UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`SAMSUNG ELECTRONICS CO., LTD.; AND
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner
`v.
`NEODRON LTD.
`Patent Owner.
`
`
`
`Case IPR2020-01119
`Patent No. 7,821,425
`
`
`
`
`
`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
`
`
`
`SAMSUNG ELECTRONICS CO., LTD.; AND
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner
`v.
`NEODRON LTD.
`Patent Owner.
`
`
`
`Case IPR2020-01119
`Patent No. 7,821,425
`
`
`
`
`
`MOTION FOR JOINDER TO INTER PARTES REVIEW
`(35 U.S.C. § 315(c) AND 37 C.F.R. § 42.122(b))
`
`
`
`
`
`I.
`
`Case IPR2020-01119
`Patent No. 7,821,425
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b), Samsung
`
`Electronics Co., Ltd. and Samsung Electronics America, Inc. (collectively,
`
`“Petitioner”) move for joinder with the Inter Partes Review of U.S. Patent No.
`
`7,821,425 (“the ’425 Patent”), Apple Inc. et al. v. Neodron Ltd., IPR2020-00778
`
`(“the Apple IPR”), for which the petition for Inter Partes Review was filed on
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`April 16, 2020, and is currently pending. IPR2020-00778, paper 4. This motion is
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`timely because it is filed “no later than one month after the institution date” of the
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`Apple 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
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`joinder”). Petitioner requests that action on this motion be held in abeyance until,
`
`and only if, an IPR is instituted in the Apple IPR. Petitioner understands that the
`
`petitioners in the Apple IPR (Apple Inc. and Microsoft Corporation, collectively,
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`“the Apple Petitioners”) do not oppose Petitioner’s requests for joinder.
`
`Petitioner requests institution of this Petition for Inter Partes Review filed on
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`June 17, 2020. The Petition is a carbon copy of the original Apple IPR petition in
`
`all material respects. The only substantive changes are in the introduction to identify
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`the correct Petitioner and the mandatory notices under 37 C.F.R. § 42.8(b). The
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`Petition here and the Apple IPR petition challenge the same claims of the ’425 patent
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`Case IPR2020-01119
`Patent No. 7,821,425
`on the same grounds relying on the same prior art and evidence, including a
`
`declaration identical in substance from the same expert.1
`
`Petitioner agrees to proceed solely on the grounds, evidence, and arguments
`
`advanced, or that will be advanced, in the Apple IPR as instituted. Thus, the Petition
`
`warrants institution under 35 U.S.C. § 314, and 35 U.S.C. § 315(c) permits
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`Petitioner’s joinder to the Apple IPR.
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`Further, if joined, Petitioner agrees to adhere to all applicable deadlines in the
`
`Apple IPR and coordinate all filings with the Apple Petitioners in the Apple IPR.
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`The Apple Petitioners will maintain the lead role in the proceedings so long as they
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`are parties to the proceedings and are not estopped under § 315(e)(1). Petitioner will
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`only assume the lead role in the proceedings if the Apple Petitioners are no longer
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`parties to the proceedings or unable to advance arguments for one or more claims,
`
`or grounds, for example, because of § 315(e)(1). Petitioner agrees to consolidated
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`filings for all substantive papers in the proceeding. The Apple Petitioners and
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`Petitioner will be jointly responsible for the consolidated filings. Absent a Board
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`order precluding the Apple Petitioners from making arguments that would otherwise
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`be available to Petitioner, Petitioner will not advance any arguments separate from
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`
`1 The declaration has been updated only to reflect retention by Petitioner and is
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`otherwise identical to the declaration submitted in the Apple IPR.
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`-2-
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`Case IPR2020-01119
`Patent No. 7,821,425
`those advanced by the Apple Petitioners in the consolidated filings. These
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`limitations will avoid lengthy and duplicative briefing. Also, Petitioner will not seek
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`additional depositions or deposition time, and will coordinate deposition questioning
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`and hearing presentations with the Apple Petitioners. Petitioner agrees to the
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`foregoing conditions even in the event that other IPRs filed by other, third-party
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`petitioners are joined with the Apple IPR.
