UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________________
`
`OLYMPUS CORPORATION, OLYMPUS AMERICA INC.
`Petitioners
`
`v.
`
`PAPST LICENSING GmbH & Co. KG,
`Patent Owner
`
`___________________________
`
`Case No. IPR2017-01682
`Patent No. 6,470,399 B1
`___________________________
`
`
`
`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c)
`AND 37 C.F.R. §§ 42.22 AND 42.122(b)
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________________
`
`OLYMPUS CORPORATION, OLYMPUS AMERICA INC.
`Petitioners
`
`v.
`
`PAPST LICENSING GmbH & Co. KG,
`Patent Owner
`
`___________________________
`
`Case No. IPR2017-01682
`Patent No. 6,470,399 B1
`___________________________
`
`
`
`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(c)
`AND 37 C.F.R. §§ 42.22 AND 42.122(b)
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 6,470,399
`
`I.
`
`II.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED ................... 1
`
`STATEMENT OF MATERIAL FACTS ................................................... 2
`
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED ................. 3
`
`A.
`
`B.
`
`C.
`
`Joinder is Appropriate ............................................................................................ 5
`
`No new grounds of unpatentability are asserted in this Petition ............................ 6
`
`Joinder will have, at most, a minimal impact on the trial schedule and
`costs for the existing IPR ....................................................................................... 6
`
`D.
`
`Procedures to simplify briefing and discovery ...................................................... 8
`
`IV. CONCLUSION ............................................................................................. 9
`
`
`
`
`
`
`
`-i-
`
`
`
`
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 6,470,399
`
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`Petitioners Olympus Corporation and Olympus America Inc. (collectively,
`
`“Olympus”) respectfully request joinder pursuant to 35 U.S.C. § 315(c) and 37
`
`C.F.R. § 42.122(b) of the concurrently filed Petition for Inter Partes Review of
`
`U.S. Patent No. 6,470,399 (“the ’399 Patent”) (“Olympus Petition”) with pending
`
`Inter Partes review, IPR2017-00443 (“Huawei/LG/ZTE IPR”), which was
`
`instituted by the Board on June 12, 2017. IPR2017-00443, Paper 7.
`
`Joinder is appropriate because it will promote efficient resolution of the
`
`validity of the ’399 Patent, as the timely Olympus Petition involves the same ’339
`
`Patent, covers the claims instituted in the Huawei/LG/ZTE IPR, and relyies on the
`
`same arguments and evidentiary record.1 No new grounds of unpatentability are
`
`asserted in the Olympus Petition and there will be, at most, a minimal impact on
`
`the trial schedule for the existing review. Olympus further identifies below
`
`procedures the Board may adopt to simplify briefing and discovery. See, infra,
`
`Section III.D. Therefore, joinder would neither complicate the issues nor unduly
`
`delay the existing schedule of IPR2017-00443.
`
`
`1 Olympus’ Exhibits are identical to the corresponding Huawei/LG/ZTE Exhibits
`
`and have been re-labeled as “Olympus” Exhibits.
`
`
`
`
`
`
`-1-
`
`
`
`
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 6,470,399
`
`Olympus has notified counsel for Petitioners in the Huawei/LG/ZTE IPR
`
`regarding the subject of this motion and counsel has indicated they do not oppose
`
`this motion.2
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`• In 2007, Papst Licensing GmbH & Co. KG (“Papst”) sued Olympus for
`
`infringement of the ‘399 Patent and related patents in the United States
`
`District Court for the District of Delaware. Papst Licensing GmbH &
`
`Co. KG v. Olympus Corp., et al., C.A. No. 1:07-415 (DED), now
`
`consolidated in In re: Papst Licensing Digital Camera Patent Litigation -
`
`MDL 1880, C.A. No. 1:07-493 (DCD).
`
`• On December 7, 2016, Huawei Device USA Inc., Huawei Device Co.,
`
`Ltd., Huawei Device (Dongguan) Co., Ltd., Huawei Technologies Co.,
`
`Ltd., Huawei Technologies USA, Inc., LG Electronics, Inc., LG
`
`Electronics U.S.A., Inc., LG Electronics Mobilecomm U.S.A., Inc., ZTE
`
`2 Counsel for Petitioners LG and ZTE confirmed that LG and ZTE do not oppose
`
`this motion. Counsel for Petitioner Huawei indicated that Huawei takes no
`
`position on this motion, and publicly available information indicates that Huawei
`
`and Patent Owner Papst recently reached a settlement in principle. See Papst
`
`Licensing GmbH & Co., KG v. Apple Inc. et al., No. 15-cv-01095 (EDTX), Dkt.
