Paper No. __
`Filed: January 8, 2019
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`SAMSUNG ELECTRONICS CO., LTD.
`Petitioner
`v.
`CYWEE GROUP LTD.
`Patent Owner
`____________________
`Patent No. 8,552,978
`____________________
`MOTION FOR JOINDER TO INTER PARTES REVIEW IPR2018-01257
`
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`Filed: January 8, 2019
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`SAMSUNG ELECTRONICS CO., LTD.
`Petitioner
`v.
`CYWEE GROUP LTD.
`Patent Owner
`____________________
`Patent No. 8,552,978
`____________________
`MOTION FOR JOINDER TO INTER PARTES REVIEW IPR2018-01257
`
`
`
`
`
`
`
`
`
`
`Samsung’s Motion for Joinder with
`Case IPR2018-01257
`
`TABLE OF CONTENTS
`
` 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 ........................................................... 3
`1.
`Joinder with the Google IPR Is Appropriate .............................. 4
`2.
`Petitioner Does Not Propose New Grounds of
`Unpatentability ............................................................................ 5
`Joinder Will Not Negatively Impact the Google IPR Trial
`Schedule ...................................................................................... 5
`Procedures to Simplify Briefing and Discovery ......................... 6
`4.
`IV. THE CLAIM CONSTRUCTION RULE CHANGE DOES NOT
`AFFECT THE INSTANT PETITION AND MOTION FOR
`JOINDER ......................................................................................................... 8
`CONCLUSION ................................................................................................ 9
`
`I.
`II.
`III.
`
`V.
`
`
`3.
`
`i
`
`
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`Samsung’s Motion for Joinder with
`Case IPR2018-01257
`
`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) .............................................. 3, 5, 7
`Noven Pharmaceuticals, Inc. v. Novartis AG,
`IPR2014-00550, Paper No. 38 (Apr. 10, 2015) .................................................... 7
`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
`Samsung Electronics America, Inc. v. Uniloc 2017 LLC,
`IPR2018-01383, Paper 9 (Nov. 19, 2018) ............................................................ 8
`Statutes
`35 U.S.C. § 315(c) ............................................................................................. 1, 3, 8
`Other Authorities
`37 C.F.R. § 42.1(b) ................................................................................................ 1, 4
`37 C.F.R. § 42.5(b) .................................................................................................... 9
`37 C.F.R. §§ 42.22 and 42.122(b).............................................................................. 1
`37 C.F.R. § 42.53 ....................................................................................................... 7
`37 C.F.R. § 42.71(a) ................................................................................................... 8
`37 C.F.R. § 42.122 ..................................................................................................... 8
`
`ii
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`
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`Samsung’s Motion for Joinder with
`Case IPR2017-00392
`
`TABLE OF AUTHORITIES
`(continued)
`
` Page(s)
`37 C.F.R. § 42.122(b) ................................................................................................ 1
`
`iii
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`
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`Samsung’s Motion for Joinder with
`Case IPR2018-01257
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`Samsung Electronics Company, Ltd.
`(“Petitioner” or “Samsung”)
`
`I.
`
`respectfully submits this Motion for Joinder, concurrently with a Petition (“the
`
`Samsung Petition”) for inter partes review of 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), Samsung
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`requests institution of an inter partes review and joinder with Google LLC v.
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`Cywee Group Ltd., IPR2018-01257 (“the Google IPR” or “the Google
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`proceeding”), which the Board instituted on December 11, 2018, concerning the
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`same claims 10 and 12 of the ’978 patent at issue in the Samsung Petition. This
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`request is being submitted within the time frame set forth in 37 C.F.R. § 42.122(b).
`
`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. §
`
`42.1(b); see also HTC v. Parthenon Unified Memory Architecture LLC., IPR2017-
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`00512, Paper No. 12 at 5-6 (June 1, 2017). The Samsung Petition and the Petition
`
`in the Google 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. 1012, illustrating changes between the instant Petition and the
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`Petition in IPR2018-01257.) Further, upon joining the Google proceeding,
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`1
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`Samsung’s Motion for Joinder with
`Case IPR2018-01257
`Samsung will act as an “understudy” and will not assume an active role unless the
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`current Petitioner ceases to participate in the instituted IPR. Accordingly, the
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`proposed joinder will neither unduly complicate the Google IPR nor delay its
`
`schedule. As such, the joinder will promote judicial efficiency in determining the
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`patentability of the ’978 patent without prejudice to Patent Owner.
