Filed: February 19, 2021
`
`Filed on behalf of
`
`Petitioners HTC Corporation and HTC America, Inc.
`By:
`Irfan A. Lateef
`
`Brian C. Claassen
`Daniel C. Kiang
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, Fourteenth Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`Email:
`BoxHTCCOL.056LP@knobbe.com
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`HTC CORPORATION and HTC AMERICA, INC.,
`
`Petitioners
`v.
`
`ANCORA TECHNOLOGIES, INC.
`
`Patent Owner.
`
`Case No. IPR2021-00570
`U.S. Patent 6,411,941 B1
`
`MOTION FOR JOINDER UNDER 35 U.S.C § 315(c),
`37 C.F.R. §§ 42.22, AND 42.122(b)
`
`1
`
`
`
`Filed on behalf of
`
`Petitioners HTC Corporation and HTC America, Inc.
`By:
`Irfan A. Lateef
`
`Brian C. Claassen
`Daniel C. Kiang
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, Fourteenth Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`Email:
`BoxHTCCOL.056LP@knobbe.com
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`HTC CORPORATION and HTC AMERICA, INC.,
`
`Petitioners
`v.
`
`ANCORA TECHNOLOGIES, INC.
`
`Patent Owner.
`
`Case No. IPR2021-00570
`U.S. Patent 6,411,941 B1
`
`MOTION FOR JOINDER UNDER 35 U.S.C § 315(c),
`37 C.F.R. §§ 42.22, AND 42.122(b)
`
`1
`
`
`
`TABLE OF CONTENTS
`
`Page No.
`
`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 Factor Weighs In Favor OF Granting The Motion For
`Joinder ................................................................................................. 3
`1.
`Joinder with the TCT IPR is Appropriate ................................. 4
`2.
`Petitioners Raise No New Grounds Of
`Unpatentability .......................................................................... 5
`Joinder Would Not Affect the Schedule in the TCT
`IPR ............................................................................................. 6
`Briefing and Discovery Will Be Simplified ............................. 7
`4.
`CONCLUSION .............................................................................................. 8
`
`3.
`
`I.
`II.
`III.
`
`V.
`
`
`-i-
`
`
`
`TABLE OF AUTHORITIES
`
`Page No(s).
`
`OTHER AUTHORITIES
`
`35 U.S.C. § 314 ........................................................................................................ 10
`35 U.S.C. § 315 ...................................................................................................... 1, 4
`35 U.S.C. § 316 .......................................................................................................... 8
`37 C.F.R. § 42.1 ........................................................................................... 1, 5, 6, 15
`37 C.F.R. §§ 42.22 ..................................................................................................... 1
`37 C.F.R. § 42.100 ..................................................................................................... 8
`37 C.F.R. § 42.122 ................................................................................................. 1, 3
`
`
`-ii-
`
`
`
`Review of U.S. Patent 6,411,941 B1
`HTC Corp, et al. v. Ancora Techs.
`
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`HTC Corporation and HTC America, Inc. (collectively, “Petitioners”)
`
`respectfully submit this Motion for Joinder, concurrently with a Petition for inter
`
`partes review of U.S. Patent No. 6,411,941 (“the ’941 patent”) filed herewith.
`
`Petitioners request their Petition for Inter Partes Review of the ’941 patent be
`
`instituted and joined pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. §§ 42.22 and
`
`42.122(b) with the inter partes review proceeding initiated by TCT Mobile (US)
`
`Inc., Huizhou TCL Mobile Communication Co., Ltd., and Shenzhen TCL Creative
`
`Cloud Technology Co. Ltd., concerning the ’941 patent: TCT Mobile (US) Inc. v.
`
`Ancora Technologies, Inc., IPR2020-01609 (“the TCT IPR”), which was instituted
`
`February 16, 2021.
`
`Petitioners’ request for joinder is consistent with the policy surrounding
`
`inter partes reviews, as it is the most expedient way to “to secure the just, speedy,
`
`and inexpensive resolution of every proceeding.” See 37 C.F.R. § 42.1(b).
`
`Petitioners’ Petition and the TCT Petition are substantively identical; they contain
`
`the same grounds, based on the same prior art combinations against the same
`
`claims. Thus, the proposed joinder will neither unduly complicate the TCT IPR nor
`
`delay its schedule. As such, the joinder will promote judicial efficiency in
`
`determining patentability in the TCT IPR without prejudice to Patent Owner.
