Paper No. 48
`Filed: December 6, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`ZTE (USA) INC.,
`
`Petitioner
`
`v.
`
`FUNDAMENTAL INNOVATION SYSTEMS INTERNATIONAL LLC,
`
`Patent Owner
`
`
`
`MOTION TO ADD A REAL PARTY IN INTEREST RETROACTIVELY
`
`Case No. IPR2018-00111
`Patent No. 8,624,550 B2
`
`
`
`Before RAE LYNN P. GUEST, JO-ANNE M. KOKOSKI, and
`JON B. TORNQUIST, Administrative Patent Judges
`
`
`
`

`

`IPR2018-00111
`Motion To Add Real Party In Interest Retroactively
`
`
`Table of Contents
`I.
`Introduction ...................................................................................................... 1
`Background ...................................................................................................... 1
`II.
`III. Argument ......................................................................................................... 3
`A.
`The Intervening Change In Law Merits Retroactive
`Addition of ZTE (TX) As A Real Party In Interest .............................. 3
`1.
`The Federal Circuit’s AIT Decision Changed The
`Law .............................................................................................. 3
`There Is No Prejudice To Patent Owner ..................................... 9
`PTAB Precedent Supports Retroactive Naming of
`an Additional Real Party In Interest ......................................... 10
`If The Board Denies Retroactive Identification Of ZTE
`(TX), Then The Trial Should Be Terminated .................................... 12
`IV. Conclusion ..................................................................................................... 13
`
`
`2.
`3.
`
`B.
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`
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`

`

`IPR2018-00111
`Motion To Add Real Party In Interest Retroactively
`
`
`Table of Authorities
`
`Cases
`Applications in Internet Time, LLC v. RPX Corporation, 897 F.3d 1336 (Fed. Cir.
`2018) ............................................................................................................ passim
`Aruze Gaming Macau, Ltd. v. MGT Gaming, Inc.,
`IPR2014-01288, Paper 13 (P.T.A.B. Feb. 20, 2015) .........................................3, 6
`Dep’t of Justice v. IRIS Corp. Berhad,
`IPR2016-00497, Paper 7 (P.T.A.B. Jul. 25, 2016) ................................................ 5
`Elekta, Inc. v. Varian Med. Sys., Inc., \
`IPR2015-01401, Paper 19 (P.T.A.B. Dec. 31, 2015) ............................. 13, 14, 15
`GEA Process Eng’g. Inc. v. Steuben Foods, Inc.,
`IPR2014-00041, Paper 140 (P.T.A.B. Feb. 11, 2015) ........................................... 4
`Gillig v. Nike, Inc.,
`602 F.3d 1354 (Fed. Cir. 2010).............................................................................. 6
`In re Micron Tech., Inc.,
`875 F.3d 1091 (Fed. Cir. 2017)..................................................................... 15, 16
`LG Display Co., Ltd. v. Innovative Display Techs. LLC,
`IPR2014-01362, Paper 12 (P.T.A.B. Mar. 2, 2015) .............................................. 6
`Lumentum Holdings, Inc. v. Capella Photonics, Inc.,
`IPR2015-00739, Paper 38 (P.T.A.B. Mar. 4, 2016) ............................................ 13
`Mobile Tech., Inc. v. Sennco Solutions, Inc.,
`IPR2017-02199 (P.T.A.B. Apr. 10, 2018) ............................................................. 7
`Puzhen Life USA, LLC v. Esip Series 2, LLC,
`IPR2017-02197 (P.T.A.B. Apr. 11, 2018) ............................................................. 7
`Taylor v. Sturgell,
`553 U.S. 880 (2008) ............................................................................................... 5
`TRW Auto. U.S. LLC v. Magna Elecs. Inc.,
`IPR2014-01351, Paper 7 (P.T.A.B. Feb. 10, 2015) ............................................... 6
`Wi-Fi One, LLC v. Broadcom Corp.,
`887 F.3d 1329 (Fed. Cir. 2018).............................................................................. 8
`Zerto, Inc. v. EMC Corp.,
`IPR2014-01254, Paper 32 (P.T.A.B. Feb 12, 2015) .............................................. 5
`Zoll Lifecor Corp. v. Philips Elec.N. Am. Corp.,
`IPR2013-00606, Paper 13 (P.T.A.B. Mar. 20, 2014) ............................................ 4
`
`
`
`

`

`IPR2018-00111
`Motion To Add Real Party In Interest Retroactively
`
`
`Statutes
`35 U.S.C. §312(a)(2) ................................................................................................ 12
`
`Rules
`37 C.F.R. § 42.1 ....................................................................................................... 15
`37 C.F.R. § 42.72 .............................................................................................. 16, 17
`
`Other Authorities
`Patent and Trademark Office Patent Trial Practice Guide, 77 Fed.
