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`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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`HUAWEI DEVICE USA, INC., HUAWEI DEVICE CO. LTD., HUAWEI
`TECHNOLOGIES CO. LTD., HUAWEI DEVICE (DONGGUAN) CO. LTD.,
`HUAWEI INVESTMENT & HOLDING CO. LTD., HUAWEI TECH.
`INVESTMENT CO. LTD., HUAWEI DEVICE (HONG KONG) CO. LTD.
`Petitioners
`v.
`
`CYWEE GROUP LTD.
`(record) Patent Owner
`
`
`
`
`
`Case IPR2019-XXX
`Patent No. 8,552,978
`
`
`
`
`MOTION FOR JOINDER TO IPR2018-01257
`UNDER 37 C.F.R. §§ 42.22 AND 42.122(b)
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`
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`Petitioners, Huawei Device USA, Inc., Huawei Device Co. Ltd., Huawei
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`Technologies Co. Ltd., Huawei Device (Dongguan) Co. Ltd., Huawei Investment &
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`Holding Co. Ltd., Huawei Tech. Investment Co. Ltd., Huawei Device (Hong Kong)
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`Co. Ltd. (“Huawei” or “Petitioners”) submit concurrently herewith a Petition for
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`Inter Partes Review of U.S. Patent No. 8,552,978 (“Petition”). Pursuant to 35
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`U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Petitioners respectfully request that
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`their Petition be instituted and joined with pending inter partes review IPR2018-
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`01257 (“the Google IPR”).
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`Huawei’s motion for joinder and accompanying Petition are timely under 37
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`C.F.R. §§ 42.22 and 42.122(b), as they are submitted within one month of
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`December 11, 2018, the date that the Google IPR was instituted. Google IPR,
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`Paper 8.
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`Joinder is appropriate because it will promote efficient resolution of the
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`issues without affecting scheduling for the pending proceeding. The Petition
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`challenges the same claims instituted in the Google IPR, and relies on the same
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`substantive arguments and substantive evidentiary record. No new grounds of
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`unpatentability are asserted in the Petition and there will be no impact on the trial
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`schedule for the existing review. Therefore, joinder would neither complicate the
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`issues nor unduly delay the Google IPR.
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`1
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`Absent joinder, Huawei may be prejudiced as it has a significant interest in
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`the underlying validity determination at issue in this proceeding, given the
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`potential impact on litigation proceedings between CyWee and Huawei involving
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`the same patent. Joinder would protect Huawei’s interests and avoid the potential
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`prejudice to Huawei that could result from a settlement between CyWee and
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`Google.
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`Huawei has notified counsel for Petitioner in the Google IPR regarding the
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`subject of this motion, and counsel does not oppose Huawei’s present motion.
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`BACKGROUND AND RELATED PROCEEDINGS
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`CyWee is the owner of U.S. Patent No. 8,552,978 (“the ’978 Patent”). The
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`’978 Patent is asserted against Huawei in CyWee v. Huawei Technology, Inc., et
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`al., 2-17-cv-00495 (E.D. Tex.) (“the Underlying Litigation”).
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`The ’978 Patent was also asserted in the following actions:
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`Cywee Group Ltd. v. Google, Inc., Case No. 1-18-cv-00571, (D. Del.);
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`Cywee Group Ltd. v. ZTE Corporation et al., Case No. 3-17-cv-
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`02130, (S.D. Cal.);
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`Cywee Group Ltd. v. HTC Corporation et al., Case No. 2-17-cv-
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`00932, (W.D. Wash.);
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`Cywee Group Ltd. v. Motorola Mobility LLC, Case No. 1-17-cv-
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`00780, (D. Del.);
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`2
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`Cywee Group Ltd. v. LG Electronics, Inc. et al., Case No. 3-17-cv-
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`01102, (S.D. Cal.);
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`Cywee Group Ltd. v. Samsung Electronics Co. Ltd. et al., Case No. 2-
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`17-cv-00140, (E.D. Tex.);
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`Cywee Group Ltd. v. Apple Inc., Case No. 4-14-cv-01853, (N.D. Cal.).
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`The Google IPR, Case IPR2018-01257, was filed by Google on June 14,
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`2018 and, like the instant Petition, challenges claims 10 and 12 of the ’978 Patent.
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`On December 11, 2018, the Board instituted the Google IPR. Ex. 1012. The ’978
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`patent is also at issue in Samsung Electronics Co., Ltd. v. Cywee Group Ltd.,
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`IPR2019-00534, in which that petitioner also requested to join the Google IPR.
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`Petitioners are also concurrently filing a petition challenging claims 1 and 3-5 of
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`U.S. Patent No. 8,441,438 along with a motion to join Google LLC v. Cywee
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`Group Ltd., IPR2018-01258, which the Board instituted on December 11, 2018.
