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`Filed: February 8, 2019
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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
`
`____________________
`
`Case IPR2019-00534
`Patent No. 8,552,978
`____________________
`
`
`OPPOSTION TO PETITIONER’S MOTION FOR JOINDER TO INTER
`PARTES REVIEW IPR2018-01257
`
`
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`
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`Case IPR2019-00534
`Patent No. 8,552,978
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`TABLE OF CONTENTS
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`I. INTRODUCTION ............................................................................................. 1
`II. STANDARD ...................................................................................................... 3
`III. ARGUMENT ................................................................................................... 3
`1. Joinder Would Prejudice Patent Owner ..................................................... 3
`2. Joinder Would Impact the Trial Schedule .................................................. 6
`a. Joinder Would Introduce New Claim Construction Issues ................... 7
`b. Joinder Would Require Additional Discovery as to RPIs .................... 10
`3. Joinder Would Waste Time, Effort, and Resources ................................ 11
`IV. CONCLUSION ............................................................................................. 12
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`
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` i
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`Case IPR2019-00534
`Patent No. 8,552,978
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`TABLE OF AUTHORITIES
`
`
`Cases
`
`Applications in Internet Time v. RPX Corp., 897 F.3d 1336 (Fed. Cir., July 9,
`2019) ............................................................................................................... 6
`
`
`CyWee Group Ltd. v. Samsung Elec. Co. Ltd. et al.
`
`C.A. No. 2:17-cv-00140 (E.D. Tex.) ..................................................... passim
`
`Famy Care Ltd. v. Allergan, Inc.,
`
`IPR2017-00566 (PTAB July 12, 2017) .......................................................... 5
`
`Google LLC v. CyWee Group Ltd.,
`
`IPR2018-01257 ............................................................................................... 1
`
`Kyocera Corp. v. Softview, LLC,
`
`Case IPR2013-00004 (PTAB Apr. 24, 2013) ................................................. 3
`
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal,
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`868 F.3d 1013 (Fed. Cir. 2017) (Dyk, J. and Wallach, J. concurring) ........... 7
`
`Proppant Express Investments LLC, et al., v. Oren Tech., LLC,
`
`IPR2018-00914, Paper 21 at 5 (PTAB Nov. 8, 2018) .................................... 7
`
`Unified Patents, Inc. v. PersonalWeb Tech., LLC, et al.,
`
`IPR2014-00702, Paper 12 at 2-3 (PTAB July 24, 2014) .................. 3, 5, 7, 11
`
`Statutes and Rules
`
`35 U.S.C. § 315(c) .................................................................................................... 3
`
`37 CFR § 42.122 ....................................................................................................... 3
`
`Other Authorities
`
`157 Cong. Rec. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl) ............. 3, 4
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` ii
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`Case IPR2019-00534
`Patent No. 8,552,978
`
`I.
`
`
`INTRODUCTION
`
`Samsung Electronics Co., Ltd. (“Petitioner” or “Samsung”) has filed a
`
`petition against CyWee Group Ltd. (“CyWee” or “Patent Owner”) for inter partes
`
`review of U.S. Patent No. 8,552,978 (the “‘978 Patent”) concurrently with a
`
`Motion for Joinder (the “Motion”) with Google LLC v. CyWee Group Ltd.,
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`IPR2018-01257 (the “Google IPR”). The Google IPR was instituted on December
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`11, 2018, challenging claims 10 and 12 of the ’978 Patent.
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`Samsung is one of four parties now seeking joinder with the Google IPR.
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`The other parties are LG Electronics Inc. (“LG”); ZTE (USA), Inc. (“ZTE”); and
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`Huawei Device USA, Inc., et al. (“Huawei”). All of these parties are also parties to
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`infringement actions before various district courts involving the ‘978 Patent.
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`Petition, Paper 1 at 2. Samsung has challenged the validity of the ‘978 Patent in
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`CyWee Group Ltd. v. Samsung Elec. Co. Ltd. et al. C.A. No. 2:17-cv-00140 (E.D.
`
`Tex.) (the “District Court Action”).