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`1.
`The ’978 patent is at issue in an infringement action against Samsung
`
`in the Eastern District of Texas, Case No. 2:17-cv-00140.
`
`2.
`
`The ’978 patent is also at issue in other patent infringement actions:
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`Case Nos. 1:18-cv-00571 (D. Del.); 3:17-cv-02130 (S.D. Cal.); 2:17-
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`cv-00932 (W.D. Wash.); 1:17-cv-00780 (D. Del.); 2:17-cv-00495
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`(E.D. Tex.); and 3:17-cv-01102 (S.D. Cal.).
`
`3.
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`On June 14, 2018, Google LLC filed a petition for inter partes review
`
`(IPR2018-01257) (“the Google Petition”) requesting cancellation of
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`claims 10 and 12 of the ʼ978 patent.
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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 claims and all grounds.
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`5.
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`The Samsung Petition and the Google Petition are substantially
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`identical; they contain the same grounds (based on the same prior art
`
`combinations and supporting evidence) against the same claims.
`
`2
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`
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`Samsung’s Motion for Joinder with
`Case IPR2018-01257
`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
`
`(“FAQ”) H5, available at
`
`http://www.uspto.gov/ip/boards/bpai/prps.jsp (last visited Jan. 7, 2019); 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).
`
`B.
`
`Each of the Relevant Factors Weighs in Favor of the Board
`Granting the Motion for Joinder
`
`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 Google 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 Google 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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`3
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`Samsung’s Motion for Joinder with
`Case IPR2018-01257
`(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.
`
`1.
`Joinder with the Google 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
`
`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 Google IPR is appropriate because the Samsung Petition
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`introduces identical arguments and the same grounds raised in the existing Google
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`proceeding (i.e., it challenges the same claims of the same patent, relies on the
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`same expert declaration, and is based on the same grounds and combinations of
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`prior art submitted in the Google Petition). Other than minor differences, such as
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`differences related to formalities of a different party filing the petition, there are no
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`changes to the facts, citations, evidence, or arguments introduced in the Google
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`Petition. Because these proceedings are substantively identical, good cause exists
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`for joining this proceeding with the Google IPR so that the Board, consistent with
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`37 C.F.R. § 42.1(b), can efficiently “secure the just, speedy, and inexpensive
`
`resolution” of the Samsung and Google Petitions in a single proceeding.
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`4
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`
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`Samsung’s Motion for Joinder with
`Case IPR2018-01257
`Petitioner Does Not Propose New Grounds of
`Unpatentability
`
`The Samsung Petition is substantively identical to the petition in the Google
`
`2.
`
`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
`
`submitted in the Google 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.
`
`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
`
`is not already being considered in [an instituted IPR proceeding], rely on the same
`
`arguments and evidence, and do not require any modification to the existing
`
`schedule”).
`
`3.
`
`Joinder Will Not Negatively Impact the Google IPR Trial
`Schedule
`Joinder will have minimal impact, if any, on the Google IPR trial schedule
`
`because the Samsung Petition presents no new issues or grounds of unpatentability.
`
`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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`5
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`Samsung’s Motion for Joinder with
`Case IPR2018-01257
`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
`
`the Google Petition. Patent Owner will not be required to provide any additional
`
`analysis or arguments beyond what it will already provide in responding to the
`
`petition in the Google IPR. Also, because the Samsung Petition relies on the same
`
`expert and the same declaration, only a single deposition is needed for the
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`proposed joined proceeding.
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`Accordingly, joinder with the Google IPR does not unduly burden or
`
`negatively impact the trial schedule.
`
`4.
`Procedures to Simplify Briefing and Discovery
`Samsung explicitly agrees to take an “understudy” role which will simplify
`
`briefing and discovery. Specifically, Samsung explicitly agrees, upon joining the
`
`Google proceeding, that the following conditions, as previously approved by the
`
`Board in similar circumstances, shall apply so long as the current petitioner in
`
`IPR2018-01257 remains an active party:
`
`6
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`
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`Samsung’s Motion for Joinder with
`Case IPR2018-01257
`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;
`
`b) Samsung shall not be permitted to raise any new grounds not already
`
`instituted by the Board in the Google IPR, or introduce any argument
`
`or discovery not already introduced by the current petitioner;
`
`c) Samsung shall be bound by any agreement between Patent Owner and
`
`the current petitioner concerning discovery and/or depositions; and
`
`d) at deposition, Samsung shall not receive any direct, cross examination
`
`or redirect time beyond that permitted under either 37 C.F.R. § 42.53
`
`or any agreement between Patent Owner and the current petitioner.
