolds. If joinder is granted, Huawei
`
`is prepared to rely solely on the testimony of Dr. Reynolds.
`
`7
`
`
`
`Because the Board has already instituted trial in the Canon IPR, the
`
`substantively identical instant petition and supporting exhibits will not require
`
`additional Board resources to determine that institution and joinder of the instant
`
`petition with the Canon IPR is appropriate. Indeed, in circumstances such as these,
`
`the PTO anticipated that joinder of proceedings would be granted as a matter of
`
`right. See 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 IPR 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.”).
`
`Joinder Will Not Impact the Canon IPR Trial Schedule.
`
`2.
`Joinder will not impact the Board’s ability to complete its review in a timely
`
`manner. 35 U.S.C. § 316(a)(11) and 37 C.F.R. § 42.100(c) provide that IPR
`
`proceedings should be completed and the Board’s final decision issued within one
`
`year of institution of the review. The same provisions provide the Board with
`
`flexibility to extend the one-year period by up to six months for good cause, or in
`
`the case of joinder. See 35 U.S.C. § 316(a)(11); 37 C.F.R. § 42.100(c). In this
`
`case, joinder should not affect the Board’s ability to issue its final determination
`
`within one year because Huawei does not raise any issues that are not already
`
`8
`
`
`
`before the Board and the Canon IPR was instituted only one month ago. See
`
`Canon IPR, Paper 11.
`
`Further, Huawei agrees that the Scheduling Order issued in the Canon IPR
`
`will apply to the joined proceeding. See Canon IPR, Paper 12 (Scheduling Order)
`
`(Dec. 15, 2016). The first deadline is the Initial Conference Call, which has not yet
`
`occurred and which deadline is “Upon Request” by the parties. Id. at 7. In the
`
`event that call occurs before Huawei is joined, Huawei agrees to be bound by any
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`agreements or commitments made by the Canon Petitioners on that call.
`
`The next deadline in the Canon IPR is Patent Owner’s response to the
`
`petition and any motion to amend the petition, which is currently set for March 15,
`
`2017―approximately two months from the date of this motion. Should the Board
`
`grant Huawei’s request for joinder, Patent Owner will have ample time to complete
`
`its submission by its deadline, particularly given that Patent Owner’s response
`
`would not require any analysis beyond that needed to respond to the Canon
`
`Petition. None of the other deadlines should need to be extended following joinder
`
`of Huawei’s petition to the Canon IPR. In sum, no aspect of the trial schedule for
`
`the Canon IPR would need to be impacted to effect joinder. Rather, a joint
`
`proceeding would allow the Board and parties to focus on the merits in one
`
`consolidated proceeding without unnecessary duplication of effort, and in a timely
`
`manner.
`
`9
`
`
`
`3. Huawei Agrees to Consolidated Filings and Discovery
`Because the grounds of unpatentability and the prior art relied on in the
`
`instant petition and the Canon Petition are the same, the case is amenable to
`
`consolidated filings and discovery, which will simplify the briefing and discovery
`
`process.
`
`Huawei agrees to consolidated filings for all substantive papers in the
`
`proceedings (e.g., Reply to the Patent Owner’s Response; Opposition to Motion to
`
`Amend; Motion for Observation on Cross Examination Testimony of a Reply
`
`Witness; Motion to Exclude Evidence; and Opposition to Motion to Exclude
`
`Evidence and Reply). Specifically, Huawei agrees to incorporate its filings with
`
`those of the Canon Petitioners into a consolidated filing in the Canon IPR, unless
`
`the filing involves an issue unique to Huawei or states a point of disagreement
`
`related to the consolidated filing. In such circumstances, Huawei proposes to make
`
`a separate filing of no more than five pages. See Sony Corp, IPR2015-01353,
`
`Paper 11, at 7-8 (allowing five pages, without prior authorization from the Board,
`
`for filings involving an issue unique to joinder petitioners or stating a point of
`
`disagreement related to the consolidated filing).
`
`Huawei further agrees to take a subordinate “understudy” role in discovery.
`
`Huawei agrees to work with the Canon Petitioners to manage any depositions
`
`within an ordinary time limit and to allow the Canon Petitioners to take the lead in
`
`10
`
`
`
`designating an attorney to conduct the cross-examination of any given witness
`
`produced by Patent Owners, and the redirect of any given witness produced by
`
`Huawei and the Canon Petitioners within the ordinary time limits normally allotted
`
`by the rules for one party. Huawei also agrees not to seek any discovery beyond
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`that sought by the Canon Petitioners. In short, as long as the Canon IPR remains
`
`pending following joinder, no additional discovery would be incurred due to the
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`joinder of Huawei. Huawei would only assume the primary role in discovery
`
`matters if the Canon Petitioners cease to participate in the IPR or agree to Huawei
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`assuming the primary role.
`
`IV. PROPOSED ORDER
`Huawei proposes a joinder order for consideration by the Board as follows:
`
`• The instant Petition will be instituted and joined with the Canon
`
`IPR; and
`
`• The scheduling order for the Canon IPR will apply to the joined
`
`proceeding.
`
`V.
`
`CONCLUSION
`
`For the foregoing reasons, Huawei respectfully requests that its petition be
`
`instituted and the proceeding joined with Canon Inc. et al. v. Papst Licensing
`
`GmbH & Co., KG, IPR2016-01211. Although no additional fee is believed to be
`
`required for this Motion, the Commissioner is hereby authorized to charge any
`
`11
`
`
`
`additional fees which may be required for this Motion to Deposit Acct. No. 50-
`
`0740.
`
`Dated: January 17, 2017
`
`Respectfully submitted,
`, f
`/”
`
`By: M44 d/wgfl/V
`
`David A. Garr
`
`Registration N0.: 74,932
`Gregory S. Discher
`Registration No. 42,488
`COVINGTON & BURLING LLP
`
`One CityCenter, 850 Tenth Street, NW
`Washington, DC 20001
`(202) 662-6000
`Attorneys for Huawei Device Co., Ltd.
`
`12
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Motion for
`
`Joinder was served on January 17, 2017 via FedEx, a means at least as fast and
`
`reliable as Priority Mail Express”, on the following correspondence address of
`
`record for patent owner:
`
`SCHMEISER, OLSEN & WATTS
`
`2500 Westchester Avenue, Suite 210
`
`Purchase, NY 10577
`
`A courtesy copy was provided to patent owner’s litigation counsel
`
`Christopher V. Goodpastor
`Andrew G. DiNovo
`
`DiNovo Price Eliwanger & l-Iardy LLP
`7000 North MoPac Expressway, Suite 350
`Austin, Texas 7873]
`
`Dated: January 17,2017
`
`By: zZ/V/Qt Z 2%
`
`David A. Garr
`
`Registration No.: 74,932
`Gregory S. Discher
`Registration No. 42,488
`COVINGTON & BURLING LLP
`
`One CityCenter, 850 Tenth Street, NW
`Washington, DC 20001
`(202) 662-6000
`Attorneys for Huawei Device Co., Ltd.
`
`
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