`
`
`
`
`Filed: February 11, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`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.
`Petitioner
`
`v.
`
`CYWEE GROUP LTD.
`Patent Owner
`
`____________________
`
`Case IPR2019-00563
`Patent No. 8,552,978
`____________________
`
`
`OPPOSITION TO PETITIONER’S MOTION FOR JOINDER TO INTER
`PARTES REVIEW IPR2018-01257
`
`
`
`
`
`Case IPR2019-00563
`Patent No. 8,552,978
`
`TABLE OF CONTENTS
`
`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 ...................... 8
`IV. CONCLUSION ............................................................................................. 10
`
`
`
`
`
` i
`
`
`
`Case IPR2019-00563
`Patent No. 8,552,978
`
`TABLE OF AUTHORITIES
`
`
`Cases
`
`Applications in Internet Time v. RPX Corp.,
` 897 F.3d 1336 (Fed. Cir., July 9, 2019) ................................................................ 6
`
`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,
` IPR2013-00004 (PTAB Apr. 24, 2013) ................................................................ 3
`
`Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal,
` 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
`
`Statutes
`
`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
`
` ii
`
`
`
`Case IPR2019-00563
`Patent No. 8,552,978
`
`I.
`
`
`INTRODUCTION
`
`Huawei Device USA, Inc., et al. (“Petitioner” or “Huawei”) 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.,
`
`IPR2018-01257 (the “Google IPR”). The Google IPR was instituted on December
`
`11, 2018, challenging claims 10 and 12 of the ’978 Patent.
`
`Huawei is one of four parties now seeking joinder with the Google IPR. The
`
`other parties are Samsung Electronics Co., Ltd. (“Samsung”); ZTE (USA), Inc.
`
`(“ZTE”); and LG Electronics Inc. (“LG”). All of these parties are also parties to
`
`infringement actions before various district courts involving the ‘978 Patent.
`
`Petition, Paper 1 at 2. Huawei has challenged the validity of the ‘978 Patent in
`
`CyWee Group Ltd. v Huawei Tech. Co., Inc. et al., Civil Action No. 2:17-cv-00495
`
`(E.D. Tex.) (the “District Court Action”).
`
`The District Court Action was filed on June 9, 2017. District Court Action,
`
`Complaint, Doc. 1. Huawei is nearly seven months past the deadline for which it
`
`could have filed a petition for its own IPR pursuant to 37 C.F.R. § 42.101(b).
`
`During the time since Huawei was first served with the complaint in the District
`
`Court Action, Huawei has not indicated any interest in challenging the validity of
`
`
`
`1
`
`
`
`Case IPR2019-00563
`Patent No. 8,552,978
`the ‘978 Patent by IPR, opting instead to pursue an invalidity defense in the
`
`District Court Action. The District Court Action has progressed considerably, but
`
`was stayed on January 4, 2019, pending the resolution of the Google IPR.. A claim
`
`construction order issued in the District Court Action on December 6, 2018. Id.,
`
`Claim Construction Order, Doc. 113. That claim construction favored CyWee on
`
`all terms. Huawei objected to that claim construction order, but no ruling has been
`
`issued regarding the objection. Huawei now seeks to subvert the District Court
`
`Action claim construction order by joining the Google IPR. Moreover, Huawei
`
`never identified U.S. Patent App. Pub. 2004/0095317 to Zhang (“Zhang”) in its
`
`invalidity contentions in the District Court Action. These contentions were filed
`
`after the Google IPR, when Huawei would have been made aware of that
`
`reference. Huawei should not be permitted, through joinder, to now rely on a prior
`
`art reference it decided was irrelevant in the first instance.
`
`Allowing joinder here will severely prejudice the Patent Owner; will
`
`introduce new issues requiring additional discovery; will impact the schedule of
`
`this proceeding and related proceedings; and will waste the time, effort, and
`
`resources of the Board, the parties, and the federal district courts. Accordingly,
`
`Huawei’s Motion must be denied.
`
`
`
`2
`
`
`
`Case IPR2019-00563
`Patent No. 8,552,978
`
`II. STANDARD
`
`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
`
`is made on a case-by-case basis, taking into account the particular facts of each
`
`case, substantive and procedural issues, and other considerations. Unified Patents,
`
`IPR2014-00702, Paper 12 at 3. When determining whether to grant a motion for
`
`joinder, the Board considers many factors including the timing and impact of
`
`joinder on the trial schedule, cost, discovery issues, potential simplification of
`
`briefing, and claim construction issues. Id. at 3 (citing Kyocera Corp. v. Softview,
`
`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.
