Paper No. 2
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ZTE CORPORATION, and ZTE (USA), Inc.,
`Petitioners,
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`v.
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`CELLULAR COMMUNICATIONS EQUIPMENT LLC,
`Patent Owner
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`Case IPR2017-_____
`Patent 8,457,676
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`MOTION FOR JOINDER TO RELATED INSTITUTED INTER PARTES
`REVIEW UNDER 35 U.S.C. 315(c), 37 C.F.R. §§ 42.22 AND 42.122(b)
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`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`ZTE CORPORATION, and ZTE (USA), Inc.,
`Petitioners,
`
`v.
`
`CELLULAR COMMUNICATIONS EQUIPMENT LLC,
`Patent Owner
`
`
`
`
`
`
`
`Case IPR2017-_____
`Patent 8,457,676
`
`MOTION FOR JOINDER TO RELATED INSTITUTED INTER PARTES
`REVIEW UNDER 35 U.S.C. 315(c), 37 C.F.R. §§ 42.22 AND 42.122(b)
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`TABLE OF CONTENTS
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`Paper No. 2
`Date: March 13, 2017
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`I.
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`II.
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`STATEMENT OF RELIEF REQUESTED .................................................... 1
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`BACKGROUND AND RELATED PROCEEDINGS ................................... 2
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`III.
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`STATEMENT OF MATERIAL FACTS ........................................................ 2
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`IV. LEGAL STANDARDS AND APPLICABLE RULES .................................. 4
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`A.
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`Legal Standard ............................................................................................ 4
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`V. ARGUMENT ................................................................................................... 5
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`A.
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`B.
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`Joinder of the instant proceeding with the HTC IPR is appropriate .......... 5
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`Joinder should be granted as a matter of right because the present
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`petition contains identical grounds to the sole ground instituted by
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`the Board ..................................................................................................... 7
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`C.
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`The trial schedule will complete within one year, and be only
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`minimally impacted .................................................................................... 7
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`D.
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`Proposed procedural safeguards ................................................................. 8
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`VI. CONCLUSION ................................................................................................ 9
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`Paper No. 2
`Date: March 13, 2017
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`I.
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`STATEMENT OF RELIEF REQUESTED
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`ZTE Corporation and ZTE (USA), Inc. (collectively “Petitioner”) submits
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`concurrently herewith a petition for inter partes review (IPR) of U.S. Patent No.
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`8,457,676 (“the ’676 Patent”) and respectfully requests that its petition be granted.
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`Petitioner also respectfully moves that this proceeding be joined pursuant to 35
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`U.S.C. § 315(c), 37 C.F.R. §§ 42.22 and 42.122(b) with the pending IPR
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`concerning the same patent in HTC Corporation and HTC America, Inc. v. Cellular
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`Communications Equipment LLC, Case IPR2016-01501 (the “HTC IPR”).
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`Petitioner’s petition for inter partes review is substantively identical to the HTC
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`IPR petition, only differing in that it omits the proposed rejections by HTC that
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`were not instituted by the PTAB.
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`The Motion for Joinder is timely under 37 C.F.R. §§ 42.22 and 42.122(b),
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`because it is submitted within one month of February 13, 2017, the institution date
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`of the HTC IPR. In accordance with the Board’s Representative Order identifying
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`matters to be addressed in a motion for joinder (Kyocera Corp. v. SoftView LLC,
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`Paper No. 15, IPR2013-00004, April 24, 2013), Petitioner submits that: (1) joinder
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`is appropriate because it will promote efficient determination of the validity of the
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`’676 Patent without prejudice to HTC Corporation, HTC America, Inc. or Cellular
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`Communications Equipment, LLC; (2) the Petition includes grounds that are
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`substantively identical to the ground instituted in the HTC IPR; (3) joinder would
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`1
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`Paper No. 2
`Date: March 13, 2017
`not affect the pending schedule in the HTC IPR or increase the complexity of that
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`proceeding, thereby minimizing costs; and (4) Petitioner is willing to agree to
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`consolidated filing with HTC to minimize burden and schedule impact.
