Paper No. __
`Filed: March 10, 2020
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner
`v.
`BELL NORTHERN RESEARCH, LLC,
`Patent Owner
`____________________
`Patent No. 7,039,435
`____________________
`MOTION FOR JOINDER TO INTER PARTES REVIEW IPR2019-01365
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`Filed: March 10, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner
`v.
`BELL NORTHERN RESEARCH, LLC,
`Patent Owner
`____________________
`Patent No. 7,039,435
`____________________
`MOTION FOR JOINDER TO INTER PARTES REVIEW IPR2019-01365
`
`
`
`
`
`
`
`
`
`
`Samsung’s Motion for Joinder with
`Case IPR2019-01365
`
`TABLE OF CONTENTS
`
`I.
`II.
`III.
`
` Page
`STATEMENT OF THE PRECISE RELIEF REQUESTED .......................... 1
`STATEMENT OF MATERIAL FACTS ........................................................ 2
`STATEMENT OF REASONS FOR RELIEF REQUESTED ........................ 3
`A.
`Legal Standard ....................................................................................... 3
`B.
`Each of the Relevant Factors Weighs in Favor of the Board
`Granting the Motion for Joinder ........................................................... 3
`1.
`Joinder with the ZTE IPR Is Appropriate ................................... 4
`2.
`Petitioner Does Not Propose New Grounds of
`Unpatentability ............................................................................ 5
`Joinder Will Not Negatively Impact the ZTE IPR Trial
`Schedule ...................................................................................... 5
`Procedures to Simplify Briefing and Discovery ......................... 6
`4.
`IV. CONCLUSION ................................................................................................ 8
`
`
`3.
`
`i
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`
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`Samsung’s Motion for Joinder with
`Case IPR2019-01365
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`Dell, Inc. v. Network-1 Security Solutions, Inc.,
`IPR2013-00385, Paper 17 (July 29, 2013) ........................................................... 3
`HTC v. Parthenon Unified Memory Architecture LLC.,
`IPR2017-00512, Paper No. 12 (June 1, 2017) ...................................................... 1
`LG v. Memory Integrity, LLC.,
`IPR2015-01353, Paper No. 11 (Oct. 5, 2015) .......................................... 4, 5, 6, 8
`Noven Pharmaceuticals, Inc. v. Novartis AG,
`IPR2014-00550, Paper No. 38 (Apr. 10, 2015) .................................................... 7
`Par Pharmaceutical, Inc. v. Novartis AG,
`IPR2016-01023, Paper No. 20 (Oct. 27, 2016) .................................................... 5
`Samsung Elecs. Co., Ltd. v. Raytheon Co.,
`IPR2016-00962, Paper No. 12 (Aug. 24, 2016) ................................................... 4
`Statutes
`35 U.S.C. § 315(c) ................................................................................................. 1, 3
`Other Authorities
`37 C.F.R. § 1.7(a) ....................................................................................................... 1
`37 C.F.R. § 42.1(b) ................................................................................................ 1, 5
`37 C.F.R. § 42.22 ....................................................................................................... 1
`37 C.F.R. § 42.122(b) ................................................................................................ 1
`
`ii
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`
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`Samsung’s Motion for Joinder with
`Case IPR2019-01365
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`Samsung Electronics Co., Ltd., (“Petitioner” or “Samsung”) respectfully
`
`I.
`
`submits this Motion for Joinder, concurrently with a Petition (“the Samsung
`
`Petition”) for inter partes review of U.S. Patent No. 7,039,435 (“the ’435 patent”)
`
`filed herewith.
`
`Pursuant to 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22 and 42.122(b), Samsung
`
`requests institution of an inter partes review and joinder with ZTE (USA), Inc. v.
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`Bell Northern Research, LLC, IPR2019-01365 (“the ZTE IPR” or “the ZTE
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`proceeding”), which the Board instituted on February 11, 2020, concerning the
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`same claims 1-3, and 6 of the ’435 patent at issue in the Samsung Petition. This
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`request is being submitted within the time frame set forth in 37 C.F.R. § 42.122(b).
