UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`QUALCOMM INCORPORATED,
`
`Petitioner,
`
`v.
`
`UNM RAINFOREST INNOVATIONS,
`
`Patent Owner.
`_____________________
`Case IPR2021-00375
`
`Patent No. 8,265,096 B2
`_____________________
`
`PETITIONER’S MOTION FOR JOINDER UNDER 35 U.S.C.
`§ 315(c), 37 C.F.R. § 42.22, AND 42.122(b)
`
`
`
`
`
`_____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`QUALCOMM INCORPORATED,
`
`Petitioner,
`
`v.
`
`UNM RAINFOREST INNOVATIONS,
`
`Patent Owner.
`_____________________
`Case IPR2021-00375
`
`Patent No. 8,265,096 B2
`_____________________
`
`PETITIONER’S MOTION FOR JOINDER UNDER 35 U.S.C.
`§ 315(c), 37 C.F.R. § 42.22, AND 42.122(b)
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`I. STATEMENT OF THE PRECISE RELIEF REQUESTED .............................. 1
`II. BACKGROUND AND RELATED PROCEEDINGS ....................................... 3
`III. ARGUMENT ...................................................................................................... 4
`A. Qualcomm’s Motion for Joinder Is Timely ...................................................... 4
`B. The Kyocera Factors Weigh in Favor of Joinder ............................................. 5
`1.
`Joinder of Qualcomm is Appropriate Because It Will Promote an
`Efficient Determination of the Validity of the ’096 Patent Without Prejudice to
`Any Party ............................................................................................................ 5
`2. Qualcomm’s Petition Does Not Raise Any New Grounds of
`Unpatentability and Therefore Does Not Add Additional Complexity to the
`Grounds in Intel’s Petition .................................................................................. 7
`3.
`Joinder Would Not Affect the Schedule in the Intel IPR ........................... 8
`4.
`Joinder Will Simplify Briefing and Discovery Because Qualcomm Has
`Agreed to Consolidated Filings and an Understudy Role ................................... 9
`C. The Board Has Granted Joinder under these Circumstances, Finding No
`Undue Burden or Prejudice .................................................................................. 11
`IV. CONCLUSION ................................................................................................. 11
`
`
`
`
`
`
`
`
`
`
`
`
`
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. §§ 42.22 and 42.122(b),
`
`Qualcomm Incorporated (“Petitioner”) moves for joinder with the Inter Partes
`
`Review of U.S. Patent No. 8,265,096 (“the ’096 patent”), Intel Corp. v. UNM
`
`Rainforest Innovations, IPR2020-01576 (“the Intel IPR”), for which the petition for
`
`inter partes review was filed on September 14, 2020 (“the Intel Petition”) and is
`
`currently pending. IPR2020-01576, Paper 2. This motion is timely because it is filed
`
`“no later than one month after the institution date” of the Intel 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”); Dell Inc. v.
`
`Neodron Ltd., IPR2020-00731, Paper 9, at 5 (P.T.A.B. July 31, 2020) (granting
`
`motion for joinder to an IPR proceeding that was not instituted until after the motion
`
`for joinder was filed). Petitioner requests that action on this motion be held in
`
`abeyance until, and only in the event of, institution of the Intel IPR. Petitioner
`
`understands that Intel, the petitioner in the Intel IPR, does not oppose Petitioner’s
`
`request for joinder.
`
`Qualcomm’s Petition relies on the references cited and follows the arguments
`
`raised in the Intel Petition, and is essentially a copy of the Intel Petition. Petitioner
`
`here asserts that the same claims are invalid based on substantially the same
`
`
`
`-1-
`
`
`
`arguments presented in the Intel IPR. Moreover, Petitioner’s declaration is
`
`substantively identical to the declaration in the Intel IPR. Qualcomm’s Petition
`
`includes the identical grounds presented in the Intel Petition and therefore would
`
`create no additional burden for the Board, Intel, or UNM Rainforest Innovations if
`
`joined. Joinder would therefore lead to an efficient resolution of the validity of the
`
`’096 patent.
`
`Counsel for Qualcomm and counsel for Intel met and conferred as to the level
`
`of cooperation between Intel and Qualcomm that will be maintained if Qualcomm’s
`
`motion for joinder is granted. Qualcomm stipulates that if joinder is granted, it will
`
`cooperate with Intel in the joined proceeding, whether at hearings, at depositions, in
`
`filings, or otherwise, as outlined below. Unless Intel is terminated from the
`
`proceedings, Qualcomm will proceed in a limited “understudy” role. Joinder will not
`
`impact the trial schedule because the proceeding based on the Intel Petition is in its
`
`early stages.
