UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
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`v.
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`BELL NORTHERN RESEARCH, LLC,
`Patent Owner.
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`Patent No. 7,039,435
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`PETITIONER’S NOTICE
`REGARDING MULTIPLE PETITIONS
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`BELL NORTHERN RESEARCH, LLC,
`Patent Owner.
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`
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`Patent No. 7,039,435
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`PETITIONER’S NOTICE
`REGARDING MULTIPLE PETITIONS
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`TABLE OF CONTENTS
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`INTRODUCTION .............................................................................................................. 1
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`RANKING .......................................................................................................................... 1
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`DIFFERENCES BETWEEN THE PETITIONS, WHY THEY ARE MATERIAL,
`AND WHY ALL SHOULD BE INSTITUTED ................................................................. 2
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`CONCLUSION ................................................................................................................... 4
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`I.
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`II.
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`III.
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`IV.
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`i
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`US. Patent No. 7,039,435
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`I.
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`INTRODUCTION
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`Petitioner is concurrently filing two petitions challenging different claims of
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`US. Patent No. 7,039,435 (“the ’934 patent”)- “To aid the Board in determining”
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`why “more than one petition is necessary,” Petitioner provides the information
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`below. See PTAB Consolidated Trial Practice Guide (“TPG”) (November 2019) at
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`59—60.
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`11.
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`RANKING
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`While both petitions are meritorious and justified as explained below,
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`Petitioner requests that the Board consider the petitions in the following order:1
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`Claims
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`Petition 1
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`1—3 and 6
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`1
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`G—round1: Claims 1-3 Anticipated by Baiker
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`Ground 2: Claims 1-3 and 6 Obvious over
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`Baiker and Werling
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`Ground 3: Claims 1-3 Anticipated by Irvin
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`Ground 4: Claims 1-3 and 6 Obvious over
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`Irvin and Myllyméiki
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`1 While Petitioner is providing this ranking per the PTAB’s guidance in the
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`consolidated TPG, Petitioner believes ranking in this instance is inappropriate and/or
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`unnecessary since each petition addresses a different claim. That is, there is no
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`overlap amongst the challenged claims in the two petitions.
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`2
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`Petition 2 8
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`U.S. Patent No. 7,039,435
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`Ground 5: Claims 1-3 Obvious over Bodin
`and Irvin
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`Ground 6: Claim 6 Obvious over Bodin,
`Irvin, and Myllymäki
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`Ground 1: Claim 8 Anticipated by Baiker
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`Ground 2: Claim 8 Obvious over Baiker and
`Werling
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`Ground 3: Claim 8 Anticipated by Irvin
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`Ground 4: Claim 8 Obvious over Irvin and
`Myllymäki
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`Ground 5: Claim 8 Obvious over Bodin and
`Irvin
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`III. DIFFERENCES BETWEEN THE PETITIONS, WHY THEY ARE
`MATERIAL, AND WHY ALL SHOULD BE INSTITUTED
`As indicated in Petition 1, it is being submitted concurrently with a motion for
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`joinder. Specifically, Petitioner requests institution and joinder of Petition 1 with
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`ZTE (USA), Inc. v. Bell Northern Research, LLC, IPR2019-01365 (“the ZTE IPR”
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`or “the ZTE proceeding”), which the Board instituted on February 11, 2020. Petition
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`1 is substantially identical to the petition in the ZTE IPR; it contains the same
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`grounds (based on the same prior art combinations and supporting evidence) against
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`the same claims (claims 1-3 and 6). Petition 2 challenges a single claim (claim 8)
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`which is not challenged in the ZTE IPR and thus not included in Petition 1. Thus,
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`the current circumstances are consistent with the guidance in the consolidated TPG,
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`2
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`U.S. Patent No. 7,039,435
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`which states that “the Board recognizes that there may be circumstances in which
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`more than one petition may be necessary.” See PTAB Consolidated TPG at 59-60.
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`In any event, the petitions are materially different because each petition
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`addresses a different claim. And the Board’s decision with respect to the
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`patentability of the challenged claims in each petition would be materially different
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`because the decision would address the validity of a different claim in each case.
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`Thus, denying one petition over the other would leave one or more challenged claims
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`unaddressed.
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`The fact that another IPR petition involving claim 8 of the ’435 patent is
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`pending in LG Electronics, Inc. v. Bell Northern Research, LLC, IPR2020-00319
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`(“the LG IPR” or “the LG proceeding”) does not weigh against institution of Petition
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`2. The LG IPR involves a different petitioner and different prior art combinations.
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`Moreover, there has been no preliminary response filed or institution decision issued
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`in the LG IPR. Thus, Petitioner could not have used patent owner’s arguments or
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`the Board’s decision as a roadmap to formulate its challenge to claim 8. Indeed,
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`given that Petitioner cannot predict whether the LG IPR will be instituted at this
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`juncture (and thus give Petitioner an opportunity to consider whether to join the LG
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`IPR), Petitioner has been diligent in filing Petition 2 prior to the filing of any
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`preliminary response in the LG IPR to avoid any implication that Petitioner is
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`benefiting from the developments in the LG IPR.
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`3
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`U.S. Patent No. 7,039,435
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`Finally, both the Administrative Procedures Act and due process weigh
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`against denying institution of either petition under 35 U.S.C. §§ 314(a) or 325(d).
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`Indeed, the two petitions here do not constitute an abuse of the process because this
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`is Petitioner’s first challenge to any claims of the ’435 patent and as discussed above,
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`both petitions are justified. And given that both petitions are based on the same prior
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`art and are limited to either (a) already instituted grounds (Petition 1) or (b) a single
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`challenged claim based on the same combinations included in Petition 1 (Petition 2),
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`institution of both petitions would not implicate any of the concerns regarding the
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`Board’s time and resources required if trial is instituted in both petitions.
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`IV. CONCLUSION
`For the reasons given above, the Board should institute both petitions.
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`Dated: March 10, 2020
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`Respectfully submitted,
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`By:/Naveen Modi/
`Naveen Modi (Reg. No. 46,224)
`Counsel for Petitioner
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`4
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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 Petitioner’s Notice Regarding Multiple Petitions to be served via
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`express mail on the Patent Owner at the following correspondence address of record
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`as listed on PAIR:
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`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:
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`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
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`Courtesy copies were also served electronically upon counsel of record for
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`Patent Owner in IPR2019-01365 at the following addresses:
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`Steven W. Hartsell (shartsell@skiermontderby.com)
`Alexander E. Gasser (agasser@skiermontderby.com)
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`Courtesy copies were also served electronically upon counsel of record for
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`Petitioner in IPR2019-01365 at the following addresses:
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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
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