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`Samsung submits that this request for joinder is consistent with the policy
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`surrounding inter partes reviews, as it is the most expedient way to “to secure the
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`just, speedy, and inexpensive resolution of every proceeding.” See 37 C.F.R. §
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`42.1(b); see also HTC v. Parthenon Unified Memory Architecture LLC., IPR2017-
`
`00512, Paper No. 12 at 5-6 (June 1, 2017). The Samsung Petition and the Petition
`
`in the ZTE IPR are substantially identical; they contain the same grounds (based on
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`the same prior art combinations and supporting evidence) against the same claims.
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`(See Ex. 1018, illustrating changes between the instant Petition and the Petition in
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`IPR2019-01365.) Further, upon joining the ZTE IPR, Samsung will act as an
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`1
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`Samsung’s Motion for Joinder with
`Case IPR2019-01365
`“understudy” and will not assume an active role unless the current Petitioner
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`ceases to participate in the instituted IPR. Accordingly, the proposed joinder will
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`neither unduly complicate the ZTE IPR nor delay its schedule. As such, the joinder
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`will promote judicial efficiency in determining the patentability of the ’435 patent
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`without prejudice to Patent Owner.
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`II.
`
`STATEMENT OF MATERIAL FACTS
`1.
`The ’435 patent is at issue in an infringement action against Samsung
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`in the Eastern District of Texas, Case No. 2:19-cv-00286.
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`2.
`
`The ’435 patent is also at issue in other patent infringement actions:
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`Case Nos. 3:18-cv-02864 (S.D. Cal.) and 3:18-cv-01786 (S.D. Cal.).
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`3. The ’435 patent is also at issue in IPR2019-00319, and was at issue in
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`IPR2019-01186, which was terminated on December 13, 2019.
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`4.
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`On July 24, 2019, ZTE (USA), Inc. filed a petition for inter partes
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`review (IPR2019-01365) (“the ZTE Petition”) requesting cancellation
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`5.
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`6.
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`of claims 1-3, and 6 of the ʼ435 patent.
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`On February 11, 2020, the Board instituted the ZTE IPR.
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`The Samsung Petition and the ZTE Petition are substantially identical;
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`they contain the same grounds (based on the same prior art
`
`combinations and supporting evidence) against the same claims.
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`2
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`Samsung’s Motion for Joinder with
`Case IPR2019-01365
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`A. Legal Standard
`Pursuant to 35 U.S.C. § 315(c), the Board may grant a motion for joining an
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`inter partes review petition with another inter partes review proceeding. The
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`Board, in determining whether to exercise its discretion to grant joinder, considers
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`whether the joinder motion: (1) sets forth the reasons why joinder is appropriate;
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`(2) identifies any new grounds of unpatentability asserted in the petition; (3)
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`explains what impact (if any) joinder would have on the trial schedule for the
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`existing review; and (4) addresses specifically how briefing and discovery may be
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`simplified. See Frequently Asked Question
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`(“FAQ”) H5, available at
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`http://www.uspto.gov/ip/boards/bpai/prps.jsp (last visited Feb. 29, 2020); see also
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`Dell, Inc. v. Network-1 Security Solutions, Inc., IPR2013-00385, Paper 17 at 3
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`(July 29, 2013).
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`B.
`
`Each of the Relevant Factors Weighs in Favor of the Board
`Granting the Motion for Joinder
`
`All four factors weigh in favor of granting Petitioner’s motion for joinder.
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`The Samsung Petition is substantively identical to the Petition in the ZTE IPR.
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`Samsung does not present any new grounds of unpatentability. Additionally, as all
`
`issues are substantively identical and Samsung will act as an “understudy,” joinder
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`will have minimal or no impact on the pending schedule of the ZTE IPR. See LG v.
