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`______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________________
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`APPLE INC., MICROSOFT CORPORATION, MICROSOFT MOBILE OY,
`AND MICROSOFT MOBILE INC. (f/k/a NOKIA INC.)
`Petitioner
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`v.
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`EVOLVED WIRELESS LLC,
`Patent Owner
`______________________
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`Case IPR2017-00927
`Patent 8,218,481
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`______________________
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`PETITIONER’S MOTION FOR JOINDER
`UNDER 35 U.S.C. § 315(c) AND 27 C.F.R. § 42.122(b), AND
`REQUEST FOR SHORTENED RESPONSE TIME FOR
`PATENT OWNER’S PRELIMINARY RESPONSE
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`Attorney Docket No. 00035-0010IP3
`IPR of U.S. Patent No. 8,218,481
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`RELIEF REQUESTED
`I.
`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Apple, Inc.,
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`Microsoft Corporation, Microsoft Mobile Oy, and Microsoft Mobile Inc. (f/k/a
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`Nokia Inc.), Inc. (“Petitioner”) hereby moves for joinder of any proceeding
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`resulting from its new Petition for Inter Partes Review (“IPR”) of United States
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`Patent No. 8,218,481 (“the ’481 patent”) — filed concurrently with this Motion—
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`with the recently instituted IPR for the ’481 patent, IPR2016-01342, naming ZTE
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`(USA) Inc., Samsung Electronics Co., Ltd., and Samsung Electronics America,
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`Inc. (hereinafter collectively “ZTE and Samsung”) as petitioner.
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`In conjunction with this request for joinder, Petitioner respectfully requests
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`that the Board specify a shortened response period in which Patent Owner Evolved
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`Wireless, LLC (“Patent Owner”) may file a Preliminary Response to this new
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`Petition. The new Petition includes only the grounds filed in IPR2016-01342 and
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`is substantively identical on those grounds.1 Given the identity of issues presented
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`by this new Petition and those raised by ZTE and Samsung in the prior co-pending
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`1 The petitions, of course, are not wholly identical. The present Petition has been
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`updated to account for the formalities of a different Petitioner and real parties in
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`interest, the related matters have been updated, and there are nominal clerical
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`changes.
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`1
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`Attorney Docket No. 00035-0010IP3
`IPR of U.S. Patent No. 8,218,481
`proceeding, the proposal for a shortened response period does not impose an undue
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`burden on Patent Owner. Moreover, in establishing a shortened deadline, the
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`Board will provide itself with more time before the institution decision is due to
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`consider any additional information furnished by Patent Owner in its Preliminary
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`Responses to the new Petition, if any is raised.
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`Even if the Board declines to establish the proposed shortened response
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`deadline for the Preliminary Response, Petitioner nevertheless maintains its motion
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`for joinder.
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`II.
`1.
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`STATEMENT OF MATERIAL FACTS
`On July 5, 2016, ZTE and Samsung filed a Petition for Inter Partes
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`Review of US Patent No. 8,218,481, challenging claims 1-4, 6, 8-11 and 13 under
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`§102(a), §102(b), and §103(a), which was designated IPR2016-01342. On October
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`24, 2016, Patent Owner filed its preliminary response in IPR2016-01342. On
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`January 20, 2017, the Board issued an institution decision and scheduling order in
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`IPR2016-01342.
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`2.
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`On February 21, 2017, Petitioner filed this Petition for Inter Partes
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`Review (“IPR”) of US Patent No. 8,218,481, challenging claims 1-4, 6, 8-11 and
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`13 under §102(a), §102 (b) and §103(a).
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`3.
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`This new Petition for IPR challenges the same claims of the ’481
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`patent using the same grounds as ZTE and Samsung’s previous Petition for IPR of
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`2
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`Attorney Docket No. 00035-0010IP3
`IPR of U.S. Patent No. 8,218,481
`the ’481 patent (i.e., IPR2016-01342). Moreover, as noted above, this new Petition
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`is substantively identical as to those grounds, and presents no new issues.
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`III. DISCUSSION
`The requested joinder will serve to secure the just, speedy, and inexpensive
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`resolution of these proceedings. Under 35 U.S.C. § 315(c):
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`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.
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`In addition, 37 C.F.R. § 42.122(b) provides that “[j]oinder may be requested
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`by a patent owner or petitioner. Any request for joinder must be filed, as a motion
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`under § 42.22, no later than one month after the institution date of any inter partes
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`review for which joinder is requested.”
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`This Motion is timely under 37 C.F.R. §§ 1.7 and 42.122(b) because ZTE
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`and Samsung’s Petition for IPR was instituted on January 20, 2017, and February
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`20, 2017 was a Federal holiday. Moreover, at the time of this filing, IPR2016-
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`01342 is pending.
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`The Board has further provided that a motion for joinder should: (1) set forth
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`the reasons why joinder is appropriate; (2) identify any new grounds of
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`3
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`Attorney Docket No. 00035-0010IP3
`IPR of U.S. Patent No. 8,218,481
`unpatentability asserted in the petition; (3) explain what impact (if any) joinder
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`would have on the trial schedule of the existing proceeding; and (4) address
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`specifically how briefing and discovery may be simplified. See, e.g., Kyocera
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`Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (Apr. 24, 2013). Analysis of
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`these factors here warrants the Board’s use of its discretion to grant the requested
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`joinder.
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`A.
