Paper No. 9
`Trials@uspto.gov
`571.272.7822 Filed: March 20, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`ASUS COMPUTER INTERNATIONAL, INC.,
`Petitioner,
`
`v.
`
`JAMES GOODMAN
`Patent Owner.
`
`Case IPR2018-00047
`Patent 6,243,315 B1
`____________
`
`
`
`Before BRIAN J. McNAMARA, PATRICK M. BOUCHER, and
`KIMBERLY McGRAW, Administrative Patent Judges.
`
`McGRAW, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 C.F.R. §§ 42.108 and 42.122(b)
`
`
`
`
`
`
`
`Trials@uspto.gov
`571.272.7822 Filed: March 20, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`ASUS COMPUTER INTERNATIONAL, INC.,
`Petitioner,
`
`v.
`
`JAMES GOODMAN
`Patent Owner.
`
`Case IPR2018-00047
`Patent 6,243,315 B1
`____________
`
`
`
`Before BRIAN J. McNAMARA, PATRICK M. BOUCHER, and
`KIMBERLY McGRAW, Administrative Patent Judges.
`
`McGRAW, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 C.F.R. §§ 42.108 and 42.122(b)
`
`
`
`
`
`
`
`
`IPR2018-00047
`Patent 6,243,315 B1
`
`
`INTRODUCTION
`I.
`On October 12, 2017, ASUS Computer International (“ACI” or
`“Petitioner”) filed a Petition requesting inter partes review of claims 1–20 of
`U.S. Patent No. 6,243,315 (Ex. 1001, “the ’315 patent”). Paper 2 (“Pet.”).
`Concurrently with its Petition, ACI filed a Motion for Joinder with Samsung
`Electronics America, Inc. v. James B. Goodman, Case IPR2017-02021 (“the
`2021 IPR”). Paper 3 (“Mot.”). James B. Goodman (“Patent Owner”) filed a
`Preliminary Response. Paper 7 (“Prelim. Resp.”).
`For the reasons explained below, we institute an inter partes review of
`claims 1–20 of the ’315 patent and grant ACI’s Motion for Joinder.
`
`II. RELATED PROCEEDINGS
`ACI identifies the following pending judicial matters in which Patent
`Owner asserted the ’315 patent: James B. Goodman v. ASUS Computer
`International, Inc., Case No. 4:16-cv-03232 (S.D. Tex., filed November 2,
`2016), transferred to the Northern District of California, Case No. 17-cv-
`05542-JD; Goodman v. Hewlett-Packard Co., Case No. 4:16-cv-03195 (S.D.
`Tex.); and Goodman v. Samsung Electronics America, Inc., Case No. 1:17-
`cv-05539-VSB (S.D.N.Y.). Pet. 5. Patent Owner also identifies Goodman
`v. Lenovo (United States) Inc., Case No. 17-cv-06782 (N.D. Ca.) and
`Goodman v. Acer American Corporation, Case No. 17-cv-07297 (N.D. Ca)
`as currently pending cases in which the ’315 patent is asserted. Prelim.
`Resp. 3.
`The ’315 patent has also been the subject of three additional petitions
`for inter partes review. In SMART Modular Technologies, Inc. v. Goodman,
`Case IPR2015-01675 (PTAB February 11, 2016) (Paper 6), the Board
`instituted inter partes review, and subsequently granted the parties’ joint
`
`2
`
`
`
`IPR2018-00047
`Patent 6,243,315 B1
`
`motion to terminate (Paper 20). The Board also instituted inter partes
`review in HP, Inc. v. James B. Goodman, Case IPR2017-01994 (PTAB
`March 9, 2018) (Paper 6) and in Samsung Electronics America, Inc. v.
`James B. Goodman, Case IPR2017-02021 (PTAB March 9, 2018) (Paper 7,
`the “2021 IPR Decision on Inst.”), which are both currently pending.
`
`INSTITUTION OF INTER PARTES REVIEW
`III.
`On March 9, 2018, we instituted a trial in Samsung Electronics
`America, Inc. v. James B. Goodman, Case IPR2017-02021 (the “2021 IPR”)
`on the following asserted grounds of unpatentability:
`(a) claims 1 and 5 are unpatentable under 35 U.S.C. § 102(b) as
`anticipated by Dell;
`(b) claims 10 and 16 are unpatentable under 35 U.S.C. § 103(a) over
`Dell and Abe;
`(c) claims 2–4 and 6–9 are unpatentable under 35 U.S.C. § 103(a)
`over Dell and JESD21-C;
`(d) claims 11–15 and 17–20 are unpatentable under 35 U.S.C.
`§ 103(a) over Dell, Abe, and JESD21-C;
`(e) claims 1 and 5 are unpatentable under 35 U.S.C. § 103(a) over
`Ooishi and Palaniswami; and
`(f) claims 10 and 16 are unpatentable under 35 U.S.C. § 103(a) over
`Ooishi, Palaniswami, and Abe.