`Reg. 48756, 48,759 (Aug. 14, 2012) ..................................................................4, 6
`Practice Guide for Proposed Trial Rules, 77 Fed. Reg. 6868, 6870
`(Feb. 9, 2012) ......................................................................................................... 4
`Revision of Patent Term Adjustment Provisions Relating to Appellate
`Review, Fed. Reg. 49,354, 49,356 (Aug. 16, 2012) ............................................ 12
`
`
`
`
`
`
`
`

`

`IPR2018-00111
`Motion To Add Real Party In Interest Retroactively
`
`I. Introduction
`
`Petitioner ZTE (USA) Inc. (“Petitioner”) respectfully requests leave to add
`
`ZTE (TX) Inc. (“ZTE (TX)”) as a real party in interest retroactively based on the
`
`intervening change in the law presented in Applications in Internet Time, LLC v.
`
`RPX Corporation, 897 F.3d 1336 (Fed. Cir. 2018) (“AIT”). See Paper 45, Order, at
`
`1. ZTE (TX) has never funded or controlled this proceeding, and therefore
`
`Petitioner did not name ZTE (TX) as a real party in interest when the petition was
`
`filed. However, under the new and broadened standard that the Federal Circuit
`
`recently adopted in AIT, ZTE (TX) now arguably qualifies as a real party in
`
`interest. Given the intervening change in the law, and because any change in the
`
`filing date of the petition would be fatal to this proceeding, Petitioner respectfully
`
`requests that the Board enter the amended mandatory notice submitted herewith
`
`and maintain the original filing date of the petition in this instituted trial.
`
`II. Background
`In the related district court case, Patent Owner alleges infringement of U.S.
`
`Patent No. 8,624,550 (the “’550 patent”) by Petitioner and two related entities,
`
`ZTE Corporation and ZTE (TX). ZTE Corporation manufactures the accused
`
`products. Petitioner imports, offers for sale, and sells the accused products in the
`
`United States. By contrast, ZTE (TX) does not make, import, offer for sale, or sell
`
`the accused products. Nor has ZTE (TX) played any role in developing the
`
`
`
`1
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`

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`IPR2018-00111
`Motion To Add Real Party In Interest Retroactively
`
`features Patent Owner has accused of infringement. At most, ZTE (TX) has made
`
`incidental use of the accused products as part of its research and development
`
`directed to next-generation telecommunications technology.
`
`In the petition, Petitioner identified itself and ZTE Corporation as the real
`
`parties in interest.1 ZTE (TX) played no role in preparing, directing, or funding the
`
`petition or this proceeding, so Petitioner did not identify ZTE (TX) as a real party
`
`in interest based on the then-applicable law.
`
`Since then, the Federal Circuit has broadened the standard defining real
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`parties in interest, and Patent Owner has argued for the first time that ZTE (TX)
`
`should have been named as a real party in interest. In light of the new and
`
`broadened standard, as well as Patent Owner’s arguments, Petitioner sought and
`
`obtained the Board’s authorization to file this motion. Paper 45, Order of Conduct
`
`of the Proceeding, at 1.
