IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`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,
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`v.
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`PAPST LICENSING GMBH & CO., KG,
`Patent Owner.
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`CASE: IPR2018-00410
`Patent No. 6,895,449 B2
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`PETITIONER’S MOTION TO WAIVE OR SUSPEND
`RULE 37 C.F.R. § 42.122
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`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,
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`v.
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`PAPST LICENSING GMBH & CO., KG,
`Patent Owner.
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`CASE: IPR2018-00410
`Patent No. 6,895,449 B2
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`PETITIONER’S MOTION TO WAIVE OR SUSPEND
`RULE 37 C.F.R. § 42.122
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`IPR2018-00410
`Petitioner’s Motion to Waive or Suspend
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`I.
`II.
`III.
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`CONTENTS
`Relief Requested ............................................................................................. 1
`Summary of Argument ................................................................................... 1
`Statement of Relevant Facts ........................................................................... 2
`A.
`Litigation History ................................................................................. 2
`B.
`Proceedings Before the Board .............................................................. 4
`IV. Argument ........................................................................................................ 6
`V.
`Conclusion .................................................................................................... 15
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`I.
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`IPR2018-00410
`Petitioner’s Motion to Waive or Suspend
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`RELIEF REQUESTED
`Movants request the Board exercise its discretion under 37 C.F.R. § 42.5(b)
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`and § 42.5(c)(3) to waive or suspend the one-month-from-institution deadline for
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`filing a motion for joinder in a pending inter partes review. Movants make this
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`request so that the Board can consider their motion for joinder into IPR2017-00415
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`concerning U.S. Patent No. 6,895,449 (the ’449 patent) before any request to
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`terminate that inter partes review is acted upon. This relief is warranted because it
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`will serve the interests of justice in the unique circumstances before the Board.
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`II.
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`SUMMARY OF ARGUMENT
`Movants respectfully request that the Board waive or suspend the customary
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`one-month-from-institution deadline for filing a motion to join an inter partes
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`review to combat the gamesmanship of Papst, the patent owner, and to conserve the
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`scarce resources of the Federal Judiciary currently being expended in two separate
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`district court campaigns. Suspension or waiver of the one-month-from institution
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`rule will allow the Movants to join IPR2017-00415, which may otherwise be
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`terminated. IPR2017-00415 will provide an efficient, administrative procedure to
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`determine the patentability of the challenged claims of the ’449 patent, as Congress
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`intended.
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`Accordingly, good cause exists in this unique situation for the Board to waive
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`or suspend the rules and to grant Petitioner’s Motion for Joinder.
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`IPR2018-00410
`Petitioner’s Motion to Waive or Suspend
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`III. STATEMENT OF RELEVANT FACTS
`A. Litigation History
`The ’449 patent is one of five Tasler Patents1 in a patent family that has been
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`the subject of two separate litigation campaigns, one of which has been going on for
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`more than a decade. The Tasler Patents were acquired by Papst Licensing GmbH &
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`Co. KG (Papst) in 2006. Immediately after acquiring the Tasler Patents, Papst began
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`accusing the world’s leading digital camera manufacturers of infringement. See In
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`re Papst Licensing Digital Camera Patent Litig., 778 F.3d 1255, 1260 (Fed. Cir.
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`2015) (Ex. 1011). Casio filed the first declaratory judgment action in October 2006
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`in Washington, D.C. See id. After the District Judge sanctioned Papst for violating
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`her discovery orders, Papst embarked on a forum shopping campaign to manipulate
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`the forums in which it enforced its patents and circumvent the venue where it was
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`sanctioned for misconduct. See id.; see also In re Papst Licensing GmbH & Co. KG
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`Litig., 967 F. Supp. 2d 48, 61-62 (D.D.C. 2013) (“Through its experienced patent
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`lawyers, Papst blatantly disregarded the Sixth PPO. The Court took Papst to task
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`for obfuscating its infringement theories, finding that Papst had done so intentionally
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`as part of its strategy to extend this litigation excessively, since Papst’s business is
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`1 The Tasler Patents are U.S. Patent Nos. 6,470,399; 6,895,449; 8,504,746;
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`8,966,144; and 9,189,437.