`
`The District Court Action was filed on February 17, 2017. District Court
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`Action, Complaint, Doc. 1. Samsung is nearly a full year past the deadline for
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`which it could have filed a petition for its own IPR pursuant to 37 C.F.R. §
`
`42.101(b). During the two years since Samsung was first served with the complaint
`
`in the District Court Action, Samsung has not indicated any interest in challenging
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`
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`1
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`Case IPR2019-00534
`Patent No. 8,552,978
`the validity of the ‘978 Patent by IPR, opting instead to pursue an invalidity
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`defense in the District Court Action. The District Court Action has progressed
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`considerably. A claim construction order issued in the District Court Action on
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`July 9, 2018. Id., Claim Construction Order, Doc. 117. That claim construction
`
`favored CyWee and has been repeatedly upheld despite two requests for
`
`reconsideration by Samsung, one of which was based upon issues raised in the
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`Google IPR. Fact discovery has concluded in the District Court Action, as has
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`expert discovery for validity and infringement. Case dispositive motions and
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`motions to strike expert opinions were filed on February 6, 2019, and a trial date
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`has been set for May 2019. Samsung now seeks to stay the District Court Action—
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`and subvert the claim construction order there—by joining the Google IPR.
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`CyWee has opposed Samsung’s motion to stay the District Court Action.
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`Moreover, although Samsung originally asserted Bachmann, a key reference in the
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`Google IPRs, it dropped that reference from its invalidity contentions and did not
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`raise it in any of its expert reports on invalidity. Samsung should not be permitted
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`to resurrect its long-abandoned reliance on Bachmann through joinder have.
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`Allowing joinder here will severely prejudice the Patent Owner; will
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`introduce new issues requiring additional discovery; will impact the schedule of
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`this proceeding and related proceedings; and will waste the time, effort, and
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`2
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`Case IPR2019-00534
`Patent No. 8,552,978
`resources of the Board, the parties, and the federal district courts. Accordingly,
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`Samsung’s Motion must be denied.
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`II. STANDARD
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`The Board’s decision to grant joinder is discretionary. Unified Patents, Inc.
`
`v. PersonalWeb Tech., LLC, et al., IPR2014-00702, Paper 12 at 2-3 (PTAB July
`
`24, 2014); 35 U.S.C. § 315(c); 37 CFR § 42.122. This discretionary determination
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`is made on a case-by-case basis, taking into account the particular facts of each
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`case, substantive and procedural issues, and other considerations. Unified Patents,
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`IPR2014-00702, Paper 12 at 3. When determining whether to grant a motion for
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`joinder, the Board considers many factors including the timing and impact of
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`joinder on the trial schedule, cost, discovery issues, potential simplification of
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`briefing, and claim construction issues. Id. at 3 (citing Kyocera Corp. v. Softview,
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`LLC, Case IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013); 157 Cong. Rec.
`
`S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl)).
`
`The moving party has the burden of establishing that it is entitled to joinder.
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`Unified Patents, IPR2014-000702, Paper 12 at 3. Even where two parties file
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`nearly identical petitions in separate proceedings, joinder is not granted “as a
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`matter of right,” if the movant fails to meet its burden. Id. at 4.
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`III. ARGUMENT
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`1. Joinder Would Prejudice Patent Owner
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`3
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`Patent No. 8,552,978
`In a request for reconsideration of the Board’s decision to institute the
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`Google IPR, Patent Owner warned of a coordinated attack on the ‘978 patent by a
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`group of major technology companies. Google IPR, Paper 10 at 2-3. Now, Patent
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`Owner’s warnings are fully realized. Samsung, Huawei, LG, and ZTE all seek to
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`join the Google IPR to use their substantial combined resources to bully the
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`smaller CyWee. This synchronized effort by petitioners is highly prejudicial to
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`Patent Owner for multiple reasons.
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`First, this type of mass joinder petitioning was one of Congress’ concerns in
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`codifying 35 U.S.C. § 315. Congress granted the Director—and through him, the
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`Board—discretion “over whether to allow joinder [as a] safety valve [to] allow the
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`Office to avoid being overwhelmed if there happens to be a deluge of joinder
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`petitions in a particular case.” Unified Patents, IPR2014-000702, Paper 12 at 4
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`(quoting 157 Cong. Rec. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl)).