`
`
`1 Petitioner also identified Samsung Electronics Co., Ltd., and Samsung
`Electronics America, Inc., which were co-petitioners, but the proceeding has since
`been terminated as to those parties. Paper 27 (Decision Terminating Samsung
`Petitioners).
`
`
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`2
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`

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`IPR2018-00111
`Motion To Add Real Party In Interest Retroactively
`
`III. Argument
`A. The Intervening Change In Law Merits Retroactive Addition of
`ZTE (TX) As A Real Party In Interest
`ZTE (TX) never contributed to the control or funding of this proceeding.
`
`Accordingly, under the then-existing standard Petitioner did not name ZTE (TX) as
`
`a real party in interest in the petition. However, the Federal Circuit’s intervening
`
`decision in AIT changed the law, adopting a new and broadened standard under
`
`which ZTE (TX) arguably is a real party in interest. Permitting Petitioner to add
`
`ZTE (TX) retroactively as a real party in interest would cause no prejudice to
`
`Patent Owner, and the Board’s precedent supports doing so.
`
`1. The Federal Circuit’s AIT Decision Changed The Law
`
`Under the standard that existed before AIT, ZTE (TX) was not a real party in
`
`interest because ZTE (TX) neither funded nor controlled the proceeding.
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`However, the Federal Circuit changed the law in AIT, as evidenced by Patent
`
`Owner’s pattern of conduct in this and other related proceedings.
`
`a.
`
`The Standard Before AIT
`
`Prior to AIT, the Board had consistently looked to funding and control of the
`
`proceeding, with control being all but determinative. See, e.g., Aruze Gaming
`
`Macau, Ltd. v. MGT Gaming, Inc., IPR2014-01288, Paper 13 at 11-12 (P.T.A.B.
`
`Feb. 20, 2015) (assessing that “central” to the Board’s determination is whether “a
`
`party other than the named petitioner was controlling, or capable of controlling, the
`
`
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`3
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`IPR2018-00111
`Motion To Add Real Party In Interest Retroactively
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`proceeding before the Board.”) (quoting Patent and Trademark Office Patent Trial
`
`Practice Guide, 77 Fed. Reg. 48756, 48,759 (Aug. 14, 2012) (“Trial Practice
`
`Guide”) (“it should be enough that the nonparty has the actual measure of control
`
`or opportunity to control that might reasonably be expected between two formal
`
`co-parties.”)); see also GEA Process Eng’g. Inc. v. Steuben Foods, Inc., IPR2014-
`
`00041, Paper 140 (P.T.A.B. Feb. 11, 2015); Zoll Lifecor Corp. v. Philips Elec.N.
`
`Am. Corp., IPR2013-00606, Paper 13 (P.T.A.B. Mar. 20, 2014); see also Zerto,
`
`Inc. v. EMC Corp., IPR2014-01254, Paper 32 (P.T.A.B. Feb 12, 2015).
`
`The notion that a non-party’s degree of control over a party’s participation in
`
`the proceeding is a “common consideration” dated even further back to the
`
`Practice Guide for Proposed Trial Rules, 77 Fed. Reg. 6868, 6870 (Feb. 9, 2012)
`
`(citing Taylor v. Sturgell, 553 U.S. 880, 895 (2008)). In a 2016 case, the Board
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`stated that the “mere participation in litigation and assumption of liability do not,
`
`without more, make a real party in interest,” and denied real party in interest status
`
`where the challenger failed to provide any evidence that the party had exercised or
`
`could have exercised “control over the proceeding.” Dep’t of Justice v. IRIS Corp.
`
`Berhad, IPR2016-00497, Paper 7 at 7–9 (P.T.A.B. Jul. 25, 2016).
