`
`
`Filed: August 14, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`ZTE (USA), INC., and
`SAMSUNG ELECTRONICS CO., LTD.,1
`
`PETITIONERS,
`
`v.
`
`BELL NORTHERN RESEARCH, LLC,
`
`PATENT OWNER.
`___________________
`
`Case No. IPR2019-01365
`U.S. Patent No. 7,039,435
`___________________
`
`PATENT OWNER’S RESPONSE TO
`PETITIONER SAMSUNG’S REQUEST FOR EXTENSION OF TIME FOR
`REPLY TO PATENT OWNER’S RESPONSE
`
`
`1 Samsung Electronics Co., Ltd., who filed a petition in IPR2020-00697, has been
`
`joined as a petitioner to this proceeding.
`
`
`
`1
`
`
`
`Patent Owner Bell Northern Research, LLC (“BNR” or “Patent Owner”)
`
`files this response to Petitioner Samsung Electronics Co., Ltd. (“Petitioner” or
`
`“Samsung”) Request for Extension of Time for Reply to Patent Owner’s Response.
`
`The present proceeding is currently scheduled for oral argument on October
`
`29, 2020, and concerns U.S. Patent No. 7,039,435 (“’435 patent”). See Paper 14 at
`
`9. The Board has also scheduled oral argument in IPR2019-01319 and 2019-01320
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`concerning two patents (the “Goris patents”), which are unrelated to the ’435
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`patent, on the same date. For the reasons explained herein, Samsung waived any
`
`right to seek an extension of the original case. However, BNR does not oppose
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`moving the oral argument date in this matter, provided there is no impact on the
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`oral argument date for the Goris patents. The technical subject matter of the Goris
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`patents is not related to the ‘435 patent. Further, BNR has asserted the Goris
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`patents in pending litigations (and stayed litigations) and would be unduly
`
`prejudiced if the Goris IPR proceedings are delayed. 2 In addition, although
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`Samsung is joined in the Goris IPRs, it is in an “understudy” role and does not
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`actively participate in those proceedings; thus, the primary party in the Goris IPRs
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`is not the same as in the ’435 patent IPR.
`
`
`2 For clarity, BNR does not understand Samsung to be asking for an extension in
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`the IPR2019-01319 and -01320 proceedings.
`
`
`
`2
`
`
`
`On the other hand, if the Board intends to conduct the oral arguments for the
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`Goris and ‘435 patents at the same time, such that Samsung’s request would
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`impact and delay the oral argument date for the Goris patents, BNR opposes
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`Samsung’s request. In its joinder motion, Samsung represented to the Board that it
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`would assume an “understudy” role and that joinder would “neither unduly
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`complicate the ZTE IPR nor delay its schedule.” See IPR2020-00697, Paper 4 at 2;
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`see also id. at 3 (“as all issues are substantively identical and Samsung will act as
`
`an ‘understudy,’ joinder will have minimal or no impact on the pending schedule
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`of the ZTE IPR.”), id. at 6 (“[Samsung] explicitly consents to the existing trial
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`schedule.”). The Board accepted Samsung’s representations in granting joinder as
`
`reflected in the joinder order filed in this matter. See Paper 25 at 6 (“FURTHER
`
`ORDERED that the Scheduling Order in place in IPR2019-01365 will continue to
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`govern the joined proceeding.”). Now, Samsung is backtracking.
`
`As an understudy, Samsung agreed to abide by the decisions made by ZTE,
`
`the original petitioner, and not pursue an active role unless and until ZTE ceased
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`participation in these proceedings. Thus, before any withdrawal3, ZTE could make
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`arguments, admissions, and strategy decisions disagreeable to Samsung, and
`
`
`3 ZTE requested authorization to withdraw from this proceeding in an email to the
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`Board dated July 30, 2020.
