Paper No. ___
`Filed: January 10, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`—————————————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`—————————————
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`ZTE (USA), INC.
`
`Petitioner,
`
`v.
`Cywee Group Ltd.
`(record) Patent Owner.
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`
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`—————————————
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`Patent No. 8,552,978
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`—————————————
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`MOTION FOR JOINDER TO INTER PARTES REVIEW IPR2018-01257
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`Filed: January 10, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`—————————————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`—————————————
`
`ZTE (USA), INC.
`
`Petitioner,
`
`v.
`Cywee Group Ltd.
`(record) Patent Owner.
`
`
`
`—————————————
`
`Patent No. 8,552,978
`
`—————————————
`
`MOTION FOR JOINDER TO INTER PARTES REVIEW IPR2018-01257
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`ZTE’s Motion for Joinder with
`Case IPR2018-01257
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`TABLE OF CONTENTS
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` I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED .......................... 1
`STATEMENT OF MATERIAL FACTS ........................................................ 2
`II.
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED ........................ 3
`A.
`Legal Standard ....................................................................................... 3
`B.
`Each of the Factors Weighs in Favor of the Board
`Granting the Motion for Joinder............................................................ 4
`Joinder with the Google IPR Is Appropriate ......................................... 5
`Petitioner Does Not Propose New Grounds of
`Unpatentability ...................................................................................... 6
`No Impact on the Google IPR Trial Schedule ...................................... 6
`3.
`Procedures to Simplify Briefing and Discovery ................................... 7
`4.
`IV. CONCLUSION ................................................................................................ 9
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`
`1.
`2.
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`i
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`ZTE’s Motion for Joinder with
`Case IPR2018-01257
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`TABLE OF AUTHORITIES
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`Page(s)
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`Cases
`Dell, Inc. v. Network-1 Security Solutions, Inc.,
`IPR2013-00385, Paper 17 (July 29, 2013) ........................................................... 4
`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, 6, 7, 9
`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) .................................................... 6
`Samsung Elecs. Co., Ltd. v. Raytheon Co.,
`IPR2016-00962, Paper No. 12 (Aug. 24, 2016) ................................................... 5
`Samsung Elecs. Co., Ltd. v Uniloc 2017 LLC,
`IPR2018-01383, Paper No. 17 (Nov. 19, 2018) ................................................... 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 ....................................................................................................... 8
`37 C.F.R. § 42.122(b) ................................................................................................ 1
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`
`ii
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`ZTE’s Motion for Joinder with
`Case IPR2018-01257
`I. STATEMENT OF THE PRECISE RELIEF REQUESTED
`ZTE (USA), Inc. (“Petitioner” or “ZTE”) respectfully submits this Motion for
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`Joinder, concurrently with a Petition (“the ZTE petition”) for inter partes review of
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`U.S. Patent No. 8,552,978 (“the ’978 patent”) filed herewith.
`
`Pursuant to 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22 and 42.122(b), ZTE
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`requests institution of an inter partes review and joinder with Google LLC v. Cywee
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`Group Ltd., IPR2018-01257 (“the Google IPR”), which the Board instituted on
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`December 11, 2018, concerning the same claims 10 and 12 of the ’978 patent at issue
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`in the ZTE petition. This request is being submitted within the time set forth in 37
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`C.F.R. § 42.122(b).
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`ZTE’s request for joinder is consistent with the policy surrounding inter
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`partes reviews, as it is the most expedient way to “to secure the just, speedy, and
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`inexpensive resolution of every proceeding.” See 37 C.F.R. § 42.1(b); see also HTC
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`v. Parthenon Unified Memory Architecture LLC., IPR2017-00512, Paper No. 12 at
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`5-6 (June 1, 2017). The ZTE petition and the Google IPR are substantively identical;
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`they contain the same grounds (based on the same prior art combinations and
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`supporting evidence) against the same claims. (See Ex. 1050, illustrating changes
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`between the instant petition and the petition in IPR2018-01257.) Further, upon
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`joining the Google IPR, ZTE will act as an “understudy” and will not assume an
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`active role unless the current petitioner ceases to actively participate in the instituted
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`1
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`
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`ZTE’s Motion for Joinder with
`Case IPR2018-01257
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`IPR. Accordingly, the proposed joinder will neither unduly complicate the Google
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`IPR nor delay its schedule. As such, the joinder will promote judicial efficiency in
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`determining the patentability of the ’978 patent without prejudice to Patent Owner.