`
`The Board has granted joinder in other proceedings when presented with this
`
`fact pattern and procedural history. For example, in Celltrion, Inc. v. Genentech,
`
`Inc., IPR2018-01019, Paper 11 (P.T.A.B. Oct. 30, 2018), the petitioner, Celltrion,
`
`filed a petition with a motion for joinder to Pfizer’s pending petition IPR2017-
`
`01923. Id. at 13. Celltrion had agreed to take an understudy role to Pfizer and no
`
`deadlines in the original IPR were changed. Id. at 14. The Board therefore granted
`
`-2-
`
`
`
`joinder, finding that doing so did not increase the burden on either the patent owner
`
`or the Board, and the timing of petition supported joinder. Id. The Board reached the
`
`same conclusion in Pfizer, Inc. v. Genentech, Inc., IPR2017-02063, Paper 25
`
`(P.T.A.B. Feb. 21, 2018), where Pfizer took “understudy” role to earlier filed and
`
`not-yet-instituted Celltrion petition.
`
`Here, Qualcomm agrees to let Intel take a lead role with Qualcomm taking the
`
`understudy role. Under these circumstances, like those in IPR2017-01063, there is
`
`no undue prejudice to Patent Owner, and therefore the Board should institute IPR
`
`and grant Qualcomm’s Motion for Joinder. See IPR2017-01063, Paper 25 at 3-5.
`
`Accordingly, and for the reasons discussed below, joinder should be granted.
`
`II. BACKGROUND AND RELATED PROCEEDINGS
`Patent Office records indicate that the ’096 patent is assigned to UNM
`
`Rainforest Innovations (“Patent Owner”). Patent Owner, which was formerly named
`
`STC.UNM, has asserted certain claims of the ’096 patent in the following pending
`
`district-court lawsuits: UNM Rainforest Innovations v. ASUSTek Computer, Inc.,
`
`No. 6:20-cv-00142 (W.D. Tex.); UNM Rainforest Innovations v. Dell Techs. Inc. et
`
`al., No. 6:20-cv-00468 (W.D. Tex.); UNM Rainforest Innovations v. D-Link Corp.,
`
`No. 6:20-cv-00143 (W.D. Tex.); UNM Rainforest Innovations v. TP-Link Techs.
`
`Co., No. 6:19-cv-00262 (W.D. Tex.); and UNM Rainforest Innovations v. ZyXEL
`
`Commc’ns Corp., No. 6:20-cv-00522 (W.D. Tex.).
`
`-3-
`
`
`
`On September 14, 2020, Intel filed a petition for inter partes review of this
`
`patent. See Intel Corp. v. UBM Rainforest Innovations, IPR2020-01576, Paper 2
`
`(Sept. 14, 2020). Qualcomm files this motion concurrently with a petition for inter
`
`partes review of the ’096 patent. Qualcomm has not filed any other petitions for
`
`inter partes review of the ’096 patent.
`
`III. ARGUMENT
`The Board may join any person who properly files a petition for inter partes
`
`review to a separate IPR proceeding. 35 U.S.C. § 315(c). 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.” Macronix Int’l Co., Ltd. v. Spansion
`
`LLC, IPR2014-00898, Paper 15 at 4 (P.T.A.B. Aug. 13, 2014) (citing Kyocera Corp.
`
`v. SoftView LLC, IPR2013-00004, Paper 15 at 4 (P.T.A.B. Apr. 24, 2013)).
`
`Qualcomm’s motion is timely, and the Board should grant joinder because
`
`consideration of the foregoing factors weighs in favor of joinder.
`
`A. Qualcomm’s Motion for Joinder Is Timely
`Joinder may be requested “no later than one month after the institution date
`
`of any inter partes review for which joinder is requested.” 37 C.F.R. § 42.122(b).
`
`Intel’s petition was filed on September 14, 2020 and has not yet been instituted as
`
`-4-
`
`
`
`of filing of this motion. Accordingly, Qualcomm’s motion is timely as it is being
`
`filed within the time set by 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”); Dell Inc. v. Neodron Ltd., IPR2020-00731, Paper 9 at 5
`
`(P.T.A.B. July 31, 2020) (granting motion for joinder to an IPR proceeding that was
`
`not instituted until after the motion for joinder was filed).
