`_____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`In the Patent of: Yang, Xiu Zheng, Shulin (TW);
`Ren-Jr Chen, Hsinchu (TW);
`
`
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`Chang-Lung Hsiao, Hsinchu (TW);
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`
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`Pang-An Ting, Fongyuan (TW)
`
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`
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`U.S. Patent No: 8,265,096
`Issue Date: September 11, 2012
`Appl. Serial No.: 12/168,855
`Filing Date: July 7, 2008
`Title: METHOD FOR CONSTRUCTING FRAME STRUCTURES
`
`PETITIONER’S MOTION FOR JOINDER UNDER 35 U.S.C.
`§ 315(c), 37 C.F.R. § 42.22, AND 42.122(b)
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`TABLE OF CONTENTS
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`I. STATEMENT OF THE PRECISE RELIEF REQUESTED .............................. 1
`II. BACKGROUND AND RELATED PROCEEDINGS ....................................... 3
`III. ARGUMENT ...................................................................................................... 4
`A. ZyXEL’s Motion for Joinder Is Timely ........................................................... 4
`B. The Kyocera Factors Weigh in Favor of Joinder ............................................. 5
`1.
`Joinder of ZyXEL is Appropriate Because It Will Promote an Efficient
`Determination of the Validity of the ’096 Patent Without Prejudice to Any
`Party 5
`2. ZyXEL’s Petition Does Not Raise Any New Grounds of Unpatentability
`and Therefore Does Not Add Additional Complexity to the Grounds in
`Qualcomm’s Petition ........................................................................................... 7
`3.
`Joinder Would Not Affect the Schedule in the Qualcomm IPR ................ 8
`4.
`Joinder Will Simplify Briefing and Discovery Because ZyXEL Has
`Agreed to Consolidated Filings and an Understudy Role ................................... 8
`C. The Board Has Granted Joinder under these Circumstances, Finding No
`Undue Burden or Prejudice .................................................................................. 10
`IV. CONCLUSION ................................................................................................. 11
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`I.
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`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), ZyXEL
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`Communications Corporation (“Petitioner”) moves for joinder with the Inter Partes
`
`Review of U.S. Patent No. 8,265,096 (“the ’096 patent”), Qualcomm Incorporated
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`v. UNM Rainforest Innovations, IPR2021-00375, Paper 2 (Dec. 28, 2020) (“the
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`Qualcomm IPR”), for which the petition for inter partes review was filed on
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`December 28, 2020 (“the Qualcomm Petition”) and is currently pending. IPR2021-
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`00375, Paper 2. This motion is timely because it is filed “no later than one month
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`after the institution date” of the Qualcomm IPR. 37 C.F.R. § 42.122(b); Central
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`Security Group – Nationwide, Inc. v. Ubiquitous Connectivity, LP, IPR2019-01609,
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`Paper 11, at 8-9 (P.T.A.B. Feb. 26, 2020) (stating that § 42.122(b) is “[t]he only
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`timing requirement for a motion for joinder”); Dell Inc. v. Neodron Ltd., IPR2020-
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`00731, Paper 9, at 5 (P.T.A.B. July 31, 2020) (granting motion for joinder to an IPR
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`proceeding that was not instituted until after the motion for joinder was filed).
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`Petitioner requests that action on this motion be held in abeyance until, and only in
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`the event of, institution of the Qualcomm IPR. Petitioner understands that
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`Qualcomm, the petitioner in the Qualcomm IPR, does not oppose Petitioner’s
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`request for joinder.
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`ZyXEL’s Petition relies on the references cited and follows the arguments
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`raised in the Qualcomm Petition, and is essentially a copy of the Qualcomm Petition.
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`Petitioner here asserts that the same claims are invalid based on substantially the
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`same arguments presented in the Qualcomm IPR. Moreover, Petitioner’s declaration
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`is substantively identical to the declaration in the Qualcomm IPR. ZyXEL’s Petition
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`includes the identical grounds presented in the Qualcomm Petition and therefore
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`would create no additional burden for the Board, Qualcomm, or UNM Rainforest
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`Innovations if joined. Joinder would therefore lead to an efficient resolution of the
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`validity of the ’096 patent.