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`Joinder will help efficiently resolve the disputes among the parties. By
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`joinder, a single Board decision may dispose of the issues raised in the Apple IPR
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`for all interested parties. Further, the Patent Owner has asserted the ’425 patent in
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`district court against Petitioner. Joinder will estop Petitioner from asserting in
`
`district court those issues resolved in a final decision from the Apple IPR, thus
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`narrowing the issues in the district court actions. See 35 U.S.C. § 315(e)(2). Finally,
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`joinder would not complicate or delay the Apple IPR, and would not adversely affect
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`any schedule set in that proceeding. In sum, joinder would promote efficient
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`adjudication. On the other hand, if instituted, maintaining the Petitioner’s IPR
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`proceeding separate from that of the Apple IPR would entail needless duplication of
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`effort.
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`Joinder will not unduly prejudice any party. Because joinder will not add any
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`new substantive issues, delay the schedule, burden deponents, or increase needless
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`filings, any additional costs on the Patent Owner would be minimal. On the other
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`Case IPR2020-01119
`Patent No. 7,821,425
`hand, denial of joinder would prejudice Petitioner. Their interests may not be
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`adequately protected in the Apple IPR proceedings, particularly if the Apple
`
`Petitioners settle with the Patent Owner. Petitioner should be allowed to join in a
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`proceeding affecting a patent asserted against them.
`
`II.
`
`BACKGROUND AND RELATED PROCEEDINGS
`Neodron Ltd. (the “Patent Owner”) is the owner of the ’425 patent. The Patent
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`Owner asserted the ’425 Patent against Petitioner in Capacitive Touch-Controlled
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`Mobile Devices, Computer, and Components Thereof, 337-TA-1193 (Feb. 13, 2020
`
`ITC) (the “ITC investigation”) and Neodron Ltd. v. Samsung Electronics Co., Ltd.
`
`et al, 6-20-cv-00121 (Feb. 14, 2020 WDTX) (the “district court litigation”). The
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`district court litigation is stayed under 28 U.S.C. § 1659 pending the resolution of
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`the ITC investigation. On April 16, 2020, Apple Inc. and Microsoft Corporation
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`filed their IPR petition, IPR2020-00778, against the ’425 patent. Petitioner here
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`timely moves for joinder with the Apple IPR.
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`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
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`proceeding. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b); see also Dell Inc. v.
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`Network-1 Sec. Solutions, Inc., IPR2013-00385, Paper 19, at 4-6; Sony Corp. v.
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`Yissum Res. & Dev. Co. of the Hebrew Univ. of Jerusalem, IPR2013- 00326, Paper
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`15, at 3-4; Microsoft Corp. v. Proxyconn, Inc., IPR2013-00109, Paper 15, at 3-4.
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`Case IPR2020-01119
`Patent No. 7,821,425
`“The Board will determine whether to grant joinder on a case-by-case basis, taking
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`into account the particular facts of each case, substantive and procedural issues, and
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`other considerations.” Dell, IPR2013-00385, Paper 19, at 3. The movants bear the
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`burden of proof to establish 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
`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
`This Petition is based on the same grounds and combinations of prior art that
`
`are at issue in the Apple IPR. For simplicity and efficiency, Petitioner has copied the
`
`substance of Apple IPR petition and accompanying declaration. Petitioner does not
`
`seek to introduce grounds or claims not in the Apple IPR and seeks only to join the
`
`proceeding as instituted. Petitioner retained the same expert, who has submitted an
`
`identical declaration as in the Apple IPR. The Patent Owner should not require any
`
`discovery beyond that which it may need in the Apple IPR—nor should the Board
`
`permit any. The Petition presents no new substantive issues relative to the Apple
`
`IPR and does not seek to broaden the scope of the Apple IPR.
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`-5-
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`
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`Case IPR2020-01119
`Patent No. 7,821,425
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`For efficiency’s sake, Petitioner will:
`
`1. Adhere to all applicable deadlines in the Apple IPR;
`
`2. Submit “consolidated” filings with the Apple Petitioners, as set forth
`
`above in the statement of precise relief requested;
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`3. Refrain from requesting or reserving any additional depositions or
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`deposition time;
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`4. Refrain from requesting or reserving additional oral hearing time; and
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`5. Assume a second-chair role as long as the Apple Petitioners remain in
`
`the proceeding.2
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`In view of these provisions, joinder should not affect the trial schedule.
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`C.
`
`Joinder will promote efficiency by consolidating issues, avoiding
`wasteful duplication, and preventing inconsistency
`Petitioner presents identical arguments and supporting evidence as the Apple
`
`IPR. Joinder will simplify briefing and discovery. Given that the Apple IPR and
`
`the Petition address the same prior art and grounds for rejection of the same claims,
`
`
`2 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).
