UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________________
`
`HP INC., LENOVO (UNITED STATES) INC.,
`MOTOROLA MOBILITY LLC., DELL INC., AND DELL PRODUCTS LP,
`Petitioner
`
`v.
`
`NEODRON LTD.
`Patent Owner.
`
`Case IPR2020-00653
`Patent No. 8,432,173
`
`MOTION FOR JOINDER TO INTER PARTES REVIEW
`(35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b))
`
`
`___________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________________
`
`HP INC., LENOVO (UNITED STATES) INC.,
`MOTOROLA MOBILITY LLC., DELL INC., AND DELL PRODUCTS LP,
`Petitioner
`
`v.
`
`NEODRON LTD.
`Patent Owner.
`
`Case IPR2020-00653
`Patent No. 8,432,173
`
`MOTION FOR JOINDER TO INTER PARTES REVIEW
`(35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b))
`
`
`
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), HP Inc., Lenovo
`
`(United States) Inc., Motorola Mobility LLC, Dell Inc. Dell Products LP
`
`(collectively, “Petitioner”) move for joinder with the Inter Partes Review of U.S.
`
`Patent No. 8,432,173 (“the ’173 Patent”), Samsung Electronics Co. v. Neodron Ltd.,
`
`IPR2020-00267 (“the Samsung IPR”), for which the petition for Inter Partes Review
`
`was filed on December 10, 2019, and is currently pending. IPR2020-00267, paper
`
`3. Petitioner requests that action on this motion be held in abeyance until, and only
`
`if, the Samsung IPR is instituted.1 This motion is timely because it is filed “no later
`
`than one month after the institution date” of the Samsung IPR. 37 C.F.R.
`
`§ 42.122(b); Central Security Group – Nationwide, Inc. v. Ubiquitous Connectivity,
`
`LP, IPR2019-01609, Paper 11, at 8-9 (P.T.A.B. Feb. 26, 2020) (stating that
`
`§ 42.122(b) is “[t]he only timing requirement for a motion for joinder”). Petitioner
`
`understands that the petitioner in the Samsung IPR (“the Samsung Petitioner”) does
`
`not oppose Petitioner’s requests for joinder.
`
`1 Should the Board deny institution of the Samsung IPR, this Motion should be
`
`considered moot and Petitioner respectfully requests that the Board consider this
`
`petition independently of the Samsung IPR.
`
`-1-
`
`
`
`Petitioner requests institution of this Petition for Inter Partes Review. This
`
`Petition is substantively identical to the original Samsung IPR petition in all material
`
`respects. The only changes are in the Introduction to identify the correct Petitioner
`
`and in mandatory notices under 37 C.F.R. § 42.8(b). The Petition here and the
`
`Samsung IPR petition challenge the same claims of the ’173 patent on the same
`
`grounds relying on the same prior art and evidence, including a declaration identical
`
`in substance from the same expert.2
`
`Petitioner agrees to proceed solely on the grounds, evidence, and arguments
`
`advanced, or that will be advanced, in the Samsung IPR as instituted. Thus, the
`
`Petition warrants institution under 35 U.S.C. § 314, and 35 U.S.C. § 315(c) permits
`
`Petitioner’s joinder to the Samsung IPR.
`
`Further, if joined, Petitioner agrees to adhere to all applicable deadlines in the
`
`Samsung IPR and coordinate all filings with the Samsung Petitioner in the Samsung
`
`IPR. The Samsung Petitioner will maintain the lead role in the proceedings so long
`
`as it is a party to the proceedings and is not estopped under § 315(e)(1). Petitioner
`
`will only assume the lead role in the proceedings if the Samsung Petitioner is no
`
`longer a party to the proceedings or unable to advance arguments for one or more
`
`2 The declaration has been updated only to reflect retention by Petitioner and is
`
`otherwise identical to the declaration submitted in the Samsung IPR.
`
`-2-
`
`
`
`claims, or grounds, for example, because of § 315(e)(1). Petitioner agrees to
`
`consolidated filings for all substantive papers in the proceeding. The Samsung
`
`Petitioner and Petitioner will be jointly responsible for the consolidated filings.