`
`B.
`The Kyocera Factors Weigh in Favor of Joinder
`Each of the four factors that the Board considers in motions for joinder favor
`
`granting of Qualcomm’s motion. As shown below, joinder will not add further
`
`complication to the proceedings or cause prejudice to the parties. Moreover, joinder
`
`will significantly simplify briefing, discovery and trial associated with review of the
`
`’096 patent.
`
`1.
`
`Joinder of Qualcomm is Appropriate Because It Will
`Promote an Efficient Determination of the Validity of the
`’096 Patent Without Prejudice to Any Party
`If Qualcomm is joined as a party, the validity of the grounds raised in the Intel
`
`Petition and Qualcomm’s Petition can be determined in a single proceeding.
`
`Qualcomm’s Petition challenges the validity of the same claims of the ’096 patent
`
`on identical grounds to those in the Intel Petition. There are no substantive
`
`differences between Intel’s and Qualcomm’s Petitions. See Intel, IPR2020-01576,
`
`-5-
`
`
`
`Paper 2 (Sept. 14, 2020). Qualcomm also relies on substantially the same supporting
`evidence in its Petition as is relied on in the Intel Petition.1 A consolidated
`
`proceeding, including both Intel and Qualcomm, will therefore be more efficient and
`
`less wasteful, as only a single trial on these common grounds would be required.
`
`See, e.g., Oracle America, IPR2016-01672, Paper 13 at 7 (PTAB Mar. 7, 2017)
`
`(noting that “joining Oracle’s identical challenges to those in the 1002 IPR will lead
`
`
`1 Qualcomm submits a copycat declaration from Dr. Sumit Roy, on whom
`
`Qualcomm will rely only in the event that Intel is terminated from the proceedings.
`
`The supporting declaration submitted by Qualcomm only differs from that filed by
`
`Intel (from Dr. Robert Akl) in that it has been updated to list the qualifications and
`
`personal experience of Dr. Roy. The opinions set forth in Dr. Roy’s declaration are
`
`identical to the opinions set forth in the declaration of Dr. Akl filed in the Intel IPR,
`
`and Dr. Roy’s discussion of the prior art and his analysis is the same as the analysis
`
`of Intel’s expert. See Celltrion, Inc. v. Genentech, Inc., IPR2018-01019, Paper 11 at
`
`14 (P.T.A.B. Oct. 30, 2018) (granting motion for joinder of petitioner who “relie[d]
`
`on different experts” when the petitioner “assert[ed] that its ‘copycat declarations’
`
`provide a discussion and analysis that ‘is substantially the same as the analysis of
`
`Pfizer’s experts’ and will not be relied upon unless [the original petitioner] is
`
`terminated from the proceedings.”)
`
`-6-
`
`
`
`to greater efficiency while reducing the resources necessary from both Realtime and
`
`the Board”). In addition, since the parties will be presenting, and the Board will be
`
`determining, the same issues in both IPRs, joinder is the most efficient and
`
`economical manner to proceed. See, e.g., Kingston Tech., 2020 WL 1480468, at *8
`
`(granting joinder of “me too” petition); Mylan Pharmaceuticals Inc. v. Almirall, No.
`
`IPR2019-01095, 2019 WL 6443934, at *4 (P.T.A.B. Nov. 27, 2019) (same); Ariosa
`
`Diagnostics, 2013 WL 6514079, at *1 (granting motion for joinder where the second
`
`petition involved the same parties, the same patent, and much of the same prior art).
`
`Joining Qualcomm as a party to the Intel IPR also would not cause any
`
`prejudice to either Patent Owner or Intel. Patent Owner must respond to the common
`
`invalidity grounds identified in Intel’s and Qualcomm’s Petitions regardless of
`
`joinder. Thus, Patent Owner bears no additional burden. For both Patent Owner and
`
`Intel, Qualcomm’s Petition has been filed sufficiently early so that joinder would
`
`affect neither the potential schedule of the inter partes review, nor the costs
`
`associated with a full trial. See Oracle America, IPR2016-01672, Paper 13 at 7.
`
`Accordingly, this factor favors joinder.