`
`Similarly, the Board had also found that co-defendants were not necessarily
`
`real parties in interest absent a specific connection to the petition at issue. See
`
`Weatherford Int’l, LLC v. Packers Plus Energy Servs., Inc., IPR2016-01517, Paper
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`
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`4
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`IPR2018-00111
`Motion To Add Real Party In Interest Retroactively
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`23 at 11–15 (P.T.A.B. Feb. 23, 2017); Denso Corp. v. Beacon Navigation GmbH,
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`IPR2013-00026, Paper 34 at 10–11 (P.T.A.B. Mar. 14, 2014). Common ownership
`
`or common counsel between related entities also did not necessarily create privity
`
`or a real party in interest relationship without evidence that the corporate form had
`
`been ignored. See Aruze Gaming, IPR2014-01288, Paper 13 at 19–20 (P.T.A.B.
`
`Feb. 20, 2015) (citing Gillig v. Nike, Inc., 602 F.3d 1354, 1362 (Fed. Cir. 2010));
`
`LG Display Co., Ltd. v. Innovative Display Techs. LLC, IPR2014-01362, Paper 12
`
`at 5–6 (P.T.A.B. Mar. 2, 2015); TRW Auto. U.S. LLC v. Magna Elecs. Inc.,
`
`IPR2014-01351, Paper 7 at 5–8 (P.T.A.B. Feb. 10, 2015). The mere existence of a
`
`parent-subsidiary relationship, without more, was likewise insufficient to establish
`
`that a party that “exercised or could have exercised control over [] participation in
`
`a proceeding” was “funding or directing the proceeding.” Mobile Tech., Inc. v.
`
`Sennco Solutions, Inc., IPR2017-02199 (P.T.A.B. Apr. 10, 2018); see also Puzhen
`
`Life USA, LLC v. Esip Series 2, LLC, IPR2017-02197 (P.T.A.B. Apr. 11, 2018).
`
`Under this pre-AIT guidance from the Board and other authorities, ZTE (TX)
`
`was not a real party in interest to this proceeding at the time of the petition.
`
`b.
`
`The New And Broadened Standard Under AIT
`
`The AIT decision, which was designated precedential by the Federal Circuit,
`
`changed the standard defining a real party in interest. Even as late as April 20,
`
`2018, the Federal Circuit had quoted with approval the old standard that a real
`
`
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`5
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`IPR2018-00111
`Motion To Add Real Party In Interest Retroactively
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`party in interest is one who funds, directs, or controls an IPR proceeding. See Wi-
`
`Fi One, LLC v. Broadcom Corp., 887 F.3d 1329, 1336 (Fed. Cir. 2018). That
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`changed with AIT.
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`The Federal Circuit broadened the inquiry of 35 U.S.C. § 315(b) to apply
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`“not only what might be traditionally known as ‘real parties in interest,’ but privies
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`as well.” Id. at 1347. The court agreed with many of the principles expressed in
`
`the Trial Practice Guide. AIT, 897 F.3d at 9–10; see also id. at n.2 (“we do not
`
`believe that any of the general legal principles expressed in the Trial Practice
`
`Guide cited by the Board here run contrary to the common-law understanding of
`
`“real party in interest.”). However, the Federal Circuit went further in AIT,
`
`concluding that “Congress intended that the term ‘real party in interest’ have its
`
`expansive common-law meaning” and that the Board’s view of the phrase had
`
`been “unduly restrictive.” AIT, 897 F.3d at 1351, 1356. “Thus, the focus of the
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`real-party-in-interest inquiry is on the patentability of the claims challenged in the
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`IPR petition, bearing in mind who will benefit from having those claims canceled
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`or invalidated.” Id. at 1348 (emphasis added).
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`Judge Reyna’s concurrence highlights that the Federal Circuit previously
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`had no opportunity to address the definition of a real party in interest and that his
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`and the majority’s opinions broaden “the standard employed by the PTO in its real
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`party in interest inquiry” Id. at 1358-1359, 1361-1362. The broadened standard
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`6
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`IPR2018-00111
`Motion To Add Real Party In Interest Retroactively
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`makes all the difference for ZTE (TX) in this case. ZTE (TX) has never funded,
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`directed, or controlled the proceeding. But ZTE (TX) might benefit from the
`
`proceeding, thus arguably meeting the new AIT standard.
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`c.
