Paper No. __
`Filed: September 4, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioner
`v.
`UNILOC LUXEMBOURG, S.A.
`Patent Owner
`____________________
`Patent No. 7,881,902
`____________________
`MOTION FOR JOINDER TO INTER PARTES REVIEW IPR2018-00424
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`Filed: September 4, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioner
`v.
`UNILOC LUXEMBOURG, S.A.
`Patent Owner
`____________________
`Patent No. 7,881,902
`____________________
`MOTION FOR JOINDER TO INTER PARTES REVIEW IPR2018-00424
`
`
`
`
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`
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`
`
`Samsung’s Motion for Joinder with
`Case IPR2018-00424
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`TABLE OF CONTENTS
`
`I.
`II.
`III.
`
` Page
`STATEMENT OF THE PRECISE RELIEF REQUESTED .......................... 1
`STATEMENT OF MATERIAL FACTS ........................................................ 2
`STATEMENT OF REASONS FOR RELIEF REQUESTED ........................ 3
`A.
`Legal Standard ....................................................................................... 3
`B.
`Each of the Relevant Factors Weighs in Favor of the Board
`Granting the Motion for Joinder ........................................................... 4
`1.
`Joinder with the Apple IPR Is Appropriate ................................ 4
`2.
`Petitioner Does Not Propose New Grounds of
`Unpatentability ............................................................................ 5
`Joinder Will Not Negatively Impact the Apple IPR Trial
`Schedule ...................................................................................... 6
`Procedures to Simplify Briefing and Discovery ......................... 7
`4.
`IV. CONCLUSION ................................................................................................ 8
`
`
`3.
`
`i
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`
`
`Samsung’s Motion for Joinder with
`Case IPR2018-00424
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Dell, Inc. v. Network-1 Security Solutions, Inc.,
`IPR2013-00385, Paper 17 (July 29, 2013) ........................................................... 3
`HTC v. Parthenon Unified Memory Architecture LLC.,
`IPR2017-00512, Paper No. 12 (June 1, 2017) ...................................................... 1
`LG v. Memory Integrity, LLC.,
`IPR2015-01353, Paper No. 11 (Oct. 5, 2015) .......................................... 4, 5, 6, 8
`Noven Pharmaceuticals, Inc. v. Novartis AG,
`IPR2014-00550, Paper No. 38 (Apr. 10, 2015) .................................................... 8
`Par Pharmaceutical, Inc. v. Novartis AG,
`IPR2016-01023, Paper No. 20 (Oct. 27, 2016) .................................................... 5
`Samsung Elecs. Co., Ltd. v. Raytheon Co.,
`IPR2016-00962, Paper No. 12 (Aug. 24, 2016) ................................................... 4
`Statutes
`35 U.S.C. § 315(c) ................................................................................................. 1, 3
`Other Authorities
`37 C.F.R. § 42.1(b) ................................................................................................ 1, 5
`37 C.F.R. § 42.22 ....................................................................................................... 1
`37 C.F.R. § 42.53 ....................................................................................................... 7
`37 C.F.R. § 42.122(b) ................................................................................................ 1
`
`
`ii
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`
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`Samsung’s Motion for Joinder with
`Case IPR2018-00424
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`Samsung Electronics America, Inc. (“Petitioner” or “Samsung”) respectfully
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`I.
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`submits this Motion for Joinder, concurrently with a Petition (“the Samsung
`
`Petition”) for inter partes review of U.S. Patent No. 7,881,902 (“the ’902 patent”)
`
`filed herewith.
`
`Pursuant to 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22 and 42.122(b), Samsung
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`requests institution of an inter partes review and joinder with Apple Inc. v. Uniloc
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`Luxembourg SA, IPR2018-00424 (“the Apple IPR” or “the Apple proceeding”),
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`which the Board instituted on August 2, 2018, concerning the same claims 1-6, 9,
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`and 10 of the ’902 patent at issue in the Samsung Petition. This request is being
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`submitted within the time frame set forth in 37 C.F.R. § 42.122(b).1
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`Samsung submits that this request for joinder is consistent with the policy
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`surrounding inter partes reviews, as it is the most expedient way to “to secure the
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`just, speedy, and inexpensive resolution of every proceeding.” See 37 C.F.R. §
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`42.1(b); see also HTC v. Parthenon Unified Memory Architecture LLC., IPR2017-
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`
`1 The one-month date from trial institution in IPR2018-00424 was on September
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`2, 2018, which fell on a weekend. Therefore, the motion is timely because it is
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`being filed on the next business day (September 4, 2018) after September 2, 2018.
