UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`HTC CORPORATION, HTC AMERICA, INC., AND ZTE (USA), INC.
`Petitioners
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`v.
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`AGIS SOFTWARE DEVELOPMENT, LLC,
`Patent Owner
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`
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`Case IPR2019-00485
`Patent 8,213,970
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`MOTION FOR JOINDER TO INTER PARTES REVIEW
`(35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b))
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`142514376.1
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`HTC CORPORATION, HTC AMERICA, INC., AND ZTE (USA), INC.
`Petitioners
`
`v.
`
`AGIS SOFTWARE DEVELOPMENT, LLC,
`Patent Owner
`
`
`
`
`Case IPR2019-00485
`Patent 8,213,970
`
`
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`
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`MOTION FOR JOINDER TO INTER PARTES REVIEW
`(35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b))
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`142514376.1
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`I.
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`STATEMENT OF THE PRECISE RELIEF REQUESTED
`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Petitioners HTC
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`Corporation and HTC America, Inc. (respectively “HTC”) and ZTE (USA), Inc.
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`(“ZTE”), (collectively “Petitioners”) move for joinder with the Inter Partes Review
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`of U.S. Patent No. 8,213,970 (“the ’970 patent”), for which trial was recently
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`instituted on November 20, 2018. IPR2018-01079, paper 9 (IPR2018-01079
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`referred to herein as the “Google IPR”). This motion is timely because it is filed
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`within one month of institution of the Google IPR. 37 C.F.R. § 42.122(b).
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`Petitioners understand that the petitioners in the Google IPR (“the Google
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`Petitioners”) do not oppose Petitioners’ requests for joinder.
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`Petitioners request institution of the concurrently filed Petition for Inter
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`Partes Review. The Petition is a carbon copy of the original Google IPR petition in
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`all material respects. The only substantive changes are in the introduction to identify
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`the correct Petitioners, the mandatory notices under 37 C.F.R. § 42.8(b), and
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`changing “Google” to state “Petitioners.” The concurrently filed Petition and the
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`Google IPR petition challenge the same claims of the ‘970 patent on the same
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`142514376.1
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`grounds relying on the same prior art and evidence, including a declaration identical
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`in substance from the same expert.1
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`Petitioners agree to proceed solely on the grounds, evidence, and arguments
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`advanced, or that will be advanced, in the Google IPR as instituted. Thus, the
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`Petition warrants institution under 35 U.S.C. § 314, and 35 U.S.C. § 315(c) permits
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`Petitioners’ joinder to the Google IPR.
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`Further, if joined, Petitioners agree to adhere to all applicable deadlines in the
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`Google IPR and coordinate all filings with Google Petitioner in the Google IPR. The
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`Google Petitioner will maintain the lead role in the proceedings so long as it is a
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`party to the proceedings and is not estopped under § 315(e)(1). Petitioners will only
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`assume the lead role in the proceedings if the Google Petitioner is no longer a party
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`to the proceedings. Petitioners agree to consolidated filings for all substantive
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`papers in the proceeding. The Google Petitioner and Petitioners will be jointly
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`responsible for the consolidated filings. Petitioners will not advance any arguments
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`separate from those advanced by the Google Petitioner in the consolidated filings.
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`These limitations will avoid lengthy and duplicative briefing. Also, Petitioners will
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`not seek additional depositions or deposition time, and Google Petitioner will lead
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`1 The declaration has been updated only to reflect retention by Petitioners and is
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`otherwise identical to the declaration submitted in the Google IPR.
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`deposition questioning and hearing presentations. Petitioners agree to the foregoing
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`conditions even in the event that other IPRs filed by other, third-party petitioners are
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`joined with the Google IPR.
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`Joinder will help efficiently resolve the disputes among the parties. By
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`joinder, a single Board decision may dispose of the issues raised in the Google IPR
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`for all interested parties. Further, the ’970 patent is material in district court against
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`ZTE (USA), Inc., as well as HTC Corporation and HTC America, Inc. Joinder will
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`estop ZTE and HTC from asserting in district court those issues resolved in a final
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`decision from the Google IPR, thus narrowing the issues in the district court actions.
