UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MICROSOFT CORPORATION, MICROSOFT MOBILE INC.,
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`Petitioners,
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`v.
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`KONINKLIJKE PHILIPS ELECTRONICS N.V.,
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`Patent Owner.
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`Case No.: IPR2017-01766
`Patent No. RE44,913
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`MOTION FOR JOINDER UNDER 35 U.S.C § 315(c) AND
`37 C.F.R. § 42.22
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MICROSOFT CORPORATION, MICROSOFT MOBILE INC.,
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`Petitioners,
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`v.
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`KONINKLIJKE PHILIPS ELECTRONICS N.V.,
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`Patent Owner.
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`Case No.: IPR2017-01766
`Patent No. RE44,913
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`MOTION FOR JOINDER UNDER 35 U.S.C § 315(c) AND
`37 C.F.R. § 42.22
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`INTRODUCTION
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`Inter Partes Review of U.S. Patent No. RE44,913
`Motion for Joinder with IPR2017-00386
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`Microsoft Corporation and Microsoft Mobile Inc. (collectively, “Microsoft”)
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`I.
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`submits concurrently a petition for inter partes review (the “Microsoft Petition”) of
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`claims 1 and 3-16 of U.S. Patent No. RE44,913 (“the ’913 patent”), which is
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`assigned to Koninklijke Philips Electronics N.V. (“Patent Owner”). Microsoft
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`respectfully requests that this proceeding be joined with the pending inter partes
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`review initiated by Google Inc. (“Google”) under PTAB Case No. IPR2017-00386
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`(hereinafter “Google IPR”). The Microsoft Petition is narrowly tailored to the
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`identical grounds of unpatentability that are subject of the Google IPR, and is
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`essentially a copy of the petition in the Google IPR with respect to the adopted
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`grounds, including the same analyses, prior art references, exhibits, and expert
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`testimony as in the Google IPR. The Microsoft Petition raises no issues beyond
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`the issues raised in the instituted grounds of the Google IPR.
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`Microsoft’s request for joinder is timely because this request is being filed
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`within one month of the institution of the Google IPR under 37 C.F.R. § 42.122(b)
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`and meets all formal requirements for the requested joinder. Microsoft will also do
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`its part to minimize any effects or delays in the joined proceeding going forward to
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`ensure timely and efficient conduct of the joined proceeding.
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`In addition, joinder is appropriate because it will efficiently resolve the
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`validity of the challenged claims of the ’913 patent in a single PTAB proceeding.
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`-1-
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`Inter Partes Review of U.S. Patent No. RE44,913
`Motion for Joinder with IPR2017-00386
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`The requested joinder serves the intent of the AIA by making the PTAB
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`proceedings a cost-effective alternative to litigation. The requested joinder does
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`not prejudice the parties to the Google IPR. In similar circumstances, the Board has
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`routinely granted joinder, and it should grant joinder here as well.
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`Microsoft is hereby filing this motion pursuant to the joinder provisions
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`under 35 U.S.C. § 315(c) and 37 C.F.R. §42.122(b) to move that:
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`(1) The trial requested in the Microsoft Petition be instituted; and
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`(2) The new Microsoft IPR be joined with the instituted Google IPR trial.
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`II. BACKGROUND AND RELATED PROCEEDINGS
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`Several U.S. Patents, including U.S. Patent No. RE44,913, are asserted
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`against Microsoft in various on-going patent lawsuits filed by Patent Owner in the
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`District of Delaware. Microsoft is also pursuing inter partes review of U.S. Patent
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`No. 6,522,695. The ’913 patent is asserted in the following cases pending in the
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`District of Delaware (“the Delaware Actions”): (1) Koninklijke Philips N.V. et al.
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`v. Acer Inc. et al., Case No. 1:15-cv-01170-GMS (D. Del.); (2) Koninklijke Philips
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`N.V. et al. v. Asustek Computer Inc. et al., Case No. 1:15-cv-01125-GMS (D.