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`See 37 C.F.R. § 1.7(a).
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`1
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`
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`Samsung’s Motion for Joinder with
`Case IPR2018-00424
`00512, Paper No. 12 at 5-6 (June 1, 2017). The Samsung Petition and the petition
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`in the Apple IPR are substantially identical; they contain the same grounds (based
`
`on the same prior art combinations and supporting evidence) against the same
`
`claims. (See Ex. 1010, illustrating changes between the instant Petition and the
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`Petition in IPR2018-00424.) Further, upon joining the Apple proceeding, Samsung
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`will act as an “understudy” and will not assume an active role unless the current
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`petitioner ceases to participate in the instituted IPR. Accordingly, the proposed
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`joinder will neither unduly complicate the Apple IPR nor delay its schedule. As
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`such, the joinder will promote judicial efficiency in determining the patentability
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`of the ’902 patent without prejudice to Patent Owner.
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`II.
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`STATEMENT OF MATERIAL FACTS
`1.
`The ’902 patent is at issue in an infringement action against Samsung
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`in the Eastern District of Texas, Case No. 2:17-cv-00650.
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`2.
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`The ’902 patent is also at issue in four other patent infringement
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`actions: Case Nos. 2:17-cv-00737 (E.D. Tex.); 2:17-cv-01629 (W.D.
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`Wa.); 4:18-cv-2917 (N.D. Cal.); and 4:18-cv-00364 (N.D. Cal.).
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`3.
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`On January 5, 2018, Apple Inc. filed a petition for inter partes review
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`(IPR2018-00424) (“the Apple Petition”) requesting cancellation of
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`claims 1-6, 9, and 10 of the ʼ902 patent. Apple Inc. filed a second
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`petition
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`for
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`inter partes
`
`review
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`(IPR2018-01028)
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`requesting
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`2
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`
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`Samsung’s Motion for Joinder with
`Case IPR2018-00424
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`cancellation of claim 8 of the ’902 patent.
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`4.
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`On August 2, 2018 the Board instituted the Apple petition for inter
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`partes review as to all claims and all grounds.
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`5.
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`The Samsung Petition and the Apple Petition are substantially
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`identical; they contain the same grounds (based on the same prior art
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`combinations and supporting evidence) against the same claims.
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`A. Legal Standard
`Pursuant to 35 U.S.C. § 315(c), the Board may grant a motion for joining an
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`inter partes review petition with another inter partes review proceeding. The
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`Board, in determining whether to exercise its discretion to grant joinder, considers
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`whether the joinder motion: (1) sets forth the reasons why joinder is appropriate;
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`(2) identifies any new grounds of unpatentability asserted in the petition; (3)
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`explains what impact (if any) joinder would have on the trial schedule for the
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`existing review; and (4) addresses specifically how briefing and discovery may be
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`simplified. See Frequently Asked Question
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`(“FAQ”) H5, available at
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`http://www.uspto.gov/ip/boards/bpai/prps.jsp (last visited Aug. 30, 2018); see also
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`Dell, Inc. v. Network-1 Security Solutions, Inc., IPR2013-00385, Paper 17 at 3
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`(July 29, 2013).
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`3
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`
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`B.
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`Samsung’s Motion for Joinder with
`Case IPR2018-00424
`Each of the Relevant Factors Weighs in Favor of the Board
`Granting the Motion for Joinder
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`All four factors weigh in favor of granting Petitioner’s motion for joinder.
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`The Samsung Petition is substantively identical to the Apple Petition. Samsung
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`does not present any new grounds of unpatentability. Additionally, as all issues are
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`substantively identical and Samsung will act as an “understudy,” joinder will have
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`minimal or no impact on the pending schedule of the Apple IPR. See LG v.
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`Memory Integrity, LLC., IPR2015-01353, Paper No. 11 at 6 (Oct. 5, 2015)
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`(granting motion for joinder where petitioners requested an “understudy” role).
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`Moreover, the briefing and discovery will be simplified by resolving all issues in a
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`single proceeding. Accordingly, joinder is appropriate.
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`1.