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`See 35 U.S.C. § 315(e)(2). Finally, joinder would not complicate or delay the
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`Google IPR, and would not adversely affect any schedule set in that proceeding. In
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`sum, joinder would promote efficient adjudication in multiple forums. On the other
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`hand, if instituted, maintaining the Petitioners’ IPR proceeding separate from that of
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`the Google IPR would entail needless duplication of effort.
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`Joinder will not unduly prejudice any party. Because joinder will not add any
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`new substantive issues, delay the schedule, burden deponents, or increase needless
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`filings, any additional costs on the Patent Owner would be minimal. On the other
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`hand, denial of joinder would prejudice ZTE and HTC. Their interests may not be
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`adequately protected in the Google IPR proceedings, particularly if the Google
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`Petitioner settles with the Patent Owner. Petitioners should be allowed to join in a
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`proceeding affecting a patent asserted against them.
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`II. BACKGROUND AND RELATED PROCEEDINGS
`AGIS Software Development LLC (the “Patent Owner”) is the owner of the
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`‘970 patent. The’970 patent is material in several district court cases:
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`Heading
`AGIS Software Development
`LLC v. HTC Corporation
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`AGIS Software Development
`LLC v. Huawei Device USA
`Inc. et al.
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`AGIS Software Development
`LLC v. Apple, Inc.
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`AGIS Software Development
`LLC v. LG Electronics, Inc.
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`ZTE (USA) Inc. v. AGIS
`Software Development LLC
`et al. (formerly 2:17-cv-
`00517 in E.D. Tex.)
`
`
`Number
`2:17-cv-
`00514
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`2:17-cv-
`00513
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`2:17-cv-
`00516
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`2:17-cv-
`00515
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`4:18-cv-
`06185
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`Court
`E.D.
`Tex.
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`E.D.
`Tex.
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`E.D.
`Tex.
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`E.D.
`Tex.
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`N.D.
`Cal.
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`Filed
`June 21,
`2017
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`June 21,
`2017
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`June 21,
`2017
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`June 21,
`2017
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`Oct. 9,
`2018
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`On May 15, 2018, Google filed its IPR petition, IPR2018-01079, against the
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`‘970 patent. The Board instituted the Google IPR on November 20, 2018.
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`Petitioners here timely move for joinder with the Google IPR.
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`III. STATEMENT OF REASONS FOR THE REQUESTED RELIEF
`A. Legal Standards and Applicable Rules
`The Board has discretion to join a properly filed IPR petition to an IPR
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`proceeding. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b); see also Dell Inc. v.
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`Network-1 Sec. Solutions, Inc., IPR2013-00385, Paper 19, at 4-6; Sony Corp. v.
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`Yissum Res. & Dev. Co. of the Hebrew Univ. of Jerusalem, IPR2013- 00326, Paper
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`15, at 3-4; Microsoft Corp. v. Proxyconn, Inc., IPR2013-00109, Paper 15, at 3-4.
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`“The Board will determine whether to grant joinder on a case-by-case basis, taking
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`into account the particular facts of each case, substantive and procedural issues, and
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`other considerations.” Dell, IPR2013-00385, Paper 19, at 3. The movants bear the
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`burden of proof in establishing entitlement to the requested relief. 37 C.F.R.
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`§§ 42.20(c), 42.122(b). A motion for joinder should:
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`(1) set forth the reasons why joinder is appropriate; (2) identify any new
`grounds of unpatentability asserted in the petition; (3) explain what
`impact (if any) joinder would have on the trial schedule for the existing
`review; and (4) address specifically how briefing and discovery may be
`simplified.
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`Dell, IPR2013-00385, Paper 19, at 4.
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`B.
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`Joinder will not add any new grounds of unpatentability or have
`an impact on the trial schedule.