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`I.
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`STATEMENT OF REASONS FOR RELIEF REQUESTED
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`A. Legal Standard
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`The Leahy–Smith America Invents Act (AIA) permits joinder of IPR
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`proceedings. See generally Pub. L. No. 112-29, 125 Stat. 284 (2011). The statutory
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`provision governing IPR joinder, 35 U.S.C. § 315(c), reads:
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`(c) JOINDER.—If the Director institutes an inter partes
`review, the Director, in his or her discretion, may join as a party
`to that inter partes review any person who properly files a
`3
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`petition under section 311 that the Director, after receiving a
`preliminary response under section 313 or the expiration of the
`time for filing such a response, determines warrants the
`institution of an inter partes review under section 314.
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`Motions for joinder should: (1) set forth reasons why joinder is appropriate;
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`(2) identify any new grounds of unpatentability asserted in the petition; (3) explain
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`what impact (if any) joinder would have on the trial schedule for the existing
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`review; and (4) address specifically how briefing and discovery may be simplified.
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`See Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB April
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`24, 2013); see also Samsung Elecs. Co. v. Unifi Sci. Batteries, LLC, IPR2013-
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`00236, Paper 22 at 3 (PTAB Oct. 17, 2013). Each of these factors supporting
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`joinder are present in this motion and are discussed in detail below.
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`B.
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`Joinder Is Appropriate
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`Joinder is appropriate here because it will not “unduly complicate or delay”
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`the Google IPR. SAP America Inc. v. Clouding IP, LLC, IPR2014-00306, Paper 13
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`at 4 (PTAB May 19, 2014). Indeed, there is “a policy preference for joining a party
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`that does not present new issues that might complicate or delay an existing
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`proceeding.” Enzymotec Ltd. v. Neptune Techs. & Bioresources, Inc., IPR2014-
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`00556, Paper 19 at 6 (PTAB July 9, 2014).
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`The Board has authority to join a properly-filed IPR petition to an IPR
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`proceeding. See 35 U.S.C. § 315(c). The Board has found that joinder is
`4
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`appropriate when, like here, (1) joinder is timely (2) no new grounds of
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`unpatentability are introduced; (3) the party joining the proceeding agrees to
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`consolidated filings and discovery; (4) joinder will not affect the schedule; and (5)
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`joinder will streamline the proceedings, reduce the costs and burdens on the
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`parties, and increase efficiencies for the Board without prejudicing the parties. See,
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`e.g., Motorola Mobility LLC v. Softview LLC, IPR2013-00256, Paper 10 at 4-10
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`(PTAB Jun. 20, 2013); see also Mylan Pharms. Inc. v. Novartis AG, IPR2015-
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`00268, Paper 17 (PTAB April 10, 2015). As detailed below, joinder of the instant
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`proceeding to the Google IPR is appropriate for all of these reasons.
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`1.
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`This Joinder Motion and the Petition Are Timely
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`The Petition and the instant motion for joinder are timely under 35 U.S.C.
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`§ 315(c), 37 C.F.R. §§ 42.22, and 42.122(b), as they are being submitted within
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`one month of the date that the Google IPR was instituted. Rule 42.122(b) states
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`that a motion for joinder shall be filed no later than one month after the granting of
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`the petition that is sought to be joined. Google’s petition was granted on December
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`11, 2018. See IPR2018-01257, Paper 8. The Petition, filed concurrently herewith
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`on January 11, 2019, was filed no later than one month from the institution date of
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`the Google IPR.
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`2.
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`Joinder Will Not Introduce Any New Grounds of
`Patentability
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`5
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`Huawei’s Petition is based only on the grounds on which the Board granted
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`the Google IPR, for which joinder is requested. It challenges the same claims of
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`the ‘978 Patent based on the same arguments, evidence, and grounds of
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`unpatentability that were raised in the Google IPR. In addition, Huawei has
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`submitted the same expert witness declaration as that entered on behalf of Google
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`in the Google IPR. There is nothing new for the Patent Owner to address or for the
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`Board to consider in response to the Petition.
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`3. Huawei Agrees to Consolidated Proceedings, Including
`Briefing and other Filings.
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`Huawei agrees to allow Google to take the lead in the joined proceedings
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`and to work with Google to submit consolidated filings in an arrangement similar
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`to that adopted by the Board in other joined proceedings. See, e.g., Motorola
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`Mobility LLC, IPR2013-00256, Paper 10 at 9; Twitter, Inc. and Yelp Inc. v.