`Joinder with the Apple IPR Is Appropriate
`The Board “routinely grants motions for joinder where the party seeking
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`joinder introduces identical arguments and the same grounds raised in the existing
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`proceeding.” Samsung Elecs. Co., Ltd. v. Raytheon Co., IPR2016-00962, Paper
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`No. 12 at 9 (Aug. 24, 2016) (internal quotations and citations omitted). Here,
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`joinder with the Apple IPR is appropriate because the Samsung Petition introduces
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`identical arguments and the same grounds raised in the existing Apple proceeding
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`(i.e., it challenges the same claims of the same patent, relies on the same expert
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`declaration, and is based on the same grounds and combinations of prior art
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`4
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`Samsung’s Motion for Joinder with
`Case IPR2018-00424
`submitted in the Apple Petition). Other than minor differences, such as differences
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`related to formalities of a different party filing the petition, there are no changes to
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`the facts, citations, evidence, or arguments introduced in the Apple Petition.
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`Because these proceedings are substantively identical, good cause exists for joining
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`this proceeding with the Apple IPR so that the Board, consistent with 37 C.F.R. §
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`42.1(b), can efficiently “secure the just, speedy, and inexpensive resolution” of the
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`Samsung and Apple Petitions in a single proceeding.
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`2.
`
`Petitioner Does Not Propose New Grounds of
`Unpatentability
`
`The Samsung Petition is substantively identical to the petition in the Apple
`
`IPR (i.e., challenging the same claims of the same patent, relying on the same
`
`expert declaration, and on the same grounds and combinations of prior art
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`submitted in the Apple Petition). See LG, IPR2015-01353, Paper No. 11 at 6
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`(granting institution of IPR and motion for joinder where petitioners relied “on the
`
`same prior art, same arguments, and same evidence, including the same expert and
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`a substantively identical declaration”); see also Par Pharmaceutical, Inc. v.
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`Novartis AG, IPR2016-01023, Paper No. 20 at 14 (Oct. 27, 2016) (granting motion
`
`for joinder where petitioners “do not assert any new ground of unpatentability that
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`is not already being considered in [an instituted IPR proceeding], rely on the same
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`5
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`Samsung’s Motion for Joinder with
`Case IPR2018-00424
`arguments and evidence, and do not require any modification to the existing
`
`schedule”).
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`3.
`
`Joinder Will Not Negatively Impact the Apple IPR Trial
`Schedule
`Joinder will have minimal impact, if any, on the Apple IPR trial schedule
`
`because the Samsung Petition presents no new issues or grounds of unpatentability.
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`See LG, IPR2015-01353, Paper No. 11 at 6 (granting IPR and motion for joinder
`
`where “joinder should not necessitate any additional briefing or discovery from
`
`Patent Owner beyond that already required in [the original IPR]”). Further,
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`Petitioner explicitly consents to the existing trial schedule. There are no new issues
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`for the Board to address, and Patent Owner will not be required to present any
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`additional responses or arguments.
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`The Patent Owner’s Response will also not be negatively impacted because
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`the issues presented in the Samsung Petition are identical to the issues presented in
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`the Apple Petition. Patent Owner will not be required to provide any additional
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`analysis or arguments beyond what it will already provide in responding to the
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`petition in the Apple IPR. Also, because the Samsung Petition relies on the same
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`expert and the same declaration, only a single deposition is needed for the
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`proposed joined proceeding.
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`6
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`
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`Samsung’s Motion for Joinder with
`Case IPR2018-00424
`Accordingly, joinder with the Apple IPR does not unduly burden or
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`negatively impact the trial schedule.
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`4.
`Procedures to Simplify Briefing and Discovery
`Samsung explicitly agrees to take an “understudy” role which will simplify
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`briefing and discovery. Specifically, Samsung explicitly agrees, upon joining the
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`Apple proceeding, that the following conditions, as previously approved by the
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`Board in similar circumstances, shall apply so long as the current petitioner in
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`IPR2018-00424 remains an active party:
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`a) all filings by Samsung in the joined proceeding will be consolidated
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`with the filings of the current petitioner, unless a filing concerns
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`issues solely involving Samsung;
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`b) Samsung shall not be permitted to raise any new grounds not already
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`instituted by the Board in the Apple IPR, or introduce any argument
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`or discovery not already introduced by the current petitioner;
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`c) Samsung shall be bound by any agreement between Patent Owner and
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`the current petitioner concerning discovery and/or depositions; and
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`d) at deposition, Samsung shall not receive any direct, cross examination
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`or redirect time beyond that permitted under either 37 C.F.R. § 42.53
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`or any agreement between Patent Owner and the current petitioner.
