RESPONSE TO STATEMENT OF MATERIAL FACTS
`
`1. Petitioner concurrently files this motion to join a petition for inter partes
`
`review and a motion to waive or suspend the rules governing the time limit for
`
`motions for joinder.
`
`RESPONSE: Admitted.
`
`2. As more fully described in the accompanying motion to waive or suspend
`
`the rules, the ’449 patent is one of five patents (hereafter, the Tasler Patents) that
`
`Papst has been asserting against manufactures of digital cameras, mobile phones,
`
`and tablets—asserting them against the digital camera manufacturers for over a
`
`decade.
`
`RESPONSE: Admitted that the ’449 patent is one of the Tasler patents.
`
`Denied as to the other allegations in this paragraph.
`
`3. In 2006, Papst acquired rights to the Tasler Patents, speculating that the
`
`Tasler Patents could be asserted against any electronic device that behaved as a
`
`generic storage device or hard drive when connected to a personal computer. The
`
`Tasler Patents have been the subject of continuous litigation ever since. See In re
`
`Papst Licensing Digital Camera Patent Litig., 778 F.3d 1255, 1260 (Fed. Cir.
`
`2015) (Ex.1011).
`
`RESPONSE: Admitted that Papst acquired the Tasler patents, which have
`
`been the subject to litigation. Denied as to the allegation that the patents have
`Papst Licensing GmbH & Co., KG.
`Petitioner – Canon, Inc., et al.
`Patent Owner - Papst Licensing GmbH & Co., KG.
`IPR2018-00410
`EXH. 2001
`
`1
`
`
`
`1. Petitioner concurrently files this motion to join a petition for inter partes
`
`review and a motion to waive or suspend the rules governing the time limit for
`
`motions for joinder.
`
`RESPONSE: Admitted.
`
`2. As more fully described in the accompanying motion to waive or suspend
`
`the rules, the ’449 patent is one of five patents (hereafter, the Tasler Patents) that
`
`Papst has been asserting against manufactures of digital cameras, mobile phones,
`
`and tablets—asserting them against the digital camera manufacturers for over a
`
`decade.
`
`RESPONSE: Admitted that the ’449 patent is one of the Tasler patents.
`
`Denied as to the other allegations in this paragraph.
`
`3. In 2006, Papst acquired rights to the Tasler Patents, speculating that the
`
`Tasler Patents could be asserted against any electronic device that behaved as a
`
`generic storage device or hard drive when connected to a personal computer. The
`
`Tasler Patents have been the subject of continuous litigation ever since. See In re
`
`Papst Licensing Digital Camera Patent Litig., 778 F.3d 1255, 1260 (Fed. Cir.
`
`2015) (Ex.1011).
`
`RESPONSE: Admitted that Papst acquired the Tasler patents, which have
`
`been the subject to litigation. Denied as to the allegation that the patents have
`Papst Licensing GmbH & Co., KG.
`Petitioner – Canon, Inc., et al.
`Patent Owner - Papst Licensing GmbH & Co., KG.
`IPR2018-00410
`EXH. 2001
`
`1
`
`
`
`been involved in “continuous” litigation and denied that Papst “speculat[ed]
`
`that the Tasler Patents could be asserted against any electronic device that
`
`behaved as a generic storage device or hard drive when connected to a personal
`
`computer.”
`
`4. For example, in 2007, Papst sued several digital camera manufacturers for
`
`infringement of two of the Tasler Patents. See id. The cases against the digital
`
`camera manufacturers have been consolidated in In re: Papst Licensing Digital
`
`Camera Patent Litigation - MDL 1880, C.A. No. 1:07-493 (DCD) and the MDL
`
`was later expanded to include two additional Tasler Patents. In re Papst Licensing
`
`GmbH & Co. KG Patent Litig., MDL No. 1880, Dkt. No. 22 (D.D.C. Nov. 5,
`
`2007).
`
`RESPONSE: Admitted.
`
`5. In 2015, Papst sued manufacturers of mobile phones and tablet devices in
`
`the Eastern District of Texas, alleging infringement of all five of the Tasler Patents.
`
`See Papst Licensing GmbH & Co. KG v. Apple, No. 6:15-cv-01095, 2017 WL
`
`897172, at *1 (E.D. Tex. Mar. 7, 2017). The cases against the mobile phone and
`
`tablet manufacturers have been consolidated for pre-trial activities in Papst
`
`Licensing GmbH & Co. KG v. Apple Inc., Civil Action No. 6:15-cv-1095-RWS
`
`(E.D. Tex).
`
`RESPONSE: Admitted
`
`
`
`2
`
`
`
`6. IPR2017-00415, concerning the ’449 patent, was instituted on May 17, 2017
`
`based on a petition filed by Huawei, LG, and ZTE, all manufacturers of mobile
`
`phones and tablets. On June 16, 2017, Camera manufacturer Olympus filed a
`
`motion to join that proceeding, and its motion was granted on October 17, 2017.