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`2
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`litigation.”). Papst commenced filing lawsuits across the country and then asked the
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`IPR2018-00410
`Petitioner’s Motion to Waive or Suspend
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`Judicial Panel on Multidistrict Litigation (JPML) to geographically “centralize” all
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`those cases. In re Papst Licensing GmbH & Co. KG Patent Litig., MDL No. 1880,
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`Dkt. No. 22, 528 F. Supp. 2d 1357 (J.P.M.L. Nov. 5, 2007). The JPML then
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`instituted MDL No. 1880, ordered that it remain in Washington, D.C, and assigned
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`it to District Judge Rosemary Collyer. Id. Later “tag-along” actions were eventually
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`added to the MDL as a “second wave.”
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`At that time, the MDL concerned only the ’449 patent and the earlier-issued
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`U.S. Patent No. 6,470,399 (the ’399 patent). See In re Papst, 778 F.3d at 1258. The
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`MDL case proceeded through claim construction, with a Markman hearing held over
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`three days, and Judge Collyer ultimately granted summary judgment of
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`noninfringement on several grounds. Id. On appeal, the U.S. Court of Appeals for
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`the Federal Circuit reversed Judge Collyer’s claim construction in several respects
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`and vacated the judgment of noninfringement. Id. The MDL case is now on remand
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`and has been re-assigned to the Hon. Randolph Moss. In re Papst Licensing GmbH
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`& Co. KG Patent Litig., Case No. 1:07-mc-00493-RDM, Dkt. No. 632 (July 21,
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`2016).
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`Despite the MDL case pending in Washington, D.C., in July 2015, Papst filed
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`seven new complaints in the U.S. District Court for the District of Delaware accusing
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`several of the parties already in the MDL of infringing U.S. Patents Nos. 8,504,746
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`and 8,966,144 (the ’746 and ’144 patents, respectively). In re: Papst Licensing
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`IPR2018-00410
`Petitioner’s Motion to Waive or Suspend
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`Digital Camera Patent Litig., MDL No. 1880, Dkt. No. 93 (JPML Oct. 13, 2015).
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`Over Papst’s objection, the JPML transferred six of those cases to the MDL case
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`pending in Washington, D.C. Id.
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`On November 30, 2015, Papst filed six new complaints in the Eastern District
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`of Texas accusing manufacturers of mobile phones and tablets of infringing the
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`Tasler Patents. See Papst Licensing GmbH & Co. KG v. Apple, No. 6:15-cv-01095,
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`2017 WL 897172, at *1 (E.D. Tex. Mar. 7, 2017).
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`B.
`Proceedings Before the Board
`Papst’s assertion of the ’399 and ’449 patents against the digital camera
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`manufacturers started long before the America Invents Act was enacted. Although
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`they did not have the ability to file petitions for inter partes review challenging the
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`claims of the ’399 and ’449 patents because of the 35 U.S.C. § 315(b) bar, many of
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`the camera manufacturers filed petitions for inter partes review challenging the more
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`recently asserted ’746 and ’144 patents. The Board instituted trials, and on
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`December 11, 2017, entered eight Final Written Decisions finding that all instituted
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`claims were unpatentable. See IPR2016-01199, -01200, -01211, -01212, -01213, -
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`01214, -01216, -01225.
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`Commencing June 2016, the defendants in the Texas actions began filing
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`petitions for inter partes review. In total, 45 petitions (nine of which were filed with
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`joinder motions) for inter partes review have been filed challenging all five Tasler
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`IPR2018-00410
`Petitioner’s Motion to Waive or Suspend
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`Patents. The Board instituted trials on all five patents. At present, there are ten
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`pending IPRs that have not yet proceeded to Final Written Decision. Final Written
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`Decisions are due in each of these proceedings between February and July of 2018.
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`IPR2017-00415, concerning the ’449 patent, was instituted on May 17, 2017
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`based on a petition filed by Huawei, LG, and ZTE. On June 16, 2017, Camera
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`manufacturer Olympus, who had been litigating the ’449 patent since 2007 in the
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`MDL action, filed a motion for joinder with IPR2017-00415. Olympus Corp. v.