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`Evolutionary Intelligence, LLC, IPR2014-00812, Paper 12 at 3 (PTAB June 25,
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`2014); IPR2014-00086, Paper 16 at 2-4 (PTAB June 25, 2014). In the unlikely
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`event that a procedural or substantive issue arises in the joined proceeding with
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`which Huawei disagrees with Google, Huawei will request a conference call to
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`seek permission and explain its reasons to submit a short separate filing, if needed,
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`directed to points of procedural or substantive disagreement with Google. In such a
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`circumstance, and at the Board’s discretion, the Board also may authorize Patent
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`Owner corresponding pages to respond separately to any Huawei filing. See Dell
`6
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`
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`Inc. v. Network-1 Solutions, Inc., IPR2013-00385, Paper 17 at 8 (PTAB July 29,
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`2013); Motorola Mobility, LLC, IPR2013-00256, Paper 10 at 8-9.
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`Huawei will rely on Google to take testimony and defend depositions of
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`witnesses, unless Google wishes otherwise or until Google terminates its
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`involvement in the joined proceeding, and Huawei will refrain from requesting or
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`reserving any additional deposition or oral hearing time. Huawei is willing to agree
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`to other procedural concessions necessary to minimize complication or delay and
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`result in a speedy trial with little or no impact on the Google IPR or the Board. In
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`short, as long as Google remains an active participant in the IPR, Huawei will
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`work with Google to avoid procedural disruptions and will assume the primary role
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`only if Google ceases to participate in the IPR. See, e.g., Mylan Pharms. Inc.,
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`IPR2015-00268, Paper 17 at 5.
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`4.
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`Joinder Will Not Impact the Board’s Ability to Complete
`the Review Within the One-Year Period
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`Joinder in this case will not impact the Board’s ability to complete its review
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`in a timely manner because of the complete overlap between the two petitions for
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`the raised grounds. As discussed above, Huawei will adhere to all applicable
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`deadlines set forth in the Google IPR Scheduling Order and coordinate its
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`approach and filings with Google. Additionally, no additional expert discovery will
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`be needed as the Petition relies on the same declaration from the same expert filed
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`7
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`in the Google IPR. Thus, in the event that Google settles, Huawei will be well-
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`positioned to continue participating in this proceeding without any delay.
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`The first deadline in the Google IPR is Patent Owner’s response to Google’s
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`petition (37 C.F.R. § 42.120) and any motion to amend the patent (37 C.F.R. §
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`42.121). Pursuant to the Scheduling Order in the Google IPR, this deadline is
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`currently set for March 12, 2019 – over seven weeks from the date of this motion.
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`IPR2018-01257, Paper 9 at 8. Should the Board grant Huawei’s motion for joinder,
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`Patent Owner will have ample time to complete its submissions by its deadline.
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`And because Huawei’s petition for inter partes review does not raise any new
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`issues, Patent Owner’s Response will not require any analysis beyond what Patent
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`Owner is already required to undertake to respond to Google’s petition. Also,
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`Patent Owner has filed a Request for Rehearing on Decision to Institute, further
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`mitigating any impact joinder may have on the schedule in the Google Petition.
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`IPR2018-01257, Paper 10.
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`In view of the above, Huawei submits that the current schedule in the
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`Google IPR can remain unchanged and that joinder will not affect the Board’s
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`ability to complete its review and issue a final decision within the statutory time
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`limits under 35 U.S.C. § 316(a)(11) and 37 C.F.R. § 42.100(c).
`
`5.
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`Joinder Will Streamline the Proceedings, Reduce the Costs
`and Burdens on the Parties, and Increase Efficiencies for
`the Board Without Prejudicing the Parties
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`8
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`Granting joinder will not prejudice the parties or burden the Board. Rather,
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`joinder will promote judicial efficiency. As discussed above, the validity of the
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`‘978 Patent is squarely at issue in the Underlying Litigation and the Google IPR. A
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`final written decision on the validity of the challenged claims will simplify,
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`minimize, or even entirely resolve, issues in the Underlying Litigation. If the
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`claims are invalidated in a final decision, the Underlying Litigation is greatly
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`simplified. If the Board permits Huawei to join the Google IPR and the challenged
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`claims are upheld in a final written decision, Huawei may be estopped from further
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`challenging the validity of the claims on these grounds, thus avoiding duplication
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`of Patent Owner’s efforts in the litigation against Huawei. See 35 U.S.C. §
`
`315(e)(2). Accordingly, regardless of the Board’s final decision, joinder simplifies
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`the issues and reduces duplicate efforts and the possibility of inconsistencies.
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`Finally, permitting joinder will not prejudice the parties to the Google IPR.