`
`-1-
`
`
`
`Review of U.S. Patent 6,411,941 B1
`HTC Corp, et al. v. Ancora Techs.
`
`I.
`
`STATEMENT OF MATERIAL FACTS
`From December 2016 through February 2020, Patent Owner filed several
`
`suits asserting the ’941 Patent against various defendants: Ancora Techs., Inc. v.
`
`HTC, Inc., No. 2:16-cv-1919 (W.D. Wash.), filed December 15, 2016; Ancora
`
`Technologies, Inc. v. TCT Mobile (US) Inc., No. 8:19-cv-02192 (C.D. Cal.);
`
`Ancora Technologies, Inc. v. Lenovo Group Limited, No. 1:19-cv-01712 (D. Del.);
`
`Ancora Technologies, Inc. v. Sony Corp., No. 1:19-cv-01703 (D. Del.); Ancora
`
`Technologies, Inc. v. LG Electronics, Inc., No. 1:20-cv-00034 (W.D. Tex.); Ancora
`
`Technologies, Inc. v. Samsung Electronics Co., Ltd., No. 6:19-cv-00385 (W.D.
`
`Tex.).
`
`On September 10, 2020, TCT filed a petition for inter partes review of the
`
`’941 patent. See TCT Mobile (US) Inc. v. Ancora Technologies, Inc., IPR2020-
`
`01609, Paper 1 (Sept. 10, 2020). On February 16, 2021, the Board instituted the
`
`TCT IPR. See IPR2020-01609, Paper 7 (February 16, 2021) (submitted as Exhibit
`
`1016 in this proceeding).
`
`This motion is timely. Under 37 C.F.R. § 42.122(b), joinder can be
`
`requested without prior authorization no later than one month after the institution
`
`date of the proceeding to which joinder is requested. This motion is being filed
`
`within one month of the Board’s decision instituting trial in the TCT IPR on
`
`February 16, 2020, thus meeting the requirements of § 42.122(b).
`
`-2-
`
`
`
`Review of U.S. Patent 6,411,941 B1
`HTC Corp, et al. v. Ancora Techs.
`
`
`The TCT Petition and the present Petition are substantively identical; they
`
`contain the same grounds, based on the same prior art combinations, against the
`
`same claims and rely on the same evidence, including the identical expert
`
`declaration.
`
`II.
`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
`
`inter partes review petition with another inter partes review proceeding. See 35
`
`U.S.C. § 315(c). The Board, in determining whether to exercise its discretion to
`
`grant joinder, considers whether the joinder motion: (1) sets forth the reasons why
`
`joinder is appropriate; (2) identifies any new grounds of unpatentability asserted in
`
`the petition; (3) explains what impact (if any) joinder would have on the trial
`
`schedule for the existing review; and (4) addresses specifically how briefing and
`
`discovery may be simplified. Dell, Inc. v. Network-1 Security Solutions, Inc.,
`
`IPR2013-00385, Paper No. 17 at 4 (PTAB July 29, 2013); see also Kyocera Corp.
`
`v. Softview LLC, IPR2013-00004, Paper 15, at 4 (April 24, 2013).
`
`B.
`
`Each Factor Weighs In Favor Of Granting The Motion For Joinder
`All four factors weigh in favor of granting the motion for Petitioners. The
`
`Board “routinely grants motions for joinder where the party seeking joinder
`
`introduces identical arguments and the same grounds raised in the existing
`
`-3-
`
`
`
`Review of U.S. Patent 6,411,941 B1
`HTC Corp, et al. v. Ancora Techs.
`
`proceeding.” Samsung Elecs. Co., Ltd. v. Raytheon Co., IPR2016-00962, Paper
`
`No. 12 at 9 (Aug. 24, 2016) (internal quotations and citations omitted). Here, the
`
`factors weigh in favor of joinder with the TCT IPR because the instant Petition
`
`introduces identical arguments and the same grounds raised in the existing TCT
`
`IPR (i.e., challenges the same claims of the same patent, relies on the substantially
`
`same expert declaration, and is based on the same grounds and combinations of
`
`prior art submitted in the TCT IPR). Other than minor differences, such as
`
`differences related to formalities of a different party filing the petition and
`
`updating the petition regarding events that have occurred in related actions, there
`
`are no changes to the facts, citations, evidence, or arguments introduced in the
`
`grounds in the TCT Petition. Because these proceedings are substantively identical,
`
`good cause exists for joining this proceeding with the TCT IPR so that the Board,
`
`consistent with 37 C.F.R. § 42.1(b), can efficiently “secure the just, speedy, and
`
`inexpensive resolution” of the present Petitioners’ and TCT’s Petitions in a single
`
`proceeding.