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`Del.); (3) Koninklijke Philips N.V. et al. v. Double Power Technology, Inc. et al.,
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`Case No. 1:15-cv-01130-GMS (D. Del.); (4) Koninklijke Philips N.V. et al. v. HTC
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`Corp. et al., Case No. 1:15-cv-01126-GMS (D. Del.); (5) Koninklijke Philips N.V.
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`et al. v. Southern Telecom, Inc., Case No. 1:15-cv-01128-GMS (D. Del.);
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`-2-
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`Inter Partes Review of U.S. Patent No. RE44,913
`Motion for Joinder with IPR2017-00386
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`(6) Koninklijke Philips N.V. et al. v. Visual Land, Inc., Case No. 1:15-cv-01127-
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`gms (D. Del.); (7) Koninklijke Philips N.V. et al. v. Yifang USA, Inc., Case No.
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`1:15-cv-01131-GMS (D. Del.).
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`On December 5, 2016, Google Inc. filed an IPR petition challenging claims
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`1 and 3-16 of the ’913 Patent, assigned Case No. IPR2017-00386, and the Board
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`determined that trial should be instituted on June 12, 2017.
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`This Petition proposes the same grounds of rejection that were proposed in
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`the Google IPR and that were instituted by the Board in the Google IPR. In fact,
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`the Petition is entirely similar to Google’s petition with respect to the adopted
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`grounds, including the same analysis, prior art, exhibits, and expert testimony.
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`III. ARGUMENT
`A. Legal Standard
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`The Board has authority to join as a party any person who properly files a
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`petition for inter partes review to an instituted inter partes review. 35 U.S.C.
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`§ 315(c). A motion for joinder must be filed within one month of institution of any
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`inter partes review for which joinder is requested. 37 C.F.R. § 42.122(b). In
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`deciding whether to grant a motion for joinder, the Board considers several factors
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`including: (1) the reasons why joinder is appropriate; (2) whether the party to be
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`joined has presented any new grounds of unpatentability; (3) what impact, if any,
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`joinder would have on the trial schedule for the existing review; and (4) how
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`-3-
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`Inter Partes Review of U.S. Patent No. RE44,913
`Motion for Joinder with IPR2017-00386
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`briefing and discovery may be simplified. See, e.g., Hyundai Motor Co. v. Am.
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`Vehicular Sciences LLC, IPR2014-01543, Paper No. 11 at 3 (Oct. 24, 2014);
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`Macronix Int’l Co. v. Spansion, IPR2014-00898, Paper 15 at 4 (Aug. 13, 2014)
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`(quoting Kyocera Corporation v. Softview LLC, IPR2013-00004, Paper 15 at 4
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`(April 24, 2013)). Each of these factors weighs in favor of joinder.
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`B. Microsoft’s Motion for Joinder Is Timely
`This motion is timely because it is filed within one month of June 12, 2017,
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`the date the Google IPR was instituted. See IPR2017-00386 at Paper 8.
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`C. The Relevant Factors Weigh in Favor of Joinder
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`Each of the four factors considered by the Board weighs in favor of joinder.
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`Granting joinder will not enlarge the scope of the Google IPR because Microsoft
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`presents no new grounds of unpatentability, and joinder will not negatively impact
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`the Google IPR schedule. Conversely, a decision denying joinder could severely
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`prejudice Microsoft. Joinder is appropriate and warranted.
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`1.
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`Joinder Is Appropriate
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`Joinder with the Google IPR is appropriate. Microsoft’s Petition is not only
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`limited to the same grounds adopted by the Board in the Google IPR, but also
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`relies on exactly the same analysis, prior art, exhibits, and expert testimony as that
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`submitted by Google. Microsoft’s Petition also does not include any grounds or
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`raise any unpatentability issues that were not adopted by the Board.