`
`2. Qualcomm’s Petition Does Not Raise Any New Grounds of
`Unpatentability and Therefore Does Not Add Additional
`Complexity to the Grounds in Intel’s Petition
`Qualcomm’s Petition challenges the validity of the ’096 patent on identical
`
`grounds to those in the Intel Petition. See Intel, IPR2020-01576, Paper 29 (Sep. 14,
`
`-7-
`
`
`
`2020). Qualcomm’s supporting materials,
`
`including
`
`its supporting expert
`
`declaration, are also substantially the same as those presented by Intel. See, supra,
`
`n.1. Therefore, consolidation of this proceeding with Intel’s via joinder of
`
`Qualcomm’s Petition will not raise any new issues of unpatentability and will not
`
`impose any additional burden on the Board or add additional complexity to the case.
`
`The Board has granted joinder in similar situations. See, e.g., Hyundai Motor Co. v.
`
`Am Vehicular Scis. LLC, IPR2014-01543, Paper 11 at 2-4 (PTAB Oct. 24, 2014);
`
`Sony Corp. of Am. v. Network-1 Sec Solutions, Inc., IPR2013-00495, Paper 13 at 5-
`
`9 (PTAB Sept. 16, 2013); Dell Inc. v. Network-1 Solutions, Inc., IPR2013- 00385,
`
`Paper 17 at 6-10 (PTAB July 29, 2013); Motorola Mobility, IPR2013- 00256, Paper
`
`10 at 4-10 (PTAB June 20, 2013).
`
`Accordingly, this factor favors joinder.
`
`3.
`Joinder Would Not Affect the Schedule in the Intel IPR
`Given that the Board has not yet instituted review of the Intel petition, joinder
`
`of Qualcomm would not affect the schedule in any forthcoming trial. In addition,
`
`joining Petitioner’s proceeding will not add any procedural complications or delay
`
`the progress of resolving the substantive issues pending in the Intel IPR because it
`
`will not introduce any new prior art, expert opinions that substantially differ from
`
`those previously filed, or grounds of unpatentability into the Intel IPR. Qualcomm’s
`
`-8-
`
`
`
`participation would result in no changes to the schedule or otherwise unfairly
`
`prejudice the Patent Owner.
`
`Accordingly, this factor favors joinder.
`
`4.
`
`Joinder Will Simplify Briefing and Discovery Because
`Qualcomm Has Agreed to Consolidated Filings and an
`Understudy Role
`To further prevent joinder from imposing any burden on Intel or Patent Owner
`
`and to further ensure that there are no changes in the potential trial schedule,
`
`Qualcomm agrees, as long as Intel remains a party to the review, to (1) coordinate
`
`any communications with Intel’s expert through Intel’s counsel; (2) not produce its
`
`own testifying witnesses; and (3) not file substantive papers (except for those
`
`associated with Board-approved motions that do not affect Intel or Intel’s position).
`
`Qualcomm also will confer and cooperate with Intel on the consolidated
`
`filings but, as long as Intel is a party to the review, Intel will make all final decisions
`
`and will retain responsibility for oral argument (including telephone hearings and
`
`appeals). Qualcomm will not seek or receive separate time and will not separately
`
`argue during oral argument, including telephone hearings and appeals, except when
`
`addressing Board-approved motions that do not affect Intel or Intel’s position.
`
`Qualcomm also will coordinate the discovery and testimony relating to
`
`witnesses with Intel but, as long as Intel is a party to the review, Intel will make all
`
`final decisions. In particular, as long as Intel is a party to the review, Qualcomm will
`
`-9-
`
`
`
`not separately file or serve objections or discovery requests, will not receive separate
`
`cross examination or redirect time, will not separately cross examine or redirect any
`
`witness, and agrees that cross examinations will occur within the timeframe
`
`normally allotted to one party without a need for extension in light of the joinder.
`
`Thus, for briefing and document submissions, as long as Intel remains a party
`
`to the inter partes review, the Board may order petitioners to consolidate filings such
`
`that Intel would submit papers on behalf of petitioners and Qualcomm would not be
`
`allowed additional filings. Moreover, for depositions, no adjustments to the schedule
`
`would be required and, indeed, no additional depositions would be necessary.
