Paper No. __
`Filed: August 7, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`ZTE (USA), INC. and
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioners
`
`v.
`BELL NORTHERN RESEARCH, LLC,
`Patent Owner
`____________________
`Case No. IPR2020-01365
`Patent No. 7,039,435
`____________________
`PETITIONER SAMSUNG’S REQUEST FOR EXTENSION OF TIME FOR
`REPLY TO PATENT OWNER’S RESPONSE
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`Filed: August 7, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`ZTE (USA), INC. and
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioners
`
`v.
`BELL NORTHERN RESEARCH, LLC,
`Patent Owner
`____________________
`Case No. IPR2020-01365
`Patent No. 7,039,435
`____________________
`PETITIONER SAMSUNG’S REQUEST FOR EXTENSION OF TIME FOR
`REPLY TO PATENT OWNER’S RESPONSE
`
`
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`IPR2019-01365
`Patent No. 7,039,435
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`TABLE OF CONTENTS
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`I.
`Introduction ...................................................................................................... 1
`The Timeline of Relevant Events .................................................................... 1
`II.
`III. There is Good Cause for Extending Due Date 2 ............................................. 2
`IV. Conclusion ....................................................................................................... 5
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`ii
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`IPR2019-01365
`Patent No. 7,039,435
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`I.
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`Introduction
`Pursuant to the Board’s July 31, 2020 email, Petitioner Samsung Electronics
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`Co., Ltd., (“Samsung”) respectfully submits this request for authorization to file a
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`reply, with an extended due date, to Bell Northern Research LLC’s (“BNR’s” or
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`“Patent Owner’s”) Patent Owner’s Response (Paper No. 18). Samsung was joined
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`as a party to this proceeding on the eve of original Petitioner ZTE’s deadline for
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`filing a Petitioner Reply (i.e., Due Date 2). But ZTE settled with BNR and failed
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`to file a Petitioner Reply. The unfortunate coinciding of Samsung’s joinder and
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`ZTE’s cessation of participation in this IPR constitutes good cause to extend Due
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`Date 2 to permit Samsung to file a Reply. Extending Due Date 2 will not prejudice
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`BNR in any way, is in the interests of justice, and will not require extending the
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`one-year deadline for issuing a final decision in this IPR.
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`II. The Timeline of Relevant Events
`The timeline of the relevant events giving rise to this unusual situation is set
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`forth below. The Board instituted the instant proceeding on February 11, 2020
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`(Paper No. 13). On March 10, 2020, Samsung sought joinder to the present
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`proceeding. Samsung Elecs. Co., Ltd. v. Bell Northern Research, LLC, IPR2020-
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`00697, Paper Nos. 1 (March 10, 2020), 4 (March 10, 2020). When Samsung
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`moved to join, it was not time-barred under § 315(b).
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`On July 22, 2020, Samsung sent an email to the Board noting the possibility
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`1
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`IPR2019-01365
`Patent No. 7,039,435
`that ZTE might not file a Petitioner’s Reply on or before July 28, 2020 (Due Date
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`2) in light of an impending settlement, and requested guidance from the Board on
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`how to proceed in light of the changed circumstances.
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`On July 27, 2020, the eve of the due date for ZTE’s Petitioner Reply, the
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`Board instituted IPR2020-00697 and joined Samsung to the present IPR.
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`IPR2020-00697, Paper 10.
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`On July 28, 2020, Samsung sent an email to the Board confirming ZTE’s
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`decision to forego a Reply and ceasing any further participation in the proceeding.
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`Samsung therefore requested an extension of Due Date 2 so that Samsung can
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`prepare and file a Petitioner Reply.
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`On July 30, 2020, ZTE requested authorization to file a motion to terminate
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`ZTE in this proceeding in light of a settlement agreement between ZTE and BNR.
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`III. There is Good Cause for Extending Due Date 2
`Given that Samsung was joined in this proceeding on the eve of ZTE’s
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`Reply deadline (supra Section II) and ZTE failed to file a Reply because of a
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`settlement with BNR, there is good cause for extending Due Date 2 in order to
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`enable Samsung to file a Petitioner’s Reply. Samsung timely filed its joinder
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`motion and diligently followed up with the Board multiple times to seek relief in
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`light of circumstances that Samsung (unlike BNR) could not control—namely, the
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`timing of the settlement and cessation of participation by ZTE.
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`2
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`IPR2019-01365
`Patent No. 7,039,435
`Barring Samsung from filing a Reply would severely prejudice Samsung
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`because BNR’s Patent Owner’s Response would be unrebutted and Samsung is
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`potentially subject to estoppel under § 315(e)(2) in the district court action that
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`BNR brought against Samsung. Moreover, now that Samsung has stepped into
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`ZTE’s shoes, the absence of a Reply hinders Samsung’s ability to present its case
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`at oral argument. Conversely, the requested extension will not prejudice BNR.
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`Indeed, Samsung agrees that an extension of Due Date 2 should result in a similar
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`extension of BNR’s sur-reply deadline (Due Date 3) and any following deadlines.
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`Thus, from BNR’s perspective, nothing procedurally changes except the identity of
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`the adverse party and the dates for the parties’ remaining papers.