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`-4-
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`is also appropriate because
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`Inter Partes Review of U.S. Patent No. RE44,913
`Motion for Joinder with IPR2017-00386
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`the efficient
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`it will promote
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`Joinder
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`determination of validity of the challenged claims of the ’913 patent. A final
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`written decision on the validity of the ’913 patent has the potential to minimize
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`issues in the underlying litigations, and potentially resolve the litigations altogether
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`with respect to the ’913 patent. Both the Google IPR petition and Microsoft’s
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`Petition arise out of the Delaware Actions, where Patent Owner has sued both
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`Google and Microsoft’s customers. The joinder would promote efficiency in
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`resolving the invalidity issues in the ’913 patent at both the Board and the court.
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`Absent joinder, if Patent Owner and Google settle, Microsoft may be forced to start
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`over in district court with the same arguments on which Google has already shown
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`it is reasonably likely to prevail, thereby wasting judicial resources. Joinder is
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`appropriate to avoid duplicative invalidity efforts and promote judicial efficiency.
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`Additionally, although granting joinder will not prejudice Patent Owner or
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`Google, Microsoft could be prejudiced if joinder is denied. As mentioned above,
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`Microsoft’s Petition does not raise any issues that are not already before the Board.
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`Therefore, joinder should not affect the timing of the Google IPR or the content of
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`Patent Owner’s response. Also, there should be no additional cost to Patent Owner
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`or Google given the overlap in the petitions. On the other hand, Microsoft would
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`be potentially prejudiced if joinder is denied. For example, absent joinder, Patent
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`Owner may attempt to use aspects of the Google IPR against Microsoft in district
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`-5-
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`Inter Partes Review of U.S. Patent No. RE44,913
`Motion for Joinder with IPR2017-00386
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`court, even though Microsoft was not able to participate in the Google IPR to
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`protect its interests.
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`2. Microsoft’s Petition Presents No New Grounds
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`The Petition does not present any new ground of unpatentability. As
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`mentioned above, the Petition presents only the grounds already adopted by the
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`Board in the Google IPR, and is based on the same analyses and same expert
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`testimony submitted by Google.
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`3.
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`Joinder Will Not Negatively Impact the Google IPR
`Schedule
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`Because the Petition incorporates the grounds from Google’s petition that
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`the Board adopted—including the same analysis, prior art, exhibits, and expert
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`testimony filed by Google—joinder will not impact the Board’s ability to complete
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`its review in a timely manner, as it will not introduce any additional arguments,
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`briefing, or need for discovery. In such circumstances, the Board has routinely
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`granted joinder. See, e.g., Hyundai, IPR2014-01543, Paper No. 11 at 2-4 (granting
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`joinder where proposed grounds are identical, the same expert declaration is used,
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`and joinder would not affect the pending schedule or increase the complexity of the
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`instituted IPR); Sony Corp. of Am. v. Network-1 Sec. Solutions, Inc., IPR2013-
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`00495, Paper No. 13 at 5-9 (Sep. 16, 2013) (granting joinder where the petition
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`“asserts the same grounds of unpatentablility” as the instituted case, “no new issues
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`beyond those already before the Board in the existing proceeding” were raised, and
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`-6-
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`Inter Partes Review of U.S. Patent No. RE44,913
`Motion for Joinder with IPR2017-00386
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`“the procedural impact of joinder on the existing proceeding would be minimal.”);
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`Dell Inc. v. Network-1 Solutions, Inc., IPR2013-00385, Paper No. 17, at 6-10 (Jul.
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`29, 2013) (granting joinder where the petition “raises no new issues beyond what is
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`already before the Board in the existing proceeding.”).
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`Microsoft will do its part to minimize any extension of deadlines and will do
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`everything within its power to facilitate completion of the requested joined
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`proceeding within one year under 35 U.S.C. § 316(a)(11) and 37 C.F.R.
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`§ 42.100(c).
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`Discovery and Briefing Can Be Simplified
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`4.
