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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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`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
`
`
`
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`Case IPR2019-00563
`Patent No. 8,552,978
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`
`
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`REPLY TO OPPOSITION TO PETITIONERS’ MOTION FOR JOINDER
`TO IPR2018-00563
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`I.
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`Introduction
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`Huawei’s petition is nearly identical to the Google IPR petition, and joinder
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`will not require any new discovery or disrupt the schedule. Patent Owner
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`nonetheless raises irrelevant and inaccurate concerns about the already-stayed
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`district court proceedings to try to make this IPR look more like Unified Patents
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`(e.g., Patent Owner ignores that all the Huawei Petitioners already are real parties
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`in interest in the Google IPR). In reality, there is no prejudice to Patent Owner,
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`and the Board’s prior decisions compel joinder of the two proceedings.
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`II. Unified Patents Is Not Controlling or On Point
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`Patent Owner’s opposition relies primarily on the joinder decision in Unified
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`Patents (IPR2014-00702, Paper 12). The Board has recognized that Unified
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`Patents is “not precedential” and, in cases like here, has limited applicability. E.g.,
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`Samsung v. Raytheon (IPR2016-00962, Paper 12 at 7). As recognized in Samsung,
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`the Unified Patents decision was premised on a unique set of factors:
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`(1) the second-filed petition added additional substantive issues to the
`earlier proceeding—namely, the question of whether all real-parties-
`in-interest had been identified; (2) Petitioner did not address how
`joinder would impact the schedule of several related inter partes
`review proceedings; and (3) nearly all of the challenged claims had
`previously been determined to be unpatentable in an earlier final
`written decision.
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`Id.
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`
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`1
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`
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`In contrast, like the Petition in Samsung, Huawei’s Petition “adds no
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`additional substantive issues to the earlier proceeding, [Huawei] has agreed to take
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`on only an understudy role in the [Google] IPR, thus, no change to the schedule is
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`necessary, and no final written decision has been issued by the Board regarding the
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`[’978] patent.” See id. Thus here, like in Samsung, Unified Patents is inapposite.
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`III. The Claim Construction Rule Change Is Not A Basis to Deny Joinder
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`The Board instituted inter partes review for the Google Petitions under the
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`broadest reasonable interpretation (BRI) standard. Subsequently, the rule has
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`changed from BRI to Phillips for petitions filed after November 13, 2018.
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`(Changes to the Claim Construction Standard for Interpreting Claims in Trial
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`Proceedings Before the PTAB, 83 Fed. Reg. 51340 (Oct. 11, 2018) (“Rules
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`Change,” Kleinman Decl. Ex. 1).) Patent Owner argues that this rule change
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`“presents a new issue based solely on the timing of the petition” sufficient to
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`preclude joinder. (See Opp. at 7-8). Patent Owner is incorrect.
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`First, the Board should apply the BRI standard to Huawei just as it will to
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`Google. Huawei seeks to join the existing Google proceeding as a party. See 35
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`U.S.C. § 315(c) (stating that the Director “may join as a party to that inter partes
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`review” later petitioners) (emphasis added). Granting Huawei’s request would
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`result in dismissal of Huawei’s petition pursuant to 37 C.F.R. § 42.71(a). See, e.g.,
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`Samsung v. Uniloc, IPR2018-01383, Paper 9 at 6. Following such order, the
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`
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`2
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`
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`
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`timing of Huawei’s now-dismissed petition becomes moot, and the Google IPR
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`will proceed as instituted under BRI, with Huawei joined.1
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`Further, Patent Owner fails to identify any construction from the Institution
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`Decision that would change under Phillips. Thus, far from a purported “new
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`issue” that the Board “will need to address,” there is no term where the rule change
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`will have any impact on the Board’s analysis in the Institution Decision. As
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`recognized by the Office in conjunction with the rule change, rare is the case where
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`the end result would be materially different under Phillips versus BRI:
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`As the Federal Circuit recently explained, “[i]n many cases, the claim
`construction will be the same under [both the BRI and Phillips]
`standards.” In re CSB-System Int'l, Inc., 832 F.3d 1335, 1341 (Fed.
`Cir. 2016). “Even under the broadest reasonable construction rubric
`. . ., the board must always consider the claims in light of the
`specification and teachings in the underlying patent.” In re Power
`Integrations, Inc., 884 F.3d 1370, 1375 (Fed. Cir. 2018) (citation and
`
`
`
`1 Further, because this is a change to a rule (37 CFR § 42.100) and not a change to
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`the underlying statute, the Board can eliminate any disparity caused by the unique
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`timing of this case by exercising its discretion under 37 C.F.R. § 42.5(b) and
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`waiving application of the Phillips standard to Huawei’s Petition. See § 42.5(b)
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`(“The Board may waive or suspend a requirement of parts 1, 41, and 42.”).
