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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`HTC CORPORATION, HTC AMERICA, Inc.,
`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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`
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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
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`HTC CORPORATION, HTC AMERICA, Inc.,
`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 ................................................................................................... 6
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`A.
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`B.
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`Joinder of this case to the Apple IPR is appropriate .................................. 6
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`Joinder should be granted because the present Petition contains
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`identical grounds to those presented by Apple and instituted by the
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`Board .......................................................................................................... 7
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`C.
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`Trial will complete within one year, with minimal impact at most
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`on the present schedule ............................................................................... 8
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`D.
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`Proposed procedural safeguards to simplify discovery and briefing ......... 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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`HTC Corporation, HTC America, Inc., ZTE Corporation, and ZTE (USA),
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`Inc. (collectively “Petitioner”) respectfully submit this motion for joinder, together
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`with a petition for inter partes review (IPR) of U.S. Patent No. 8,457,676 (“the
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`’676 Patent”) and respectfully requests that its petition be granted. Petitioner also
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`respectfully moves that this proceeding be joined pursuant to 35 U.S.C. § 315(c),
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`37 C.F.R. §§ 42.22 and 42.122(b) with the pending IPR concerning the same
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`patent in Apple Inc. v. Cellular Communications Equipment LLC, Case IPR2016-
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`01493 (the “Apple IPR”), which was instituted on February 13, 2017. Petitioner’s
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`petition for inter partes review is substantively identical to the Apple IPR petition.
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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 Apple IPR. Petitioner submits that, in accordance with the Board’s
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`Representative Order identifying matters to be addressed in a motion for joinder
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`(Kyocera Corp. v. SoftView LLC, Paper No. 15, IPR2013-00004, April 24, 2013):
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`(1) joinder is appropriate because it will promote efficient determination of the
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`validity of the ’676 Patent without prejudice to Apple, 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 Apple IPR; (3) joinder would
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`not affect the pending schedule in the Apple IPR or increase the complexity of that
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`1
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`Paper No. 2
`Date: March 13, 2017
`proceeding, minimizing costs; and (4) Petitioner is willing to agree to consolidated
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`filing with Apple 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. In 2015, CCE filed four suits in district court, including suits against HTC
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`Corporation, HTC America, Inc., ZTE Corporation, ZTE (USA), Inc., and Apple,
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`Inc., alleging infringement of the ’676 Patent by cellular phones. Several petitions
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`for inter partes review of the ’676 patent have also been submitted: IPR2016-
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`01501 (instituted) and IPR2016-01493 (instituted). Apple’s petition for inter
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`partes review of the ’676 patent was filed on July 26, 2016; trial was instituted on
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`February 13, 2017 (Paper No. 7, IPR 2016-01493) on the grounds in Apple’s
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`petition. The Board set May 15, 2017 as the date for CCE’s response to the
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`petition, and oral argument is currently set for November 8, 2017. See Paper No.
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`8, IPR2016-01493.
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`III. STATEMENT OF MATERIAL FACTS
`1.
`CCE owns 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 case was dismissed on February 27, 2017. On
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`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 26, 2016, Apple, Inc. filed its petition for inter partes review
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`3.
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`of claims 1, 3, 19, and 21 of the ’676 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, 3, 19, and 21 was entered in the Apple IPR (Paper No. 7, IPR2016-
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`01493) on the grounds that claims 1 and 19 were unpatentable over U.S. Patent
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`Application Publication No. 2004/0223455 to Fong and R2-052744, “FILTERING
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`FOR UE POWER HEADROOM MEASUREMENT,” 3GPP RAN WG2 #49 MEETING,
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`SEOUL, KOREA, NOVEMBER 2, 2005 under 35 U.S.C. § 103(a) and that claims 3 and
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`21 were unpatentable over the combination of U.S. Patent Application Publication
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`No. 2004/0223455 to Fong, R2-052744, “FILTERING FOR UE POWER HEADROOM
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`MEASUREMENT,” 3GPP RAN WG2 #49 MEETING, SEOUL, KOREA, NOVEMBER 2,
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`2005, and U.S. Patent No. 6,445,917 to Bark under 35 U.S.C. § 103(a).