`
`Absent a Board order precluding the Samsung Petitioner from making arguments
`
`that would otherwise be available to Petitioner, Petitioner will not advance any
`
`arguments separate from those advanced by the Samsung Petitioner in the
`
`consolidated filings. These limitations will avoid lengthy and duplicative briefing.
`
`Also, Petitioner will not seek additional depositions or deposition time, and will
`
`coordinate deposition questioning and hearing presentations with the Samsung
`
`Petitioner. Petitioner agrees to the foregoing conditions even in the event that other
`
`IPRs filed by other, third-party petitioners are joined with the Samsung IPR.
`
`Joinder will help efficiently resolve the disputes among the parties. By
`
`joinder, a single Board decision may dispose of the issues raised in the Samsung IPR
`
`for all interested parties. Further, the Patent Owner has asserted the 173’ patent in
`
`district court against Petitioner. Joinder will estop Petitioner from asserting in
`
`district court those issues resolved in a final decision from the Samsung IPR, thus
`
`narrowing the issues in the district court actions. See 35 U.S.C. § 315(e)(2). Finally,
`
`joinder would not complicate or delay the Samsung IPR, and would not adversely
`
`affect any schedule set in that proceeding. In sum, joinder would promote efficient
`
`adjudication in multiple forums. On the other hand, if instituted, maintaining the
`
`-3-
`
`
`
`Petitioner’s IPR proceeding separate from that of the Samsung IPR would entail
`
`needless duplication of effort.
`
`Joinder will not unduly prejudice any party. Because joinder will not add any
`
`new substantive issues, delay the schedule, burden deponents, or increase needless
`
`filings, any additional costs on the Patent Owner would be minimal. On the other
`
`hand, denial of joinder would prejudice Petitioner. Their interests may not be
`
`adequately protected in the Samsung IPR proceedings, particularly if the Samsung
`
`Petitioner settles with the Patent Owner. Petitioner should be allowed to join in a
`
`proceeding affecting a patent asserted against them.
`
`II.
`
`BACKGROUND AND RELATED PROCEEDINGS
`Neodron Ltd. (the “Patent Owner”) is the owner of the ’173 patent. The Patent
`
`Owner asserted the ’173 patent against Petitioner and others in the following actions
`
`in the U.S. District Court for the Western District of Texas: Neodron Ltd. v. Samsung
`
`Elecs. Co., Ltd., et al., No. 6:19-cv-00323 ADA (W.D. Tex.); Neodron Ltd. v.
`
`Microsoft Corporation, Case No. 6:19-cv-00321 (W.D. Tex.); Neodron Ltd. v.
`
`Hewlett Packard Enterprise Company, Case No. 6:19-cv-00319 (W.D. Tex.);
`
`Neodron Ltd. v. Dell Technologies, Inc., No. 6:19-cv-00318 (W.D. Tex.); Neodron
`
`Ltd. v. Lenovo Group Ltd, And Lenovo (United States) Inc., Case No. 6:19-cv-00320
`
`(W.D. Tex.); Neodron Ltd. v. Motorola Mobility LLC, Case No. 6:19-cv-00322
`
`(W.D. Tex.); and Neodron Ltd. v. Amazon Com, Inc., Case No. 6:19-cv-00317 (W.D.
`
`-4-
`
`
`
`Tex.). Patent Owner has also asserted the ’173 patent before the International Trade
`
`Commission in Inv. No. 337-TA-1162, in the matter of Certain Touch-Controlled
`
`Mobile Devices, Computers, And Components. On December 10, 2019, Samsung
`
`filed its IPR petition, IPR2020-00267, against the ’173 patent. Petitioner here timely
`
`moves for joinder with the Samsung IPR.
`
`III.
`
`STATEMENT OF REASONS FOR THE REQUESTED RELIEF
`A.
`Legal Standards and Applicable Rules
`The Board has discretion to join a properly filed IPR petition to an IPR
`
`proceeding. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b); see also Dell Inc. v.
`
`Network-1 Sec. Solutions, Inc., IPR2013-00385, Paper 19, at 4-6; Sony Corp. v.
