Paper No. 8
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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 IPR2017-01079
`Patent 8,457,676
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`PETITIONER’S REPLY TO PATENT OWNER’S OPPOSITION TO
`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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`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`ZTE CORPORATION, and ZTE (USA), Inc.,
`Petitioners,
`
`v.
`
`CELLULAR COMMUNICATIONS EQUIPMENT LLC,
`Patent Owner
`
`
`
`
`
`
`
`Case IPR2017-01079
`Patent 8,457,676
`
`PETITIONER’S REPLY TO PATENT OWNER’S OPPOSITION TO
`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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`I.
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`Prior authorization for the motion for joinder was not required
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`Patent Owner first argues that the motion for joinder should be denied
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`because prior authorization was required. Paper 7 at 5-6. This is incorrect. “No
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`prior authorization is required for filing the motion for joinder with the petition.”
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`Frequently Asked Question H5, https://www.uspto.gov/patents-application-
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`process/patent-trial-and-appeal-board/ptab-e2e-frequently-asked-questions (last
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`visited May 12, 2017). The Trial Practice Guide agrees: no authorization is
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`required for motions filed with a petition. Trial Practice Guide, 77 Fed. Reg. 157
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`at 48762 (exceptions to the requirement for prior authorization include “motions
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`where it is impractical to seek prior Board authorization” such as “motions filed
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`with a petition.”). The motion for joinder was filed with the petition in this case.
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`Therefore no prior authorization was required.
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`II. The Board has correctly interpreted 35 U.S.C. § 315(b) and (c)
`Patent Owner’s only other argument against joinder is to dispute the Board’s
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`well-settled interpretation of 35 U.S.C. § 315(b) and (c) and the related regulations.
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`Specifically, Patent Owner contends that the one-year time bar applies to petitions
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`filed with requests for joinder despite the plain language in § 315(b) stating that it
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`does not. Paper 7 at 6-11. Patent Owner is incorrect.
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`1
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`Section 315(b) bars intuition on a petition filed more than one year after the
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`petition was served with a complaint, but it expressly states that the one-year bard
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`does not apply to one involving a request for joinder:
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`(b) Patent Owner's Action.—An inter partes review may not be
`instituted if the petition requesting the proceeding is filed more than 1
`year after the date on which the petitioner, real party in interest, or
`privy of the petitioner is served with a complaint alleging
`infringement of the patent. The time limitation set forth in the
`preceding sentence shall not apply to a request for joinder under
`subsection (c).
`35 U.S.C. § 315(b) (emphasis added). The final sentence is directly linked to the
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`first sentence by the words “the preceding sentence.” The only “time limitation”
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`set forth in the first sentence relates to the filing of a petition for inter partes
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`review. That is consistent with § 315(c), which states that a party requesting
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`joinder does so by filing a petition. Id.at § 315(c) ("Joinder. – [T]he director . . .
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`may join as a party to the inter partes review any person who properly files a
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`petition . . . ."). Thus, the “time limitation set forth in the preceding sentence” that
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`“does not apply to a request for joinder” is the time limit to file a petition for inter
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`partes review accompanied with a request to join an instituted proceeding.
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`The Board has affirmed that interpretation on many occasions. IPR2016-
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`00062, Paper 14 at 3-4; IPR2015-00825, Paper 20 at 10-12; IPR2014-00557, Paper
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`10 at 14-15; Target Corporation v. Destination Maternity Corporation, IPR2014-
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`2
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`00508, Paper 28 at 15; IPR2013-00386, Paper 16 at 4-6; IPR2013-00385, Paper 17
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`at 4-6; IPR2013-00256, Paper 10 at 3-4; IPR2013-00250, Paper 24 at 3 (listed on
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`PTAB e2e as Paper 25); IPR2013-00109, Paper 15 at 3-4. Indeed, as patent owner
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`acknowledges, this interpretation of 35 U.S.C. § 315(b) is inherent in the Board’s
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`rules for conduct of inter partes review, which state that:
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`(b) Request for joinder. Joinder may be requested by a patent owner
`or petitioner. Any request for joinder must be filed, as a motion under
`§42.22, no later than one month after the institution date of any inter
`partes review for which joinder is requested. The time period set
`forth in §42.101(b) shall not apply when the petition is
`accompanied by a request for joinder.