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`7
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`
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`Samsung’s Motion for Joinder with
`Case IPR2018-00424
`See Noven Pharmaceuticals, Inc. v. Novartis AG, IPR2014-00550, Paper No. 38 at
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`5 (Apr. 10, 2015). Unless and until the current petitioner ceases to participate in the
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`instituted IPR proceeding, Samsung will not assume an active role therein.
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`Thus, by Samsung accepting an “understudy” role, Patent Owner and the
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`current petitioner can comply with the existing trial schedule without needing any
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`duplicative efforts by the Board or the Patent Owner. These steps will minimize
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`any potential complications or delay that potentially may result by joinder. See LG,
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`IPR2015-01353, Paper No. 11 at 6-7 (granting IPR and motion for joinder because
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`“joinder would increase efficiency by eliminating duplicative filings and
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`discovery, and would reduce costs and burdens on the parties as well as the Board”
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`where petitioners agreed to an “understudy” role). Samsung is further willing to
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`agree to any other reasonable conditions the Board deems necessary.
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`IV. CONCLUSION
`Based on the factors discussed above, Samsung respectfully requests that the
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`Board institute the Samsung Petition and grant joinder with the Apple IPR.
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`Dated: September 4, 2018
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`Respectfully submitted,
`
`By: /Naveen Modi/
`Naveen Modi (Reg. No. 46,224)
`Counsel for Petitioner
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`
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`8
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`
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`Samsung’s Motion for Joinder with
`Case IPR2018-00424
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`CERTIFICATE OF SERVICE
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`I hereby certify that on September 4, 2018, I caused a true and correct copy
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`of the foregoing Motion for Joinder to Inter Partes Review IPR2018-00424 to be
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`served via express mail on the Patent Owner at the following correspondence
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`address of record as listed on PAIR:
`
`Uniloc USA Inc.
`Legacy Town Center
`7160 Dallas Parkway
`Suite 380
`Plano TX 75024
`
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`In addition, a courtesy copy of the motion was served electronically upon
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`counsel of record for Patent Owner in the litigation pending before the U.S.
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`District Court for the Eastern District of Texas entitled Uniloc USA, Inc. v.
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`Samsung Elecs. Am., Inc., Case No. 2:17-cv-00650 (E.D. Tex.) at the following
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`addresses:
`
`Paul J. Hayes
`phayes@princelobel.com
`PRINCE LOBEL TYE LLP
`One International Place, Suite 3700
`Boston, MA 02110
`
`Edward R. Nelson III
`ed@nelbum.com
`Anthony M. Vecchione
`anthony@nelbum.com
`NELSON BUMGARDNER PC
`3131 West 7th Street, Suite 300
`Fort Worth, TX 76107
`
`
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`
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`Samsung’s Motion for Joinder with
`Case IPR2018-00424
`
`
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`A courtesy copy of the motion was also served electronically upon counsel
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`of record for Patent Owner in Apple Inc. v. Uniloc Luxembourg SA, IPR2018-
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`00424 at the following addresses:
`
`Brett Mangrum (brett@etheridgelaw.com)
`Sean D. Burdick (sean.burdick@unilocusa.com)
`Ryan Loveless (ryan@etheridgelaw.com)
`James Etheridge (jim@etheridgelaw.com)
`Jeffrey Huang (jeff@etheridgelaw.com)
`Etheridge Law Group
`2600 E. Southlake Blvd., Ste. 120-324
`Southlake, TX 76092
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`A courtesy copy of the motion was also served electronically upon counsel
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`of record for Petitioner Apple Inc. in Apple Inc. v. Uniloc Luxembourg SA,
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`IPR2018-00424 at the following addresses:
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`Andrew Ehmke (andy.ehmke.ipr@haynesboone.com)
`Michael Parsons (michael.parsons.ipr@haynesboone.com)
`Dina Blikshteyn (dina.blikshteyn.ipr@haynesboone.com)
`
`
`
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`By: /Naveen Modi/
`Naveen Modi (Reg. No. 46,224)
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