`
`1.
`
`Joinder with the TCT IPR is Appropriate
`
`Joinder of Petitioners’ IPR with the TCT IPR is appropriate because it will
`
`resolve patentability issues between Patent Owner and all current defendants to the
`
`pending litigation without significant impact on the TCT IPR.
`
`The instant Petition copies verbatim the challenges set forth in the TCT
`
`-4-
`
`
`
`Review of U.S. Patent 6,411,941 B1
`HTC Corp, et al. v. Ancora Techs.
`
`Petition and relies on an identical expert declaration. The only differences between
`
`the instant Petition and the TCT Petition relate to formalities of a different party
`
`filing the petition and updating the petition regarding events that have occurred in
`
`related actions; there are no other changes to the facts, citations, evidence, or
`
`patentability arguments introduced in the TCT Petition. Moreover, assuming that
`
`TCT does not terminate its IPR before its expert is deposed, Petitioners will agree
`
`to be bound by the declaration and deposition of TCT’s expert.
`
`Granting joinder will not prejudice Patent Owner or the current Petitioners.
`
`As discussed above, the instant Petition does not raise any new ground that is not
`
`raised in the TCT Petition. Therefore, there should be little or no additional burden
`
`to Patent Owner or TCT due to Petitioners’ joinder. Moreover, in the absence of
`
`joinder, Petitioners’ prior art invalidity challenges to the ’941 patent that would
`
`otherwise be consolidated with the challenges in the TCT IPR might be raised at
`
`the district court, resulting in unnecessary duplication of efforts in the two forums.
`
`Because these IPR proceedings are virtually identical, joining this proceeding with
`
`the TCT IPR would permit the Board to “secure the just, speedy, and inexpensive
`
`resolution” of the instant Petition and the TCT Petition in a single proceeding. See
`
`37 C.F.R. § 42.1(b).
`
`2.
`
`Petitioners Raise No New Grounds Of Unpatentability
`
`The instant IPR does not assert any new grounds of unpatentability beyond
`
`-5-
`
`
`
`Review of U.S. Patent 6,411,941 B1
`HTC Corp, et al. v. Ancora Techs.
`
`those in the TCT Petition. As stated above, the instant Petition challenges the same
`
`claims of the ’941 Patent based on the same prior art, the same arguments, and
`
`substantially the same evidence as the TCT IPR. In addition, Petitioners rely on the
`
`expert declaration of TCT’s expert.
`
`Therefore, joinder of this proceeding with the TCT IPR will not raise any
`
`new issues of unpatentability and will not impose any additional burden on the
`
`Board or add additional complexity to the proceeding.
`
`3.
`
`Joinder Would Not Affect the Schedule in the TCT IPR
`
`Joinder should have no impact on the TCT IPR trial schedule because the
`
`instant Petition presents no new issues or grounds of unpatentability. There are no
`
`new issues for the Board to address, and Patent Owner will not be required to
`
`present any additional responses or arguments, or conduct any additional
`
`discovery. Moreover, Petitioners will adhere to all deadlines set by the Board’s
`
`Scheduling Order for the TCT IPR.
`
`The Patent Owner’s Response will not be impacted because the issues
`
`presented in the instant Petition are identical to the issues presented in the TCT
`
`Petition. Patent Owner will not be required to provide any additional analysis or
`
`arguments beyond what it will already provide in responding to the TCT Petition,
`
`and the instant Petition will not impact the due date for the Patent Owner
`
`Response.
`
`-6-
`
`
`
`Review of U.S. Patent 6,411,941 B1
`HTC Corp, et al. v. Ancora Techs.
`
`
`Additionally, no additional expert discovery will be needed. Assuming TCT
`
`does not terminate its IPR before its expert is deposed, Petitioners agree to rely
`
`entirely on, and be bound by, the expert declaration(s) and deposition(s) in the
`
`TCT IPR. Consequently, if TCT does not terminate its IPR prematurely, there will
`
`be no need for any deposition of Petitioners’ expert, and there will be no impact to
`
`the trial schedule.
