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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________________
`
`OLYMPUS CORPORATION, OLYMPUS AMERICA INC.,
`SAMSUNG ELECTRONICS CO., LTD., AND
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner
`
`v.
`
`PAPST LICENSING GmbH & Co. KG,
`Patent Owner
`
`___________________________
`
`Case No. IPR2017-01808
`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
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED ................. 3
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`A.
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`Joinder is Appropriate .......................................................................... 5
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`B. No new grounds of unpatentability are asserted in this Petition .......... 6
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`C.
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`Joinder will have, at most, a minimal impact on the trial
`schedule and costs for the existing IPR ................................................ 6
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`D.
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`Procedures to simplify briefing and discovery..................................... 8
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`IV. CONCLUSION ............................................................................................. 9
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`
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`-i-
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`
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 6,470,399
`
`I.
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`STATEMENT OF THE PRECISE RELIEF REQUESTED
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`Petitioner Olympus Corporation, Olympus America Inc. (collectively,
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`“Olympus”), Samsung Electronics Co., Ltd., and Samsung Electronics America,
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`Inc. (collectively, “Samsung”) (Olympus and Samsung, collectively, “Petitioner”)
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`respectfully request joinder pursuant to 35 U.S.C. § 315(c) and 37 C.F.R.
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`§ 42.122(b) of the concurrently filed Petition for Inter Partes Review of U.S.
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`Patent No. 6,470,399 (“the ’399 Patent”) (“Olympus/Samsung Petition”) with
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`pending Inter Partes review, IPR2017-00714 (“ZTE IPR”), which was instituted
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`by the Board on June 21, 2017. IPR2017-00714, Paper 10.
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`Joinder is appropriate because it will promote efficient resolution of the
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`validity of the ’399 Patent, as the timely Olympus/Samsung Petition involves the
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`same ’399 Patent, covers the same claims instituted in the ZTE IPR, and relies on
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`the same arguments and evidentiary record.1 No new grounds of unpatentability
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`are asserted in the Olympus/Samsung Petition and there will be, at most, a minimal
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`impact on the trial schedule for the existing review. Petitioner further identifies
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`below procedures the Board may adopt to simplify briefing and discovery. See,
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`infra, Section III.D. Therefore, joinder would neither complicate the issues nor
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`unduly delay the existing schedule of IPR2017-00714.
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`1 Petitioner’s Exhibits are identical to the corresponding ZTE IPR Exhibits and
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`have been re-labeled as “Olympus et al.” Exhibits.
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`
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`
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`-1-
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`
`
`
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 6,470,399
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`Petitioner has notified counsel for Petitioners in the ZTE IPR regarding the
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`subject of this motion and counsel has indicated they do not oppose this motion.
`
`II.
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`STATEMENT OF MATERIAL FACTS
`• In 2007, Papst Licensing GmbH & Co. KG (“Papst”) sued Olympus for
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`infringement of the ’399 Patent and related patents in the United States
`
`District Court for the District of Delaware. Papst Licensing GmbH &
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`Co. KG v. Olympus Corp., et al., C.A. No. 1:07-415 (DED), now
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`consolidated in In re: Papst Licensing Digital Camera Patent Litigation -
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`MDL 1880, C.A. No. 1:07-493 (DCD).
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`• In 2015, Papst sued Samsung for infringement of the ’399 Patent and
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`related patents in the United States District Court for the Eastern District
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`of Texas. Papst Licensing GmbH & Co. KG v. Samsung Electronics Co.,
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`Ltd., Civil Action No. 6:15-cv-1102-RWS (E.D. Tex), now consolidated
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`for pre-trial activities in Papst Licensing GmbH & Co. KG v. Apple Inc.,
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`Civil Action No. 6:15-cv-1095-RWS (E.D. Tex).
`
`• On January 17, 2017, ZTE (USA) Inc. and ZTE Corporation
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`(collectively, “ZTE”) requested IPR of claims 1–3, 5, 6, 11, 14, and 15 of
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`the ’399 Patent under one ground of unpatentability. See IPR2017-
`
`00714, Paper 1.
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`
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`-2-
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`
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 6,470,399
`• On June 21, 2017 the Board instituted the ZTE IPR on the one requested
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`ground, covering all challenged claims. See id., Paper 10.