`
`Unified Patents, IPR2014-000702, Paper 12 at 3. Even where two parties file
`
`nearly identical petitions in separate proceedings, joinder is not granted “as a
`
`matter of right,” if the movant fails to meet its burden. Id. at 4.
`
`III. ARGUMENT
`
`
`1. Joinder Would Prejudice Patent Owner
`
`
`
`In a request for reconsideration of the Board’s decision to institute the
`
`Google IPR, Patent Owner warned of a coordinated attack on the ‘978 patent by a
`
`
`
`3
`
`
`
`Case IPR2019-00563
`Patent No. 8,552,978
`group of major technology companies. Google IPR, Paper 10 at 2-3. Now, Patent
`
`Owner’s warnings are fully realized. Samsung, Huawei, LG, and ZTE all seek to
`
`join the Google IPR to use their substantial combined resources to bully the
`
`smaller CyWee. This synchronized effort by petitioners is highly prejudicial to
`
`Patent Owner for multiple reasons.
`
`First, this type of mass joinder petitioning was one of Congress’ concerns in
`
`codifying 35 U.S.C. § 315. Congress granted the Director—and through him, the
`
`Board—discretion “over whether to allow joinder [as a] safety valve [to] allow the
`
`Office to avoid being overwhelmed if there happens to be a deluge of joinder
`
`petitions in a particular case.” Unified Patents, IPR2014-000702, Paper 12 at 4
`
`(quoting 157 Cong. Rec. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl)).
`
`Huawei’s Motion is one in just such a “deluge of joinder petitions.” Four joinder
`
`petitions have been filed in relation to the Google IPR.1 A flood of joinder petitions
`
`of this kind prejudices Patent Owner, as it must now face the combined resources
`
`and efforts of all of the petitioners. Abusive, serial joinder also places stress on the
`
`Board to determine whether each individual joinder is appropriate on a case-by-
`
`case basis, wasting resources and potentially extending the trial schedule while the
`
`determinations are made.
`
`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.
`
`
`
`4
`
`
`
`Case IPR2019-00563
`Patent No. 8,552,978
`Second, joinder is only appropriate where the party seeking joinder agrees to
`
`take a “silent understudy” role. Famy Care Ltd. v. Allergan, Inc., IPR2017-00566,
`
`Paper 12 at 9 (PTAB July 12, 2017). Huawei has alleged that it will “act as an
`
`‘understudy’ and will not assume an active role.” Motion, Paper 3 at 6. However, it
`
`is unfathomable that Samsung, Huawei, LG, and ZTE—all major technology
`
`companies who are defendants in district court litigation with significant interest in
`
`the outcome of the Google IPR—will truly take an “understudy” role. Rather, the
`
`facts indicate that the petitioners will be and have been actively working in tandem
`
`to defeat CyWee’s claims. Google is a known ring-leader in organizing major
`
`companies in coordinated efforts to overwhelm smaller patent owners. See, e.g.,
`
`Unified Patents, IPR2014-00702, Paper 12 at Part II(2), pp. 4-6. And all of the
`
`parties seeking joinder are mobile device manufacturers that use Google’s Android
`
`operating system, which is a foundational component of CyWee’s district court
`
`cases against those parties. Huawei showed no interest whatsoever in pursuing
`
`inter partes review against CyWee until CyWee noted several parties’ lack of
`
`interest in its request for reconsideration in the Google IPR. Google IPR, Paper 10
`
`at 2-3. Now, in seeking joinder, it is telling that large sections of each of the new
`
`petitioners’ briefs for their motions to join appear to be copy-pasted from one
`
`another and contain nearly identical language with only minor modifications.
`
`
`
`5
`
`
`
`Case IPR2019-00563
`Patent No. 8,552,978
`Taken together, these facts indicate that Huawei and the other parties
`
`seeking joinder have already been working together and will certainly continue
`
`working together, taking active roles in the Google IPR. Moreover, as will be
`
`discussed below, additional discovery will be necessary to determine the extent of
`
`the relationship between the petitioners and to discover whether other third parties
`
`that also use the Android operating system that are not currently seeking to join the
`
`Google IPR are Real Parties in Interest (RPI) to its outcome. See Applications in
`
`Internet Time v. RPX Corp., 897 F.3d 1336, 1357 (Fed. Cir., July 9, 2019) (“[A]n
`
`agent with an ownership interest in the subject mater of the suit... or a party in
`
`whose name a contract has been made for the benefit of another, may qualify as a
`
`real party in interest... Depending on the nature of the parties’ relationship, an
`
`entity can serve as an agent to a principal and file an IPR on the principal’s behalf
`
`even without the two formally agreeing that the agent will do so.” (internal
`
`citations omitted)).
