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: IPR2018-00409
`Patent No. 6,895,449 B2
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`PETITIONER’S MOTION FOR JOINDER UNDER
`37 C.F.R. §§ 42.22 AND 42.122(b)
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`IPR2018-00409
`Petitioner’s Motion for Joinder
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`
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`I. 
`II. 
`III. 
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`CONTENTS
`Relief Requested ............................................................................................. 1 
`Statement of Material Facts ............................................................................ 3 
`Statement of Reasons for Relief Requested ................................................... 6 
`A. 
`Joinder is Appropriate .......................................................................... 8 
`B. 
`No new grounds of unpatentability are asserted in this Petition .......... 9 
`C. 
`Joinder will have, at most, a minimal impact on the trial
`schedule and costs for the Pending IPR ............................................... 9 
`Briefing and discovery ....................................................................... 11 
`D. 
`IV.  Conclusion .................................................................................................... 12 
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`IPR2018-00409
`Petitioner’s Motion for Joinder
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`TABLE OF AUTHORITIES
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`Cases 
`Dell Inc. v. Network-1 Sec. Solutions, Inc., IPR2013-00385, Paper 17 (PTAB
`July 29, 2013) .....................................................................................................7, 8
`In re Papst Licensing Digital Camera Patent Litig., 778 F.3d 1255 (Fed. Cir.
`2015) ....................................................................................................................... 3
`Kyocera Corp. v. Softview, LLC, IPR2013-00004, Paper 15 (PTAB Apr. 24,
`2013) ....................................................................................................................... 9
`Motorola Mobility LLC v. Softview LLC, IPR2013-00256, Paper 10 (PTAB
`June 20, 2013) ...................................................................................................... 12
`Olympus Corp. v. Papst Licensing GmbH & Co. KG, IPR2017-01617, Paper
`3 (PTAB June 16, 2017) ......................................................................................... 4
`Olympus Corp. v. Papst Licensing GmbH & Co. KG, IPR2017-01617, Paper
`7 (PTAB Oct. 17, 2017) ......................................................................................... 5
`Papst Licensing GmbH & Co. KG v. Apple, No. 6:15-cv-01095, 2017 WL
`897172 (E.D. Tex. Mar. 7, 2017) ........................................................................... 4
`Samsung Elecs. Co. Ltd. v. Unifi Sci. Batteries, LLC, IPR2013-00236, Paper
`22 (PTAB Oct. 17, 2013) ....................................................................................... 9
`Trulia, Inc. v. Zillow, Inc., CBM2014-00115, Paper 8 (PTAB May 1, 2014) .......... 8
`Statutes 
`35 U.S.C. § 315 .......................................................................................................... 7
`Other Authorities 
`157 CONG. REC. S1376 (Mar. 8, 2011) ................................................................... 8
`77 Fed. Reg. at 48,758 ............................................................................................... 8
`Rules 
`37 C.F.R. § 42.1 ......................................................................................................... 8
`37 C.F.R. § 42.122 ..................................................................................................... 7
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`ii
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`I.
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`IPR2018-00409
`Petitioner’s Motion for Joinder
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`RELIEF REQUESTED
`Canon Inc., Canon U.S.A., Inc., and Canon Financial Services, Inc. (Canon);
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`Nikon Corporation and Nikon Inc. (Nikon); Samsung Electronics Co., Ltd. and
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`Samsung Electronics America, Inc. (Samsung); and Sanyo Electric Co., Ltd. (Sanyo)
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`(Canon, Nikon, Samsung, and Sanyo collectively, Petitioner) respectfully request to
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`join, pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), the concurrently
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`filed Petition for Inter Partes Review of U.S. Patent No. 6,895,449 (the ’449 patent)
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`(the Instant Petition) with pending inter partes review, IPR2017-00415 (the Pending
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`IPR), which was instituted by the Board on May 17, 2017. IPR2017-00415, Paper 8.