`
`Memory Integrity, LLC., IPR2015-01353, Paper No. 11 at 6 (Oct. 5, 2015)
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`3
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`
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`Samsung’s Motion for Joinder with
`Case IPR2019-01365
`(granting motion for joinder where petitioners requested an “understudy” role).
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`Moreover, the briefing and discovery will be simplified by resolving all issues in a
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`single proceeding. Accordingly, joinder is appropriate.
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`1.
`Joinder with the ZTE IPR Is Appropriate
`The Board “routinely grants motions for joinder where the party seeking
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`joinder introduces identical arguments and the same grounds raised in the existing
`
`proceeding.” Samsung Elecs. Co., Ltd. v. Raytheon Co., IPR2016-00962, Paper
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`No. 12 at 9 (Aug. 24, 2016) (internal quotations and citations omitted). Here,
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`joinder with the ZTE IPR is appropriate because the Samsung Petition introduces
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`identical arguments and the same grounds raised in the existing ZTE proceeding
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`(i.e., it challenges the same claims of the same patent, relies on the same expert
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`declaration, and is based on the same grounds and combinations of prior art
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`submitted in the ZTE Petition). Because these proceedings are substantively
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`identical, good cause exists for joining this proceeding with the ZTE IPR so that
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`the Board, consistent with 37 C.F.R. § 42.1(b), can efficiently “secure the just,
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`speedy, and inexpensive resolution” of the Samsung and ZTE Petitions in a single
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`proceeding.
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`4
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`Samsung’s Motion for Joinder with
`Case IPR2019-01365
`Petitioner Does Not Propose New Grounds of
`Unpatentability
`
`The Samsung Petition is substantively identical to the petition in the ZTE
`
`2.
`
`IPR (i.e., challenging the same claims of the same patent, relying on the same
`
`expert declaration, and on the same grounds and combinations of prior art
`
`submitted in the ZTE Petition). See LG, IPR2015-01353, Paper No. 11 at 6
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`(granting institution of IPR and motion for joinder where petitioners relied “on the
`
`same prior art, same arguments, and same evidence, including the same expert and
`
`a substantively identical declaration”); see also Par Pharmaceutical, Inc. v.
`
`Novartis AG, IPR2016-01023, Paper No. 20 at 14 (Oct. 27, 2016) (granting motion
`
`for joinder where petitioners “do not assert any new ground of unpatentability that
`
`is not already being considered in [an instituted IPR proceeding], rely on the same
`
`arguments and evidence, and do not require any modification to the existing
`
`schedule”).
`
`3.
`
`Joinder Will Not Negatively Impact the ZTE IPR Trial
`Schedule
`Joinder will have minimal impact, if any, on the ZTE IPR trial schedule
`
`because the Samsung Petition presents no new issues or grounds of unpatentability.
`
`See LG, IPR2015-01353, Paper No. 11 at 6 (granting IPR and motion for joinder
`
`where “joinder should not necessitate any additional briefing or discovery from
`
`Patent Owner beyond that already required in [the original IPR]”). Further,
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`5
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`
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`Samsung’s Motion for Joinder with
`Case IPR2019-01365
`Petitioner explicitly consents to the existing trial schedule. There are no new issues
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`for the Board to address, and Patent Owner will not be required to present any
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`additional responses or arguments.
`
`The Patent Owner’s Response will also not be negatively impacted because
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`the issues presented in the Samsung Petition are identical to the issues presented in
`
`the ZTE Petition. Patent Owner will not be required to provide any additional
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`analysis or arguments beyond what it will already provide in responding to the
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`petition in the ZTE IPR. Also, because the Samsung Petition relies on the same
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`expert and the same declaration, only a single deposition is needed for the
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`proposed joined proceeding.
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`Accordingly, joinder with the ZTE IPR does not unduly burden or
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`negatively impact the trial schedule.
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`4.