`
`Yissum Res. & Dev. Co. of the Hebrew Univ. of Jerusalem, IPR2013- 00326, Paper
`
`15, at 3-4; Microsoft Corp. v. Proxyconn, Inc., IPR2013-00109, Paper 15, at 3-4.
`
`“The Board will determine whether to grant joinder on a case-by-case basis, taking
`
`into account the particular facts of each case, substantive and procedural issues, and
`
`other considerations.” Dell, IPR2013-00385, Paper 19, at 3. The movants bear the
`
`burden of proof in establishing entitlement to the requested relief. 37 C.F.R.
`
`§§ 42.20(c), 42.122(b). A motion for joinder should:
`
`(1) set forth the reasons why joinder is appropriate; (2) identify any new
`grounds of unpatentability asserted in the petition; (3) explain what
`impact (if any) joinder would have on the trial schedule for the existing
`
`-5-
`
`
`
`review; and (4) address specifically how briefing and discovery may be
`simplified.
`
`Dell, IPR2013-00385, Paper 19, at 4.
`
`B.
`
`Joinder will not add any new grounds of unpatentability or have
`an impact on the trial schedule.
`The Petition is based on the same grounds and combinations of prior art that
`
`are at issue in the Samsung IPR. For simplicity and efficiency, Petitioner has copied
`
`the substance of Samsung’s petition and accompanying declaration. Petitioner does
`
`not seek to introduce grounds or claims not in the Samsung IPR and seeks only to
`
`join the proceeding as instituted. Petitioner retained the same expert, who has
`
`submitted an identical declaration as in the Samsung IPR. The Patent Owner should
`
`not require any discovery beyond that which it may need in the Samsung IPR—nor
`
`should the Board permit any. The Petition presents no new substantive issues
`
`relative to the Samsung IPR and does not seek to broaden the scope of the Samsung
`
`IPR.
`
`For efficiency’s sake, Petitioner will:
`
`1. Adhere to all applicable deadlines in the Samsung IPR;
`
`2. Submit “consolidated” filings with the Samsung Petitioner, as set forth
`
`above in the statement of precise relief requested;
`
`3. Refrain from requesting or reserving any additional depositions or
`
`deposition time;
`
`-6-
`
`
`
`4. Refrain from requesting or reserving additional oral hearing time; and
`
`5. Assume a second-chair role as long as the Samsung Petitioner remains
`
`in the proceeding.3
`
`In view of these provisions, joinder should not affect the trial schedule.
`
`C.
`
`Joinder will promote efficiency by consolidating issues, avoiding
`wasteful duplication, and preventing inconsistency.
`Petitioner presents identical arguments and supporting evidence as the
`
`Samsung IPR. Joinder will simplify briefing and discovery. Given that the Samsung
`
`IPR and the Petition address the same prior art and grounds for rejection of the same
`
`claims, joining these proceedings allows for joint submissions and discovery, further
`
`streamlining the proceedings. This should promote efficiency and conserve the
`
`Board’s and the parties’ resources. Further, joinder will estop Petitioner from
`
`asserting in district court those issues resolved in a final written decision in the
`
`3 These limitations are consistent with previously granted joinder motions. See, e.g.,
`
`Enzymotech Ltd. v. Neptune Techs., IPR2014-00556, Paper 19 (July 9, 2014)
`
`(agreeing to procedural concessions, such as “consolidated” responses); Gillette Co.
`
`v. Zond, IPR2014-01016, Paper 13 (Nov. 10, 2014) (same); SAP Am. Inc. v.
`
`Clouding IP, LLC, IPR2014-00306, Paper 13 (May 19, 2014) (same).
`
`-7-
`
`
`
`Samsung IPR, thus narrowing the issues in the district court actions. See 35 U.S.C.
`
`§ 315(e)(2).
`
`Joinder is Appropriate
`D.
`The Board has previously stated that it is “mindful of a policy preference for
`
`joining a party that does not present new issues.” Enzymotec Ltd. v. Neptune Techs
`
`& Bioresources, Inc. IPR2014-00556, Paper No. 19 at 6 (July 9, 2014) (citing 157
`
`CONG. REC. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (“The Office
`
`anticipates that joinder will be allowed as of right – if an inter partes review is
`
`instituted on the basis of a petition, for example, a party that files an identical petition
`
`will be joined to that proceeding, and thus allowed to file its own briefs and make
`
`its own arguments.”)).