`
`No. 363 (Joint Motion to Stay all Deadlines and Notice of Settlement in Principle).
`
`
`
`
`
`-2-
`
`
`
`
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 6,470,399
`
`(USA) Inc, and ZTE Corporation (collectively, “ZTE et al.”), requested
`
`IPR of claims 1-8, 10-11, and 13-15 of the ’399 Patent under three
`
`grounds of unpatentability. See IPR2017-00443, Paper 2.
`
`• On June 12, 2017 the Board instituted the Huawei/LG/ZTE IPR on all
`
`three of the requested grounds, covering all the challenged claims. See
`
`id., Paper 7.
`
`• The Olympus Petition that accompanies the present Motion for Joinder is
`
`filed within one month of the institution decision noted above in the
`
`Huawei/LG/ZTE IPR, and includes the same grounds of unpatentability
`
`that were instituted in the Huawei/LG/ZTE IPR.
`
`• The Olympus Petition that accompanies the present Motion for Joinder
`
`and
`
`accompanying
`
`evidence
`
`are
`
`identical
`
`to
`
`the
`
`instituted
`
`Huawei/LG/ZTE IPR Petition, aside from modifying the procedural
`
`sections to identify Petitioners and real parties-in-interest, updating the
`
`listing of related cases, and identifying Olympus’ lead and backup
`
`counsel for the Petition.
`
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`The Leahy-Smith America Invents Act (“AIA”) permits joinder of Inter
`
`Partes Review (“IPR”) proceedings. The statutory provision governing joinder of
`
`post-grant review proceedings is 35 U.S.C. § 315(c):
`
`
`
`
`
`-3-
`
`
`
`
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 6,470,399
`
`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.
`
`37 C.F.R. § 42.122(a) provides that, “[w]here another matter involving the patent
`
`is before the Office, the Board may during the pendency of the inter partes review
`
`enter any appropriate order regarding the additional matter including providing for
`
`the stay, transfer, consolidation, or termination of any such matter.” “The Board
`
`will determine whether to grant joinder on a case-by-case basis, taking into account
`
`the particular facts of each case, substantive and procedural issues, and other
`
`considerations.” IPR2013-00385, Paper 17 at 3 (citing 157 CONG. REC. S1376
`
`(daily ed. Mar. 8, 2011) (statement of Sen. Kyl)). “The Board’s rules for AIA
`
`proceedings ‘shall be construed to secure the just, speedy, and inexpensive
`
`resolution of every proceeding.’” CBM2014-00115, Paper 8 at 19 (citing 37 C.F.R.
`
`§ 42.1(b); 77 Red. Reg. at 48,758). Indeed, there is a “policy preference for
`
`joining a party that does not present new issues that might complicate or delay an
`
`existing proceeding.” See Dell Inc. v. Network-1 Sec. Solutions, Inc., IPR2013-
`
`
`
`
`
`-4-
`
`
`
`
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 6,470,399
`
`00385, Paper 17 at 10 (PTAB July 29, 2013) (citing 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 Inter Partes review 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.”) (emphasis added)). That is precisely the situation here.
`
`In accordance with the Board’s governing law and rules, each of the factors
`
`supporting joinder are present in this Motion for Joinder and are discussed in detail
`
`below: (1) reasons why joinder is appropriate; (2) the lack of any new grounds of
`
`unpatentability being raised in the subsequent petition; (3) lack of any impact on
`
`the trial schedule for the existing instituted review; and (4) simplification of
`
`briefing and/or discovery to minimize or remove any impacts on schedule.
`
`Kyocera Corp. v. Softview, LLC, IPR2013-00004, Paper 15 at 4 (PTAB April 24,
`
`2013); see also Samsung Elecs. Co. Ltd. v. Unifi Sci. Batteries, LLC, IPR2013-
`
`00236, Paper 22 at 3 (PTAB Oct. 17, 2013).
`
`Joinder is Appropriate
`
`A.