`
`-6-
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`Case IPR2020-01119
`Patent No. 7,821,425
`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 Apple
`
`IPR, thus narrowing the issues in the district court actions. See 35 U.S.C. §
`
`315(e)(2).
`
`D.
`Joinder is Appropriate
`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.”)).
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`Here, because Petitioner seeks institution solely on the grounds, evidence, and
`
`arguments advanced, or that will be advanced, in the Apple IPR, institution is
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`warranted under 35 U.S.C. § 314 and Petitioner’s joinder to the Apple IPR is
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`appropriate under 35 U.S.C. § 315(c). No new grounds of unpatentability are
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`-7-
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`
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`Case IPR2020-01119
`Patent No. 7,821,425
`asserted. As explained above, joinder would not adversely impact the trial schedule,
`
`briefing, or discovery in the Apple IPR, and the remaining equities favor joinder.
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`Petitioner is filing this Petition and joinder motion to ensure that the trial is
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`completed in the event that the Apple Petitioners reach settlement with Patent
`
`Owner.
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`1. Without joinder, Petitioner will be prejudiced
`A denial of joinder would prejudice Petitioner. Its substantial interests, as a
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`party against whom the ’425 patent has been asserted in the International Trade
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`Commission and in a federal district court action, may not be adequately protected
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`by the Apple Petitioners in the Apple IPR proceedings. For example, Petitioner has
`
`an interest that the Apple IPR reach a final determination to facilitate a timely and
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`cost-effective end to the controversy between Petitioner and the Patent Owner.
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`Petitioner should be allowed to join in a proceeding affecting a patent asserted
`
`against it.
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`2.
`Joinder will not unduly prejudice any party
`The Petition raises issues already before the Board and long known to the
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`Patent Owner. Addressing patent validity in this proceeding, well on its way towards
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`a final determination, serves the parties’ and Board’s interests.
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`IV. CONCLUSION
`Joinder will not affect the substance, procedure, or scheduling of the Apple
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`IPR. Petitioner files this motion under the statutory joinder provisions as
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`-8-
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`Case IPR2020-01119
`Patent No. 7,821,425
`contemplated by the AIA. Joinder will simplify the issues and promote efficiency,
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`justice, and speed.
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`For the foregoing reasons, Petitioner respectfully requests inter partes review
`
`of U.S. Patent No. 7,821,425 and joinder with Apple Inc. et al. v. Neodron Ltd.,
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`IPR2020-00778.3
`
`Dated: June 17, 2020
`
`Respectfully submitted,
`
`
`/s/ Marc J. Pensabene
`Marc J. Pensabene (Reg. No. 37,416)
`Email: mpensabene@omm.com
`O’Melveny & Myers LLP
`7 Times Square, Times Square Tower
`New York, NY 10036
`Telephone: (212) 326-2000
`Attorney for Petitioner
`
`
`
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`3 Although no fee is believed to be required, the Commissioner is authorized to
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`charge any additional fees required for this Motion, to Deposit Account No. 50-
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`0639.
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`-9-
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`
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`CERTIFICATE OF SERVICE
`The undersigned certifies that the foregoing Petitioners’ Motion for Joinder
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`was served on June 17, 2020, by Priority Mail Express or by means at least as fast
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`and reliable as Priority Mail Express at the following address of record for the
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`subject patent.
`
`Chad Walters
`Baker Botts LLP/Atmel Corporation
`2001 Ross Avenue, Suite 1100
`Dallas, TX 75201
`Telephone: 214-953-6500
`
` A
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` courtesy copy has also been sent via email to litigation counsel for Patent Owner
`
`at:
`
`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
`Kent N. Shum (CA SBN 259189)
`kshum@raklaw.com
`Paul A. Kroeger (CA SBN 229074)
`pkroeger@raklaw.com
`Philip X. Wang (CA SBN 262239)
`pwang@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
`
`
`
`
`
`Date: June 17, 2020
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`
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`
`
`/s/ Marc J. Pensabene
`Marc J. Penabene (Reg. No. 37,416)
`Email: mpensabene@omm.com
`O’Melveny & Myers LLP
`7 Times Square, Times Square Tower
`New York, NY 10036
`Telephone: (212) 326-2000
`Attorney for Petitioner
`
`-2-
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`
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