`2021 IPR Decision on Inst. 20. The instant Petition is nearly identical
`to the petition filed in the 2021 IPR and presents the same grounds of
`unpatentability, the same prior art, and the same declarant testimony as the
`petition in the 2021 IPR. Compare Pet., with IPR2017-02021, Paper 2. The
`arguments presented in Patent Owner’s Preliminary Response opposing
`
`3
`
`
`
`IPR2018-00047
`Patent 6,243,315 B1
`
`institution are nearly identical to the arguments presented in Patent Owner’s
`preliminary response filed in the 2021 IPR. Compare Prelim. Resp. with
`IPR2017-02021, Paper 6.
` In view of the identity of the grounds in the instant Petition and in the
`2021 IPR petition, and the already-considered arguments from Patent Owner
`proffered in the 2021 IPR, we institute inter partes review in this proceeding
`on the grounds presented in the Petition for the same reasons stated in our
`Decision on Institution in the 2021 IPR. We do not institute inter partes
`review on any other grounds.
`
`IV. GRANT OF MOTION FOR JOINDER
`Joinder in inter partes review is subject to the provisions of 35 U.S.C.
`§ 315(c):
`(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
`parties review under section 314.
`
`As the moving party, Petitioner bears the burden of proving that it is
`entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder
`should: (1) set forth the reasons joinder is appropriate; (2) identify any new
`grounds of unpatentability asserted in the petition; and (3) explain what
`impact (if any) joinder would have on the trial schedule for the existing
`review. See Frequently Asked Question H5, https://www.uspto.gov/patents-
`application-process/patent-trial-and-appeal-board/ptab-e2e-frequently-
`asked-questions; see also Kyocera Corp. v. SoftView LLC, Case IPR2013–
`00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15) (representative)
`
`4
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`
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`IPR2018-00047
`Patent 6,243,315 B1
`
`(stating that the motion for joinder should also specifically address how
`briefing and discovery may be simplified).
`ACI asserts its Motion for Joinder is timely under 35 U.S.C. § 315(c)
`and 37 C.F.R § 42.122(b) because it was filed (1) within one year of its
`waiver of service of the complaint in James B. Goodman v. ASUS Computer
`International, Inc., Case No. 4:16-cv-03232 (S.D. Tex., filed November 2,
`2016), which was executed on November 28, 2016, and (2) before the Board
`issued an institution decision in the 2021 IPR. Mot. 8.
`ACI also states that joinder is appropriate because its Petition
`challenges the same patent claims on the same grounds as the 2021 IPR
`petition and relies on the same legal theories and expert declaration relied on
`by the 2021 IPR petitioner, Samsung Electronics America, Inc.
`(“Samsung”). Id. at 4–5, 8–9. ACI states that unless Samsung settles with
`Patent Owner, “ACI will take an understudy role” and “will not submit
`separate filings to the PTO unless it disagrees with the positions of the
`current petitioner.” Id. at 10. ACI offers, in the event of such disagreement,
`to limit any such separate filing to not exceed seven pages. Id. ACI further
`states that ACI and Samsung will address the same prior art using the same
`expert, resulting in no additional expert discovery, that ACI will cooperate
`with counsel for Samsung on all briefing and discovery, that ACI agrees to
`all applicable deadlines in the 2021 IPR Scheduling Order, and that the trial
`schedule will not be affected by joinder. Id. at 9–10. ACI also states that
`Samsung does not oppose ACI’s motion for joinder. Id. at 7.
`Patent Owner opposes the joinder motion and queries whether ACI’s
`Petition “enable[s] Samsung to have the proverbial ‘two bites from the
`apple’ in the arguments presented to the PTAB.” Prelim. Resp. 3. Patent
`
`5
`
`
`
`IPR2018-00047
`Patent 6,243,315 B1
`
`Owner further also states “Petitioner’s Motion [fails] to provide a reasonable
`basis, and the Petition is objectively unnecessary” contending it is
`“extremely unlikely” that the Samsung may settle with the patent owner and
`that, even if settlement were reached, “the same references used by Samsung
`would be available to this Petitioner in the Federal Court” and therefore
`“Petitioner has an alternative recourse.” Id. at 2–3.
`We do not find Patent Owner’s arguments persuasive. We disagree
`that joinder would result in Samsung having “two bites from the apple.”
`Because ACI’s Petition does not present any additional grounds, arguments,
`or evidence beyond that presented by Samsung in the 2021 IPR, and ACI
`has agreed to take an understudy role in the 2021 IPR, we are not persuaded
`that joinder would result in Samsung having an additional “bite” at the
`apple. Mot. 4–5, 8–9.
