`Tel: 571.272.7822
`
`
`Paper No. 15
`Entered: February 2, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`CANON INC., CANON U.S.A., INC., CANON FINANCIAL SERVICES,
`INC., NIKON CORPORATION, NIKON INC.,
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., SANYO ELECTRIC CO.,
`LTD.,
`Petitioner,
`v.
`PAPST LICENSING GMBH & CO. KG,
`Patent Owner.
`____________
`
`Case IPR2018-00410
`Patent 6,895,449 B2
`____________
`
`
`Before JONI Y. CHANG, JENNIFER S. BISK, and MIRIAM L. QUINN,
`Administrative Patent Judges.
`
`
`BISK, Administrative Patent Judge.
`
`
`JUDGMENT
`Denying Inter Partes Review; Dismissing Motion for Joinder;
`Dismissing Motion to Waive or Suspend Rule 37 C.F.R. § 42.122
`37 C.F.R. §§ 42.108, 42.122
`
`
`
`IPR2018-00410
`Patent 6,895,449 B2
`
`
`INTRODUCTION
`On December 29, 2017, Petitioner, listed above, filed a Petition
`requesting inter partes review of claims 1–10, 12–13, and 15–18 of U.S.
`Patent No. 6,895,449 B2 (“the ’449 patent,” Ex. 1001). Paper 1 (“Pet.”).
`Petitioner concurrently filed a Motion for Joinder (Paper 5, “Mot.”), seeking
`to be joined to ZTE (USA) Inc. v Papst Licensing GMBH, Case No.
`IPR2017-00415 (the “ZTE IPR”). In addition, Petitioner filed a Motion to
`Waive or Suspend Rule 37 C.F.R. § 42.122. Paper 6 (“Mot. to Waive”).
`Patent Owner filed an opposition to both the Motion for Joinder (Paper 13,
`“Opp. Mot.”) and the Motion to Waive (Paper 14, “Opp. Mot. to Waive”).
`The due date for any Preliminary Response is not until April 10, 2018.
`Because the dismissal of both of Petitioner’s motions determines the
`outcome of the Petition in this case, we need not wait for Patent Owner’s
`response.
`For the reasons provided below, we dismiss both the Motion for
`Joinder and the Motion to Waive and deny the Petition.
`
`RELATED PROCEEDINGS
`The parties indicate that the ’449 patent has been asserted in cases
`taking place in several district courts. Pet. 3–4; Paper 12, 7. This patent has
`also been challenged in several other petitions for inter partes review. Pet. 3–
`4; Paper 12, 2–7.
`The ’449 patent is also the subject of the ZTE IPR. In that case, we
`instituted trial on May 17, 2017 (IPR2017-00415, Paper 8), but terminated it
`on January 18, 2018, because the parties settled their dispute (IPR2017-
`00415, Paper 32).
`
`2
`
`
`
`IPR2018-00410
`Patent 6,895,449 B2
`
`
`ANALYSIS
`A. Petitioner’s Motions are Moot
`Petitioner seeks joinder with the ZTE IPR. Mot. 1. The ZTE IPR has
`been terminated. See IPR2017-00415, Paper 32. Hence, there is no pending
`proceeding for Petitioner to join. Accordingly, we dismiss the Motion for
`Joinder as moot. Likewise, because the Motion to Waive or Suspend Rule
`37 C.F.R. § 42.122 requests waiver of the deadline for filing the Motion for
`Joinder (Mot. to Waive 1), it is also moot.
`
`B. The Petition is Time-Barred under 35 U.S.C. § 315(b)
`Section 315(b) bars institution of inter partes review when the petition
`is filed more than one year after the petitioner is served with a complaint
`alleging infringement of the patent. 35 U.S.C. § 315(b). There is no dispute
`that Petitioner was served with a complaint alleging infringement of the ’449
`patent more than one year before it filed its Petition. See Mot. 3–4; Mot. to
`Waive 2–4. The Petition, therefore, is statutorily barred, and no inter partes
`review may be instituted. 35 U.S.C. § 315(b).
`
`ORDER
`
`Accordingly, it is
`ORDERED that the Motion for Joinder is dismissed as moot;
`FURTHER ORDERED that the Motion to Waive or Suspend Rule 37
`C.F.R. § 42.122 is dismissed as moot; and
`FURTHER ORDERED that the Petition for inter partes review of
`claims 1–10, 12–13, and 15–18 of the ’449 patent is denied.
`
`
`
`
`3
`
`
`
`IPR2018-00410
`Patent 6,895,449 B2
`
`For PETITIONER:
`David Maiorana
`dmaiorana@jonesday.com
`
`Matthew Johnson
`mwjohnson@jonesday.com
`
`David Witcoff
`dlwitcoff@jonesday.com
`
`Marc Blackman
`msblackman@jonesday.com
`
`Carrie Beyer
`carrie.beyer@dbr.com
`
`Nikola Colic
`nick.colic@dbr.com
`
`Brian Rupp
`brian.rupp@dbr.com
`
`Mark Ungerman
`mungerman@ungermanip.com
`
`
`For PATENT OWNER:
`
`Gregory S. Donahue
`gdonahue@dpelaw.com
`
`Andrew DiNovo
`adinovo@dpelaw.com
`
`
`4
`
`
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