`Because the grounds in the Microsoft Petition are identical to those instituted
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`for the Google IPR petition, the Board may adopt procedures similar to those
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`adopted in Dell, Inc. v. Network-1 Security Solutions, Inc., IPR2013-00385 and
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`Motorola Mobility LLC v. SoftView LLC, IPR2013-00256. In those cases, the
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`Board ordered the petitioners to file consolidated filings, for which the first
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`petitioner was responsible, and allowed the new petitioner to file seven additional
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`pages with corresponding additional responsive pages allowed to the Patent
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`Owner. Dell, Paper 17 at 8; Motorola Mobility, Paper 10 at 8-9. Such a procedure
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`would minimize any complication or delay caused by joinder, as the Board
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`recognized in those cases. Also, and again as in Dell and Motorola Mobility, the
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`petitioners in this proceeding can work together to manage the questioning at
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`-7-
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`Inter Partes Review of U.S. Patent No. RE44,913
`Motion for Joinder with IPR2017-00386
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`depositions and presentations at the hearing to avoid redundancy. Dell, Paper 17 at
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`9; Motorola Mobility, Paper 10 at 9-10.
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`IV. CONCLUSION
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`For the foregoing reasons, Microsoft respectfully requests that this motion
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`be granted and that this proceeding be joined with the Google IPR.
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`DATED: July 12, 2017
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`
`/Christina J. McCullough/
`Lead Counsel
`Christina J. McCullough, Reg. No. 58,720
`CMcCullough@perkinscoie.com
`Perkins Coie LLP
`1201 Third Avenue, Suite 4900
`Seattle, WA 98101-3099
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`Back-Up Counsel
`Chad S. Campbell, Pro Hac Vice
`CSCampbell@perkinscoie.com
`Jared Crop, Reg. No. 62,459
`JCrop@perkinscoie.com
`Perkins Coie LLP
`2901 N. Central Avenue, Suite 2000
`Phoenix, AZ 85012-2788
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`Attorneys for Microsoft Corporation and
`Microsoft Mobile Inc.
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`-8-
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`Inter Partes Review of U.S. Patent No. RE44,913
`Motion for Joinder with IPR2017-00386
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true copy of the foregoing MOTION
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`FOR JOINDER has been served in its entirety this 12th day of July, 2017 by
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`FedEx® on Patent Owner at the correspondence address for the attorney of record
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`for the '913 Patent shown in USPTO PAIR:
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`PHILIPS INTELLECTUAL PROPERTY & STANDARDS
`465 Columbus Avenue, Suite 340
`Valhalla NY 10595
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`A courtesy copy has been served via electronic mail on the attorneys of
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`record for the Patent Owner in the concurrent litigation matter:
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`Michael P. Kelly- mkelly@mccarter.com
`Daniel M. Silver - dsilver@mccarter.com
`Benjamin A. Smyth - bsmyth@mccarter.com
`Michael P. Sandonato - msandonato@fchs.com
`John D. Carlin - jcarlin@fchs.com
`Daniel A. Apgar - dapgar@fchs.com
`Jonathan M. Sharret - jsharret@fchs.com
`Christopher M. Gerson - cgerson@fchs.com
`Jaime F Cardenas-Naviajcardenas - navia@fchs.com
`Robert S. Pickens - rpickens@fchs.com
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`In addition, the undersigned certifies that a true copy of the petition and
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`supporting materials have been served via electronic mail on Patent Owner via
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`email to its legal counsel:
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`PHILIPS INTELLECTUAL PROPERTY & STANDARDS
`info.ips@philips.com
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`-1-
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`Dated: July 12, 2017
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`Inter Partes Review of U.S. Patent No. RE44,913
`Motion for Joinder with IPR2017-00386
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`/Christina J. McCullough/
`Lead Counsel
`Christina J. McCullough, Reg. No. 58,720
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`Back-up Counsel
`Chad S. Campbell, Pro Hac Vice
`Jared Crop, Reg. No. 62,459
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`Attorneys for Microsoft Corporation and
`Microsoft Mobile Inc.
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`-2-
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