`
`Olympus Corp. v. Papst Licensing GmbH & Co. KG, IPR2017-01617, Paper 3
`
`(PTAB June 16, 2017); Olympus Corp. v. Papst Licensing GmbH & Co. KG,
`
`IPR2017-01617, Paper 7 (PTAB Oct. 17, 2017). On August 23, 2017 and
`
`November 30, 2017, respectively, Huawei and LG were terminated from IPR2017-
`
`00415 due to settlement. Currently, Papst and ZTE have reached a settlement and
`
`are finalizing their settlement agreement. No Motion to Terminate has yet been
`
`filed in IPR2017-00415 as to ZTE.
`
`RESPONSE: Admitted as to the institution date, Olympus motion to join and
`
`terminations of Huawei and LG regarding IPR2017-00415. However, Petitioner
`
`failed to mention that Olympus was also terminated on January 4, 2018
`
`(IPR2017-00415, Paper 29). Denied as to the termination of ZTE. In fact, on
`
`January 8, 2018, a Motion to Terminate ZTE was filed (IPR2017-00415, Paper
`
`30). On January 18, 2018, the PTAB dismissed ZTE and terminated IPR2017-
`
`00415 in its entirety (IPR2017-00415, Paper 32).
`
`7. With Huawei, LG, and ZTE all settling or settled, that left only Olympus to
`
`
`
`3
`
`
`
`pursue IPR2017-00415. Further, with the Board having found all asserted claims of
`
`the related ’144 and ’746 patents unpatentable, and in light of the Board already
`
`having found in its Institution Decision a reasonable likelihood of unpatentability,
`
`there is a reasonable likelihood that all challenged claims of the ’449 patent would
`
`be found unpatentable in IPR2017-00415.
`
`RESPONSE: Denied. A motion to terminate Olympus was filed on December
`
`27, 2017 (IPR2017-00415, Paper 27), two days before Petitioner in this
`
`proceeding filed their Motion for Joinder and twelve days before a motion to
`
`terminate ZTE was filed. Olympus was in fact terminated on January 4, 2018
`
`(IPR2017-00415, Paper 29). Denied as to all other allegations.
`
`8. Therefore, in an effort to derail IPR2017-00415 and thereby salvage the ’449
`
`patent, Papst made a “sweetheart deal” with Olympus.
`
`RESPONSE: Admitted that Papst and Olympus reached a settlement. Denied
`
`that it was a “sweetheart deal”.
`
`9. On December 19, 2017 and December 21, 2017, Papst filed notices with the
`
`District Courts in Texas and Washington, D.C. stating that Papst had reached a
`
`settlement with Olympus and, therefore, it anticipated that IPR2017-00415 would
`
`be terminated without a Final Written Decision.1 See In re Papst Licensing GmbH
`
`& Co. KG Patent Litig., MDL No. 1880, Dkt. No. 681 (D.D.C. Dec. 21, 2017);
`
`
`1 Papst also stated that it anticipates IPR2017-00713, also concerning the ’449 patent, will be terminated. Movants
`do not seek to join that proceeding.
`
`
`
`4
`
`
`
`Papst Licensing GmbH & Co. KG v. Apple, No. 6:15-cv-01095, Dkt. No. 679
`
`(E.D. Tex. Dec. 19, 2017).
`
`RESPONSE: Admitted.
`
`10. Although Movants have not seen the settlement agreement between Papst
`
`and Olympus, Movants suspect that the settlement involves a small payment by
`
`Olympus to entice Olympus to accept and thereby terminate IPR2017-00415. This
`
`Board will learn the details by examining the Olympus settlement agreement that
`
`Papst must submit to the Board with any motion to terminate.
`
`RESPONSE: Denied.
`
`11. Overall, the Board has now reached a Final Written Decision in eight of 18
`
`instituted IPR proceedings against the Tasler Patents. In each of the eight Final
`
`Written Decisions, the Board found every instituted claim of U.S. Patent Nos.
`
`8,504,746 and 8,966,144 (the ’746 and ’144 patents, respectively) unpatentable.
`
`See IPR2016-01199, -01200, -01211, -01212, -01213, -01214, -01216, -01225. The
`
`’746 and ’144 patents are continuations of the ’449 patent that is the subject of the
`
`Pending IPR.
`
`RESPONSE: Denied.
`
`12. The Instant Petition that accompanies the present Motion for Joinder and
`
`
`
`5
`
`
`
`accompanying evidence are identical to the Pending IPR, aside from modifying the
`
`procedural sections to identify petitioners and real parties-in-interest, updating the
`
`listing of related cases, and identifying lead and backup counsel for the Petition.
`
`RESPONSE: Denied. There is no longer a “Pending IPR”. IPR2017-00415
`
`was terminated on January 18, 2018 (IPR2017-00415, Paper 32).
`
`
`
`
`
`
`
`
`6
`
`
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