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`II. STATEMENT OF MATERIAL FACTS
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`1.
`
`The ’978 Patent has been at issue in one infringement action against
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`ZTE: CyWee Group Ltd. v. ZTE (USA), 17-cv-02130 (S.D. Cal.). The
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`parties in that action recently filed claim construction briefs and the
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`court has not yet set a trial date.
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`2.
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`The ’978 Patent is also at issue in seven other patent infringement
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`actions: (1) CyWee Group Ltd. v. Google, Inc., 18-cv-00571 (D. Del.);
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`(2) CyWee Group Ltd. v. HTC Corporation et al., 17-cv-00932 (W.D.
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`Wash.); (3) CyWee Group Ltd. v. Motorola Mobility LLC, 17-cv-00780
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`(D. Del.); (4) CyWee Group Ltd. v. Huawei Technologies Co., Inc. et
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`al., 17-cv-00495 (E.D. Tex.); (5) CyWee Group Ltd. v. LG Electronics,
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`Inc. et al., 17-cv-01102 (S.D. Cal.); (6) CyWee Group Ltd. v. Samsung
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`Electronics Co. Ltd. et al., 17-cv-00140 (E.D. Tex.); and (7) CyWee
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`Group Ltd. v. Apple Inc., 14-cv-01853 (N.D. Cal.).
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`3.
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`On June 14, 2018, Google LLC. filed a petition for inter partes review
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`(IPR2018-1257) (“the Google petition”) requesting cancellation of
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`claims 10 and 12 of the ʼ978 patent.
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`2
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`ZTE’s Motion for Joinder with
`Case IPR2018-01257
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`4.
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`On December 11, 2018 the Board instituted the Google petition for
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`inter partes review as to all challenged claims and all grounds.
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`5.
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`The ZTE petition and the Google petition are substantively identical;
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`they contain the same grounds (based on the same prior art
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`combinations and supporting evidence) against the same claims. Both
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`petitions rely upon the declaration of Professor Majid Sarrafzadeh
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`dated June 13, 2018. Ex. 1002 (in both cases).
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`6. On January 8, 2019, Samsung Electronics Company, Ltd. (“Samsung”)
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`filed a petition for inter partes review (IPR2019-00534) (“the Samsung
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`petition”) requesting cancellation of claims 10 and 12 of the ʼ978 patent
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`and seeking joinder with the Google petition. In the motion for joinder
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`accompanying the Samsung petition, Samsung indicates that its petition
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`and the Google petition are “substantially identical,” and that they have
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`“the same grounds (based on the same prior art combinations and
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`supporting evidence) against the same claims.” (IPR2019-00534, paper
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`no. 3.)
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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. See 35
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`3
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`
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`ZTE’s Motion for Joinder with
`Case IPR2018-01257
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`U.S.C. § 315(c). The Board, in determining whether to exercise its discretion to
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`grant joinder, considers whether the joinder motion: (1) sets forth the reasons why
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`joinder is appropriate; (2) identifies any new grounds of unpatentability asserted in
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`the petition; (3) explains what impact (if any) joinder would have on the trial
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`schedule for the existing review; and (4) addresses specifically how briefing and
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`discovery may be simplified. See Frequently Asked Question (“FAQ”) H5,
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`available at http://www.uspto.gov/ip/boards/bpai/prps.jsp (last visited Jan. 3, 2019);
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`see also Dell, Inc. v. Network-1 Security Solutions, Inc., IPR2013-00385, Paper No.
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`17 at 3 (July 29, 2013).
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`B.
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`Each of the Factors Weighs in Favor of the Board Granting
`the Motion for Joinder
`All four factors weigh in favor of granting the motion for Petitioner. The ZTE
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`petition is substantively identical to the Google petition. ZTE does not present any
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`new grounds of unpatentability. Additionally, as all substantive issues are identical
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`and ZTE will act as an “understudy,” joinder should have no impact on the pending
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`schedule of the Google IPR. See LG v. Memory Integrity, LLC., IPR2015-01353,
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`Paper No. 11 at 6 (Oct. 5, 2015) (granting motion for joinder where petitioners
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`requested an “understudy” role); see also Samsung Electronics America, Inc. v.
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`Uniloc 2017 LLC, IPR2018-01383, Paper No. 17 at 4-5 (Nov. 19, 2018) (granting
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`motion for joinder). Moreover, the briefing and discovery will be simplified by
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`4
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`resolving all issues in a single proceeding. Accordingly, joinder is appropriate.
