UNITED STATES PATENT AND TRADEMARK OFFICE
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`Paper No. 7
`April 29, 2021
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ZYXEL COMMUNICATIONS CORPORATION,
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`Petitioner,
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`v.
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`UNM RAINFOREST INNOVATIONS,
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`Patent Owner.
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`IPR2021-00734
`Patent No. 8,265,096
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`PATENT OWNER UNM RAINFOREST INNOVATIONS’
`OPPOSITION TO PETITIONER’S MOTION FOR JOINDER
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`Paper No. 7
`April 29, 2021
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ZYXEL COMMUNICATIONS CORPORATION,
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`Petitioner,
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`v.
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`UNM RAINFOREST INNOVATIONS,
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`Patent Owner.
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`IPR2021-00734
`Patent No. 8,265,096
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`PATENT OWNER UNM RAINFOREST INNOVATIONS’
`OPPOSITION TO PETITIONER’S MOTION FOR JOINDER
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`1. INTRODUCTION
`Petitioner ZyXEL Communications Corporation (“ZyXEL”) submitted
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`a Motion for Joinder to Qualcomm Incorporated v. UNM Rainforest
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`Innovations, IPR2021-00375, (the “Qualcomm IPR”) along with its Petition in
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`the present IPR. IPR2021-00734, Paper 3 (Petitioner’s Motion for Joinder
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`Under 35 U.S.C. § 315(c), 37 C.F.R. § 42.22, and 42.122(b)) (“Motion”).
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`ZyXEL’s Petition largely mirrors Qualcomm’s Petition; however, its Petition
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`introduces a substantial substantive new issue of first impression which is not
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`present in the Qualcomm IPR. Specifically, Petitioner reintroduces the issue
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`of patent ownership in this forum—despite having previously unsuccessfully
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`raised it in district court (Ex. 2001) and the same issue being denied in a related
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`case (Ex. 2002)—by filing its Petition effectively as in rem, i.e., against the
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`patent itself, instead of against Patent Owner UNM Rainforest Innovations
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`(“UNM”). Even assuming that this forum is authorized to adjudicate patent
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`ownership—which it is not—exploration of this issue in this forum introduces
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`a significant substantive difference from the existing Qualcomm IPR which
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`would unquestionably derail that proceeding. Further, if Petitioner’s self-
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`imposed limitation to “proceed in a limited ‘understudy’ role” was truly given
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`in good faith, Petitioner is asking this Board to accept the assumption that
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`Qualcomm will argue an issue on ZyXEL’s behalf that Qualcomm did not raise
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`1
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`itself. This problem is compounded because ZyXEL’s counsel is the same as
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`counsel for Qualcomm. Motion at 2. It would be unclear on whose behalf
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`counsel is truly acting. Petitioner’s Motion for Joinder should be denied.
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`2. DISCRETIONAL DENIAL OF JOINDER IS JUSTIFIED.
`The discretionary nature of joinder is designed to avoid gamesmanship
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`and prejudice to the Patent Owner. Proppant Express Investments, LLC, et al.,
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`v. Oren Tech., LLC, IPR2018-00914, Paper 38 at 11 (PTAB, March 13, 2019).
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`Congress’ intent in establishing the AIA proceedings was “to provide a
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`cheaper, faster alternative to district court litigation” that could “be used instead
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`of, rather than in addition to, civil litigation.” 157 Cong. Rec. S1363 (daily ed.
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`Mar. 8, 2011) (statement of Sen. Schumer). Discretionary joinder under
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`§ 315(c) may be justified where, for example, a patent owner has taken certain
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`actions in a co-pending litigation (e.g., the late addition of newly asserted
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`claims). Id. at 19. No such action has been taken here by the Patent Owner.
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`Rather, Petitioner seeks to add a new issue into the Qualcomm IPR through its
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`Petition and Motion for Joinder, and its Petition is both premature and
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`defective.
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`A. JOINDER WOULD INTRODUCE NEW ISSUES INTO THE
`QUALCOMM IPR.
`A motion for joinder should (1) set forth reasons why joinder is
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`appropriate; (2) identify any new grounds of unpatentability asserted in the
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`2
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`petition; (3) explain what impact, if any, joinder would have on the trial
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`schedule for the existing review; and (4) address specifically how briefing and
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`discovery may be simplified. See Kyocera Corp. v. Softview LLC, Case
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`IPR2013-00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15).
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`Although ZyXEL asserts that its Petition “is essentially a copy of the
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`Qualcomm Petition,” allowing ZyXEL to join the Qualcomm IPR would raise
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`substantial new issues regarding ZyXEL’s challenge to UNM’s ownership
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`rights of the ’096 patent—issues which ZyXEL unsuccessfully litigated in
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`district court and apparently intends to attempt to re-litigate in this proceeding.