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`• The Olympus/Samsung Petition that accompanies the present Motion for
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`Joinder is filed within one month of the institution decision noted above
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`in the ZTE IPR, and includes the same ground of unpatentability that was
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`instituted in the ZTE IPR.
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`• The Olympus/Samsung Petition that accompanies the present Motion for
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`Joinder and accompanying evidence are identical to the instituted ZTE
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`IPR Petition, aside from modifying the procedural sections to identify
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`Petitioners and real parties-in-interest, updating the listing of related
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`cases, and identifying Petitioners’ lead and backup counsel for the
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`Petition.
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`The Leahy-Smith America Invents Act (“AIA”) permits joinder of Inter
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`Partes Review (“IPR”) proceedings. The statutory provision governing joinder of
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`post-grant review proceedings is 35 U.S.C. § 315(c):
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`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
`-3-
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`
`
`
`
`
`
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 6,470,399
`
`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
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`is before the Office, the Board may during the pendency of the inter partes review
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`enter any appropriate order regarding the additional matter including providing for
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`the stay, transfer, consolidation, or termination of any such matter.” “The Board
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`will determine whether to grant joinder on a case-by-case basis, taking into account
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`the particular facts of each case, substantive and procedural issues, and other
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`considerations.” IPR2013-00385, Paper 17 at 3 (citing 157 CONG. REC. S1376
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`(daily ed. Mar. 8, 2011) (statement of Sen. Kyl)). “The Board’s rules for AIA
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`proceedings ‘shall be construed to secure the just, speedy, and inexpensive
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`resolution of every proceeding.’” CBM2014-00115, Paper 8 at 19 (citing 37 C.F.R.
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`§ 42.1(b); 77 Red. Reg. at 48,758). Indeed, there is a “policy preference for
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`joining a party that does not present new issues that might complicate or delay an
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`existing proceeding.” See Dell Inc. v. Network-1 Sec. Solutions, Inc., IPR2013-
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`00385, Paper 17 at 10 (PTAB July 29, 2013) (citing 157 CONG. REC. S1376
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`(daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (“The Office anticipates that
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`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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`-4-
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`
`
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 6,470,399
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`to that proceeding, and thus allowed to file its own briefs and make its own
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`arguments.”) (emphasis added)). That is precisely the situation here.
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`In accordance with the Board’s governing law and rules, each of the factors
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`supporting joinder are present in this Motion for Joinder and are discussed in detail
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`below: (1) reasons why joinder is appropriate; (2) the lack of any new grounds of
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`unpatentability being raised in the subsequent petition; (3) lack of any impact on
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`the trial schedule for the existing instituted review; and (4) simplification of
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`briefing and/or discovery to minimize or remove any impacts on schedule.
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`Kyocera Corp. v. Softview, LLC, IPR2013-00004, Paper 15 at 4 (PTAB April 24,
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`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/Samsung 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 ZTE IPR was instituted on June 21, 2017.
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`IPR2017-00714, Paper 10. Petitioner filed the Olympus/Samsung Petition
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`concurrently with this Motion on July 20, 2017, which is no later than one month
`
`from the institution of IPR2017-00714.
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`
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`-5-
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`
`
`
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 6,470,399
`
`Further, joinder is appropriate because the Olympus/Samsung Petition does
`
`not raise new grounds of unpatentability not already instituted in the ZTE IPR.
`
`The Olympus/Samsung Petition challenges the same claims of the ’399 Patent on
`
`the same ground as raised and instituted in the ZTE IPR. In addition, Petitioner re-
`
`filed the same declaration of Kevin C. Almeroth as in the ZTE IPR (the only
`
`updates are to the party names, date of execution of the declaration, and correction
`
`of minor
`
`typographical errors).
`
` The only difference between
`
`the
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`Olympus/Samsung Petition and the 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/Samsung 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 ground of unpatentability on which the Board instituted
`
`review in the ZTE IPR.
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`C.
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`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 ZTE IPR because of the complete overlap between the
`
`two petitions for the instituted ground. Based on Petitioner’s review of the papers
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`ZTE has submitted to date in the ZTE IPR, Petitioner’s substantive interests align
`-6-
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`
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`
`
`
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 6,470,399
`
`with ZTE’s, and Petitioner foresees no substantive issues or arguments on which it
`
`would depart from ZTE’s submissions going forward.