`37 C.F.R. §42.122(b) (emphasis added); see also Paper 7 at 9-10, fn 1
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`(acknowledging that the Board’s regulations expressly contradict Patent Owner’s
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`position).
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`Patent Owner’s interpretation is also incorrect because it would render the
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`statute incomplete and illogical. Patent Owner apparently contends that "request
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`for joinder" in § 315(b) refers only to a joinder motion, not the accompanying
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`petition, and thus the time-bar exception applies only to the motion. Yet § 315
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`makes no mention of a joinder motion, let alone a time limitation on filing such a
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`motion. In contrast, it does state that joinder is achieved by filing a petition, see §
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`315(c), and it expressly provides a time limitation on filing a petition, see § 315(b).
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`3
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`The only logical reading of "request for joinder" that gives meaning to that
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`provision is therefore one that refers to the petition itself.
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`Patent Owner also wrongly argues that because § 315(c) requires that the
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`joinder petition be “properly file[d] under section 311,” and because § 311 states
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`that petitions must be filed "[s]ubject to the provisions of this chapter," the joinder
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`petition must meet § 315(b)’s time bar for the petition to be properly filed as
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`required by § 315(c). Paper 7 at 8-9. The Board has considered, and rejected, that
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`argument. E.g., IPR2013-00385, Paper 17 at 5-6 (rejecting the argument that
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`“properly fil[ing] a petition under section 311” requires “filing a petition within
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`one year as required by Section 315(b)”). Indeed, Patent Owner’s argument is
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`circular and effectively reads-out the express exception in the second sentence of §
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`315(b). U.S. v. Atlantic Research Corporation, 551 U.S. 128, 137 (2007) (“We
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`must have regard to all the words used by Congress, and as far as possible give
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`effect to them.”). Thus, a joinder petition—that is, a petition filed as a request for
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`joinder—is not subject to the time-bar in § 315(b), and it is "properly filed" if it
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`meets the requirements enumerated in § 311.
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`Finally, despite Patent Owner's argument, see Paper 7 at 9, the timing of
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`when the Director may join a party to an instituted proceeding does not dictate or
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`support Patent Owner's tortured interpretation. The provisions of § 315(c) merely
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`require that for a joinder petition, like any other petition, the Director may only
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`4
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`institute a proceeding after considering a petition filed under § 311, considering a
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`preliminary response (if any) filed under § 313, and determining that a reasonable
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`likelihood exists that the petitioner will prevail with respect to at least 1 of the
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`challenged claims. See 35 U.S.C. § 315(c). Patent Owner's contention that the
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`Director has "no authority" to institute a joinder petition filed more than one year
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`after service is premised on the same incorrect argument discussed above, i.e., that
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`the second sentence of § 315(b) does not apply. See Paper 7 at 9 (citing § 315(b) to
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`contend that "[p]rior to joinder, the Director would have no authority . . ."). Thus,
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`Patent Owner's argument fails for the same reasons.
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`Dated: May 12, 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)
`PILLSBURY WINTHROP SHAW
`PITTMAN LLP
`501 W. Broadway, Suite 1100
`San Diego, Ca 92101
`Telephone: 619.544.3112
`Facsimile: 619.236.1995
`Email: steve.moore@pillsburylaw.com
`
`Brian Nash (Reg. No. 58,105)
`PILLSBURY WINTHROP SHAW
`PITTMAN LLP
`401 Congress Avenue, Suite 1700
`Austin, TX 78701
`Telephone: 512.580.9629
`Facsimile: 512.580.9601
`Email: brian.nash@pillsburylaw.com
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`5
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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 May 12, 2017
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`Manner of service Electronic Mail
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`Documents served PETITIONER’S REPLY TO PATENT OWNER’S
`OPPOSITION TO 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)
`
`Persons served Terry A. Saad (tsaad@bcpc-law.com)
`Jeffrey R. Bragalone (jbragalone@bcpc-law.com)
`Daniel F. Olejko (dolejko@bcpc-law.com)
`Nicholas C. Kliewer (nkliewer@bcpc-law.com)
`BCPCserv@bcpc-law.com
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`
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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
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`6
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