`The Petition is based on the same grounds and combinations of prior art that
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`the Board considered in deciding to institute the Google IPR. For simplicity and
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`efficiency, Petitioners have copied the substance of Google’s petition and
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`accompanying declaration. Petitioners do not seek to introduce grounds or claims
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`not in the Google IPR and seeks only to join the proceeding as instituted.2 Petitioners
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`retained the same expert, who has submitted an identical declaration as in the Google
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`IPR. The Patent Owner should not require any discovery beyond that which it may
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`need in the Google IPR—nor should the Board permit any. The Petition presents no
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`new substantive issues relative to the Google IPR and does not seek to broaden the
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`scope of the Google IPR.
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`For efficiency’s sake, Petitioners will:
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`1. Adhere to all applicable deadlines in the Google IPR;
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`2. Submit “consolidated” filings with the Google Petitioner, as set forth
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`above in the statement of precise relief requested;
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`2 Petitioners note that the USPTO Board in IPR2018-01079 (pg. 17 of paper no. 9),
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`which Petitioners seek joinder of, found that “[i]n this AIA proceeding, however, we
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`must apply the broadest reasonable construction consistent with the specification,
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`otherwise known as ‘BRI.’”
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`3. Refrain from requesting or reserving any additional depositions or
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`deposition time;
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`4. Refrain from requesting or reserving additional oral hearing time; and
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`5. Assume a second-chair role as long as the Google Petitioner remains in
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`the proceeding.3
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`In view of these provisions, joinder should not affect the trial schedule.
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`C.
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`Joinder will promote efficiency by consolidating issues, avoiding
`wasteful duplication, and preventing inconsistency.
`Petitioners present identical arguments and supporting evidence as the Google
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`IPR. Joinder will simplify briefing and discovery. Given that the Google IPR and
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`the Petition address the same prior art and grounds for rejection of the same claims,
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`joining these proceedings allows for joint submissions and discovery, further
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`streamlining the proceedings. This should promote efficiency and conserve the
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`Board’s and the parties’ resources. Further, joinder will estop ZTE and HTC from
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`3 These limitations are consistent with previously granted joinder motions. See, e.g.,
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`Enzymotech Ltd. v. Neptune Techs., IPR2014-00556, Paper 19 (July 9, 2014)
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`(agreeing to procedural concessions, such as “consolidated” responses); Gillette Co.
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`v. Zond, IPR2014-01016, Paper 13 (Nov. 10, 2014) (same); SAP Am. Inc. v.
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`Clouding IP, LLC, IPR2014-00306, Paper 13 (May 19, 2014) (same).
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`asserting in district court those issues resolved in a final written decision in the
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`Google IPR, thus narrowing the issues in the district court actions. See 35 U.S.C.
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`§ 315(e)(2).
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`Joinder is Appropriate
`D.
`The Board has previously stated that it is “mindful of a policy preference for
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`joining a party that does not present new issues.” Enzymotec Ltd. v. Neptune Techs
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`& Bioresources, Inc. IPR2014-00556, Paper No. 19 at 6 (July 9, 2014) (citing 157
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`CONG. REC. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (“The Office
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`anticipates that joinder will be allowed as of right – if an inter partes review is
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`instituted on the basis of a petition, for example, a party that files an identical petition
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`will be joined to that proceeding, and thus allowed to file its own briefs and make
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`its own arguments.”))
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`Here, because Petitioners seek institution solely on the grounds, evidence, and
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`arguments advanced, or that will be advanced, in the Google IPR, institution is
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`warranted under 35 U.S.C. § 314 and Petitioners’ joinder to the Google IPR is
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`appropriate under 35 U.S.C. § 315(c). No new grounds of unpatentability are
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`asserted. As explained above, joinder would not adversely impact the trial schedule,
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`briefing, or discovery in the Google IPR, and the remaining equities compel joinder.
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`Petitioners are filing this Petition and joinder motion to ensure that the trial is
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`completed in the event that the Google Petitioner reaches settlement with Patent
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`Owner.
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`1. Without joinder, ZTE and HTC will be prejudiced
`A denial of joinder would prejudice ZTE and HTC. Their substantial interests,
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`as parties against whom the ‘970 patent has been asserted in a federal district court
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`action, may not be adequately protected by the Google Petitioner in the Google IPR
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`proceedings. For example, ZTE and HTC have an interest that the Google IPR reach
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`a final determination to facilitate a timely and cost-effective end to the controversy
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`between ZTE, HTC, and the Patent Owner. ZTE and HTC should be allowed to join
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`in a proceeding affecting a patent asserted against it.