`
`Here, because Petitioner seeks institution solely on the grounds, evidence, and
`
`arguments advanced, or that will be advanced, in the Samsung IPR, institution is
`
`warranted under 35 U.S.C. § 314 and Petitioner’s joinder to the Samsung IPR is
`
`appropriate under 35 U.S.C. § 315(c). No new grounds of unpatentability are
`
`asserted. As explained above, joinder would not adversely impact the trial schedule,
`
`briefing, or discovery in the Samsung IPR, and the remaining equities compel
`
`joinder.
`
`-8-
`
`
`
`Petitioner is filing this Petition and joinder motion to ensure that the trial is
`
`completed in the event that the Samsung Petitioner reaches settlement with Patent
`
`Owner.
`
`1. Without joinder, Petitioner will be prejudiced
`A denial of joinder would prejudice Petitioner. Its substantial interests, as
`
`parties against whom the ’173 patent has been asserted in a federal district court
`
`action, may not be adequately protected by the Samsung Petitioner in the Samsung
`
`IPR proceedings. For example, Petitioner has an interest that the Samsung IPR reach
`
`a final determination to facilitate a timely and cost-effective end to the controversy
`
`between Petitioner and the Patent Owner. Petitioner should be allowed to join in a
`
`proceeding affecting a patent asserted against it.
`
`Joinder will not unduly prejudice any party
`2.
`The Petition raises issues already before the Board and long known to the
`
`Patent Owner. Addressing patent validity in this proceeding, well on its way towards
`
`a final determination, serves the parties’ and Board’s interests.
`
`IV. CONCLUSION
`Joinder will not affect the substance, procedure, or scheduling of the Samsung
`
`IPR. Petitioner files this motion under the statutory joinder provisions as
`
`contemplated by the AIA. Joinder will simplify the issues and promote efficiency,
`
`justice, and speed.
`
`-9-
`
`
`
`For the foregoing reasons, Petitioner respectfully requests inter partes review
`
`of U.S. Patent No. 8,432,173 and joinder with Samsung Electronics Co., Ltd. et al.
`
`v. Neodron Ltd., IPR2020-00267.4
`
`Dated: March 12, 2020
`
`Respectfully submitted,
`
`/ James M. Heintz/
`James M. Heintz, Reg. No. 41,828
`
`4 Although no fee is believed to be required, the Commissioner is authorized to
`
`charge any additional fees required for this Motion, to Deposit Account No. 50-
`
`3266.
`
`-10-
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies pursuant to 37 C.F.R. §42.6(e) and §42.105 that on
`
`March 12, 2020, a true and correct copy of the Motion for Joinder to Inter Partes
`
`Review was served via overnight courier on the Patent Owner at the below
`
`correspondence address of record:
`
`Chad C. Walters
`Baker Botts LLP
`2001 Ross Avenue, Suite 900
`Dallas, TX 75201
`Telephone: 214-953-6500
`A courtesy copy was sent to the below counsel via electronic mail:
`
`Reza Mirzaie (CA SBN 246953)
`Email: rmirzaie@raklaw.com
`Marc A. Fenster (CA SBN 181067)
`Email: mfenster@raklaw.com
`Brian D. Ledahl (CA SBN 186579)
`Email: bledahl@raklaw.com
`Russ August & Kabat
`12424 Wilshire Blvd., 12th Floor
`Los Angeles, CA 90025
`Telephone: (310) 826-7474
`and
`
`Matthew D. Aichele (VA SBN 77821)
`Email: maichele@raklaw.com
`Russ August & Kabat
`800 Maine Avenue, SW, Suite 200
`Washington, DC 20024
`Telephone: (310) 826-7474
`
`
`
`Respectfully submitted,
`
`
`By:/ James M. Heintz /
`James M. Heintz ( Reg. No. 41,828)
`Email: jim.heintz@dlapiper.com
`11911 Freedom Dr., Suite 300
`Reston VA 20190
`Phone: 703.773.4148
`Fax: 703.773.5000
`Attorney for Petitioner
`
`
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