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`Samsung’s Motion is one in just such a “deluge of joinder petitions.” Four joinder
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`petitions have been filed in relation to the Google IPR.1 A flood of joinder petitions
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`of this kind prejudices Patent Owner, as it must now face the combined resources
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`and efforts of all of the petitioners. Abusive, serial joinder also places stress on the
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`Board to determine whether each individual joinder is appropriate on a case-by-
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`1 The related matter of Google LLC v. CyWee Group Ltd., IPR2018-01258,
`challenging related U.S. Patent No. 8,441,438, also received four joinder petitions
`from the same four parties: Samsung, Huawei, LG, and ZTE. In sum, between the
`two related IPRs, Patent Owner and the Board face eight joinder petitions.
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`4
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`Patent No. 8,552,978
`case basis, wasting resources and potentially extending the trial schedule while the
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`determinations are made.
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`Second, joinder is only appropriate where the party seeking joinder agrees to
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`take a “silent understudy” role. Famy Care Ltd. v. Allergan, Inc., IPR2017-00566,
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`Paper 12 at 9 (PTAB July 12, 2017). Samsung has alleged that it will “act as an
`
`‘understudy’ and will not assume an active role.” Motion, Paper 3 at 2. However, it
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`is unfathomable that Samsung, Huawei, LG, and ZTE—all major technology
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`companies who are defendants in district court litigation with significant interest in
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`the outcome of the Google IPR—will truly take an “understudy” role. Rather, the
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`facts indicate that the petitioners will be and have been actively working in tandem
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`to defeat CyWee’s claims. Google is a known ring-leader in organizing major
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`companies in coordinated efforts to overwhelm smaller patent owners. See, e.g.,
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`Unified Patents, IPR2014-00702, Paper 12 at Part II(2), pp. 4-6. And all of the
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`parties seeking joinder are mobile device manufacturers that use Google’s Android
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`operating system, which is a foundational component of CyWee’s district court
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`cases against those parties. Samsung showed no interest whatsoever in pursuing
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`inter partes review against CyWee until CyWee noted that lack of interest in its
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`request for reconsideration in the Google IPR. Google IPR, Paper 10 at 2-3. Now,
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`in seeking joinder, it is telling that large sections of each of the new petitioners’
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`5
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`Patent No. 8,552,978
`briefs for their motions to join appear to be copy-pasted from one another and
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`contain nearly identical language with only minor modifications.
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`Taken together, these facts indicate that Samsung and the other parties
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`seeking joinder have already been working together and will certainly continue
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`working together, taking active roles in the Google IPR. Moreover, as will be
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`discussed below, additional discovery will be necessary to determine the extent of
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`the relationship between the petitioners and to discover whether other third parties
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`that also use the Android operating system that are not currently seeking to join the
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`Google IPR are Real Parties in Interest (RPI) to its outcome. See Applications in
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`Internet Time v. RPX Corp., 897 F.3d 1336, 1357 (Fed. Cir., July 9, 2019) (“[A]n
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`agent with an ownership interest in the subject mater of the suit... or a party in
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`whose name a contract has been made for the benefit of another, may qualify as a
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`real party in interest... Depending on the nature of the parties’ relationship, an
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`entity can serve as an agent to a principal and file an IPR on the principal’s behalf
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`even without the two formally agreeing that the agent will do so.” (internal
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`citations omitted)).
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`2. Joinder Would Impact The Trial Schedule
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`Samsung contends that its “proposed joinder will neither unduly complicate
`
`the Google IPR nor delay its schedule.” Motion, Paper 3 at 2. Samsung’s joinder,
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`however would introduce new issues, including at least claim construction issues
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`6
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`Patent No. 8,552,978
`and questions regarding RPI, which would require additional discovery.
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`Additionally, the Google IPR is not a single case with no other pending related
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`IPRs. IPR2018-01258 was also filed by Google on June 14, 2018, and currently is
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`on the same schedule as IPR2018-01257. IPR2018-01258 concerns U.S. Patent
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`No. 8,441,438 (the “‘438 Patent”), from which the ‘978 Patent descends. Samsung,
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`Huawei, LG, and ZTE all seek joinder in that IPR as well. IPR2019-00143 also
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`concerns the ‘438 Patent and was filed by ZTE on October 31, 2018. Samsung has
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`made no effort to address the impact of its joinder on the schedule of these related
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`IPRs and therefore has failed to meet its burden to show that it is entitled to
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`joinder. Unified Patents, IPR2014-00702, Paper 12 at 6-7.