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`ZTE’s Motion for Joinder with
`Case IPR2018-01257
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`Joinder with the Google IPR Is Appropriate
`1.
`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 No.
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`12 at 9 (Aug. 24, 2016) (emphasis in original) (internal quotations and citations
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`omitted). Here, joinder with the Google IPR is appropriate because the ZTE petition
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`submits identical arguments and the same grounds introduced in the existing Google
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`IPR. More specifically, the ZTE petition copies verbatim the challenges set forth in
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`the Google petition and relies on the same evidence, including the same expert
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`declaration, Professor Sarrafzadeh’s declaration, dated June 13, 2018. Ex. 1002 (in
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`both cases). The only differences between the ZTE petition and the Google petition
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`relate to formalities of a different party filing the petition and the disclosure of a
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`recent claim construction order in Cywee v. Motorola, 17-cv-00780 (Ex. 1051),
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`which does not construe any claim terms construed in the ZTE/Google Petitions;
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`there are no other changes to the facts, citations, evidence, or arguments introduced
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`in the Google petition. Because these proceedings are virtually identical, good cause
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`exists for joining this proceeding with the Google IPR so that the Board, consistent
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`with 37 C.F.R. § 42.1(b), can efficiently “secure the just, speedy, and inexpensive
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`resolution” of the ZTE petition and the Google petition in a single proceeding.
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`5
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`ZTE’s Motion for Joinder with
`Case IPR2018-01257
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`Moreover, granting joinder will not prejudice Patent Owner or the current
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`petitioner. As discussed above, the ZTE petition does not raise any new ground that
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`is not raised in the Google petition. Therefore, there should be little or no additional
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`cost to Patent Owner or current petitioner due to ZTE’s joinder.
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`2.
`
`Petitioner Does Not Propose New Grounds of
`Unpatentability
`As discussed in the prior section, the ZTE petition is substantively identical
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`to the petition in the Google IPR; no new grounds of patentability will be added to
`
`the Google IPR as a result of the Board allowing joinder. See LG, IPR2015-01353,
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`Paper No. 11 at 6 (granting institution of IPR and motion for joinder where
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`petitioners relied “on the same prior art, same arguments, and same evidence,
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`including the same expert and a substantively identical declaration”); see also Par
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`Pharm., Inc. v. Novartis AG, IPR2016-01023, Paper No. 20 at 14 (Oct. 27, 2016)
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`(granting motion for joinder where petitioners “do not assert any new ground of
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`unpatentability that is not already being considered in [an instituted IPR
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`proceeding], rely on the same arguments and evidence, and do not require any
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`modification to the existing schedule”).
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`No Impact on the Google IPR Trial Schedule
`3.
`Joinder should have no impact on the Google IPR trial schedule because the
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`ZTE petition presents no new issues or grounds of unpatentability. See LG,
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`6
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`
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`ZTE’s Motion for Joinder with
`Case IPR2018-01257
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`IPR2015-01353, Paper No. 11 at 6 (granting IPR and motion for joinder where
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`“joinder should not necessitate any additional briefing or discovery from Patent
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`Owner beyond that already required in [the original IPR]”). 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 should also not be impacted because the issues
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`presented in the ZTE petition are identical to the issues presented in the Google
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`petition. Patent Owner will not be required to provide any additional analysis or
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`arguments beyond what it will already provide in responding to the Google petition.
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`Also, because the ZTE petition relies on the same expert and the same declaration,
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`no additional deposition is needed for the proposed joined proceeding.
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`Accordingly, joinder with the Google IPR does not unduly burden or
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`negatively impact the trial schedule.
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`Procedures to Simplify Briefing and Discovery
`4.
`ZTE agrees to take an “understudy” role which will simplify briefing and
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`discovery. Specifically, ZTE agrees, upon joining the Google IPR, that the
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`following conditions, as previously approved by the Board in similar circumstances,
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`shall apply so long as the current petitioner remains an active party:
`
`a) all filings by ZTE in the joined proceeding be consolidated with the
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`filings of the current petitioner, unless a filing concerns issues solely
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`7
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`
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`involving ZTE;
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`ZTE’s Motion for Joinder with
`Case IPR2018-01257
`
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`b) ZTE shall not be permitted to raise any new grounds not already
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`instituted by the Board in the Google IPR, or introduce any argument
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`or discovery not already introduced by the current petitioner;
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`c) ZTE shall be bound by any agreement between Patent Owner and the
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`current petitioner concerning discovery and/or depositions; and
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`d) ZTE at deposition shall not receive any direct, cross examination or
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`redirect time beyond that permitted under either 37 C.F.R. § 42.53 or
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`any agreement between Patent Owner and the current petitioner. See
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`Noven Pharms., Inc. v. Novartis AG, IPR2014-00550, Paper No. 38 at
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`5 (Apr. 10, 2015).
