Trials@uspto.gov
`571-272-7822
`
`Paper 28
`Entered: August 25, 2020
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`
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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.
`
`IPR2019-01365
`Patent 7,039,435 B2
`
`
`
`Before BRYAN F. MOORE and STACY B. MARGOLIES,
`Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`ORDER
`
`Conduct of Proceedings
`37 C.F.R. § 42.5
`
` and
`AMENDED SCHEDULING ORDER
`
`
`
`
`
`571-272-7822
`
`Paper 28
`Entered: August 25, 2020
`
`
`
`
`
`
`
`
`
`
`
`
`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.
`
`IPR2019-01365
`Patent 7,039,435 B2
`
`
`
`Before BRYAN F. MOORE and STACY B. MARGOLIES,
`Administrative Patent Judges.
`
`MOORE, Administrative Patent Judge.
`
`
`
`ORDER
`
`Conduct of Proceedings
`37 C.F.R. § 42.5
`
` and
`AMENDED SCHEDULING ORDER
`
`
`
`
`
`
`IPR2019-01365
`Patent 7,039,435 B2
`
`
`
`
`ZTE (USA) Inc. (“Petitioner ZTE”) filed a Petition (“Pet.,” Paper 1)
`
`pursuant to 35 U.S.C. § 311 to institute an inter partes review of claims 1–3
`
`and 6 of U.S. Patent No. 7,039,435 B2 (“the ’435 patent,” Ex. 1001). On
`
`November 12, 2019, Bell Northern Research, LLC (“Patent Owner”) filed a
`
`Preliminary Response (“Prelim. Resp.,” Paper 8). On February 1, 2020, we
`
`instituted an inter partes review of claims 1–3 and 6 of the ’435 patent.
`
`Paper 15. On March 10, 2020, Samsung Electronics Co., Ltd (“Petitioner
`
`Samsung”) filed a Petition pursuant to 35 U.S.C. § 311 requesting inter
`
`partes review of claims 1–3 and 6 of the ’435 patent. IPR2020-00697, Paper
`
`1. Petitioner Samsung also filed a Motion for Joinder seeking to join as a
`
`party to this proceeding. IPR2020-00697, Paper 4. On July 27, 2020, we
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`granted the Samsung Petition and the Motion for Joinder. Paper 25.
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`Petitioner ZTE did not file a Petitioner’s Reply by the stipulated
`
`deadline for the Reply—July 28, 2020. See Paper 17, 1; Paper 26, 1–2. On
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`July 30, Patent Owner and Petitioner ZTE sent an email to the Board, stating
`
`that the parties have settled and request authorization to file a motion to
`
`terminate ZTE from this proceeding. Ex. 3001. Subsequently, Petitioner
`
`Samsung filed an authorized motion arguing there is good cause to extend
`
`the deadline to file the Petitioner’s Reply because, due to an impending
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`settlement between ZTE and Bell Northern and the timing of the granting of
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`the Motion for Joinder, Petitioner Samsung did not get an opportunity to
`
`make arguments in a Petitioner’s Reply. Paper 26, 2–5. Petitioner Samsung
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`also proposes revised dates for the remaining deadlines, including the date
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`for oral argument (if requested). Id. at 4–5. In an authorized response,
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`Patent Owner asserts is “does not oppose moving the oral argument date in
`
`2
`
`
`
`IPR2019-01365
`Patent 7,039,435 B2
`
`this matter, provided there is no impact on the oral argument date for
`
`
`
`[IPR2019-01319 and 2019-01320].” Paper 27, 2.
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`We determine that good cause exists to extend the deadline for the
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`Petitioner’s Reply. Petitioner Samsung proposes amended dates for the
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`Petitioner’s Reply and the subsequent dates on the schedule. Paper 26, 4.
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`Patent Owner does not propose alternate dates.1 Paper 27. As reflected in
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`the appendix below, we adopt Petitioner Samsung’s proposed dates with the
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`exception of the due date of the oral hearing (Due Date 8). Due to
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`scheduling concerns, we set the date of the oral hearing as December 1,
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`2020. This Order does not affect any dates in IPR2019-01319 and/or 2019-
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`01320.
`
`
`1 Petitioner Samsung requests that the Petitioner Reply be due “September 8,
`2020 (or at least four weeks from the Board’s ruling).” Paper 26, 4. We do
`not add the additional four weeks after this decision as Petitioner Samsung
`appears to request in the alternative.
`
`3
`
`
`
`IPR2019-01365
`Patent 7,039,435 B2
`
`
`DUE DATE APPENDIX (Amended)
`
`
`
`DUE DATE 2 .................................................................... September 8, 2020
`
`Petitioner’s reply to Patent Owner’s response to petition
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`Petitioner’s opposition to motion to amend
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`DUE DATE 3 ...................................................................... October 20, 2020
`
`Patent Owner’s sur-reply to reply
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`Patent Owner’s reply to opposition to motion to amend
`(or Patent Owner’s revised motion to amend)
`
`DUE DATE 4 .................................................................. November 10, 2020
`
`Request for oral argument (may not be extended by stipulation)
`
`DUE DATE 5 .................................................................... November 3, 2020
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`Petitioner’s sur-reply to reply to opposition to motion to amend
`
`Motion to exclude evidence
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`DUE DATE 6 .................................................................. November 10, 2020
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`Opposition to motion to exclude
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`Request for prehearing conference
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`DUE DATE 7 .................................................................. November 17, 2020
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`Reply to opposition to motion to exclude
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`DUE DATE 8 ..................................................................... December 1, 2020
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`Oral argument (if requested)
`
`
`
`4
`
`
`
`
`
`IPR2019-01365
`Patent 7,039,435 B2
`
`PETITIONER:
`Amol A. Parikh
`Charles M. McMahon
`Thomas M. DaMario
`Jiaxiao Zhang
`MCDERMOTT WILL & EMERY
`amparikh@mwe.com
`cmcmahon@mwe.com
`tdamario@mwe.com
`jiazhang@mwe.com
`
`
`PATENT OWNER:
`Steven W. Hartsell
`Alexander E. Gasser
`SKIERMONT DERBY LLP
`shartsell@skiermontderby.com
`agasser@skiermontderby.com
`
`5
`
`
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