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`Papst Licensing GmbH & Co. KG, IPR2017-01617, Paper 3 (PTAB June 16, 2017).
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`On October 17, 2017, Olympus’ motion was granted. Olympus Corp. v. Papst
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`Licensing GmbH & Co. KG, IPR2017-01617, Paper 7 (PTAB Oct. 17, 2017).
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`Recently, Papst apparently reached settlements with Huawei, LG, and ZTE.
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`The civil actions against Huawei and LG were dismissed on August 11, 2017 and
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`November 27, 2017, respectively, see Papst Licensing GmbH & Co. KG v. Apple,
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`No. 6:15-cv-01095, Dkt. Nos. 584, 674 (E.D. Tex.), and those two parties have been
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`terminated from IPR2017-00415. Papst and ZTE informed the District Court that
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`they reached a settlement in principle resulting in a stay of their litigation, but for
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`several months, they have filed motions seeking a series of extensions of the stay to
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`permit them to finalize a written settlement agreement. See Papst Licensing GmbH
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`5
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`& Co. KG v. Apple, No. 6:15-cv-01095, Dkt. Nos. 658, 671, 675, 686 (E.D. Tex.).
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`IPR2018-00410
`Petitioner’s Motion to Waive or Suspend
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`No Motion to Terminate has yet been filed in IPR2017-00415 as to ZTE.
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`With Papst having reached a settlement with all petitioners in IPR2017-00415
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`except Olympus, and the Board having found all of the challenged claims of the
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`related ’144 and ’746 patents unpatentable, in an effort to derail IPR2017-00415 and
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`salvage the ’449 patent, Papst persuaded Olympus to terminate IPR2017-00415. On
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`December 19, 2017 and December 21, 2017, Papst filed notices with the District
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`Courts in Texas and Washington, D.C. indicating that Papst had reached a settlement
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`with Olympus. See In re Papst Licensing GmbH & Co. KG Patent Litig., MDL No.
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`1880, Dkt. No. 681 (D.D.C. Dec. 21, 2017); Papst Licensing GmbH & Co. KG v.
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`Apple, No. 6:15-cv-01095, Dkt. No. 679 (E.D. Tex. Dec. 19, 2017).
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`Although Movants have not seen the settlement agreement between Papst and
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`Olympus, Movants suspect that the settlement involves, at best, a small payment by
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`Olympus to entice Olympus to accept and thereby terminate IPR2017-00415.
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`Terminating IPR2017-00415 would allow Papst to continue its litigation campaign
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`in the MDL case and the Eastern District of Texas against some of the largest
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`camera, mobile phone, and tablet manufacturers in the world.
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`IV. ARGUMENT
`For more than a decade, Papst has imposed an incredible burden on more than
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`a dozen digital camera, mobile phone, and tablet manufacturers, and an incredible
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`burden on the scarce resources of the Federal Judiciary. Congress created inter
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`IPR2018-00410
`Petitioner’s Motion to Waive or Suspend
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`partes reviews to combat this type of speculation in patent litigation, which led the
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`manufacturers to file IPRs on all five Tasler Patents. Accordingly, the Board
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`instituted 18 trials to review the claims of the Tasler Patents. The first eight
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`decisions found unpatentable every instituted claim of two of the patents (i.e.,
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`the ’746 and ’144 patents).
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`In an effort to salvage one patent and over ten years of litigation, Papst is using
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`a scheme (an accommodation settlement not based on the merits and demerits of
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`each side’s cases) to short-circuit this Board’s determination of the patentability of
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`the claims of the ’449 Patent. The Board should not condone this type of scheme.
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`Rule 42.5(c)(3) was specifically put into place to address such exceptional
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`circumstances by allowing the Board to exercise its discretion to join two inter
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`partes reviews. The decision to grant joinder is discretionary to the Board. 35
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`U.S.C. § 315(c). The Board determines joinder on a case-by-case basis, taking into
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`account the particular facts of each case, substantive and procedural issues, and other
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`considerations. See 157 CONG. REC. S1376 (Mar. 8, 2011) (statement of Sen. Kyl)
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`(when determining whether and when to allow joinder, the Office may consider
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`factors including “the breadth or unusualness of the claim scope” and claim
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`construction issues). The Board is mindful that patent trial regulations, including
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`the rules for joinder, must be construed to secure the just, speedy, and inexpensive
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`IPR2018-00410
`Petitioner’s Motion to Waive or Suspend
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`resolution of every proceeding. See 35 U.S.C. § 316(b); 37 C.F.R. § 42.1(b).