`The Board has authority to join a properly-filed IPR petition to an instituted
`
`IPR proceeding. See U.S.C. § 315(c). The Olympus Petition and concurrently
`
`filed Motion for Joinder are timely under 35 U.S.C. § 315(c) and 37 C.F.R. § 42.22
`
`and 4.122(b). The Huawei/LG/ZTE IPR was instituted on June 12, 2017.
`
`
`
`
`
`-5-
`
`
`
`
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 6,470,399
`
`IPR2017-00443, Paper 7. Olympus filed the Olympus Petition concurrently with
`
`this Motion on June 28, 2017, which is no later than one month from the institution
`
`of IPR2017-00443.
`
`Further, joinder is appropriate because the Olympus Petition does not raise
`
`new grounds of unpatentability not already instituted in the Huawei/LG/ZTE IPR.
`
`The Olympus IPR challenges the same claims of the ’399 Patent on the same
`
`grounds as raised and instituted in the Huawei/LG/ZTE IPR. In addition, Olympus
`
`re-filed the same declaration of Kevin C. Almeroth as in the Huawei/LG/ZTE IPR
`
`(the only updates are to the party names and date of execution of the declaration).
`
`The only difference between Olympus’ Petition and the Huawei/LG/ZTE IPR
`
`Petition are the sections on Real Party-In-Interest, Related Matters, and Counsel
`
`that have been appropriately updated.
`
`B. No new grounds of unpatentability are asserted in this Petition
`The Olympus Petition does not assert any new grounds of unpatentability. It
`
`challenges the same claims of the ‘399 Patent based on the same arguments,
`
`evidence, and grounds of unpatentability on which the Board instituted review in
`
`the Huawei/LG/ZTE IPR.
`
`C.
`
`Joinder will have, at most, a minimal impact on the trial schedule
`and costs for the existing IPR
`
`Joinder will have minimal—indeed, likely no—impact on the trial schedule
`
`and costs for the existing Huawei/LG/ZTE IPR because of the complete overlap
`
`
`
`
`
`-6-
`
`
`
`
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 6,470,399
`
`between the two petitions for the instituted grounds. Based on Olympus’ review of
`
`the papers ZTE al. have submitted to date in the Huawei/LG/ZTE IPR, Olympus’
`
`substantive interests align with ZTE et al.’s, and Olympus foresees no substantive
`
`issues or arguments on which it would depart from ZTE et al.’s submissions going
`
`forward.
`
`Olympus is therefore willing to agree to adhere to all applicable deadlines
`
`set forth in the Huawei/LG/ZTE IPR. Additionally, Olympus is prepared to adopt
`
`any papers submitted by ZTE et al. in the joined IPR proceeding. Coordination
`
`with the Huawei/LG/ZTE IPR Petitioners is not necessary because any filing will
`
`be public and Olympus is willing to agree to adopt them, including the testimony
`
`from the same expert witness(es) as in the instituted trial. See ION Geophysical,
`
`IPR2015-00565, Paper 14 at 4-5. Further, because Olympus has re-filed the same
`
`expert declaration submitted in the Huawei/LG/ZTE IPR, a second deposition of a
`
`second expert is not necessary. Accordingly, the trial schedule for the
`
`Huawei/LG/ZTE IPR should not be adversely affected.
`
`And any “alleged” prejudice or burden to Papst or ZTE et al.—if not entirely
`
`nonexistent—is outweighed by the public interest in obtaining a speedy and
`
`efficient resolution of the patentability issues of these ‘399 Patent claims relative to
`
`grounds in a single proceeding, with minimal burden on this Board.
`
`
`
`
`
`-7-
`
`
`
`
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 6,470,399
`
`Procedures to simplify briefing and discovery
`
`D.
`Briefing and discovery in the joined proceeding can be simplified to
`
`minimize or remove any impact to the schedule or the volume of materials
`
`submitted
`
`to
`
`the Board.
`
` Given
`
`that Olympus and petitioners
`
`in
`
`the
`
`Huawei/LG/ZTE IPR will rely upon the same prior art and the same bases for
`
`rejection of the same claims using the same expert, Olympus envisions no
`
`differences in position, as discussed above.