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`a. Joinder Would Introduce New Claim Construction Issues
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`The Board has held, and the Federal Circuit has stated, that Congress did not
`
`intend “that petitioners could employ the joinder provision to circumvent the time
`
`bar by adding time-barred issues to an otherwise timely proceeding, whether the
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`petitioner seeking to add new issues is the sane party that brought the timely
`
`proceeding... or... a new party.” Proppant Express Investments LLC, et al., v. Oren
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`Tech., LLC, IPR2018-00914, Paper 21 at 5 (PTAB Nov. 8, 2018) (quoting Nidec
`
`Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1020
`
`(Fed. Cir. 2017) (Dyk, J. and Wallach, J. concurring)). While Samsung claims that
`
`it “presents no new issues” to the Google IPR, Motion, Paper 3 at 5, this is untrue.
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`7
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`Patent No. 8,552,978
`Although Samsung does not present any new grounds of unpatentability, its joinder
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`to the Google IPR presents a new issue based solely on the timing of the Samsung
`
`petition. Because Samsung’s petition and Motion were filed after November 13,
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`2018, they should be subject to claim construction under the Phillips standard.
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`However, the Google IPR, filed before November 13, 2018, was subject to claim
`
`construction under the Broadest Reasonable Interpretation (“BRI”) standard.
`
`Because the claim construction standard applied to IPRs shifted between the time
`
`that the Google IPR was filed and the time that Samsung’s petition and Motion
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`were filed, the Board will need to address the new issue of which claim
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`construction standard would apply if Samsung were to join.
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`Samsung attempts to circumvent this issue in its Motion by submitting itself
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`to the BRI standard, the standard typically more favorable to parties challenging
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`the validity of a patent. Motion, Paper 3 at Part IV, pp. 8-9. This is inappropriate.
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`Samsung’s joinder is little more than an effort to bypass the claim construction
`
`order of the District Court Action. Samsung’s petition filed after November 13,
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`2018, if allowed to join, is subject to the Phillips standard.
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`Magistrate Judge Payne of the Eastern District of Texas issued a claim
`
`construction order that favored CyWee’s interpretations of several key claim terms.
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`District Court Action, Doc. 117. Those constructions have been confirmed twice,
`
`despite Samsung’s repeated objections, by Judge Bryson, a Federal Circuit judge
`
`
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`8
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`Case IPR2019-00534
`Patent No. 8,552,978
`sitting by designation. District Court Action, Docs. 153, 242 (affirming
`
`constructions). Samsung has already tried to abuse the discrepancy between the
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`BRI and Phillips standard to its advantage. After the Board issued its institution
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`decision in the Google IPR, which provided constructions for important claim
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`terms such as “3D pointing device,” Samsung requested reconsideration of the
`
`district court claim construction based on slight discrepancies between the claim
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`construction in the Google IPR institution decision with that of the District Court
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`Action. District Court Action, Reconsideration Request, Doc. 179. Judge Bryson
`
`denied that request (Doc. 242), and it is clear that Samsung is now once again
`
`attempting to exploit the Google IPR to sidestep the adverse district court claim
`
`construction. Samsung should not be allowed to misuse the IPR system in this way,
`
`and so its Motion should be denied on this ground. At the very least, however, the
`
`new issue of which claim construction standard to apply to Samsung’s petition and
`
`joinder also weigh in favor of denying its Motion.
`
`It is also worth noting that Samsung had, early in the District Court Action,
`
`identified Bachmann—a key reference at issue in the Google IPR—as prior art, but
`
`later dropped Bachmann from its invalidity contentions altogether. By seeking
`
`joinder with the Google IPR, Samsung wishes to obtain a second chance at
`
`asserting art that it concluded was irrelevant to its invalidity claims and completely
`
`abandoned in the district court. Just as Samsung seeks to game the IPR system by
`
`
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`9
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`Case IPR2019-00534
`Patent No. 8,552,978
`obtaining claim construction under BRI, it again seeks to play the system to its
`
`advantage to reintroduce previously abandoned grounds for invalidity under a
`
`different claim construction standard. It should not be permitted to do so.
`
`b. Joinder Would Require Additional Discovery as to RPIs
`
`Samsung’s joinder to this case also raises new questions regarding RPIs. As
`
`discussed above, taken as a whole, the facts indicate that the petitioners seeking
`
`joinder to the Google IPR are working together. Allowing joinder will create the
`
`need for CyWee to engage in discovery regarding the precise nature of the
`
`relationship between the petitioners and the extent to which they will truly be
`
`acting as “silent understudies” to Google in the Google IPR.