`
`Petitioner is therefore willing to agree to adhere to all applicable deadlines
`
`set forth in the ZTE IPR. Additionally, Petitioner is prepared to adopt any papers
`
`submitted by ZTE in the joined IPR proceeding. Coordination with the ZTE IPR
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`Petitioners is not necessary because any filing will be public and Petitioner 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
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`14 at 4-5. Further, because Petitioner has re-filed the same expert declaration
`
`submitted in the ZTE IPR, a second deposition of a second expert is not necessary.
`
`Accordingly, the trial schedule for the ZTE IPR should not be adversely affected.
`
`And any “alleged” prejudice or burden to Papst or ZTE—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.
`
`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 Petitioner and ZTE will rely upon the same
`
`
`
`
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`-7-
`
`
`
`
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 6,470,399
`
`prior art and the same basis for rejection of the same claims using the same expert,
`
`Petitioner envisions no differences in position, as discussed above.
`
`Petitioner accepts that it will not be permitted to file any separate arguments
`
`in furtherance of those advanced in ZTE’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 in the
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`joined IPR with which Petitioner disagrees—and Petitioner foresees none at this
`
`time—Petitioner will request a conference call to seek permission and explain its
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`reasons to submit a short separate filing, if needed, directed to points of procedural
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`disagreement with the other petitioners, at the Board’s discretion. The Board can
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`also allow the patent owner a corresponding number of pages to respond to any
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`separate filings. See Dell Inc., IPR2013-00385, Paper 17 at 8; Motorola Mobility,
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`IPR2013-00256, Paper 10 at 8¬9.
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`Petitioner agrees that it will not seek additional time at any deposition. And
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`Petitioner agrees that it will not seek any additional time at oral argument. Indeed,
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`Petitioner intends to maintain a passive understudy role in the joined proceeding.
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`Petitioner will assume a primary role only if ZTE ceases to participate in the IPR,
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`or to the extent ZTE willingly seeks more prominent participation from Petitioner’s
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`counsel. These concessions by Petitioner remove any potential “complication or
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`delay” in connection with joinder, while providing the parties an opportunity to
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`-8-
`
`
`
`
`
`Motion for Joinder
`Inter Partes Review of U.S. Patent No. 6,470,399
`
`address all issues that may arise and avoiding any undue burden on Papst, ZTE,
`
`and the Board. See, e.g., IPR2013-00256, Paper 10 at 9.
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`Accordingly, Petitioner proposes that the scheduling order for the ZTE IPR
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`apply to the joined IPR proceeding.
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`IV. CONCLUSION
`For the foregoing reasons, Petitioner requests its Petition for Inter Partes
`
`Review of the ’399 Patent be granted, and that the Board grant this Motion and
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`join this proceeding with the ZTE IPR. Joinder will ensure a just, speedy, and
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`inexpensive resolution in both proceedings, and will promote efficiency by
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`avoiding duplicative filings and reviews of the same issues.
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`
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`
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`Date: July 20, 2017
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`
`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
`
`
`Attorney for Olympus and, pursuant to
`37 C.F.R. § 42.8(b)(3), Lead Counsel for
`Petitioner
`
`
`
`
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`-9-
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`
`
`
`
`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 July 20, 2017 via Federal Express directed to the attorney of record
`
`for the patent at the following address:
`
`Nicholas T. Peters
`Paul B. Henkelmann
`Joseph Marinelli
`Nicole Little
`FITCH, EVEN, TABIN & FLANNERY LLP
`120 South LaSalle Street, Suite 1600
`Chicago, Illinois 60603
`{ntpete,phenkelmann,jmarinelli,nlittle,PapstIPR}@fitcheven.com
`
`Anthony L. Meola
`SCHMEISER OLSEN & WATTS LLP
`2500 Westchester Avenue, Suite 210
`Purchase, New York 10577
`ameola@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: July 20, 2017
`
`
`
`
`
`By:
`
`
`
`
`
`/ Dion M. Bregman /
`Dion M. Bregman (Reg. No. 45,645)
`
`
`
`
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