`
`Olympus accepts that it will not be permitted to file any separate arguments
`
`in furtherance of those advanced in ZTE et al.’s filings. See, e.g., Motorola
`
`Mobility LLC v. Softview LLC, IPR2013-00256, Paper 10 at 9 (PTAB June 20,
`
`2013). In the unlikely event that there might be a procedural issue or statement by
`
`ZTE et al. in the joined IPR with which Olympus disagrees—and Olympus
`
`foresees none at this time—Olympus will request a conference call to seek
`
`permission and explain its reasons to submit a short separate filing, if needed,
`
`directed to points of procedural disagreement with the other petitioners, at the
`
`Board’s discretion. The Board can also allow the patent owner a corresponding
`
`number of pages to respond to any separate filings. See Dell Inc., IPR2013-00385,
`
`Paper 17 at 8; Motorola Mobility, IPR2013-00256, Paper 10 at 8¬9.
`
`Olympus agrees that it will not seek additional time at any deposition. And
`
`Olympus agrees that it will not seek any additional time at oral argument. Indeed,
`
`
`
`
`
`-8-
`
`
`
`
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 6,470,399
`
`Olympus intends to maintain a passive understudy role in the joined proceeding.
`
`Olympus will assume a primary role only if ZTE et al. cease to participate in the
`
`IPR, or to the extent ZTE et al. willingly seek more prominent participation from
`
`Olympus’ counsel. These concessions by Olympus remove any potential
`
`“complication or delay” in connection with joinder, while providing the parties an
`
`opportunity to address all issues that may arise and avoiding any undue burden on
`
`Papst ZTE et al., and the Board. See, e.g., IPR2013-00256, Paper 10 at 9.
`
`Accordingly, Olympus proposes
`
`that
`
`the scheduling order for
`
`the
`
`Huawei/LG/ZTE IPR apply to the joined IPR proceeding.
`
`IV. CONCLUSION
`For the foregoing reasons, Olympus requests its Petition for Inter Partes
`
`Review of the ‘399 Patent be granted, and that the Board grant this Motion and
`
`join this proceeding with the Huawei/LG/ZTE IPR. Joinder will ensure a just,
`
`speedy, and inexpensive resolution in both proceedings, and will promote
`
`efficiency by avoiding duplicative filings and reviews of the same issues.
`
`
`
`
`
`Date: June 28, 2017
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`By:
`/ Dion M. Bregman /
`Dion M. Bregman
`Reg. No. 45,645
`MORGAN, LEWIS & BOCKIUS LLP
`1400 Page Mill Road, Palo Alto, CA 94304.
`Telephone: 650.843.7519
`Facsimile: 650.843.4001
`dion.bregman@morganlewis.com
`
`
`
`
`
`-9-
`
`
`
`
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 6,470,399
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Motion for Joinder
`
`was served on June 28, 2017 via Federal Express directed to the attorney of record
`
`for the patent at the following address:
`
`Gregory S. Donahue
`Minghui Yang
`DINOVO PRICE ELLWANGER & HARDY, LLP
`7000 N. MoPac Expressway, Suite 350
`Austin, Texas 78731
`{gdonahue,myang,docketing}@dpelaw.com
`
`Anthony L. Meola
`SCHMEISER OLSEN & WATTS LLP
`2500 Westchester Avenue, Suite 210
`Purchase, New York 10577
`ameola@iplawusa.com
`
`Jason A. Murphy
`Victor J. Baranowski
`Arlen L. Olsen
`SCHMEISER, OLSEN & WATTS LLP
`22 Century Hill Drive, Suite 302
`Latham, NY 12110
`{jmurphy,vbaranowski,aolsen}@iplawusa.com
`
`A courtesy copy is also being served to litigation counsel via secure file transfer at:
`
`John M. Desmarais
`Jonas R. McDavit
`Richard M. Cowell
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
`{jdesmarais,jmcdavit,rcowell}@desmaraisllp.com
`
`
`
`
`
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 6,470,399
`
`Christopher V. Goodpastor
`Andrew G. DiNovo
`Adam G. Price
`Jay D. Ellwanger
`DINOVO PRICE ELLWANGER & HARDY, LLP
`7000 N. MoPac Expressway, Suite 350
`Austin, Texas 78731
`{cgoodpastor,adinovo,aprice,jellwanger}@dpelaw.com
`
`
`
`Date: June 28, 2017
`
`
`
`By:
`
`
`/ Dion M. Bregman /
`Dion M. Bregman (Reg. No. 45,645)
`
`
`
`2
`
`
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