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`In short, ZTE agrees to not materially participate in the joined proceedings unless
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`and until the current petitioner is dismissed from the joined proceedings or elects to
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`transfer control to ZTE, as may occur in the event of settlement or advanced
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`settlement negotiations.
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`Thus, by ZTE accepting an “understudy” role, Patent Owner and the current
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`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 any
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`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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`8
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`
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`ZTE’s Motion for Joinder with
`Case IPR2018-01257
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`“joinder would increase efficiency by eliminating duplicative filings and discovery,
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`and would reduce costs and burdens on the parties as well as the Board” where
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`petitioners agreed to an “understudy” role). ZTE is further willing to agree to any
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`other reasonable conditions the Board deems necessary.
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`IV. CONCLUSION
`Based on the factors discussed above, ZTE respectfully requests that the
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`Board grant the ZTE petition and grant joinder with the Google IPR.
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` January 10, 2019
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`Date
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`Respectfully submitted,
`BRINKS GILSON & LIONE
`
`
` / James R. Sobieraj/
`
` James R. Sobieraj
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`9
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`ZTE’s Motion for Joinder with
`Case IPR2018-01257
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`CERTIFICATE OF SERVICE
`I certify that, on January 10, 2019, I caused a true and correct copy of the
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`foregoing Motion for Joinder to Inter Partes Review IPR2018-01257 to be served
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`via express mail on the Patent Owner at the following correspondence address of
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`record as listed on PAIR:
`
`DING YU TAN
`8819 Purdy Crescent Trail
`Richmond, TX 77406
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`A courtesy copy was also sent via electronic mail to the Patent Owner’s
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`litigation counsel listed below in the following matters CyWee Group Ltd. v. ZTE
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`(USA), 17-cv-02130 (S.D. Cal.); CyWee Group Ltd. v. Google, Inc., 18-cv-00571
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`(D. Del.); CyWee Group Ltd. v. HTC Corporation et al., 17-cv-00932 (W.D. Wash.);
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`CyWee Group Ltd. v. Motorola Mobility LLC, 17-cv-00780 (D. Del.); CyWee Group
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`Ltd. v. Huawei Technologies Co., Inc. et al., 17-cv-00495 (E.D. Tex.); CyWee Group
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`Ltd. v. LG Electronics, Inc. et al., 17-cv-01102 (S.D. Cal.); CyWee Group Ltd. v.
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`Samsung Electronics Co. Ltd. et al., 17-cv-00140 (E.D. Tex.); and CyWee Group
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`Ltd. v. Apple Inc., 14-cv-01853 (N.D. Cal.):
`
`Alfonso Garcia Chan (achan@shorechan.com)
`Ari Benjamin Rafilson (arafilson@shorechan.com)
`Christopher L Evans (cevans@shorechan.com)
`Michael Wayne Shore (mshore@shorechan.com)
`Stamatios Stamoulis (stamoulis@swdelaw.com)
`Richard Charles Weinblatt (weinblatt@swdelaw.com)
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`A courtesy copy of the motion was also served electronically upon counsel
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`10
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`
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`of record for Patent Owner and Petitioner, respectively, in Google LLC v. Cywee
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`ZTE’s Motion for Joinder with
`Case IPR2018-01257
`
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`Group Ltd., IPR2018-01257 at the following addresses:
`
`Jay P. Kesan
`DIMURO GINSBERG PC-DGKEYIP GROUP
`1750 Tysons Boulevard
`Suite 1500
`Tysons Corner, VA 22102
`jkesan@dimuro.com
`Counsel for Patent Owner
`
`Matthew A. Smith
`Andrew S. Baluch
`Christopher M. Colice
`SMITH BALUCH LLP
`110 Alma St., Ste 109
`Menlo Park, CA 94025
`smith@smithbaluch.com
`baluch@smithbaluch.com
`Counsel for Petitioner
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`
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`Respectfully submitted,
`
`BRINKS GILSON & LIONE
`
`
` / James R. Sobieraj/
`
`
` James R. Sobieraj
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`11
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` January 10, 2019
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`Date
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