`
`Similarly, the fact that Samsung, Huawei, LG, and ZTE all utilize the
`
`Google Android operating system on their devices that are at issue at district court
`
`raises the question of whether other undisclosed third parties are RPIs having a
`
`stake in the outcome of the Google IPR. For instance, Motorola and HTC are also
`
`parties to district court infringement and use Google’s Android operating system
`
`on their infringing devices. The Motorola action has been stayed pending the
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`outcome of the Google IPR, so it is clear that at least Motorola has an interest in
`
`the outcome of this proceeding. The lawsuit against HTC has not been stayed
`
`pending the outcome of the Google IPR, but this is because there are a number of
`
`additional claims asserted that are not patent claims. Joinder by any one of
`
`
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`10
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`Case IPR2019-00534
`Patent No. 8,552,978
`Samsung, Huawei, LG, or ZTE will necessitate additional discovery to determine
`
`what other unknown makers of Android-based devices are RPIs to the Google IPR.
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`Because additional discovery will be required, which could also lead to
`
`shifts in the trial schedule, Samsung’s Motion should be denied.
`
`3. Joinder Would Waste Time, Effort, and Resources
`
`Allowing Samsung’s motion for joinder would be a waste of time, effort,
`
`and resources for the Board, the parties, and the district court. As mentioned above,
`
`the District Court Action has progressed substantially to the point that fact
`
`discovery has concluded, as has expert discovery as to the issues of validity and
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`infringement. The deadline for case dispositive motions has recently passed, and
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`both CyWee and Samsung have moved for summary judgment and filed motions
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`to strike expert opinions. Trial has been set for May 2019. It would be less costly
`
`and time consuming to allow the District Court Action to resolve. Because claims
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`10 and 12 of the ‘978 Patent at issue in the Google IPR are also at issue in the
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`District Court Action, the outcome of that case could render moot the need to reach
`
`a final written decision on the patentability of those claims here. See Unified
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`Patents, IPR2014-00702, Paper 12 at 8 (where resolution of a pending Fed. Cir.
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`case would have potentially rendered moot the need for a final written decision
`
`regarding patentability of claims at issue in petitioner’s motion for joinder).
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`11
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`Patent No. 8,552,978
`The District Court Action is sure to resolve more quickly than the Google
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`IPR. The Google IPR was instituted on December 11, 2018, and a final written
`
`decision will be issued by December 11, 2019, as required by 35 U.S.C
`
`§316(a)(11). The District Court Action will likely be resolved by the May 2019
`
`trial date and perhaps even sooner by summary judgment or settlement. Thus,
`
`allowing Samsung to join the Google IPR and stay the District Court Action could
`
`result in a seven-month delay in reaching a resolution between CyWee and
`
`Samsung. Furthermore, it would be a waste of resources to effectively restart
`
`litigation on the issue of invalidity that has already progressed to a significant
`
`degree in the District Court Action.
`
`Because Allowing Samsung’s Motion would result in a waste of time, effort,
`
`and resources, the Motion should be denied.
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`IV. CONCLUSION
`
`Because the particular facts of this case, the substantive and procedural
`
`issues, and other considerations weigh in favor of denying Samsung’s Motion,
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`joinder should be denied.
`
`Dated: February 8, 2019
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`
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`12
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`Respectfully submitted,
`
`
`
`
`
`/Jay P. Kesan/
`Jay P. Kesan
`Reg. No. 37,488
`
`Counsel for Patent Owner
`CyWee Group Ltd.
`
`
`
`
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`
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`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on the date
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`indicated below, a complete and entire copy of this submission was electronically
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`served to Petitioner’s counsel at the email address of record:
`
`Naveen Modi (Reg. No. 46,224)
`Chetan Bansal (Limited Recognition No. L0667)
`Paul Hastings LLP
`875 15th St. NW
`Washington, DC 20005
`Tel: (202) 551-1700
`Fax: (202) 551-1705
`PH-Samsung-Cywee-IPR@paulhastings.com
`
`
`
`
`
`
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`Respectfully submitted,
`
`
`
`
`
`/Jay P. Kesan/
`Jay P. Kesan
`Reg. No. 37,488
`
`Counsel for Patent Owner
`CyWee Group Ltd.
`
`
`
`Dated: February 8, 2019
`
`
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