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`5.
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`Oral argument is set for November 8, 2017. See Paper No. 8,
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`IPR2016-01493.
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`6.
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`Petitioners are filing a petition for inter partes review of claims 1, 3,
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`19, and 21 of the ’676 Patent concurrently with this Motion for Joinder.
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`7.
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`The Petition includes grounds that are substantively the same as the
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`grounds instituted in the Apple IPR. Specifically, the Petition and supporting
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`evidence here is identical in all material respects to the petition and supporting
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`evidence that was filed in the Apple IPR. The Petition presents the exact same
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`Paper No. 2
`Date: March 13, 2017
`arguments and art on an element-by-element basis as was instituted in the Apple
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`IPR.
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`8.
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`The eighteen exhibits supporting the present petition, HTC/ZTE
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`Exhibits 1001 to 1018, are identical to the first eighteen exhibits APPL-1001 to
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`APPL1018, respectively, that were filed in support of the Apple IPR. The only
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`other exhibit filed in the Apple IPR, APPL-1019, relates to the date on which
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`Apple was served with a complaint for patent infringement, and thus is not relevant
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`to this Petition.
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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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`A petition for inter partes review filed more than one year after the petition
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`(or the petition’s real party-in-interest or privy) is served with a complaint alleging
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`infringement of the patent is normally barred. See 35 U.S.C. § 315(b); 37 C.F.R. §
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`4
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`Paper No. 2
`Date: March 13, 2017
`42.101(b). This one-year time bar does not apply to a request for joinder. See 35
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`U.S.C. § 315(b)(final sentence); 37 C.F.R. § 42.122(b).
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`When deciding to exercise its discretion to grant joinder, the Board
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`considers the impact of substantive and procedural issues on the proceedings, as
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`well as other considerations, keeping in mind “that patent trial regulations,
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`including the rules for joinder, must be construed to secure the just, speedy, and
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`inexpensive resolution of every proceeding.” See Dell, Inc. v. Network-1 Security
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`Solutions, Inc., Case IPR2013-00385, Paper No. 17 (July 29, 2013) (“Dell Joinder
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`Order”) at 3. There is a “policy preference for joining a party that does not present
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`new issues that might complicate or delay an existing proceeding.” Id. at 10.
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`Joinder of the instant case with the Apple IPR is appropriate, as discussed further
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`below.
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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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`are addressed fully below; all of these issues weigh heavily in favor of granting
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`joinder.
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`Paper No. 2
`Date: March 13, 2017
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`V. ARGUMENT
`A.
`Joinder of this case to the Apple IPR is appropriate
`Joinder of the present proceeding to the Apple IPR is appropriate for
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`multiple reasons. First, no party to the Apple IPR will be prejudiced; second, this
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`motion for joinder is timely; third, the present petition presents identical grounds to
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`those instituted in the Apple IPR and therefore presents no new issues; and fourth,
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`joining the present petition to the Apple IPR promotes efficient and consistent
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`results.
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`Apple’s IPR was instituted on February 13, 2017, and this motion is filed
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`within one month thereafter. See 37 C.F.R. § 42.122(b). This motion is timely.
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`The present petition raises no new issues; it is substantively identical to the
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`Apple IPR petition. The present petition presents the same unpatentability grounds
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`on the same element-by-element basis, relying upon the same claim construction
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`found by the Board in its institution decision, and relying upon the same evidence
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`presented in the Apple IPR.