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`II. BACKGROUND AND RELATED PROCEEDINGS
`Cellular Communications Equipment, LLC (“CCE”) is the owner of the ’676
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`Patent. Starting in 2015, CCE filed four suits in district court, including suits
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`against HTC Corporation, HTC America, Inc., ZTE Corporation, and ZTE (USA),
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`Inc., alleging infringement of the ’676 Patent by cellular phones.
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`The ’676 Patent is also the subject of several IPRs: IPR2016-01501
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`(instituted) and IPR2016-01493 (instituted). The HTC petition for inter partes
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`review was filed on July 27, 2016 and trial was instituted on February 13, 2017
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`(Paper No. 7, IPR 2016-01501) on one ground set forth in HTC’s petition. The
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`Board set May 15, 2017 as the date for CCE’s response to the petition, and oral
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`argument is currently set for November 8, 2017. See Paper No. 8, IPR2016-01501.
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`III. STATEMENT OF MATERIAL FACTS
`1.
`CCE is the owner of the ’676 Patent.
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`2.
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`On April 30, 2015, CCE filed a complaint against Petitioners for
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`infringement of the ’676 Patent; this litigation was dismissed on February 27,
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`2017. On January 25, 2017, CCE filed a second complaint against Petitioners for
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`infringement of the ’676 Patent (the “District Court Litigation”).
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`2
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`Paper No. 2
`Date: March 13, 2017
`On July 27, 2016, HTC Corporation and HTC America, Inc. filed
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`3.
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`their petition for inter partes review of claims 1, 3, 19, 21, 33, and 34 of the ’676
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`Patent.
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`4.
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`On February 13, 2017, a decision instituting inter partes review of
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`claims 1, 19, and 33 (but not claims 3, 21, or 34) was entered in the HTC IPR
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`(Paper No. 7, IPR2016-01501) on the grounds that claims 1, 19, and 33 were
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`unpatentable over U.S. Patent Application Publication No. 2006/0140154 to Kwak
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`(“Kwak”) under 35 U.S.C. § 103(a) and denying instituted of the other proposed
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`grounds for rejection.
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`5.
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`Oral argument is presently set for November 8, 2017. See Paper No.
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`8, IPR2016-01501.
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`6.
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`Petitioners are filing a petition for inter partes review of claims 1, 19,
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`and 33 of the ’676 Patent with this Motion for Joinder.
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`7.
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`The Petition includes a ground that is substantively the same as the
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`sole ground instituted in the HTC IPR. The Petition and supporting evidence here
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`is identical in all material respects to the petition and supporting evidence that was
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`filed in the HTC IPR. The only changes to the petition are to remove grounds not
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`instituted by the PTAB in the HTC IPR.
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`8.
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`The five exhibits supporting the present petition, Exhibits 1001 to
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`1005, are identical to exhibits 1001 through 1005 that were filed in support of the
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`3
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`Paper No. 2
`Date: March 13, 2017
`HTC IPR. Exhibits 1006 and 1007 from the HTC IPR were omitted because they
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`relate to grounds not instituted.
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`IV. LEGAL STANDARDS AND APPLICABLE RULES
`A. Legal Standard
`The Leahy-Smith America Invents Act (AIA) permits joinder of inter partes
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`review proceedings. The statutory provision governing joinder of inter partes
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`review proceedings is 35 U.S.C. § 315(c), which reads as follows:
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`(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.
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`Normally, a petitioner is barred from filing a petition for inter partes review
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`of a patent more than one year after the petitioner (or the petitioner’s real party-in-
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`interest or privy) is served with a complaint alleging infringement of the patent. .
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`See 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b). This bar does not apply to a
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`request for joinder. See 35 U.S.C. § 315(b)(final sentence); 37 C.F.R. § 42.122(b).