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`Petitioner acknowledges that the Instant Petition and Motion for Joinder are
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`being filed outside the one-month time period set forth in 37 C.F.R. § 42.122(b). As
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`more fully explained in the accompanying Petitioner’s Motion to Waive or Suspend
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`Rule 37 C.F.R. § 42.122, it is in the interest of justice, and good cause exists for
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`Petitioner to be allowed to join the Pending IPR. Specifically, Papst has attempted
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`to manipulate the PTAB’s efficient determination of patentability as Congress
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`intended by giving Olympus, purportedly the last petitioner in the Pending IPR,1 a
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`1
`Papst settled with Huawei and LG and moved to terminate the Pending IPR
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`with respect to those parties. Papst apparently has reached a settlement in principle
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`1
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`“sweetheart deal” so that the instituted claims (which have already been deemed
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`IPR2018-00409
`Petitioner’s Motion for Joinder
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`likely unpatentable) do not reach a Final Written Decision. Papst embarks on this
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`effort after the Board has already found unpatentable every instituted claim in two
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`related, continuation patents.
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`In this unprecedented situation, joinder is appropriate because it will promote
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`the efficient resolution of the validity of the ’449 patent despite Papst’s efforts to
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`avoid such efficient resolution and to continue its protracted and expensive litigation
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`campaign that has spanned a decade (constituting over 100 years’ worth of litigation
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`for the manufacturers, collectively) and cost tens of millions of dollars. The Instant
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`Petition involves the same ’449 patent, covers the same claims instituted, and relies
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`on the same arguments and evidentiary record as in the Pending IPR.2 To avoid any
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`impact on the trial schedule for the Pending IPR, Petitioner suggests several
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`procedures the Board may adopt to simplify briefing and discovery. See, infra,
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`Section III.D. Therefore, joinder would neither complicate the issues nor unduly
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`delay the existing schedule of IPR2017-00415.
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`with ZTE and is working to finalize a settlement agreement. No motion to terminate
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`has yet been filed with respect to ZTE.
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`2 Petitioner’s Exhibits are identical to the corresponding Pending IPR Exhibits.
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`2
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`II.
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`IPR2018-00409
`Petitioner’s Motion for Joinder
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`STATEMENT OF MATERIAL FACTS
`Petitioner concurrently files this motion to join a petition for inter partes
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`review and a motion to waive or suspend the rules governing the time limit for
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`motions for joinder.
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`As more fully described in the accompanying motion to waive or suspend the
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`rules, the ’449 patent is one of five patents (hereafter, the Tasler Patents3) that Papst
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`has been asserting against manufactures of digital cameras, mobile phones, and
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`tablets—asserting them against the digital camera manufacturers for over a decade.
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`In 2006, Papst acquired rights to the Tasler Patents, speculating that the Tasler
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`Patents could be asserted against any electronic device that behaved as a generic
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`storage device or hard drive when connected to a personal computer. The Tasler
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`Patents have been the subject of continuous litigation ever since. See In re Papst
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`Licensing Digital Camera Patent Litig., 778 F.3d 1255, 1260 (Fed. Cir. 2015) (Ex.
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`1011). For example, in 2007, Papst sued several digital camera manufacturers for
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`infringement of two of the Tasler Patents. See id. The cases against the digital
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`camera manufacturers have been consolidated in In re: Papst Licensing Digital
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`Camera Patent Litigation - MDL 1880, C.A. No. 1:07-493 (DCD) and the MDL was
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`3 The Tasler Patents are U.S. Pat. Nos. 6,470,399; 6,895,449; 8,504,746; 8,966,144;
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`and 9,189,437.
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`3
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`later expanded to include two additional Tasler Patents. In re Papst Licensing GmbH
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`IPR2018-00409
`Petitioner’s Motion for Joinder
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`& Co. KG Patent Litig., MDL No. 1880, Dkt. No. 22 (D.D.C. Nov. 5, 2007).