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`Moreover, the undersigned counsel is also the counsel of record for
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`Qualcomm. ZyXEL stipulates that if joinder is granted, it will cooperate with
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`Qualcomm in the joined proceeding, whether at hearings, at depositions, in filings,
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`or otherwise, as outlined below. Unless Qualcomm is terminated from the
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`proceedings, ZyXEL will proceed in a limited “understudy” role. Joinder will not
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`impact the trial schedule because the proceeding based on the Qualcomm Petition is
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`in its early stages.
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`The Board has granted joinder in other proceedings when presented with this
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`fact pattern and procedural history. For example, in Celltrion, Inc. v. Genentech,
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`Inc., IPR2018-01019, Paper 11 (P.T.A.B. Oct. 30, 2018), the petitioner, Celltrion,
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`filed a petition with a motion for joinder to Pfizer’s pending petition IPR2017-
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`01923. Id. at 13. Celltrion had agreed to take an understudy role to Pfizer and no
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`deadlines in the original IPR were changed. Id. at 14. The Board therefore granted
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`joinder, finding that doing so did not increase the burden on either the alleged patent
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`owner or the Board, and the timing of petition supported joinder. Id. The Board
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`reached the same conclusion in Pfizer, Inc. v. Genentech, Inc., IPR2017-02063,
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`Paper 25 (P.T.A.B. Feb. 21, 2018), where Pfizer took “understudy” role to earlier
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`filed and not-yet-instituted Celltrion petition.
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`Here, ZyXEL agrees to let Qualcomm take a lead role with ZyXEL taking the
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`understudy role. Under these circumstances, like those in IPR2017-01063, there is
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`no undue prejudice to UNM Rainforest Innovations (“UNM”), an assignee indicated
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`as on the Patent Office’s record as an alleged patent owner , and therefore the Board
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`should institute IPR and grant ZyXEL’s Motion for Joinder. See IPR2017-01063,
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`Paper 25 at 3-5.
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`Accordingly, and for the reasons discussed below, joinder should be granted.
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`II. BACKGROUND AND RELATED PROCEEDINGS
`UNM Rainforest Innovations which was formerly named STC.UNM, has
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`asserted certain claims of the ’096 patent in the following pending district-court
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`lawsuits: UNM Rainforest Innovations v. ASUSTek Computer, Inc., No. 6:20-cv-
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`00142 (W.D. Tex.); UNM Rainforest Innovations v. Dell Techs. Inc. et al., No. 6:20-
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`cv-00468 (W.D. Tex.); UNM Rainforest Innovations v. D-Link Corp., No. 6:20-cv-
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`00143 (W.D. Tex.); UNM Rainforest Innovations v. TP-Link Techs. Co., No. 6:19-
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`cv-00262 (W.D. Tex.); and UNM Rainforest Innovations v. ZyXEL Commc’ns Corp.,
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`No. 6:20-cv-00522 (W.D. Tex.).
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`On December 28, 2021, Qualcomm filed a petition for inter partes review of
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`this patent. See Qualcomm Incorporated v. UNM Rainforest Innovations, IPR2021-
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`00375, Paper 2 (Dec. 28, 2020) (“the Qualcomm IPR”). ZyXEL files this motion
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`concurrently with a petition for inter partes review of the ’096 patent. ZyXEL has
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`not filed any other petitions for inter partes review of the ’096 patent.