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`The Board has discretion to grant joinder, and considers the impact of
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`substantive and procedural issues on the proceedings, and other relevant
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`considerations, while being “mindful that patent trial regulations, including the
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`rules for joinder, must be construed to secure the just, speedy, and inexpensive
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`resolution of every proceeding.” See Dell, Inc. v. Network-1 Security Solutions,
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`4
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`Paper No. 2
`Date: March 13, 2017
`Inc., Case IPR2013-00385, Paper No. 17 (July 29, 2013) (“Dell Joinder Order”) at
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`3. There is a “policy preference for joining a party that does not present new issues
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`that might complicate or delay an existing proceeding.” Id. at 10. Joinder of the
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`present case with the HTC IPR is appropriate under this framework.
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`The Dell Joinder Order states that “[a] motion for joinder should: (1) set
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`forth the reasons why joinder is appropriate; (2) identify any new grounds of
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`unpatentability asserted in the petition; (3) explain what impact (if any) joinder
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`would have on the trial schedule for the existing review; and (4) address
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`specifically how briefing and discovery may be simplified.” Id. at 4. These issues
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`lean in favor of granting joinder, and are addressed in turn below.
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`V. ARGUMENT
`A.
`Joinder of the instant proceeding with the HTC IPR is
`appropriate
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`Joinder of the present case with the HTC IPR is appropriate. The motion for
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`joinder is timely, the present petition raises no new issues, efficient and consistent
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`results are promoted by joinder, and none of the parties to the HTC IPR will be
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`prejudiced by joinder.
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`This motion is filed within one month of HTC IPR’s institution on February
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`13, 2017. See 37 C.F.R. § 42.122(b). The present petition is substantively
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`identical to the HTC IPR petition, except that non-instituted grounds have been
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`removed from the present petition. The same unpatentability ground instituted by
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`Paper No. 2
`Date: March 13, 2017
`the Board in the HTC IPR is presented in the instant petition, based on exactly the
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`same element-by-element analysis set forth in the HTC IPR petition. The present
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`petition relies on the same claim construction found by the Board in its institution
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`decision, and relies upon the same evidence presented in the HTC IPR.
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`The HTC IPR proceeding might not reach a final written decision if HTC
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`settles its case. If HTC settles its case, petitioners would be forced to litigate the
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`’676 patent’s validity in the district court proceeding under the burden of clear and
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`convincing evidence, which is a more demanding burden than applied in inter
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`partes review proceedings. Any delay resulting from litigating the ’676 patent’s
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`validity in district court will enable Patent Owner to continue enforcing an invalid
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`patent before thorough review by the Board, thereby prejudicing petitioners and
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`the smartphone industry generally.
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`Joinder will not, however, prejudice either HTC or Patent Owner. The
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`instant petition presents a single ground of rejection identical to the sole ground
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`upon which trial was instituted in the HTC IPR. Joinder will therefore not affect
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`the timing of the HTC IPR. If a minimal extension to the schedule is required,
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`such an extension is permitted by law and the applicable rules. See 35 U.S.C. §
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`316(a)(11); 37 C.F.R. § 42.100(c). Joinder therefore serves the interests of all
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`parties and the Board.
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`6
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`B.
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`Paper No. 2
`Date: March 13, 2017
`Joinder should be granted as a matter of right because the present
`petition contains identical grounds to the sole ground instituted by
`the Board
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`Legislative discussion shows that two proceedings with identical petitions,
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`as in the present case, should be joined as a matter of right. See 157 CONG. REC.
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`S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (“The Office anticipates
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`that joinder will be allowed as of right – if an inter partes review is instituted on the
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`basis of a petition, for example, a party that files an identical petition will be joined
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`to that proceeding, and thus allowed to file its own briefs and make its own
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`arguments.”). This reason, on its own, is sufficient to grant joinder.
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`Nor can any arguments specific to petitioners that the Patent Owner might
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`raise override the clear public policy and legislative intent favoring the joinder of
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`identical petitions. The normal briefing and trial schedule can also accommodate
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`any defense the Patent Owner might theoretically raise that is unique to petitioners.