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`In 2015, Papst sued manufacturers of mobile phones and tablet devices in the
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`Eastern District of Texas, alleging infringement of all five of the Tasler Patents. See
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`Papst Licensing GmbH & Co. KG v. Apple, No. 6:15-cv-01095, 2017 WL 897172,
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`at *1 (E.D. Tex. Mar. 7, 2017). The cases against the mobile phone and tablet
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`manufacturers have been consolidated for pre-trial activities in Papst Licensing
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`GmbH & Co. KG v. Apple Inc., Civil Action No. 6:15-cv-1095-RWS (E.D. Tex).
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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, all manufacturers of mobile
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`phones and tablets. On June 16, 2017, Camera manufacturer Olympus filed a motion
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`to join that proceeding, and its motion was granted on October 17, 2017. Olympus
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`Corp. v. Papst Licensing GmbH & Co. KG, IPR2017-01617, Paper 3 (PTAB June
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`16, 2017); Olympus Corp. v. Papst Licensing GmbH & Co. KG, IPR2017-01617,
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`Paper 7 (PTAB Oct. 17, 2017). On August 23, 2017 and November 30, 2017,
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`respectively, Huawei and LG were terminated from IPR2017-00415 due to
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`settlement. Currently, Papst and ZTE have reached a settlement and are finalizing
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`their settlement agreement. No Motion to Terminate has yet been filed in IPR2017-
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`00415 as to ZTE.
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`4
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`With Huawei, LG, and ZTE all settling or settled, that left only Olympus to
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`IPR2018-00409
`Petitioner’s Motion for Joinder
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`
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`pursue IPR2017-00415. Further, with the Board having found all asserted claims of
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`the related ’144 and ’746 patents unpatentable, and in light of the Board already
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`having found in its Institution Decision a reasonable likelihood of unpatentability,
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`there is a reasonable likelihood that all challenged claims of the ’449 patent would
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`be found unpatentable in IPR2017-00415.
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`Therefore, in an effort to derail IPR2017-00415 and thereby salvage the ’449
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`patent, Papst made a “sweetheart deal” with Olympus. On December 19, 2017 and
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`December 21, 2017, Papst filed notices with the District Courts in Texas and
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`Washington, D.C. stating that Papst had reached a settlement with Olympus and,
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`therefore, it anticipated that IPR2017-00415 would be terminated without a Final
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`Written Decision.4 See In re Papst Licensing GmbH & Co. KG Patent Litig., MDL
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`No. 1880, Dkt. No. 681 (D.D.C. Dec. 21, 2017); Papst Licensing GmbH & Co. KG
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`v. 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 a small payment by Olympus
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`to entice Olympus to accept and thereby terminate IPR2017-00415. This Board will
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`4
`Papst also stated that it anticipates IPR2017-00713, also concerning the ’449
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`patent, will be terminated. Movants do not seek to join that proceeding.
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`5
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`learn the details by examining the Olympus settlement agreement that Papst must
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`IPR2018-00409
`Petitioner’s Motion for Joinder
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`submit to the Board with any motion to terminate.
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`Overall, the Board has now reached a Final Written Decision in eight of 18
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`instituted IPR proceedings against the Tasler Patents. In each of the eight Final
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`Written Decisions, the Board found every instituted claim of U.S. Patent Nos.
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`8,504,746 and 8,966,144 (the ’746 and ’144 patents, respectively) unpatentable. See
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`IPR2016-01199, -01200, -01211, -01212, -01213, -01214, -01216, -01225.
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`The ’746 and ’144 patents are continuations of the ’449 patent that is the subject of
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`the Pending IPR.
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`The Instant Petition that accompanies the present Motion for Joinder and
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`accompanying evidence are identical to the Pending IPR, aside from modifying the
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`procedural sections to identify petitioners and real parties-in-interest, updating the
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`listing of related cases, and identifying lead and backup counsel for the Petition.
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`The Leahy-Smith America Invents Act (AIA) permits joinder of inter partes
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`review (IPR) proceedings. The statutory provision governing joinder of post-grant
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`review proceedings states:
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`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
`6
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`IPR2018-00409
`Petitioner’s Motion for Joinder
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`the time for filing such a response, determines warrants the institution
`of an inter partes review under section 314.