`
`Accordingly, joinder of Petitioners to the TCT IPR will not impact any due
`
`dates in the TCT IPR or affect the Board’s ability to complete its review and final
`
`decision within the statutory time limits under 35 U.S.C. § 316(a)(11) and 37
`
`C.F.R. § 42.100(c).
`
`4.
`
`Briefing and Discovery Will Be Simplified
`
`Petitioners agree to an “understudy” role and will not raise any issues.
`
`Specifically, Petitioners agree that, if joined, the following conditions shall apply
`
`so long as TCT remains an active party:
`
`a) All substantive filings will be consolidated, for which TCT will maintain
`
`responsibility (i.e., Petitioners will rely on the filings of TCT), unless a filing
`
`solely concerns issues that do not involve TCT (e.g., Mandatory Notices);
`
`b) Petitioners shall rely on the grounds instituted by the Board in the TCT
`
`IPR, and the arguments and discovery introduced by TCT; Petitioners shall not
`
`raise grounds not already instituted by the Board in the TCT IPR, or introduce
`
`-7-
`
`
`
`Review of U.S. Patent 6,411,941 B1
`HTC Corp, et al. v. Ancora Techs.
`
`argument or discovery not introduced by TCT;
`
`c) Petitioners agree not to seek discovery or depositions in this proceeding
`
`beyond any agreement reached between Patent Owner and TCT concerning
`
`discovery and depositions for the TCT IPR;
`
`d) Petitioners at deposition shall not request any direct, cross examination or
`
`redirect time beyond that permitted for TCT alone; and
`
`e) Petitioners agree to be bound by the expert deposition and declarations of
`
`TCT’s expert, unless TCT ceases to be an active participant in its IPR prior to its
`
`expert’s deposition.
`
`III. CONCLUSION
`For the foregoing reasons, Petitioners respectfully requests that the Board
`
`grant its Petition for Inter Partes Review of the ’941 patent and that this
`
`proceeding be joined with IPR2020-01609.
`
`-8-
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`
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`Review of U.S. Patent 6,411,941 B1
`HTC Corp, et al. v. Ancora Techs.
`
`
`
`
`
`Dated: February 19, 2021
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`
`
`By: /Irfan A. Lateef/
`Irfan A. Lateef (Reg. No. 51,922)
`Brian C. Claassen (Reg. No. 63,051)
`Daniel C. Kiang (Reg. No. 79,631)
`
`Attorneys for Petitioners
`HTC Corporation and HTC America, Inc.
`
`
`
`
`
`
`
`
`
`
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`-9-
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`Review of U.S. Patent 6,411,941 B1
`HTC Corp, et al. v. Ancora Techs.
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on the date below a copy of this
`
`MOTION FOR JOINDER UNDER 35 U.S.C § 315(c), 37 C.F.R. §§ 42.22,
`
`AND 42.122(b), was served by Federal Express overnight delivery on the Patent
`
`Owner at the correspondence address of record for the subject patent as follows:
`
`VENABLE LLP
`600 Massachusetts Avenue, N.W.
`Washington DC 20001
`
`
`A courtesy copy is also being served via Federal Express overnight delivery
`
`on counsel for the patent holder in the pending district court litigation, Ancora
`
`Techs., Inc. v. HTC, Inc., No. 2:16-cv-1919 (W.D. Wash.):
`
`Duncan E. Manville
`Sarah Gohmann Bigelow
`SAVITT BRUCE & WILLEY LLP
`1425 Fourth Avenue, Suite 800
`Seattle, WA 98101-2272
`
`
`Mark A. Cantor
`John S. LeRoy
`Marc Lorelli
`John P. Rondini
`BROOKS KUSHMAN P.C.
`1000 Town Center, 22nd Floor
`Southfield, MI 48075-1238
`
`
`
`Dated: February 19, 2021
`
`
`
`34459292
`
`By: /Irfan A. Lateef/
`Irfan A. Lateef (Reg. No. 34,362)
`Brian C. Claassen (Reg. No. 63,051)
` Daniel C. Kiang (Reg. No. 79,631)
`Attorneys for Petitioners
`HTC Corporation and HTC America, Inc.
`
`
`
`-10-
`
`
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