`
`Qualcomm will not rely on expert testimony beyond that submitted by Intel unless
`
`Intel is terminated from the case prior to any necessary depositions. Thus, Dr. Roy
`
`would not be relied on if Intel’s expert remains available. Absent termination of Intel
`
`from the proceedings, Qualcomm will participate only in a secondary “understudy”
`
`role. However, if Intel is no longer a party, Qualcomm will be free to rely on the
`
`opinions and testimony of Dr. Roy, and other declarants for Intel that are already of
`
`record.
`
`As a result of the foregoing, by consolidating filings with Intel, Patent Owner
`
`will only need to respond to one principal set of papers. No further time to address
`
`additional arguments will be required by any party, and the consolidated trial can
`
`thus proceed at the same pace as if Qualcomm was not joined. Torrent Pharm Ltd,
`
`-10-
`
`
`
`v. UCB Pharma GMBH, IPR2016-01636, Paper 10 at 5 (PTAB Dec. 7, 2016);
`
`Amerigen Pharm Ltd, v. UCB Pharma GMBH, IPR2016-01665, Paper 8 at 6 (PTAB
`
`Dec. 7, 2016).
`
`Accordingly, this factor favors joinder.
`
`C. The Board Has Granted Joinder under these Circumstances,
`Finding No Undue Burden or Prejudice
`As discussed above, the Board has granted joinder in other petitions, with facts
`
`that mirror those here. Qualcomm has agreed to take an understudy role and no
`
`deadlines in the Intel IPR will not be affected. Therefore, the Board should institute
`
`IPR and grant Qualcomm’s Motion for Joinder.
`
`IV. CONCLUSION
`For the foregoing reasons, Qualcomm respectfully requests that the Board
`
`grant its concurrently filed Petition for inter partes review of the ’096 patent and
`
`join the grounds of invalidity therein raised with Intel IPR2020-01576.
`
`Respectfully submitted,
`
` /
`
` Jonathan I. Detrixhe /
`Lead Counsel
`Jonathan I. Detrixhe (Reg. No. 68,556)
`Reed Smith LLP
`101 Second Street
`Suite 1800
`San Francisco, CA 94105
`Tel: 415.543.8700
`Fax: 415.391.8269
`
`-11-
`
`
`
`Dated: December 28, 2020
`
`
`
`jdetrixhe@reedsmith.com
`
`Back-up Counsel
`Jonah D. Mitchell (will seek pro hac vice
`admission)
`Christine M. Morgan (will seek pro hac vice
`admission)
`Reed Smith LLP
`101 Second Street
`Suite 1800
`San Francisco, CA 94105
`Tel: 415.543.8700
`Fax: 415.391.8269
`jmitchell@reedsmith.com
`cmorgan@reedsmith.com
`
`Peter J. Chassman (Reg. No. 38,841)
`Reed Smith LLP
`811 Main Street
`Suite 1700
`Houston, TX 77002
`Tel: 713.469.3800
`Fax: 713.469.3899
`pchassman@reedsmith.com
`
`Ismail C. Kuru (will seek pro hac vice admission)
`Reed Smith LLP
`10 S. Wacker Dr. 40th Floor
`Chicago, IL, 60606
`Tel: 312.207.1000
`Fax: 312.207.6400
`ikuru@reedsmith.com
`
`
`Counsel for Petitioner
`
`-12-
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that true copies of the foregoing Motion for
`
`Joinder has been served this 23rd day of December, 2020, by FedEx® mail delivery
`
`service on Patent Owner at the correspondence address for the attorney of record for
`
`the ’096 Patent shown in USPTO PAIR:
`
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP
`901 NEW YORK AVENUE, NW
`WASHINGTON DC 20001-4413
`and via electronic mail to the attorneys of record for Plaintiff in the related litigation
`
`matter:
`
`Charles L. Ainsworth - Charley@pbatyler.com
`Robert Christopher Bunt - Rcbunt@pbatyler.com
`Michael W. Shore - mshore@shorechan.com
`Alfonso G. Chan - achan@shorechan.com
`William D. Ellerman - wellerman@shorechan.com
`Corey M. Lipschutz - clipschutz@shorechan.com
`Dated December 28, 2020
`Respectfully submitted,
`/ Jonathan I. Detrixhe /
`Jonathan I. Detrixhe (Reg. No. 68,556)
`Reed Smith LLP
`101 Second Street
`Suite 1800
`San Francisco, CA 94105
`Tel: 415.543.8700
`Fax: 415.391.8269
`jdetrixhe@reedsmith.com
`Counsel for Petitioner
`
`13
`
`
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