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`35 U.S.C. § 315 (c). The rules provide that, “[w]here another matter involving the
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`patent is before the Office, the Board may during the pendency of the inter partes
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`review enter any appropriate order regarding the additional matter including
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`providing for the stay, transfer, consolidation, or termination of any such matter.”
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`37 C.F.R. § 42.122(a). “The Board will determine whether to grant joinder on a
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`case-by-case basis, taking into account the particular facts of each case, substantive
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`and procedural issues, and other considerations.” Dell Inc. v. Network-1 Sec.
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`Solutions, Inc., IPR2013-00385, Paper 17 at 3 (PTAB July 29, 2013) (citing 157
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`CONG. REC. S1376 (Mar. 8, 2011) (statement of Sen. Kyl)).
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`
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`Further, “[t]he Board’s rules for AIA proceedings ‘shall be construed to
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`secure the just, speedy, and inexpensive resolution of every proceeding.’” Trulia,
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`Inc. v. Zillow, Inc., CBM2014-00115, Paper 8 at 19 (PTAB May 1, 2014) (citing 37
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`C.F.R. § 42.1(b); 77 Fed. Reg. at 48,758) (emphasis added). Indeed, there is a
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`“policy preference for joining a party that does not present new issues that might
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`complicate or delay an existing proceeding.” See Dell, IPR2013-00385, Paper 17 at
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`10 (citing 157 CONG. REC. S1376 (Mar. 8, 2011) (statement of Sen. Kyl) (“The
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`Office anticipates that joinder will be allowed as of right—if an Inter Partes review
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`is instituted on the basis of a petition, for example, a party that files an identical
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`7
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`petition will be joined to that proceeding, and thus allowed to file its own briefs and
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`IPR2018-00409
`Petitioner’s Motion for Joinder
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`make its own arguments.”) (emphasis added)). In light of these policies, Petitioner
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`filed an identical petition to IPR2017-00415.
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`In accordance with the Board’s governing law and rules, each of the factors
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`supporting joinder are present in this Motion for Joinder and are discussed in detail
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`below: (1) reasons why joinder is appropriate; (2) the lack of any new grounds of
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`unpatentability being raised in the subsequent petition; (3) lack of impact on the trial
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`schedule for the existing instituted review; and (4) simplification of briefing and/or
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`discovery to minimize or remove any impacts on schedule. Kyocera Corp. v.
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`Softview, LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013); see also
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`Samsung Elecs. Co. Ltd. v. Unifi Sci. Batteries, LLC, IPR2013-00236, Paper 22 at 3
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`(PTAB Oct. 17, 2013). Therefore, Petitioner’s motion to join should be granted.
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`A.
`Joinder is Appropriate
`It is in the interest of justice and good cause exists for waiver or suspension
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`of the Board’s rule setting a one month deadline for motions for joinder, as set forth
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`in the accompanying motion to waive or suspend the rules.
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`Further, joinder is appropriate because the Instant Petition does not raise any
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`new grounds of unpatentability. The Instant Petition challenges the same claims of
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`the ’449 patent on the same grounds raised and instituted in the Pending IPR. The
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`only difference between the Instant Petition and the Pending IPR Petition are the
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`8
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`sections on the Real Party-In-Interest, Related Matters, and Counsel that have been
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`IPR2018-00409
`Petitioner’s Motion for Joinder
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`appropriately updated. In addition, Petitioner re-filed the same declaration of Kevin
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`C. Almeroth as in the Pending IPR (the only updates are to minor formalities).
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`B. No new grounds of unpatentability are asserted in this Petition
`The Instant Petition does not assert any new grounds of unpatentability. It
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`challenges the same claims of the ’449 patent based on the same arguments,
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`evidence, and grounds of unpatentability on which the Board instituted review in the
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`Pending IPR.
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`C.