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`
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`3
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`
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`internal quotation marks omitted). “And there is no reason why this
`construction could not coincide with that of a court in litigation.” Id.
`… The IPO study indicates that, since 1986, “there have been very
`few decisions in which courts have attributed a variance in claim
`interpretation to the differences between the two standards.” Id. at 1.
`In sum, consistent with the IPO study and the Federal Circuit, we
`believe that the patentability determination reached will be consistent
`for BRI and Phillips in the vast majority of cases decided.
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`Rules Change at pp. 12-13 (“Response to Comment 4”). See also Microsoft Corp.
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`v. Enfish, LLC, 662 F. App’x 981, 984 (Fed. Cir. 2016). Given this, Patent
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`Owner’s argument that the rule change represents a “new issue” that “the Board
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`will need to address” is nothing more than speculation.
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`IV. Patent Owner’s Additional Arguments Provide No Basis for Denying
`Huawei’s Joinder Motion
`None of Patent Owner’s remaining arguments provides a basis for denying
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`Huawei’s motion. For instance, Patent Owner argues that “Huawei’s joinder to
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`this case also raises new questions regarding RPIs” and “will create the need for
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`CyWee to engage in discovery.” (Opp. at 9.) But Patent Owner fails to mention
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`that every single one of the Huawei Petitioners already is named as a real party in
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`interest in the Google IPR. Google IPR, Paper 1, p. 5. As such, joining the
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`Huawei Petitioners as named parties to the existing IPR would create no more of a
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`“need for CyWee to engage in discovery” than already exists in the Google IPR.
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`As another example, Patent Owner misstates the record regarding the Zhang
`4
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`reference. Patent Owner contends that Huawei did not identify Zhang in invalidity
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`contentions purportedly “filed after the Google IPR.” (Opp. at 2.) Not only is this
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`irrelevant, but it is inaccurate. Huawei served its invalidity contentions on March
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`30, 2018, before Google filed the IPR on June 15, 2018. (Kleinman Decl. Ex. 2.)
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`Factual misrepresentations about irrelevant issues cannot defeat a joinder motion.
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`Also, although Patent Owner alleges that “Huawei has made no effort to
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`address the impact of its joinder on the schedule” of other IPRs (Opp. at 7),
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`Huawei has shown there will be no impact on this or any other IPR proceeding—
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`Huawei seeks to join only the Google IPR, raises no new issues in that IPR, and
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`will act as an understudy to Google in that IPR.
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`Finally, Patent Owner’s speculative arguments such as “Google is a known
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`ring leader” (Opp. at 5), that Huawei and others are conspiring “to bully the
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`smaller Cywee” (Opp. at 4), and that it is “unfathomable” that Huawei “will truly
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`take an ‘understudy’ role” (Opp. at 5) are nothing more than empty rhetoric.
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`V. Conclusion
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`
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`In sum, the Board should grant Huawei’s joinder motion.
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`Dated: March 8, 2019
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`
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`Respectfully submitted,
`
`/s/Kristopher L. Reed (Reg. No. 58,694)
`Kristopher L. Reed
`KILPATRICK TOWNSEND &
`STOCKTON LLP
`Two Embarcadero Center 19th Floor
`5
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`San Francisco, CA 94111
`(303) 571-4000
`kreed@kilpatricktownsend.com
`
`Counsel for Petitioners
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`6
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`
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`CERTIFICATE OF SERVICE
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`I hereby certify that on March 8, 2019, I caused a true and correct copy of
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`the foregoing REPLY TO OPPOSITION TO PETITIONERS’ MOTION FOR
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`JOINDER TO IPR2018-00563 to be served via electronic mail as agreed by the
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`Patent Owner on the following attorneys of record:
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`Jay P. Kesan, Esq.
`Cecil E. Key, Esq.
`Arlen Papazian, Esq.
`DiMuro Ginsberg PC
`1101 King Street, Suite 610
`Alexandria, VA 22314
`Telephone: 703-684-4333
`Email:
`jkesan@dimuro.com
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`
`ckey@dimuro.com
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`
`apapazian@dimuro.com
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`
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`71587589V.2
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`
`/s/ Kristopher L. Reed
`Kristopher L. Reed (Reg. No. 58,694)
`
`Counsel for Petitioners
`
` - i -
`
`
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