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`Specifically, Rule 42.5(c)(3) allows the Board to excuse late action on a
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`showing of good cause or in the interests of justice.
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`Rule 42.5(c)(3) provides:
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`(3) Late action. A late action will be excused on a showing of good
`cause or upon a Board decision that consideration on the merits would
`be in the interests of justice.
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`37 C.F.R. § 42.5(c)(3). To similar effect is the more general Rule 42.5(b):
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`(b) The Board may waive or suspend a requirement of parts 1, 41,
`and 42 and may place conditions on the waiver or suspension.
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`37 C.F.R. § 42.5(b). Special circumstances may justify waiver of the one-month
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`time period for requesting joinder. Such circumstances exist in this proceeding,
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`particularly, in view of the substantive, procedural, and equitable considerations.
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`Under either (or both) of these Rules, the Board should excuse the timing of
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`Movants’ request to join IPR2017-00415.
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`The Board has previously waived the Rule 42.122(b) due date for joinder
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`motions upon review of the particular circumstances surrounding those joinder
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`requests. For example, the Board forgave petitioner’s months long tardiness in Sony
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`Corp. v. Network-1 Security Solutions, IPR2013-00495, Paper 13 (PTAB Sept. 16,
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`2013). There, the Board found that any chilling effect on settlement was outweighed
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`IPR2018-00410
`Petitioner’s Motion to Waive or Suspend
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`by other factors, including the late-petitioner’s previous attempts to challenge claims
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`in the patent family. Id. at 9. The Board credited the petitioner’s willingness to
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`proceed on the record as left by the other parties with minimum disruption to the
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`schedule as factors weighing toward waiver of the rules and granting joinder. Id.
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`Here, like in Sony Corp., Movants are willing to proceed on the
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`unpatentability grounds of IPR2017-00415 as they currently stand. Joinder will
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`result in little, if any, disruption to the schedule, including no change of the oral
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`argument date of February 13, 2017. And beyond those factors that pointed toward
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`joinder in Sony Corp., the patent owner in the present case has unclean hands –
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`having gamed the system via a non-merits-based settlement with Olympus in an
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`attempt to avoid the PTAB’s jurisdiction. So, the present case presents its own
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`particular circumstances and an even stronger case for waiver of the Rule 42.122(b)
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`due date and grant of joinder than the Sony Corp. example.
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`As set forth in Sony Corp., every request for joinder has its own factual
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`circumstances, which may justify the Board exercising its direction to suspend one
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`or more rules. For each request, the Board analyzes the facts presented and
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`determines whether to exercise its discretion, taking into account all of the particular
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`facts and circumstances and the need to complete proceedings in a just, speedy, and
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`inexpensive manner. See 35 U.S.C. § 316(b); 37 C.F.R. § 42.1(b).
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`IPR2018-00410
`Petitioner’s Motion to Waive or Suspend
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`Papst’s scheme to terminate IPR2017-00415 makes this circumstance so
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`exceptional. As Movants suggest (and as this Board will learn by examining the
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`Olympus settlement agreement that Papst must submit to the Board), Papst has given
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`at least one party, Olympus, a “sweetheart deal” to induce Olympus to settle so that
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`Papst can salvage the ’449 patent. There is no other reasonable explanation for
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`Olympus, who has fought against Papst’s infringement allegations for over a decade,
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`and whose case is effectively stayed at district court pending a claim construction
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`ruling, to have settled at this stage. This is not the kind of legitimate settlement
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`favored by public policy, that is, a compromise based on a weighing of the merits
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`and demerits of each side’s case. Rather, it is gamesmanship to stop this Board from
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`finding unpatentable the challenged claims of the ’449 patent. In the absence of this
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`contrived settlement, IPR2017-00415 would surely proceed to Final Written
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`Decision. Any perceived prejudice by Papst for having the rules waived to allow
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`IRP2017-00415 proceed cannot be considered undue given its gamesmanship in
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`avoiding a merits-based patentability determination of the instituted claims of
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`the ’449 patent.