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`Joinder will have, at most, a minimal impact on the trial schedule
`and costs for the Pending IPR
`Joinder will have a minimal or no impact on the trial schedule and costs for
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`the Pending IPR because of the complete overlap between the two petitions for the
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`instituted grounds. Based on Petitioner’s review of the papers in the Pending IPR,
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`there are no substantive issues or arguments on which it would depart from those
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`already presented in the Pending IPR Petition. Further, in an effort to eliminate any
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`prejudice or inconvenience for the Board, Petitioner proposes the following
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`procedure, which will have no impact on the oral argument date or on the Board’s
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`ability to issue a Final Written Decision within one year from the date of institution.
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`Specifically, Petitioner proposes that the parties and the Board agree upon an
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`appropriate deadline for filing the Petitioner’s Reply, which is currently due to be
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`filed on January 5, 2018 according to the stipulation of the parties to the Pending
`9
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`IPR. A short extension of time would allow for Petitioner to address arguments
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`IPR2018-00409
`Petitioner’s Motion for Joinder
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`raised in the Patent Owner Response, providing the Board with a complete record
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`should it agree to proceed to a Final Written Decision in IPR2017-00415. Such an
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`extension would not impact Due Dates 5-7 (including the oral argument date) while
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`allowing for a more complete record for the Board’s consideration of the merits.
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`Additionally, Petitioner is prepared to adopt any papers submitted in the
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`Pending IPR. Further, because Petitioner has re-filed the same expert declaration
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`submitted in the Pending IPR, a second deposition of a second expert is not
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`necessary.
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`Accordingly, there is no prejudice or burden to Papst. And even if the Board
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`believes that there might be some detriment to Papst, it is outweighed by the
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`substantial public interest in obtaining a speedy and efficient resolution of the
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`patentability of the challenged claims of the ’449 patent, which is currently the
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`subject of two litigation campaigns: one MDL case in the District of Columbia; the
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`other in the Eastern District of Texas. Given the amount of judicial resources
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`consumed by these two litigation campaigns, there is a substantial public interest in
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`resolving the patentability of the challenged claims of the ’449 patent as quickly and
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`efficiently as possible.
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`As explained in the accompanying motion to waive or suspend the rules, Papst
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`seeks to avoid the speedy and efficient resolution of issues concerning patentability
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`10
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`and prolong its lengthy and expensive litigation campaigns concerning the ’449
`
`IPR2018-00409
`Petitioner’s Motion for Joinder
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`patent through its “give away” settlement with Olympus and its motions to
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`terminate.
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`D. Briefing and discovery
`Because all petitioners named in the Pending IPR have purportedly settled
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`with Papst, no simplification of briefing or discovery would be necessary. In
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`particular, the Petitioner in the Instant Petition would step into the shoes of
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`petitioners in the Pending IPR, assuming sole responsibility of the proceeding.
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`Accordingly, there would be no separate arguments or filings in the joined
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`proceedings as might be the case in a typical joinder situation where parties have not
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`been terminated. See, e.g., Motorola Mobility LLC v. Softview LLC, IPR2013-
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`00256, Paper 10 at 8-9 (PTAB June 20, 2013). Furthermore, there is no longer an
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`opportunity for Petitioner to take the deposition of Papst’s expert, thereby
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`eliminating discovery as a potential complication or delay of the joined proceeding.
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`Accordingly, Petitioner’s proposal removes any potential “complication or
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`delay” in connection with joinder, while providing the parties an opportunity to
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`address all issues that may arise and avoiding any undue burden on Papst and the
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`Board. See, e.g., IPR2013-00256, Paper 10 at 9.
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`11
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`IV. CONCLUSION
`For the foregoing reasons, Petitioner requests its Petition for Inter Partes
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`IPR2018-00409
`Petitioner’s Motion for Joinder
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`Review of the ’449 patent be granted, and that the Board grant this Motion and join
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`this proceeding with the Pending IPR (IPR2017-00415). Joinder will ensure a just,
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`speedy, and inexpensive resolution of the issue of patentability of the instituted
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`claims of the ’449 patent, and conserve scarce judicial resources in two separate
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`litigation campaigns.
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`Dated: December 29, 2017
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`Respectfully submitted,
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`By: / David M. Maiorana /
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`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
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`12
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