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`Joinder is Appropriate Because Both Proceedings Involve the Same
`Prior Art, the Same Claims, and the Same Grounds of Unpatentability
`– No New Grounds Are Presented
`The challenged claims and grounds of Petitioner’s petition are substantively
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`identical to claims and grounds presented in the petition filed by ZTE and Samsung
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`(IPR2016-01342). The same prior art, and even the same expert and expert
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`declaration, are used in both proceedings. Petitioner proposes no new grounds of
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`unpatentability. This strongly supports application of joinder.
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`Moreover, if joined, Petitioner agrees to take an “understudy” role as
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`petitioners in other similarly joined proceedings have taken. See IPR2015-01353,
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`Decision, paper 11 at 6 (October 5, 2015) (granting institution and joinder where
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`petitioner requested an “understudy role”); see also, IPR2014-00550, paper 38 at 5
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`(April 10, 2015).
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`Accordingly, for at least the reasons outlined in this motion, any proceeding
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`resulting from Petitioner’s new IPR petition should appropriately be joined to the
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`4
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`Attorney Docket No. 00035-0010IP3
`IPR of U.S. Patent No. 8,218,481
`proceeding resulting from ZTE and Samsung’s instituted petition for IPR of the
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`’481 patent (i.e., IPR2016-01342).
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`B.
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`Given Its Early Stage, Joinder Should Not Have Any Impact on the
`Trial Schedule of the Existing Proceeding
`ZTE and Samsung’s previous IPR petition of the ’481 patent was just
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`instituted on January 20, 2017. Petitioner hereby expressly consents to the existing
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`trial schedule in IPR2016-01342.
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`Further, since the grounds and prior art are identical to those instituted in
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`IPR2016-01342, there are no new issues for Patent Owner to address. Thus, by
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`shortening the period of Patent Owner’s Preliminary Response in this proceeding,
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`the Board need not alter the schedule already set in the instituted proceeding (i.e.,
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`IPR2016-01342). In other words, the proposed joinder will not have any dilatory
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`impact on the schedule of the instituted proceeding.
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`Moreover, as noted previously, Patent Owner will already be required to
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`address the same grounds of unpatentability in both IPR petitions. In the ZTE and
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`Samsung IPR petition, Patent Owner’s Response to the Petition (Due Date 1) is
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`currently March 23, 2017. See IPR2016-01342, Paper 12, p. 6. Accordingly,
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`Patent Owner will experience little, if any, prejudice as a result of the accelerated
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`due date of its Preliminary Response to Petitioner’s new Petition, because Patent
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`5
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`Attorney Docket No. 00035-0010IP3
`IPR of U.S. Patent No. 8,218,481
`Owner will have been considering and preparing a response to the same grounds
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`with regard to the challenged claims for over two months.
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`C.
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`Joinder Will Simplify Briefing and Discovery
`Joining the two IPR petitions will simplify discovery. Both IPR petitions
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`share a common expert (Dr. Paul S. Min)2. Accordingly, joining Petitioner’s new
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`IPR petition of the ’481 patent to ZTE and Samsung’s IPR petition will allow for
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`common discovery with regard to Dr. Min (e.g., a common date for depositions).
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`Also as noted above, if joined, Petitioner agrees to take an “understudy” role
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`as petitioners in other, similarly joined proceedings have taken. In other words, so
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`long as ZTE and Samsung maintain their IPR, all filings by Petitioner in the joined
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`proceeding will be consolidated with the filings of ZTE and Samsung, unless a
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`filing solely concerns issues that do not involve ZTE or Samsung; Petitioner will
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`not introduce any argument or discovery not introduced by ZTE and Samsung; and
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`Petitioner assents to ZTE and Samsung leading any depositions associated with the
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`joined proceeding. Thus, if joined, there will be only one set of briefing on the
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`2 Notably, Petitioner is simply refiling the declaration prepared and originally filed
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`by ZTE and Samsung in IPR2016-01342. At this time, Petitioner has not
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`separately engaged Dr. Min with respect to this IPR.
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`6
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`Attorney Docket No. 00035-0010IP3
`IPR of U.S. Patent No. 8,218,481
`issues, rather than briefing from both ZTE and Samsung and Petitioner. Petitioner
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`will assume the primary role only if ZTE and Samsung cease to participate.
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`IV. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests that the Board
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`grant joinder of the trial resulting from institution of the new Petition filed
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`concurrently with this Motion, with the trial resulting from institution of ZTE and
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`Samsung’s previously filed Petition for Inter Partes Review of the ’481 patent
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`(i.e., IPR2016-01342). In addition, Petitioner respectfully requests a shortened
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`period of one month (i.e., March 21, 2017) for a Patent Owner Preliminary
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`Respectfully submitted,
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`/ Roberto J. Devoto /
`W. Karl Renner, Reg. No. 41,265
`Roberto J. Devoto, Reg. No. 55,108
`Fish & Richardson P.C.
`P.O. Box 1022
`Minneapolis, MN 55440-1022
`T: 202-626-6447
`F: 202-783-2331
`Attorney for Petitioner
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`7
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`Response.
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`Date:2-21-17
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`Attorney Docket No. 00035-0010IP3
`IPR of U.S. Patent No. 8,218,481
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4)(i) et seq. and 42.105(b), the undersigned
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`certifies that on February 21, 2017, a complete and entire copy of this Motion for
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`Joinder was provided via Federal Express, to the Patent Owner by serving the
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`correspondence address of record as follows:
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`Jason H. Vick
`Sheridan Ross, PC
`1560 Broadway, Suite # 1200
`Denver CO 80202
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`/Jessica K. Detko/
`Jessica K. Detko
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(612) 337-2516
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