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`Further, by Movants’ calculation (as shown in the chart in Ex. 1024), Papst’s
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`attempts to enforce the Tasler Patents has collectively resulted in more than 100
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`years of patent litigation. As the Board already has found, all of the instituted claims
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`of the ’144 and ’746 patents are unpatentable, and in its institution decisions
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`regarding the related ’399, ’449, and ’437 patents, the Board found that it was
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`IPR2018-00410
`Petitioner’s Motion to Waive or Suspend
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`reasonably likely that all of the instituted claims of those patents are unpatentable as
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`well. The Movants expect that upon the Board’s issuance of Final Written Decisions
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`in the pending IPRs, all instituted claims will be found unpatentable and Papst’s
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`litigation campaign will be proven to have been a monumental waste of tens of
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`millions of dollars for the manufacturers, and a waste of scarce resources of the
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`Federal Judiciary, including the MDL litigation, the Eastern District of Texas
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`litigation and proceedings before the Court of Appeals for the Federal Circuit.
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`It was exactly this type of situation that motivated Congress to create the inter
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`partes review procedure to provide an efficient and economical way to resolve
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`disputes concerning patentability and to serve the public interest by weeding out bad
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`patents. See 153 CONG. REC. H10271 (Sept. 7, 2007) (statement of Rep. Smith)
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`(“There are two major reasons the committee wrote the bill: first, too many patents
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`of questionable integrity have been approved. Second, holders of those weak patents
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`discovered a novel way to make money, not by commercializing the patents but by
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`suing manufacturing companies whose operations might incorporate the patents.
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`This combination of weak patents and ‘seat-of-the-patents’ litigation has hurt the
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`economy.”). Many of the targets of Papst’s litigation campaign invested heavily in
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`preparing 45 petitions for inter partes review. These petitions succeeded in
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`persuading the Board to institute 18 trials, which cover all five Tasler Patents. Final
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`11
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`Written Decisions in eight of those trials have already found every instituted claim
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`IPR2018-00410
`Petitioner’s Motion to Waive or Suspend
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`of two of the Tasler Patents unpatentable. The Administrative Patent Judges
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`assigned to these proceedings have already become familiar with the claimed subject
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`matter of the Tasler Patents and the asserted prior art. It is that expertise that Papst
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`is trying to escape via its ’449 patent settlement scheme.
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`“The public interest in the benefits of a patent system is best met by
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`procedures that resolve administratively questions affecting patent validity.”
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`Siemens Healthcare Diagnostics, Inc. v. Enzo Life Scis., Inc., No. 4:10-cv-40124-
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`FDS at 2 (D. Mass. Aug. 14, 2013) (citing In re Gartside, 203 F.3d 1305, 1318 (Fed.
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`Cir. 2000)). In instituting inter partes review of the ’449 patent pursuant to
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`IPR2017-00415, the Board found there exists “a reasonable likelihood” that
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`petitioner would prevail in its challenge to the claims. Despite the “settlement”
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`between Papst and Olympus, the patentability of the instituted claims remain highly
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`doubtful. Cf. Synopsys, Inc. v. Mentor Graphics Corp., IPR2012-00042, Paper 24 at
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`4 (PTAB Apr. 25, 2013).
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`Further Congress enacted inter partes reviews to conserve the resources of the
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`Federal Judiciary and weed out weak patents, such as the Tasler Patents. 153 CONG.
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`REC. H10276 (Sept. 7, 2007); see also, e.g., 157 CONG. REC. S5319 (Sept. 6,
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`2011) (AIA “will cure some very clear litigation abuses”). The Final Written
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`Decisions finding the challenged claims unpatenable in the eight decided IPRs in the
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`related Tasler Patents is another “particular circumstance” that favors waiver of the
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`IPR2018-00410
`Petitioner’s Motion to Waive or Suspend
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`time limit and leaves little doubt that the challenged claims of the ’449 patent also
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`are unpatentable. Granting Petitioner’s motions for joinder would efficiently resolve
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`the patentability of the ’449 patent in a streamlined, knowledgeable administrative
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`proceeding. The public interest is served when the patentability of the ’449 Patent
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`can be determined administratively rather than in two separate litigation campaigns
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`in Federal Court.