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`If Apple settles with Patent Owner, the Apple IPR might not proceed to a
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`final written decision. This would force Petitioners to litigate the ’676 patent’s
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`validity in district court, which applies the more demanding clear and convincing
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`evidence standard. Forcing Petitioners to litigation the ’676 patent’s validity
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`would result in a delay that prejudices not just Petitioners but the entire smartphone
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`Paper No. 2
`Date: March 13, 2017
`industry, by allowing the Patent Owner to enforce an invalid patent before the
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`Board can render a thorough review.
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`Joinder will not prejudice Apple or Patent Owner. The grounds presented in
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`the present petition are identical to those presented by Apple in its petition upon
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`which trial was instituted. Joinder will not affect the timing of the Apple IPR. If a
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`minimal extension to the schedule of the Apple IPR is required, such an extension
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`is permitted by law and the applicable rules. See 35 U.S.C. § 316(a)(11); 37
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`C.F.R. § 42.100(c). Joinder therefore serves the public interest, the interest of all
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`parties, and the Board’s interest.
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`B.
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`Joinder should be granted because the present Petition contains
`identical grounds to those presented by Apple and instituted by
`the Board
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`The legislative discussion of inter partes review suggests that joinder of
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`identical inter partes review proceedings should be granted as a matter of right.
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`See 157 CONG. REC. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl)
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`(“The Office anticipates that joinder will be allowed as of right – if an inter partes
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`review is instituted on the basis of a petition, for example, a party that files an
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`identical petition will be joined to that proceeding, and thus allowed to file its own
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`briefs and make its own arguments.”). This alone suggests that the Board should
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`grant joinder.
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`Paper No. 2
`Date: March 13, 2017
`More, even if Patent Owner can raise a reason specific to Petitioner for
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`denying joinder, this theoretical event cannot override strong legislative intent, as
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`well as the public policy in favor of joining identical petitions. Any Petitioner-
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`specific defense – although extremely unlikely – can be accommodated in the
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`normal briefing and trial schedule, and would therefore not impact the Apple IPR.
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`C. Trial will complete within one year, with minimal impact at most
`on the present schedule
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`Joinder will not harm the Board’s ability to complete its review in a timely
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`fashion. 35 U.S.C. § 316(a)(11) and rule 37 C.F.R. § 42.100(c) state that inter
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`partes review should be completed and the Board’s final decision rendered within
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`one year of institution. Because the instant petition presents identical grounds to
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`those instituted in the Apple IPR, and because Petitioner agrees to procedural
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`safeguards (see below) to ensure timely resolution, joinder should not affect the
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`Board’s ability to issue its decision within this required one-year timeframe.
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`D.
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`Proposed procedural safeguards to simplify discovery and
`briefing
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`Petitioner proposes the following safeguards that will ensure a timely and
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`simplified trial, thereby minimizing scheduling impact and the volume of materials
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`submitted to the Board. The proposed procedural safeguards are similar to those
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`adopted in the Dell Joinder Order:
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`8
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`Paper No. 2
`Date: March 13, 2017
`1) Apple and Petitioners will file papers as consolidated filings, except
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`where motions do not involve the other party. Apple will prepare such
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`consolidated 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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`Petitioner’s filing and is limited to issues raised in such filing.
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`3) Apple may question witnesses in depositions before Petitioner.
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`4) Apple may present argument before Petitioner at any oral argument.
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`See Dell Joinder Order, at 11-12.
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`Petitioner will rely on Apple’s expert and will not offer additional expert
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`testimony. These proposed safeguards minimize complications to the Apple IPR
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`and will result in an efficient and timely trial with little impact on the parties to the
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`Apple IPR or the Board.
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`VI. CONCLUSION
`For the reasons presented above, Petitioner respectfully requests that its
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`Petition for Inter Partes Review of U.S. Patent No. 8,457,676 be instituted and that
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`this proceeding be joined with Apple Inc. v. Cellular Communications Equipment
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`LLC, Case IPR2016-01493.
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`9
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`Dated: March 13, 2017
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`Paper No. 2
`Date: March 13, 2017
`Respectfully submitted,
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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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`10
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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
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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
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`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 /
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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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