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`Joinder will not unduly prejudice any party
`2.
`The Petition raises issues already before the Board and long known to the
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`Patent Owner. Addressing patent validity in this proceeding, well on its way towards
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`a final determination, serves the parties’ and Board’s interests.
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`IV. CONCLUSION
`Joinder will not affect the substance, procedure, or scheduling of the Google
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`IPR. Petitioners file this motion under the statutory joinder provisions as
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`contemplated by the AIA. Joinder will simplify the issues and promote efficiency,
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`justice, and speed.
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`142514376.1
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`For the foregoing reasons, Petitioners respectfully request inter partes review
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`of U.S. Patent No. 8,213,970 and joinder with Google LLC v. AGIS Software
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`Development LLC., IPR2018-01079.
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`Date: December 20, 2018
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`
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`Respectfully submitted,
`/Miguel J. Bombach/
`Lead Counsel
`Miguel J. Bombach (Reg. No. 68,636)
`
`Back-up Counsel
`Mathew C. Bernstein (Pro Hac Vice)
`Kyle R. Canavera (Reg. No. 72,167)
`Perkins Coie LLP; 11452 El Camino
`Real, Suite 300, San Diego, CA,
`92130-2080
`
`Attorneys for HTC Corporation and
`HTC America, Inc.
`
`Lionel M. Lavenue (Reg. No. 46,859)
`Bradford C. Schulz (Reg. No. 75,006)
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP; 11955
`Freedom Drive, Reston, VA 20190-
`5675
`
`Cory C. Bell (Reg. No. 75,096)
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP; 2 Seaport Ln,
`Boston, MA, 02210
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`Attorneys for ZTE (USA), Inc.
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`142514376.1
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`Certificate of Service
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`The undersigned certifies that, in accordance with 37 C.F.R. § 42.6(e) and 37
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`C.F.R. § 42.105, service was made on Patent Owner as detailed below.
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`
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`Persons served
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`Date of service December 20, 2018
`Manner of service FEDERAL EXPRESS
`Documents served Petition for Inter Partes Review of U.S. Patent No.
`8,213,970; Petitioners’ Exhibit List; Exhibits 1001 through
`1019; Power of Attorney
`Mark Bowen
`Dale Di Maggio
`Barry Haley
`David Lhota
`MALIN HALEY DIMAGGIO & BOWEN, P.A.
`Spectrum Office Building
`4901 NW 17th Way, Suite 308
`FORT LAUDERDALE FL 33309
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`Patent owner’s correspondence address of record for U.S.
`Patent No. 8,213,970
`
`Alfred R. Fabricant
`Peter Lambrianakos
`Vincent J. Rubio, III
`Alessandra C. Messing
`John A. Rubino
`Brown Rudnick, LLP - New York
`Seven Times Square
`New York, NY 10036
`Additional address known to Petitioner as likely to effect
`service
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`Date: December 20, 2018
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`
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`142514376.1
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`Respectfully submitted,
`/Miguel J. Bombach/
`Lead Counsel
`
`
`
`Miguel J. Bombach (Reg. No. 68,636)
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`Back-up Counsel
`Mathew C. Bernstein (Pro Hac Vice)
`Kyle R. Canavera (Reg. No. 72,167)
`Perkins Coie LLP; 11452 El Camino
`Real, Suite 300, San Diego, CA,
`92130-2080
`
`Attorneys for HTC Corporation and
`HTC America, Inc.
`
`Lionel M. Lavenue (Reg. No. 46,859)
`Bradford C. Schulz (Reg. No. 75,006)
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP; 11955
`Freedom Drive, Reston, VA 20190-
`5675
`
`Cory C. Bell (Reg. No. 75,096)
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP; 2 Seaport Ln,
`Boston, MA, 02210
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`Attorneys for ZTE (USA), Inc.
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`
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`142514376.1
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