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`Extending Due Date 2 is also in the interests of justice. The Board has
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`already found a reasonable likelihood that the challenged claims of the’435 patent
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`are unpatentable. Allowing BNR’s Response to go unrebutted merely due to the
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`timing of BNR’s agreement to settle would leave the Board with an incomplete
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`record for purposes of the final decision. See, e.g., Pacific Market International,
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`LLC v. Ignite USA, LLC, IPR2014-00561, Paper No. 40 at 5 (May 12, 2015)
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`(accepting a late Petitioner Reply in the “interests of justice” because “doing so
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`enables both parties to present the most complete set of argument and evidence in
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`the record, while avoiding undue prejudice to either party.”). It would also defeat
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`the adversarial process at the heart of AIA trials. See Hunting Titan, Inc. v.
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`3
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`IPR2019-01365
`Patent No. 7,039,435
`DynaEnergetics Europe GmbH, IPR2018-00600, Paper 67 at 11 (July 6, 2020)
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`(precedential) (“Relying on the adversarial process to frame the issues for the
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`Board properly places the incentives on the parties to identify the pertinent
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`evidence and make the best arguments for their desired outcome.”) The public has
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`a strong interest in ensuring a complete evaluation of the patentability of the
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`challenged claims because given BNR’s litigious history, any surviving claims will
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`likely be the subject of litigation, and allowing Samsung to rebut BNR’s Response
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`will ensure a proper review. Indeed, there is a significant public interest against
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`“leaving bad patents enforceable.” Thryv, Inc v. Click-To-Call Techs., LP, 140 S.
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`Ct. 1367, 1374 (2020).
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`Finally, extending Due Date 2 (and the following due dates) will not require
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`extending the statutory one-year deadline (February 11, 2021) for issuing a final
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`decision in this proceeding. See 35 U.S.C. § 316(a)(11). An exemplary revision to
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`the schedule (Paper No. 14 at 9; Paper No. 17) is set forth below.
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`Event
`Due Date 2
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`Original Due Date
`July 28, 2020
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`Revised Due Date
`September 8, 2020 (or at least four
`weeks from the Board’s ruling)
`October 20, 2020
`November 3, 2020
`November 10, 2020
`November 17, 2020
`November 24, 2020
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`September 8, 2020
`October 6, 2020
`October 13, 2020
`October 20, 2020
`October 29, 2020
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`Due Date 3
`Due Date 5
`Due Date 6
`Due Date 7
`Due Date 8
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`4
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`IPR2019-01365
`Patent No. 7,039,435
`The Board routinely engages in such schedule changes (including extending
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`the oral argument date) when a Patent Owner files a revised Motion to Amend.1 In
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`fact, just recently the Board issued a revised schedule to allow a joined party (LG
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`Electronics) to oppose a revised Motion to Amend when the lead Petitioner (also
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`ZTE in that case) failed to oppose the revised Motion to Amend. ZTE (USA), Inc.
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`v. Cywee Group Ltd., IPR2019-00143, Paper No. 51 (PTAB July 20, 2020).
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`IV. Conclusion
`For the foregoing reasons, Samsung requests an extension of Due Date 2 to
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`file a Reply to BNR’s Patent Owner Response.
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`Dated: August 7, 2020
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`Respectfully submitted,
`
`By: /Naveen Modi/
`Naveen Modi (Reg. No. 46,224)
`Counsel for Petitioner Samsung Electronics
`Co., Ltd.
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`1 Samsung’s agreement to adhere to the original trial schedule if joined, see
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`IPR2020-00697, Paper No. 4 at 5-6, is not inconsistent with the requested
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`extension. That representation assumed active participation by the lead Petitioner
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`ZTE with Samsung relegated to an “understudy” role, which is no longer the case.
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`It also did not contemplate the self-serving timing of BNR’s agreement to settle
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`with ZTE on the eve of the Reply due date.
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`5
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`IPR2019-01365
`Patent No. 7,039,435
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`CERTIFICATE OF SERVICE
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`I hereby certify that on August 7, 2020, a copy of the foregoing Petitioner
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`Samsung’s Request for Extension of Time for Reply to Patent Owner’s Response
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`was served by electronic means upon the following counsel of record for Patent
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`Owner:
`
`Steven W. Hartsell
`Alexander E. Gasser
`Paul J. Skiermont (pro hac vice application to be submitted)
`Sadaf R. Abdullah (pro hac vice application to be submitted)
`Mieke K. Malmberg (pro hac vice application to be submitted)
`BNR_SDTeam@skiermontderby.com
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`A copy of the foregoing Petitioner Samsung’s Request for Extension of
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`Time for Reply to Patent Owner’s Response by electronic means upon the
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`following counsel of record for Petitioner ZTE:
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`Amol A. Parikh (amparikh@mwe.com)
`Charles McMahon (cmcmahon@mwe.com)
`Thomas M. DaMario (tdamario@mwe.com)
`Jiaxiao Zhang (jiazhang@mwe.com)
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`Respectfully submitted,
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`By: /Naveen Modi/
` Naveen Modi (Reg. No. 46,224)
` Counsel for Petitioner Samsung Electronics
` Co., Ltd.
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`Dated: August 7, 2020
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