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`III. ARGUMENT
`The Board may join any person who properly files a petition for inter partes
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`review to a separate IPR proceeding. 35 U.S.C. § 315(c). A motion for joinder should
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`“(1) set forth the reasons why joinder is appropriate; (2) identify any new grounds
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`of unpatentability asserted in the petition; (3) explain what impact (if any) joinder
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`would have on the trial schedule for the existing review; and (4) address specifically
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`how briefing and discovery may be simplified.” Macronix Int’l Co., Ltd. v. Spansion
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`LLC, IPR2014-00898, Paper 15 at 4 (P.T.A.B. Aug. 13, 2014) (citing Kyocera Corp.
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`v. SoftView LLC, IPR2013-00004, Paper 15 at 4 (P.T.A.B. Apr. 24, 2013)).
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`ZyXEL’s motion is timely, and the Board should grant joinder because
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`consideration of the foregoing factors weighs in favor of joinder.
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`A. ZyXEL’s Motion for Joinder Is Timely
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`Joinder may be requested “no later than one month after the institution date
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`of any inter partes review for which joinder is requested.” 37 C.F.R. § 42.122(b).
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`Qualcomm’s petition was filed on December 28, 2020 and has not yet been instituted
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`as of filing of this motion. Accordingly, ZyXEL’s motion is timely as it is being filed
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`within the time set by 37 C.F.R. § 42.122(b). Central Security Group – Nationwide,
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`Inc. v. Ubiquitous Connectivity, LP, IPR2019-01609, Paper 11, at 8-9 (P.T.A.B. Feb.
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`26, 2020) (stating that § 42.122(b) is “[t]he only timing requirement for a motion for
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`joinder”); Dell Inc. v. Neodron Ltd., IPR2020-00731, Paper 9 at 5 (P.T.A.B. July 31,
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`2020) (granting motion for joinder to an IPR proceeding that was not instituted until
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`after the motion for joinder was filed).
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`B.
`The Kyocera Factors Weigh in Favor of Joinder
`Each of the four factors that the Board considers in motions for joinder favor
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`granting of ZyXEL’s motion. As shown below, joinder will not add further
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`complication to the proceedings or cause prejudice to the parties. Moreover, joinder
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`will significantly simplify briefing, discovery and trial associated with review of the
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`’096 patent.
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`1.
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`Joinder of ZyXEL is Appropriate Because It Will Promote
`an Efficient Determination of the Validity of the ’096 Patent
`Without Prejudice to Any Party
`If ZyXEL is joined as a party, the validity of the grounds raised in the
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`Qualcomm Petition and ZyXEL’s Petition can be determined in a single proceeding.
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`-5-
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`ZyXEL’s Petition challenges the validity of the same claims of the ’096 patent on
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`identical grounds to those in the Qualcomm Petition. There are no substantive
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`differences between ZyXEL’s and Qualcomm’s petitions. See Qualcomm, IPR2021-
`
`00375, Paper 2 (Dec. 28, 2020). ZyXEL also relies on substantially the same
`supporting evidence in its Petition as is relied on in the Qualcomm Petition.1 A
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`consolidated proceeding, including both ZyXEL and Qualcomm, will therefore be
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`more efficient and less wasteful, as only a single trial on these common grounds
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`would be required. See, e.g., Oracle America, IPR2016-01672, Paper 13 at 7 (PTAB
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`Mar. 7, 2017) (noting that “joining Oracle’s identical challenges to those in the 1002
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`IPR will lead to greater efficiency while reducing the resources necessary from both
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`Realtime and the Board”). In addition, since the parties will be presenting, and the
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`Board will be determining, the same issues in both IPRs, joinder is the most efficient
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`and economical manner to proceed. See, e.g., Kingston Tech., 2020 WL 1480468, at
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`*8 (granting joinder of “me too” petition); Mylan Pharmaceuticals Inc. v. Almirall,
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`No. IPR2019-01095, 2019 WL 6443934, at *4 (P.T.A.B. Nov. 27, 2019) (same);
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`Ariosa Diagnostics, 2013 WL 6514079, at *1 (granting motion for joinder where the
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`1 ZyXEL submits a copycat declaration from Dr. Sumit Roy. The supporting
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`declaration submitted by ZyXEL does not differ substantively from that filed by
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`Qualcomm.