`
`Patent Owner’s Actions Confirm The Change In Law
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`Patent Owner argued during the November 28, 2018 Conference that there
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`has been no change in the law, but its actions show that even Patent Owner
`
`recognized that AIT changed the standard. As noted above, Patent Owner has long
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`known about ZTE (TX) because it originally sued Petitioner, ZTE Corporation,
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`and ZTE (TX) for infringement of the ’550 patent and four other patents. Petitioner
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`has since filed eight petitions for inter partes review of those patents. In each
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`petition, Petitioner consistently named itself and ZTE Corporation—but not ZTE
`
`(TX)—as the real parties in interest. Yet, prior to the AIT decision, Patent Owner
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`never argued that ZTE (TX) was a real party in interest.
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`Patent Owner filed seven preliminary responses in those proceedings
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`without raising any argument about ZTE (TX), including one such preliminary
`
`response filed just days before the Federal Circuit issued the AIT decision. Only
`
`after the AIT decision did Patent Owner first start to argue the issue, as shown in
`
`the timeline on the following page.
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`
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`7
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`

`

`IPR2018-00111
`Motion To Add Real Party In Interest Retroactively
`
`
`Timeline Showing Patent Owner’s Recognition of AIT’s Change in the Law
`2/13/18 – IPR2018-00111, Paper 12, Preliminary Response
`(no challenge to identification of real parties in interest)
`2/13/18 – IPR2018-00110, Paper 11, Preliminary Response
`(no challenge to identification of real parties in interest)
`4/11/18 – IPR2018-00425, Paper 8, Preliminary Response
`(no challenge to identification of real parties in interest)
`4/30/18 – IPR2018-00215, Paper 10, Preliminary Response
`(no challenge to identification of real parties in interest)
`6/8/18 – IPR2018-00214, Paper 10, Preliminary Response
`(no challenge to identification of real parties in interest)
`6/8/18 – IPR2018-00274, Paper 9, Preliminary Response
`(no challenge to identification of real parties in interest)
`7/5/18 – IPR2018-00276, Paper 8, Preliminary Response
`(no challenge to identification of real parties in interest)
`7/9/18 – Federal Circuit Decides AIT ––––––––––––––––––––––
`8/21/18 – IPR2018-00111, Paper 33, Response at 1, 17
`(challenges identification of real parties in interest)
`9/7/18 – IPR2018-01076, Paper 11, Preliminary Response at 1, 4
`(challenges identification of real parties in interest)
`10/16/18 – IPR2018-00425, Paper 22, Response at 1, 23
`(challenges identification of real parties in interest)
`This pattern of behavior demonstrates that, like Petitioner, Patent Owner had
`
`no reason to believe ZTE (TX) was a real party in interest prior to the new and
`
`broadened standard announced in AIT. Only after AIT did Patent Owner first argue
`
`that any of these trials “should have never been instituted” based on failure to
`
`name a real party in interest. Paper 33, Patent Owner’s Response at 18–19.
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`
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`8
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`IPR2018-00111
`Motion To Add Real Party In Interest Retroactively
`
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`Even the phrasing of Patent Owner’s objection, once finally raised in its
`
`Response after institution, suggests that Patent Owner regarded AIT as a change in
`
`the law. Patent Owner argued that “[t]he proceeding should be terminated because
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`Petitioner failed to name ZTE (TX) [as a real party in interest] under the standard
`
`recently clarified by the Federal Circuit.” Paper 33 at 1 (emphasis added); see also
`
`id. at 17–18.
`
`2. There Is No Prejudice To Patent Owner
`Granting the relief Petitioner seeks will not prejudice Patent Owner in any
`
`way. This is not the case of a time-barred party who would have triggered estoppel
`
`of this proceeding if identified in the original petition. Just like Petitioner, ZTE
`
`(TX) was not subject to any estoppel when the petition was filed. Nor is this the
`
`case of an unknown or undisclosed party from whom Patent Owner was deprived
`
`of some needed discovery. Patent Owner has known of ZTE (TX) at least since
`
`filing its patent infringement complaint in district court.