`
`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
`
`instituted IPR proceeding, Samsung will not assume an active role therein.
`
`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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`7
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`Samsung’s Motion for Joinder with
`Case IPR2018-01257
`discovery, and would reduce costs and burdens on the parties as well as the Board”
`
`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.
`
`IV. THE CLAIM CONSTRUCTION RULE CHANGE DOES NOT
`AFFECT THE INSTANT PETITION AND MOTION FOR JOINDER
`The Board instituted inter partes review for the Google Petition under the
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`broadest reasonable interpretation (BRI) standard. Inst. Dec. at 8-9. While the
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`claim construction standard has changed from BRI to Phillips for petitions filed
`
`after November 13, 2018, the Board should apply the BRI standard to Samsung’s
`
`Petition. Samsung is simply seeking joinder as a co-petitioner to the Google
`
`proceeding, see 35 U.S.C. § 315(c) (“join as a party to that inter partes review.”)
`
`As is customary, granting of this motion would result in Samsung being “joined as
`
`a petitioner in that case [i.e., the Google Petition] pursuant to 37 C.F.R. § 42.122”
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`and the dismissal of Samsung's copy-cat petition pursuant to 37 C.F.R. § 42.71(a).
`
`See, e.g., Samsung Electronics America, Inc. v. Uniloc 2017 LLC, IPR2018-01383,
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`Paper 9 at 6 (Nov. 19, 2018) (emphasis added). Thus, the rules applicable to the
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`Google Petition (e.g., the BRI claim construction standard) should also apply to
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`8
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`
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`Samsung’s Motion for Joinder with
`Case IPR2018-01257
`Samsung’s Petition, as “that case” will proceed and Samsung’s copy-cat Petition
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`will be dismissed.1
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`V. 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 Google IPR.
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`Dated: January 8, 2019
`
`Respectfully submitted,
`
`By: /Naveen Modi/
`Naveen Modi (Reg. No. 46,224)
`Counsel for Petitioner
`
`
`
`
`1 If the Board deems that its rule(s) require application of the Phillips standard to
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`Samsung’s Petition, Samsung seeks waiver of such rule(s) pursuant to 37 C.F.R. §
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`42.5(b).
`
`9
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`
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`Samsung’s Motion for Joinder with
`Case IPR2018-01257
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`CERTIFICATE OF SERVICE
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`I hereby certify that on January 8, 2019, I caused a true and correct copy of
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`the foregoing Motion for Joinder to Inter Partes Review IPR2018-01257 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:
`
`Ding Yu Tan
`8819 Purdy Crescent Trail
`Richmond, TX 77406
`In addition, a courtesy copy was served electronically upon counsel of
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`record for Patent Owner in the litigation pending before the U.S. District Court for
`
`the Eastern District of Texas entitled Cywee Group Ltd. v. Samsung Elec. Co., Ltd.
`
`et al., Case No. 2:17-cv-00140 (E.D. Tex.) at the following addresses:
`
`Michael Wayne Shore - mshore@shorechan.com
`Alfonso Garcia Chan - achan@shorechan.com
`William David Ellerman - wellerman@shorechan.com
`Christopher L Evans - cevans@shorechan.com
`Shore Chan DePumpo LLP
`
`A courtesy copy was also served electronically upon counsel of record for
`
`Patent Owner in Google LLC v. Cywee Group Ltd., IPR2018-01257 at the
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`following addresses:
`
`Jay P. Kesan - jkesan@dimuro.com
`Cecil E. Key - ckey@dimuro.com
`Arlen Papazian - apapazian@dimuro.com
`DimuroGinsberg PC
`
`
`
`
`
`Samsung’s Motion for Joinder with
`Case IPR2018-01257
`A courtesy copy was also served electronically upon counsel of record for
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`Petitioner Google LLC in Google LLC v. Cywee Group Ltd., IPR2018-01257 at the
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`following addresses:
`
`Matthew A. Smith - smith@smithbaluch.com
`Andrew S. Baluch - baluch@smithbaluch.com
`Christopher M. Colice - colice@smithbaluch.com
`SMITH BALUCH LLP
`
`
`
`
`
`By: /Naveen Modi/
`Naveen Modi (Reg. No. 46,224)
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