`
`
`Filed: April 10, 2020
`
`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.
`___________________
`
`Case No. IPR2020-00697
`U.S. Patent No. 7,039,435
`___________________
`
`
`PATENT OWNER’S NON-OPPOSITION TO
`PETITIONER’S MOTION FOR JOINDER
`
`
`
`Patent Owner Bell Northern Research, LLC (“BNR” or “Patent Owner”)
`
`submits this Notice of Non-Opposition to Petitioner Samsung Electronics Co., Ltd.
`
`(“Petitioner” or “Samsung”) Motion for Joinder (IPR2020-00697, Paper 4
`
`(“Mot.”)). In view of Samsung’s agreement to abide by the conditions set forth in
`
`its Motion for Joinder and reproduced below, BNR does not oppose Samsung’s
`
`motion to join this inter partes review with ZTE (USA), Inc. v. Bell Northern
`
`Research, LLC, IPR2019-01365 (“the ZTE IPR” or “the ZTE proceeding”) and
`
`relating to the same patent at issue here, U.S. Patent No. 7,039,435 (“the ’435
`
`patent”). The conditions are as follows:
`
`1) Samsung shall assume an “understudy” role and shall not “assume an
`
`active role” “[u]nless and until the current Petitioners cease to actively
`
`participate in the instituted [ZTE] IPR” (Mot., 1-2);
`
`2) “Samsung shall not make any substantive filings, unless a filing
`
`concerns termination and settlement, or issues solely involving
`
`Samsung” (Mot., 7);
`
`3) “Samsung shall not present any argument or make any presentation at
`
`the oral hearing on issues not solely involving Samsung” (Mot., 7);
`
`4) “Samsung shall not seek to cross-examine or defend the cross-
`
`examination of any witness, unless the topic of cross-examination
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`concerns issues solely involving Samsung” (Mot., 7); and
`
`
`
`1
`
`
`
`5) “Samsung shall not seek discovery from Patent Owner on issues not
`
`solely involving Samsung” (Mot., 7).
`
`Furthermore, in its correspondence with BNR concerning the present
`
`motion, Samsung directed BNR to Samsung Electronics Co. Ltd. v. Flamm,
`
`IPR2017-01749, Paper 10 (PTAB Sept. 15, 2017) concerning a request for joinder.
`
`In Flamm, Samsung agreed to “be bound by any agreement between” patent owner
`
`and the earlier petitioners “concerning discovery and/or depositions.” Id. at 5.
`
`Patent Owner respectfully requests that any order from the Board in this
`
`proceeding require Samsung to be bound by any agreements between BNR and the
`
`petitioners in the ZTE proceeding.
`
`Finally, Samsung states that it is “willing to agree to any other reasonable
`
`conditions the Board deems necessary before joining Samsung to the ZTE IPR.”
`
`(Mot., 8.) BNR requests the following additional conditions ordered by the Board
`
`in Flamm also be included in any order granting joinder in this proceeding:
`
`1) Except as otherwise agreed by all parties, counsel for the ZTE will
`
`conduct cross-examination and other discovery on behalf of the ZTE
`
`and Samsung, and that BNR is not required to provide separate
`
`discovery responses or additional deposition time as a result of the
`
`joinder;
`
`
`
`2
`
`
`
`2) Samsung will not participate in any filings or discovery, or participate
`
`in the oral hearing (if requested and scheduled), unless an issue solely
`
`relating to Samsung is involved; and
`
`3) That the grounds on which IPR2019-01365 was instituted are
`
`unchanged, and no other grounds are instituted in any consolidated
`
`proceeding beyond those set forth in IPR2019-01365, Paper 13.
`
`See Flamm, IPR2017-01749, Paper 10 at 7.
`
`If the Board grants Samsung’s joinder motion, Patent Owner waives its right
`
`to a Preliminary Response (37 C.F.R. § 42.107).
`
`
`
`3
`
`
`
`Dated: April 10, 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
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), I certify that I caused to be served on the
`
`counsel for Petitioner a true and correct copy of the foregoing Patent Owner’s
`
`Non-Opposition to Petitioner’s Motion for Joinder, by electronic means on April
`
`10, 2020 at the following address of record:
`
`Naveen Modi
`Joseph E. Palys
`Quadeer A. Ahmed
`Arvind Jairam
`PH-Samsung-BNR-IPR@paulhastings.com
`
`Dated: April 10, 2020
`
`Respectfully submitted,
`
`
`/Steven W. Hartsell/
`Steven W. Hartsell (Reg. No. 58,788)
`Counsel for Patent Owner
`
`
`
`
`
`
`
`
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