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`The only harm that could have come to Patent Owner from Petitioner’s
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`failure to name a real party in interest will be remedied by the very relief Petitioner
`
`seeks here. Specifically, retroactively adding ZTE (TX) as a real party in interest
`
`will ensure that ZTE (TX) will be subject to estoppel after the Board issues a final
`
`written decision, just like Petitioner and ZTE Corporation. It would put all parties
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`in exactly the same position they would have been in had Petitioner originally
`
`
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`9
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`IPR2018-00111
`Motion To Add Real Party In Interest Retroactively
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`named ZTE (TX) as a real party in interest, as Patent Owner now argues Petitioner
`
`should have done.
`
`3.
`
`PTAB Precedent Supports Retroactive Naming of an
`Additional Real Party In Interest
`In Elekta, Inc. v. Varian Medical Systems, Inc., the Board exercised its
`
`“discretion to maintain the Petition’s original filing date despite Petitioner’s
`
`amended RPI disclosure.” Elekta, Inc. v. Varian Med. Sys., Inc., IPR2015-01401,
`
`Paper 19, at 6 (P.T.A.B. Dec. 31, 2015). One judge noted “[p]atent owners have
`
`capitalized on the rule [e.g., 35 U.S.C. § 312(a)] as a means for having petitions
`
`denied on a basis unrelated to the merits presented in the petitions.” Id. at 26.
`
`In a later precedential decision, the Board held that the statutory requirement
`
`of § 312(a) to name real parties in interest is not jurisdictional, and therefore the
`
`Board has discretion to allow parties to correct defects in the identification of real
`
`parties in interest without changing the filing date. See Lumentum Holdings, Inc. v.
`
`Capella Photonics, Inc., IPR2015-00739, Paper 38 at 4–5 (P.T.A.B. Mar. 4, 2016)
`
`(quoting Elekta with approval). “Simply stated, § 312(a) sets forth requirements
`
`that must be satisfied for the Board to give consideration to a petition, however, a
`
`lapse in compliance with those requirements does not deprive the Board of
`
`jurisdiction over the proceeding, or preclude the Board from permitting such lapse
`
`to be rectified.” Lumentum at 5.
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`
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`10
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`IPR2018-00111
`Motion To Add Real Party In Interest Retroactively
`
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`The Board’s nonjurisdictional discretion is similarly merited in this case.
`
`Here, as in Elekta, and as discussed during the November 28, 2018 Conference
`
`between the Board and the parties, the core functions of the real party in interest
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`requirement have been met: “to assist members of the Board in identifying
`
`potential conflicts, and to assure proper application of the statutory estoppel
`
`provisions.” USPTO Trial Practice Guide at 48759; see also Ex. 2028 at 15:6–21,
`
`19:16–24 (Korniczky, A.L.J.), 17:20–18:11. Indeed, as the Board stated in Elekta:
`
`[a]bsent any indication of an attempt to circumvent estoppel rules, a
`petitioner’s bad faith, or prejudice to a patent owner caused by the
`delay, permitting a petitioner to amend challenged RPI disclosures
`while maintaining the original filing date promotes the core functions
`described in the Trial Practice Guide, while promoting also the “just,
`speedy, and inexpensive resolution of our proceedings.”
`
`Elekta at 9 (emphasis added).
`
`Here, there is no indication of any attempt to circumvent estoppel rules, no
`
`indication of bad faith on Petitioner’s part, and no prejudice to the Patent Owner.
`
`See Ex. 2028 at 17:13–18:11, 21:17–22:5, 26:1–2. Therefore, “permitting [the]
`
`petitioner to amend challenged RPI disclosures while maintaining the original
`
`filing date promotes the core functions described in the Trial Practice Guide, while
`
`promoting also ‘the just, speedy, and inexpensive resolution of [the] proceedings.’”