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`Huawei raises no issues that are not already before the Board and agrees to
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`coordinate its filings and arguments with Google. Thus, neither Google nor Patent
`
`Owner will need to expend any additional resources beyond those required in the
`
`Google IPR. Indeed, because the Petition does not raise any new issues, joinder
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`will not require any additional analysis or otherwise affect the content of Patent
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`Owner’s Response. Further, Patent Owner will suffer no prejudice from joinder
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`because the IPR proceedings will provide a relatively inexpensive full and fair
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`
`
`9
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`
`
`
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`opportunity to respond to the challenged claims in a venue that should proceed
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`more quickly than the litigation against Huawei. See Sony Corp. v. Yissum
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`Research Development Co. of the Hebrew Univ. of Jerusalem, IPR2013-00326,
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`Paper 15 at 7 (PTAB Sept. 24, 2013).
`
`II. 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. Ex. 1007 at 9-16. While the
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`claim construction standard has changed from BRI to Phillips for petitions filed
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`after November 13, 2018, the Board should apply the BRI standard to Huawei’s
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`petition. Huawei is seeking joinder as a co-petitioner to the Google proceeding,
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`see 35 U.S.C. § 315(c) (“join as a party to that inter partes review.”) As is
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`customary, granting of this motion would result in Huawei being “joined as a
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`petitioner in that case [i.e., the Google IPR] pursuant to 37 C.F.R. § 42.122” and
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`the dismissal of Huawei’s copy-cat petition pursuant to 37 C.F.R. § 42.71(a). See,
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`e.g., Samsung Electronics America, Inc. v. Uniloc 2017 LLC, IPR2018-01383,
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`Paper 9 at 6 (Nov. 19, 2018). Thus, the rules applicable to the Google IPR
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`(including the BRI claim construction standard) should also apply to Huawei’s
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`
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`10
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`Petition, as “that case” will proceed and Huawei’s copy-cat petition will be
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`dismissed.1
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`III. CONCLUSION
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`For the foregoing reasons, Huawei respectfully requests that its Petition for
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`Inter Partes Review of U.S. Patent No. 8,552,978 be granted and that the
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`proceedings be joined with pending IPR proceeding IPR2018-01257.
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`Respectfully submitted,
`
`
`Dated: January 11, 2019
`
`
`
`/s/Kristopher L. Reed (Reg. No. 58,694)
`Kristopher L. Reed
`KILPATRICK TOWNSEND &
`STOCKTON LLP
`Two Embarcadero Center 19th Floor
`San Francisco, CA 94111
`(303) 571-4000
`kreed@kilpatricktownsend.com
`
`Counsel for Petitioners
`
`
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`1 If the Board deems that its rule(s) require application of the Phillips standard to
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`Huawei’s Petition, Huawei seeks waiver of such rule(s) pursuant to 37 C.F.R. §
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`42.5(b).
`
`
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`11
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`
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e) and 42.105(b), the undersigned certifies that
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`on January 11, 2019 a copy of this MOTION FOR JOINDER UNDER 37
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`C.F.R. §§ 42.22 AND 42.122(b) was served upon the Patent Owner via express
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`mail at the following address:
`
`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
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`the Eastern District of Texas entitled CyWee Group Ltd. v. Huawei Technologies
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`Co., Inc., et al., Case No. 2:17-CV-0495-WCB-RSP (E.D. Tex.) at the following
`
`addresses:
`
`Michael W. Shore (Texas 18294915)
`mshore@shorechan.com
`Alfonso G. Chan (Texas 24012408)
`achan@shorechan.com
`Christopher Evans (Texas 24058901)
`cevans@shorechan.com
`Ari B. Rafilson (Texas 24060456)
`arafilson@shorechan.com
`William D. Ellerman (Texas 24007151)
`wellerman@shorechan.com
`Paul T. Beeler (Texas 24095432)
`pbeeler@shorechan.com
`SHORE CHAN DEPUMPO LLP
`901 Main Street, Suite 3300
`Dallas, Texas 75202
`Telephone: (214) 593-9110
`
` - i -
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`
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`A courtesy copy was also served electronically upon counsel of record for
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`Patent Owner in Google LLC v. Cywee Group Ltd., IPR2018-01257 at the
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`following addresses:
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`Jay P. Kesan - jkesan@dimuro.com
`Cecil E. Key - ckey@dimuro.com
`Arlen Papazian - apapazian@dimuro.com
`DimuroGinsberg PC
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` courtesy copy was also served electronically upon counsel of record for
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` A
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`Petitioner Google LLC in Google LLC v. Cywee Group Ltd., IPR2018-01257 at the
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`following addresses:
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`Matthew A. Smith - smith@smithbaluch.com
`Andrew S. Baluch - baluch@smithbaluch.com
`Christopher M. Colice - colice@smithbaluch.com
`SMITH BALUCH LLP
`
`
`
`/s/Kristopher L. Reed
`Kristopher L. Reed (Reg. No. 58,694)
`
`Counsel for Petitioners
`
`
`Date: January 11, 2019
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`
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`
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`71450056V.2
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` - ii -
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`
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