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`The continued burden on the defendants and the Federal Judiciary in the MDL
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`and Eastern District of Texas litigation (if the motion is denied) is a highly pertinent
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`fact in considering the interests of justice in this case and justifies allowing Movants
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`to step into the shoes of the now settled existing Petitioners in IPR2017-00415. For
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`example, the Board routinely considers whether there are other proceedings
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`involving the same contested patent and unrelated parties in making determinations
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`to terminate a trial after it has been instituted. Indeed, in numerous orders terminating
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`trial following a settlement, the Board has stressed the absence of any litigation
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`concerning the patent involving third parties as an important justification for
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`terminating a proceeding. See, e.g., Macauto v. BOS GmbH & KG, IPR2012-00004,
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`Paper 21 at 2 (PTAB Feb. 4, 2013) (termination warranted where the parties
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`“represented that no other actions [we]re pending”); Vestcom Int’l v. Grandville
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`Printing Co., IPR2013-00031, Paper 27 at 2 (PTAB May 6, 2013). Thus, while the
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`Board generally “expects that a proceeding will terminate after the filing of the
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`IPR2018-00410
`Petitioner’s Motion to Waive or Suspend
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`settlement,” Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug.
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`14, 2012), termination can be inappropriate in light of “related district court action
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`in which infringement of the involved patent has been alleged.” Applied Voice &
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`Speech Techs. v. IPVX Patent Holdings, Inc., IPR2013-00216, Paper 10 at 2 (PTAB
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`July 15, 2013). The continued existence of two separate district court litigation
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`campaigns involving the challenged claims of the ’449 patent is a powerful reason
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`to continue the inter partes review of the ’449 patent. The interests of justice in the
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`present circumstances plainly would be best served by allowing Petitioner to join the
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`nearly completed IPR2017-00415, and pursue a Final Written Decision regarding
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`the patentability of the instituted claims.
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`The advanced state of IPR2017-00415 and the vast scope of the still pending
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`litigations favor the Board denying the pending motion to terminate with respect to
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`Olympus and the inevitable motion to terminate with respect to the only other
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`remaining Petitioner, ZTE. Granting the waiver requested and joinder will give the
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`Board the benefit of Movants’ adversarial views on the issues, thereby easing the
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`burden on the Board of proceeding to conclude an IPR without any petitioner
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`opposing Papst’s positions.
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`Movants acknowledge their request to join IPR2017-00415 is beyond the time
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`set forth in the rules, 37 C.F.R. § 42.122(b), but granting the request is within the
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`Board’s discretion. As all of the Movants are defendants in actions brought by Papst
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`IPR2018-00410
`Petitioner’s Motion to Waive or Suspend
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`asserting inter alia the ’449 patent, it is in the interest of justice and good cause exists
`
`to permit joinder and resolve patentability by administrative rather than judicial
`
`action. See Sony, IPR2013-00495, Paper 13 (permitting late joinder “[g]iven the
`
`unique circumstances presented”).
`
`V. CONCLUSION
`Given the unique circumstances presented here, the Board should exercise its
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`discretion and waive or suspend the customary one-month-from-institution deadline
`
`for filing a motion for joinder in a pending inter partes review. Movants respectfully
`
`submit that it is in the interest of justice, and good cause exists for suspending or
`
`waiving the rule requiring that motions for joinder be brought within one month of
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`the date of institution.
`
`
`
`Dated: December 29, 2017
`
`
`
`
`
`
`
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`Respectfully submitted,
`
`By: / David M. Maiorana /
`
`David M. Maiorana
`Attorney for Canon Inc., Canon USA, Inc.,
`and Canon Financial Services, Inc.
`Pursuant to 37 C.F.R. § 42.8(b)(3), Lead
`Counsel for Petitioner
`
`
`15
`
`
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