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`second petition involved the same parties, the same patent, and much of the same
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`prior art).
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`Joining ZyXEL as a party to the Qualcomm IPR also would not cause any
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`prejudice to either UNM or Qualcomm. UNM must respond to the common
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`invalidity grounds identified in Qualcomm’s and ZyXEL’s Petitions regardless of
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`joinder. Thus, UNM bears no additional burden. For both UNM and Qualcomm,
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`ZyXEL’s Petition has been filed sufficiently early so that joinder would affect
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`neither the potential schedule of the inter partes review, nor the costs associated with
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`a full trial. See Oracle America, IPR2016-01672, Paper 13 at 7.
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`Accordingly, this factor favors joinder.
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`2.
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`ZyXEL’s Petition Does Not Raise Any New Grounds of
`Unpatentability and Therefore Does Not Add Additional
`Complexity to the Grounds in Qualcomm’s Petition
`ZyXEL’s Petition challenges the validity of the ’096 patent on identical
`
`grounds to those in the Qualcomm Petition. See Qualcomm, IPR2021-00375, Paper
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`29 (Dec. 28, 2020). ZyXEL’s supporting materials, including its supporting expert
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`declaration, are also substantially the same as those presented by Qualcomm. See,
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`supra, n.1. Therefore, consolidation of this proceeding with Qualcomm’s via joinder
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`of ZyXEL’s Petition will not raise any new issues of unpatentability and will not
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`impose any additional burden on the Board or add additional complexity to the case.
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`The Board has granted joinder in similar situations. See, e.g., Hyundai Motor Co. v.
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`-7-
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`
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`Am Vehicular Scis. LLC, IPR2014-01543, Paper 11 at 2-4 (PTAB Oct. 24, 2014);
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`Sony Corp. of Am. v. Network-1 Sec Solutions, Inc., IPR2013-00495, Paper 13 at 5-
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`9 (PTAB Sept. 16, 2013); Dell Inc. v. Network-1 Solutions, Inc., IPR2013- 00385,
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`Paper 17 at 6-10 (PTAB July 29, 2013); Motorola Mobility, IPR2013- 00256, Paper
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`10 at 4-10 (PTAB June 20, 2013).
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`Accordingly, this factor favors joinder.
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`3.
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`Joinder Would Not Affect the Schedule in the Qualcomm
`IPR
`Given that the Board has not yet instituted review of the Qualcomm petition,
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`joinder of ZyXEL would not affect the schedule in any forthcoming trial. In addition,
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`joining Petitioner’s proceeding will not add any procedural complications or delay
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`the progress of resolving the substantive issues pending in the Qualcomm IPR
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`because it will not introduce any new prior art, expert opinions, or grounds of
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`unpatentability into the Qualcomm IPR. ZyXEL’s participation would result in no
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`changes to the schedule or otherwise unfairly prejudice the UNM.
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`Accordingly, this factor favors joinder.
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`4.
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`Joinder Will Simplify Briefing and Discovery Because
`ZyXEL Has Agreed to Consolidated Filings and an
`Understudy Role
`To further prevent joinder from imposing any burden on Qualcomm or UNM
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`and to further ensure that there are no changes in the potential trial schedule, ZyXEL
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`agrees, as long as Qualcomm remains a party to the review, to (1) coordinate any
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`communications with Qualcomm; (2) not produce its own testifying witnesses; and
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`(3) not file substantive papers (except for those associated with Board-approved
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`motions that do not affect Qualcomm or Qualcomm’s position).
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`ZyXEL also will confer and cooperate with Qualcomm on the consolidated
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`filings but, as long as Qualcomm is a party to the review, Qualcomm will make all
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`final decisions and will retain responsibility for oral argument (including telephone
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`hearings and appeals). ZyXEL will not seek or receive separate time and will not
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`separately argue during oral argument, including telephone hearings and appeals,
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`except when addressing Board-approved motions that do not affect Qualcomm or
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`Qualcomm’s position.