`
`Elekta at 9; 37 C.F.R. § 42.1. Additionally, the Board and the Federal Circuit have
`
`
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`11
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`IPR2018-00111
`Motion To Add Real Party In Interest Retroactively
`
`made similar accommodations in other situations when there was a change in the
`
`law (e.g., patent venue and patent term adjustment). See In re Micron Tech., Inc.,
`
`875 F.3d 1091, 1094 (Fed. Cir. 2017) (permitting reconsideration of venue
`
`challenges after change in the legal standard); Revision of Patent Term Adjustment
`
`Provisions Relating to Appellate Review, Fed. Reg. 49,354, 49,356 (Aug. 16,
`
`2012) (“apply[ing] the changes to § 1.703 . . . in any timely patent term adjustment
`
`reconsideration proceeding.”).
`
`B. If The Board Denies Retroactive Identification Of ZTE (TX),
`Then The Trial Should Be Terminated
`Although the intervening change in the law justifies retroactive addition of
`
`ZTE (TX) as a real party in interest in this case, Petitioner acknowledges that
`
`absent retroactive identification the trial should be terminated. Under the new and
`
`broadened standard adopted in AIT, ZTE (TX) arguably should have been named
`
`as a real party in interest. Viewed through the new lens of AIT, this trial never
`
`should have been instituted because the petition did not name ZTE (TX) as a real
`
`party in interest. AIT, 897 F.3d at 1348; see also 35 U.S.C. §312(a)(2)). Absent
`
`retroactive identification, as Patent Owner argued in its Response to the Petition,
`
`the proceeding should be terminated. See Paper 33 at 17–19.
`
`The Board is authorized to terminate the trial without rendering a final
`
`written decision. 37 C.F.R. § 42.72. If the Board declines to permit Petitioner to
`
`
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`12
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`IPR2018-00111
`Motion To Add Real Party In Interest Retroactively
`
`add ZTE (TX) as a real party in interest in light of the new and broadened AIT
`
`standard, then it would be a waste of Board and party resources to continue with
`
`this trial. As such, immediate termination of the trial would be appropriate under
`
`§ 42.72.
`
`IV. Conclusion
`Given the new and broadened standard for identifying real parties in interest
`
`under AIT, Petitioner respectfully requests that the Board enter the amended
`
`mandatory disclosures submitted herewith to add ZTE (TX) as a real party in
`
`interest, with retroactive effect. The retroactive addition is merited by the
`
`intervening change in law, will cause no prejudice to Patent Owner, and is
`
`supported by established Board precedent.
`
`Should the Board decline Petitioner’s request, then Petitioner would agree
`
`with Patent Owner that the trial should be terminated. Under such circumstances,
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`termination without a final written decision would be appropriate under § 42.72.
`
`
`
`Date: December 6, 2018
`
`Respectfully submitted,
`
`
`/Charles M. McMahon/
`Charles M. McMahon (Reg. No. 44,926)
`cmcmahon@mwe.com
`Brian A. Jones (Reg. No. 68,770)
`bajones@mwe.com
`Thomas M. DaMario (Reg. No. 77,142)
`tdamario@mwe.com
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`IPR2018-00111
`Motion To Add Real Party In Interest Retroactively
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`MCDERMOTT WILL & EMERY
`444 West Lake Street
`Chicago, IL 60606-0029
`T: 312-372-2000
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`Jiaxiao Zhang (Reg. No. 63,235)
`4 Park Plaza, Suite 1700
`Irvine, CA 92614
`T: 949-757-6398
`Attorneys for Petitioner
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`14
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`IPR2018-00111
`Motion To Add Real Party In Interest Retroactively
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`CERTIFICATE OF SERVICE
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`I certify that I sent a copy of Petitioner’s Motion to Retroactively Add a Real
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`Party in Interest or Terminate This Proceeding on December 6, 2018 to:
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`Hong Annita Zhong at hzhong@irell.com;
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`Michael Fleming at mfleming@irell.com;
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`Jason Sheasby at jsheasby@irell.com; and
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`Patent Owner’s e-mail distribution list at FundamentalIPRs@irell.com.
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`/Charles M. McMahon/
`Charles M. McMahon
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`15
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