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`Therefore such theoretical defenses would have no impact on the HTC IPR.
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`C. The trial schedule will complete within one year, and be only
`minimally impacted
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`Joining the present petition to the HTC IPR will not affect the Board’s
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`ability to complete its review in a timely matter. 35 U.S.C. § 316(a)(11) and rule
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`37 C.F.R. § 42.100(c) specify that the Board’s final decision should be rendered
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`within one year of institution. The present petition contains the identical ground
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`instituted in the HTC IPR, and petitioner agrees to procedural safeguards (see
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`7
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`Paper No. 2
`Date: March 13, 2017
`below) to ensure speedy resolution. Thus joinder will not affect the Board’s ability
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`to issue its decision within this required one-year timeframe.
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`Proposed procedural safeguards
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`D.
`Petitioners propose procedural safeguards that will ensure a speedy and
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`simplified trial. These safeguards minimize any impact on the trial schedule and
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`the volume of materials submitted to the Board. The proposed procedural
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`safeguards are similar to those adopted in the Dell Joinder Order:
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`1) HTC and petitioners will file papers as consolidated filings, except for
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`motions that do not involve the other party. HTC will prepare the consolidated
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`filings.
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`2) Petitioners may file an additional paper not to exceed seven pages, which
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`may address only points of disagreement with the consolidated filing. The Patent
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`Owner may respond to any such paper, but may not exceed the number of pages in
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`petitioners’ filing and is limited to issues raised in such filing.
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`3) HTC may question witnesses in depositions before petitioners.
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`4) HTC may present argument before petitioners at any oral argument.
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`See Dell Joinder Order, at 11-12.
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`Petitioners will rely on HTC’s expert and will offer no additional expert
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`testimony. The proposed safeguards minimize any possible complications or
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`Paper No. 2
`Date: March 13, 2017
`delays and will result in a speedy trial with minimal impact on the HTC IPR parties
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`or the Board.
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`VI. CONCLUSION
`For the reasons set forth above, petitioners respectfully request that the
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`present Petition for Inter Partes Review of U.S. Patent No. 8,457,676 be instituted
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`and joinder with HTC Corporation and HTC America, Inc. v. Cellular
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`Communications Equipment LLC, Case IPR2016-01501.
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`Dated: March 13, 2017
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`Respectfully submitted,
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`/ Steven A. Moore /
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`Steven A. Moore (Reg. No. 55,462)
`Email: steve.moore@pillsburylaw.com
`PILLSBURY WINTHROP SHAW
`PITTMAN LLP
`501 W. Broadway, Suite 1100
`San Diego, Ca 92101
`Telephone: 619.544.3112
`Facsimile: 619.236.1995
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`Paper No. 2
`Date: March 13, 2017
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that, in accordance with 37 C.F.R. § 42.6(e) and
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`37 C.F.R. § 42.105, service was made on Patent Owner as detailed below.
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`Date of service March 13, 2017
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`Manner of service UNITED STATES POSTAL SERVICE EXPRESS MAIL
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`Documents served Petitioner’s Motion for Joinder to Related Instituted
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`Inter Partes Review (37 C.F.R. § 42.122(b))
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`of U.S. Patent No. 8,457,676
`Persons served PROCOPIO, CORY, HARGREAVES & SAVITCH LLP
`525 B STREET
`SUITE 2200
`SAN DIEGO, CA 92101
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`BRAGALONE CONROY PC
`2200 Ross Ave., Suite 4500W
`Dallas, TX 75201
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`/ Steven A. Moore /
`
`Steven A. Moore (Reg. No. 55,462)
`Email: steve.moore@pillsburylaw.com
`PILLSBURY WINTHROP SHAW
`PITTMAN LLP
`501 W. Broadway, Suite 1100
`San Diego, Ca 92101
`Telephone: 619.544.3112
`Facsimile: 619.236.1995
`Counsel for Petitioners
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