`
`2. Joinder Would Impact The Trial Schedule
`
`Huawei contends that its “proposed joinder will neither unduly complicate
`
`the Google IPR nor delay its schedule.” Motion, Paper 3 at 6. Huawei’s joinder,
`
`however would introduce new issues, including at least claim construction issues
`
`and questions regarding RPI, which would require additional discovery.
`
`Additionally, the Google IPR is not a single case with no other pending related
`
`
`
`6
`
`
`
`Case IPR2019-00563
`Patent No. 8,552,978
`IPRs. IPR2018-01258 was also filed by Google on June 14, 2018, and currently is
`
`on the same schedule as IPR2018-01257. IPR2018-01258 concerns U.S. Patent
`
`No. 8,441,438 (the “‘438 Patent”), from which the ‘978 Patent descends. Samsung,
`
`Huawei, LG, and ZTE all seek joinder in that IPR as well. IPR2019-00143 also
`
`concerns the ‘438 Patent and was filed by ZTE on October 31, 2018. Huawei has
`
`made no effort to address the impact of its joinder on the schedule of these related
`
`IPRs and therefore has failed to meet its burden to show that it is entitled to
`
`joinder. Unified Patents, IPR2014-00702, Paper 12 at 6-7.
`
`a. Joinder Would Introduce New Claim Construction Issues
`
`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
`
`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
`
`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 Huawei claims that it
`
`“does not raise any new issues” to the Google IPR, Motion, Paper 3 at 8, this is
`
`untrue. Although Huawei does not present any new grounds of unpatentability, its
`
`joinder to the Google IPR presents a new issue based solely on the timing of the
`
`
`
`7
`
`
`
`Case IPR2019-00563
`Patent No. 8,552,978
`petition. Because Huawei’s petition and Motion were filed after November 13,
`
`2018, they should be subject to claim construction under the Phillips standard.
`
`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 Huawei’s petition and Motion were
`
`filed, the Board will need to address the new issue of which claim construction
`
`standard would apply if Huawei were to join.
`
`Huawei’s motion is little more than an attempt to bypass the claim
`
`construction order of the District Court Action and circumvent the Phillips claim
`
`construction standard, which it would otherwise be subject to in the District Court
`
`Action or in IPRs now filed with the PTAB. Huawei 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 Huawei’s petition and joinder also weigh in favor of denying
`
`its Motion.
`
`b. Joinder Would Require Additional Discovery as to RPIs
`
`Huawei’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
`
`
`
`8
`
`
`
`Case IPR2019-00563
`Patent No. 8,552,978
`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
`
`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
`
`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.
`
`Because additional discovery will be required, which could also lead to
`
`shifts in the trial schedule, Huawei’s Motion should be denied.
`
`
`
`9
`
`
`
`IV. CONCLUSION
`
`Because the particular facts of this case, the substantive and procedural
`
`issues, and other considerations weigh in favor of denying Huawei’s Motion,
`
`Case IPR2019-00563
`Patent No. 8,552,978
`
`Respectfully submitted,
`
`
`
`
`
`/Jay P. Kesan/
`Jay P. Kesan
`Reg. No. 37,488
`
`Counsel for Patent Owner
`CyWee Group Ltd.
`
`
`
`joinder should be denied.
`
`Dated: February 11, 2019
`
`
`
`
`
`
`
`
`10
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on the date
`
`indicated below, a complete and entire copy of this submission was electronically
`
`served to Petitioner’s counsel at the email address of record:
`
`Kristopher L. Reed (Reg. No. 58,694)
`Kilpatrick Townsend & Stockton, LLP
`Two Embarcadero Center 19th Floor
`San Francisco, CA 94111
`Tel: (303) 571-4000
`
`Benjamin M. Kleinman (Reg. No. 66,856)
`Tel: (415) 576-0200
`
`Norris P. Boothe (Reg. No. 74,983)
`Tel: (650) 462-5305
`
`HuaweiCywee@kilpatricktownsend.com
`
`
`
`Respectfully submitted,
`
`
`
`
`
`/Jay P. Kesan/
`Jay P. Kesan
`Reg. No. 37,488
`
`Counsel for Patent Owner
`CyWee Group Ltd.
`
`
`
`Dated: February 11, 2019
`
`
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