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`ZyXEL also will coordinate the discovery and testimony relating to witnesses
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`with Qualcomm but, as long as Qualcomm is a party to the review, Qualcomm will
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`make all final decisions. In particular, as long as Qualcomm is a party to the review,
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`ZyXEL will not separately file or serve objections or discovery requests, will not
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`receive separate cross examination or redirect time, will not separately cross
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`examine or redirect any witness, and agrees that cross examinations will occur
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`within the timeframe normally allotted to one party without a need for extension in
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`light of the joinder.
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`Thus, for briefing and document submissions, as long as Qualcomm remains
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`a party to the inter partes review, the Board may order petitioners to consolidate
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`-9-
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`filings such that Qualcomm would submit papers on behalf of petitioners and
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`ZyXEL would not be allowed additional filings. Moreover, for depositions, no
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`adjustments to the schedule would be required and, indeed, no additional depositions
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`would be necessary. ZyXEL will not rely on expert testimony beyond that submitted
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`by Qualcomm unless Qualcomm is terminated from the case prior to any necessary
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`depositions. Absent termination of Qualcomm from the proceedings, ZyXEL will
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`participate only in a secondary “understudy” role. However, if Qualcomm is no
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`longer a party, ZyXEL will be free to rely on the opinions and testimony of Dr. Roy.
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`As a result of the foregoing, by consolidating filings with Qualcomm, UNM
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`will only need to respond to one principal set of papers. No further time to address
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`additional arguments will be required by any party, and the consolidated trial can
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`thus proceed at the same pace as if ZyXEL was not joined. Torrent Pharm Ltd, v.
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`UCB Pharma GMBH, IPR2016-01636, Paper 10 at 5 (PTAB Dec. 7, 2016);
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`Amerigen Pharm Ltd, v. UCB Pharma GMBH, IPR2016-01665, Paper 8 at 6 (PTAB
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`Dec. 7, 2016).
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`Accordingly, this factor favors joinder.
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`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
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`that mirror those here. ZyXEL has agreed to take an understudy role and no deadlines
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`-10-
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`in the Qualcomm IPR will not be affected. Therefore, the Board should institute IPR
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`and grant ZyXEL’s Motion for Joinder.
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`IV. CONCLUSION
`For the foregoing reasons, ZyXEL respectfully requests that the Board grant
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`its concurrently filed Petition for inter partes review of the ’096 patent and join the
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`grounds of invalidity therein raised with Qualcomm IPR2021-00375.
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`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
`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
`
`-11-
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`Dated: March 29, 2021
`
`
`
`
`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
`
`Martha Hopkins (Reg. No. 46,277)
`Law Offices of S.J. Christine Yang
`17220 Newhope Street
`Suites 101-102
`Fountain Valley, CA 92708
`Tel: 714-641-4022
`Fax: 714-641-2082
`mhopkins@sjclawpc.com
`
`Victoria Hao (Reg. No. 47,630)
`Law Offices of S.J. Christine Yang
`17220 Newhope Street
`Suites 101-102
`Fountain Valley, CA 92708
`Tel: 714-641-4022
`Fax: 714-641-2082
`vhao@sjclawpc.com
`
`Counsel for Petitioner
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`-12-
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that true copies of the foregoing Motion for
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`Joinder has been served this 29th day of March, 2021, by UPS® mail delivery
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`service on UNM at the correspondence address for the attorney of record for the ’096
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`Patent shown in USPTO PAIR:
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`With a copy to:
`
`Alston & Bird LLP
`Bank of America Plaza
`101 South Tryon Street, Suite 4000
`Charlotte, NC 28280-4000
`
`
`Industrial Technology Research Institute
`Section 4, Chung Hsing Road
`Chutung, Hsinchu, 31057, Taiwan, R.O.C
`
`
`Dated: March 29, 2021
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`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
`
`
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`-13-
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