`We also disagree with Patent Owner’s argument that in the event the
`2021 IPR were settled, joinder is not necessary because ACI may pursue “an
`alternative recourse” in “Federal Court.”1 Prelim. Resp. 2. Rather, we find
`that Petitioner has met its burden of showing that joinder, as compared to
`distinct, parallel proceedings before the Board, is appropriate and will
`conserve the resources of both the parties and the Board. The Petitions are
`substantially identical (compare Pet. with IPR2017-02021, Paper 2) and rely
`on the same evidence, including the same declaration testimony of Andrew
`Wolfe, Ph.D (Ex. 1002, (both proceedings)). Although Patent Owner argues
`
`
`1 The evidence of record shows that ACI filed its petition for inter partes
`review less than one year after ACI was served with a complaint of
`infringement, and therefore ACI is not barred from pursing an inter partes
`review of the ’315 patent under 35 U.S.C. § 315(b). Mot. 8.
`6
`
`
`
`IPR2018-00047
`Patent 6,243,315 B1
`
`that there is no indication that Petitioner has compensated Dr. Wolfe for the
`use of his testimony, we are persuaded that the Petition is supported by
`declaration evidence that, at this juncture, is proper. Prelim. Resp. 2–3. No
`changes in the schedule are anticipated or necessary, and Petitioner’s limited
`participation, if at all, will not impact the timeline of the ongoing trial. We
`limit Petitioner’s participation in the joined proceeding such that Petitioner
`shall require prior authorization from the Board before filing any further
`paper. This arrangement promotes the just and efficient administration of
`the ongoing trial and the interests of Petitioner and Patent Owner.
`
` ORDER
`
`V.
`Accordingly, it is:
`ORDERED that an inter partes review is instituted in IPR2018-00047
`on the following grounds of unpatentability:
`Claims 1 and 5 as unpatentable under 35 U.S.C. § 102(b) as
`anticipated by Dell;
`Claims 10 and 16 as unpatentable under 35 U.S.C. § 103(a) over Dell
`and Abe;
`Claims 2–4 and 6–9 as unpatentable under 35 U.S.C. § 103(a) over
`Dell and JESD21-C;
`Claims 11–15 and 17–20 as unpatentable under 35 U.S.C. § 103(a)
`over Dell, Abe, and JESD21-C;
`Claims 1 and 5 as unpatentable under 35 U.S.C. § 103(a) over Ooishi
`and Palaniswami; and
`Claims 10 and 16 as unpatentable under 35 U.S.C. § 103(a) over
`Ooishi, Palaniswami, and Abe;
`
`7
`
`
`
`IPR2018-00047
`Patent 6,243,315 B1
`
`
`FURTHER ORDERED that the Motion for Joinder with IPR2017-
`02021 (Paper 3) is granted, and ACI is joined as a petitioner in IPR2017-
`02021;
`FURTHER ORDERED that IPR2018-00047 is terminated under 37
`C.F.R. § 42.72, and all further filings shall be made in IPR2017-02021;
`FURTHER ORDERED that, subsequent to joinder, the grounds for
`trial in IPR2017-02021 remain unchanged;
`FURTHER ORDERED that the Scheduling Order in place for
`IPR2017-02021 (Paper 8), as modified by any stipulation agreed to by the
`parties, shall continue to govern the joined proceeding;
`FURTHER ORDERED that throughout IPR2017-02021, Samsung
`and ACI will file each paper, except for motions that do not involve the
`other party, as a single, consolidated filing, subject to the page limits set
`forth in 37 C.F.R. § 42.24, shall identify each such filing as a consolidated
`filing, and will conduct coordinated (not separate) discovery;
`FURTHER ORDERED that for any consolidated filing, if ACI wishes
`to file an additional paper to address points of disagreement with Samsung,
`ACI must request authorization from the Board to file such a paper, and no
`additional paper may be filed unless the Board grants such a motion;
` FURTHER ORDERED that Samsung and ACI shall collectively
`designate attorneys to conduct the cross-examination of any witness
`produced by Patent Owner and the redirect of any witness produced by
`Samsung and ACI, within the timeframes set forth in 37 C.F.R. § 42.53(c) or
`agreed to by the parties;
`
`8
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`IPR2018-00047
`Patent 6,243,315 B1
`
`
` FURTHER ORDERED that Samsung and ACI shall collectively
`designate attorneys to present a consolidated argument at the oral hearing, if
`requested and scheduled;
` FURTHER ORDERED that the case caption in IPR2017-02021 shall
`be changed to reflect joinder of ACI as a petitioner in accordance with the
`attached example; and
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record of IPR2017-02021.
`
`
`
`9
`
`
`
`IPR2018-00047
`Patent 6,243,315 B1
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`SAMSUNG ELECTRONICS AMERICA, INC. and
`ASUS COMPUTER INTERNATIONAL, INC.,
`Petitioner,
`
`v.
`
`JAMES GOODMAN
`Patent Owner.
`
`Case IPR2017-020212
`Patent 6,243,315 B1
`
`
`
`
`
`
`2 Case IPR2018-00047, filed by ASUS Computer International, Inc., has
`been joined with this proceeding.
`
`10
`
`
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