`
`
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`3
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`
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`Samsung would have no recourse as the “understudy.” See IPR2020-00697, Paper
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`4 at 2 (“[Samsung] will not assume an active role unless the current Petitioner
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`ceases to participate in the instituted IPR.”), id. at 7 (“Unless and until the current
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`Petitioner ceases to actively participate in the ZTE IPR, Samsung will not assume
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`an active role therein.”); see also IPR2019-01365, Paper 25 at 5 (“In view of
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`Petitioner’s agreement to abide by the conditions set forth in its Motion, Patent
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`Owner does not oppose Petitioner’s motion to join as a party to the 1365 IPR
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`proceeding.”). That ZTE decided not to file a reply was always a possibility and a
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`risk that Samsung knowingly assumed. After all, submitting a reply in an IPR
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`proceeding is optional, not mandatory, as evidenced by the permissive language in
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`the Scheduling Order. See Paper 14 at 7 (“Petitioner may file a reply to the Patent
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`Owner’s response.”); see also Consolidated Trial and Practice Guide (Nov. 2019)
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`(“TPG”) at 73 (same). Samsung should be required to pick up these proceedings
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`where ZTE left off, and that includes complying with the existing case schedule
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`and abide by ZTE’s filings (or absence thereof) up to the point of ZTE’s
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`withdrawal.
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`If Samsung did not want to be bound by the decision of ZTE, it could have
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`proceeded with its own IPR and not sought joinder. But Samsung saw a tactical
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`advantage in joining this proceeding to get an earlier final written decision.
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`Samsung got what it sought and cannot now be heard to complain and backtrack
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`
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`4
`
`
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`on its express representations because it does not like how these proceedings have
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`played out.
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`The Petition sets forth arguments and evidence purportedly showing why the
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`challenged claims of the’435 patent are unpatentable, and BNR has responded to
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`those arguments and evidence. See also TPG at 73 (“Petitioner may not submit
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`new evidence or argument in reply that it could have presented earlier, e.g. to make
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`out a prima facie case of unpatentability.”). Nothing prevents the Board from
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`deciding the issues raised on the current record.4
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`Therefore, to the extent that Samsung’s request for an extension would
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`affect the date for oral argument in the Goris IPRs and consequently prejudice
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`Patent Owner by causing a delay in those unrelated proceedings, the Board should
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`deny Samsung’s request.
`
`
`
`
`
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`4 Indeed, the Board often decides issues without permitting replies and sur-replies.
`
`
`
`5
`
`
`
`Dated: August 14, 2020
`
`
`
`Respectfully Submitted,
`
`
`
`/Steven W. Hartsell/
`Steven W. Hartsell (Reg. No. 58,788)
`SKIERMONT DERBY LLP
`1601 Elm St., Ste. 4400
`Dallas, Texas 75201
`P: 214-978-6600/F: 214-978-6601
`Lead Counsel for Patent Owner
`
`Alexander E. Gasser (Reg. No. 48,760)
`Joseph M. Ramirez (Reg. No. 70,716)
`SKIERMONT DERBY LLP
`1601 Elm St., Ste. 4400
`Dallas, Texas 75201
`P: 214-978-6600/F: 214-978-6621
`Back-Up Counsel for Patent Owner
`
`
`
`6
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), I certify that I caused to be served on the
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`counsel for Petitioner a true and correct copy of the foregoing Patent Owner’s
`
`Response to Petitioner’s Request for Extension of Time for Reply to Patent
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`Owner’s Response, by electronic means on August 14, 2020 at the following
`
`addresses of record:
`
`Amol A. Parikh
`Charles M. McMahon
`Thomas M. DaMario
`Jiaxiao Zhang
`ZTEBNR-PTAB@mwe.com
`
`Naveen Modi
`Joseph E. Palys
`Quadeer A. Ahmed
`Arvind Jairam
`PH-Samsung-BNR-IPR@paulhastings.com
`
`
`
`Respectfully submitted,
`
`
`/Steven W. Hartsell/
`Steven W. Hartsell (Reg. No. 58,788)
`Counsel for Patent Owner
`
`Dated: August 14, 2020
`
`
`
`
`
`
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