`Procedures to Simplify Briefing and Discovery
`Samsung explicitly agrees to take an “understudy” role, which will simplify
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`briefing and discovery. Specifically, Samsung explicitly agrees, upon joining the
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`ZTE IPR, that the following conditions, as previously approved by the Board in
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`similar circumstances, shall apply so long the current Petitioner in IPR2019-01365
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`continues to remain an active party:
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`6
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`
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`Samsung’s Motion for Joinder with
`Case IPR2019-01365
`a) Samsung shall not make any substantive filings, unless a filing
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`concerns termination and settlement, or issues solely involving
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`Samsung;
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`b) Samsung shall not present any argument or make any presentation at
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`the oral hearing on issues not solely involving Samsung;
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`c) Samsung shall not seek to cross-examine or defend the cross-
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`examination of any witness, unless the topic of cross-examination
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`concerns issues solely involving Samsung; and
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`d) Samsung shall not seek discovery from Patent Owner on issues not
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`solely involving Samsung.
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`See Noven Pharmaceuticals, Inc. v. Novartis AG, IPR2014-00550, Paper No. 38 at
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`5 (Apr. 10, 2015). Unless and until the current Petitioner ceases to actively
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`participate in the ZTE IPR, Samsung will not assume an active role therein.
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`Thus, by Samsung accepting an “understudy” role, Patent Owner and the
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`current Petitioner can comply with the existing trial schedule without needing any
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`duplicative efforts by the Board or the Patent Owner. These steps will minimize
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`any potential complications or delay that potentially may result by joinder. See LG,
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`IPR2015-01353, Paper No. 11 at 6-7 (granting IPR and motion for joinder because
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`“joinder would increase efficiency by eliminating duplicative filings and
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`discovery, and would reduce costs and burdens on the parties as well as the Board”
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`7
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`
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`Samsung’s Motion for Joinder with
`Case IPR2019-01365
`where petitioners agreed to an “understudy” role). Samsung is further willing to
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`agree to any other reasonable conditions the Board deems necessary before joining
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`Samsung to the ZTE IPR.
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`IV. CONCLUSION
`Based on the factors discussed above, Samsung respectfully requests that the
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`Board institute the Samsung Petition and grant joinder with the ZTE IPR.
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`Dated: March 10, 2020
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`Respectfully submitted,
`
`By: /Naveen Modi/
`Naveen Modi (Reg. No. 46,224)
`Counsel for Petitioner
`
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`8
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`
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`Samsung’s Motion for Joinder with
`Case IPR2019-01365
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`CERTIFICATE OF SERVICE
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`I hereby certify that on March 10, 2020, I caused a true and correct copy of
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`the foregoing Motion for Joinder to be served via express mail on the Patent
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`Owner at the following correspondence address of record as listed on PAIR:
`
`BROADCOM LIMITED
`4380 Ziegler Road
`Fort Collins CO 80525
`
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`In addition, courtesy copies were served electronically upon the following
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`counsel for Patent Owner in the concurrent district court litigation:
`
`Paul J. Skiermont
`Sadaf R. Abdullah
`Steven W. Hartsell
`Christopher Hodge
`Steven J. Udick
`Alexander E Gasser
`Joseph M Ramirez
`bnr_sdteam@skiermontderby.com
`Mieke K. Malmberg
`mmalmberg@skiermontderby.com
`
`Courtesy copies were also served electronically upon counsel of record for
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`Patent Owner in IPR2019-01365 at the following addresses:
`
`Steven W. Hartsell (shartsell@skiermontderby.com)
`Alexander E. Gasser (agasser@skiermontderby.com)
`
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`Samsung’s Motion for Joinder with
`Case IPR2019-01365
`Courtesy copies were also served electronically upon counsel of record for
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`Petitioner in IPR2019-01365 at the following addresses:
`
`Amol A. Parikh (amparikh@mwe.com)
`Charles McMahon (cmcmahon@mwe.com)
`Thomas M. DaMario (tdamario@mwe.com)
`Jiaxiao Zhang (jiazhang@mwe.com)
`
`Dated: March 10, 2020
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`Respectfully submitted,
`
`By: /Naveen Modi/
` Naveen Modi (Reg. No. 46,224)
` Counsel for Petitioner
`
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