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`Under similar circumstances where joinder would introduce new issues to the
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`existing IPR, the Board typically denies motions for joinder. See Unified
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`Patents Inc., v. C-Cation Technologies, LLC, IPR2015-01045, Paper 15 at 7
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`(“if we institute review based on the Petition and grant Petitioner’s Motion for
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`Joinder, the real party-in-interest issue potentially could sidetrack the joined
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`proceeding, shifting the focus away from the substantive issue to be
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`addressed—the patentability of claims 1, 3, and 4 of the ’883 patent.”). The
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`same reasoning applies here. Due to the overarching ownership issue
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`introduced by ZyXEL, “joinder . . . could complicate, rather than simplify,
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`briefing and discovery in the [PRIMARY] IPR”). Id. Here, ZyXEL’s Petition
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`clearly challenges the ownership of the ’096 patent—despite the fact that
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`3
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`ZyXEL has previously lost the same argument in district court. UNM
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`Rainforest Innovations v. ZyXEL Communications Corporation, 6-20-cv-
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`00522, (W. D. Tex.) Text Order dated Jan. 27, 2021, Ex. 2001. ZyXEL’s
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`repeated attempt to challenge ownership of the patent is a major substantive
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`variation from the Qualcomm IPR and would significantly complicate the
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`Qualcomm IPR.
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`B. ZYXEL’S PETITION IS NOT PROPER.
`ZyXEL’s Petition is defective as it purports to raise an issue outside of
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`the scope of IPR proceedings. “A petitioner in an inter partes review may
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`request to cancel as unpatentable 1 or more claims of a patent only on a ground
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`that could be raised under section 102 or 103 and only on the basis of prior art
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`consisting of patents or printed publications.” 35 U.S.C. § 311(b). An IPR
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`petition may not, for example, raise grounds based on 35 U.S.C. § 101. Id.
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`Similarly, an IPR is not the proper forum to raise challenges to a patent’s
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`ownership or its assignment history. Out of 13,419 original, corrected, or
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`amended petitions for IPR found on Docket Navigator, ZyXEL’s petitions in
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`this matter and two related matters are the only instances in which an IPR
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`petition was filed as “in the patent of,” i.e., as an in rem proceeding against a
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`patent itself, as opposed to the owner of the patent. ZyXEL’s improper in rem
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`IPR defeats the very purpose of the inter partes aspect of this reexamination.
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`4
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`Finally, ZyXEL’s argument challenging ownership has already been
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`considered and rejected by a district court twice. See UNM Rainforest
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`Innovations v. ZyXEL Communications Corporation, 6-20-cv-00522, (W. D.
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`Tex.) Text Order dated Jan. 27, 2021, Ex. 2001; UNM Rainforest Innovations
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`v. D-Link Corporation, 6-20-cv-00143, (W. D. Tex.) Text Order dated Feb. 9,
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`2021, Ex. 2002. ZyXEL’s petition is defective because it is an improper third
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`bite at the same apple in an improper forum.
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`C. ZYXEL’s MOTION FOR JOINDER IS PREMATURE
`ZyXEL’s petition is premature because the Qualcomm IPR has not yet
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`been instituted. 35 U.S.C. § 315(c) (“If the Director institutes an inter partes
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`review, the Director, in his or her discretion, may join . . .”). Qualcomm filed
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`its petition on Dec. 28, 2020. Qualcomm Incorporated v. UNM Rainforest
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`Innovations f/k/a STC.UNM, IPR2021-00375, Paper 1. UNM filed its
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`preliminary response on Apr. 21, 2021. Id. at Paper 8. Institution is not
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`expected or required until July 21, 2021. 35 U.S.C. § 314(b)(1). Thus,
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`ZyXEL’s Motion for Join should be denied as it is nearly three months
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`premature.
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`5
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`3. CONCLUSION
`ZyXEL’s Motion for Joinder should be denied because it is premature,
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`relates to a defective in rem petition for IPR, and would improperly introduce
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`a significant substantive issue that would derail the Qualcomm IPR.
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`Date: April 29, 2021
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`Respectfully submitted,
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`/Jay P. Kesan /
`Jay P. Kesan, Reg. No. 37,488
`jkesan@dimuro.com
`DIMUROGINSBERG, PC
` DGKEYIP GROUP
`1750 Tyson’s Blvd., Suite 1500
`Tysons Corner, VA 22102
`Telephone: (703) 289-5118
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`/Alfonso G. Chan/
`Alfonso G. Chan, Reg. No. 45,964
`achan@shorechan.com
`SHORE CHAN, LLP
`901 Main Street, Suite 3300
`Dallas, TX 75202
`Telephone: (214) 593-9110
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`Attorneys for Patent Owner
`UNM Rainforest Innovations
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`6
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e)(4) and 42.25(b), the undersigned certifies that
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`on April 29, 2021, a complete copy of Patent Owner UNM Rainforest Innovations’
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`Opposition to Petitioner’s Motion for Joinder was filed electronically through the
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`Patent Trial and Appeal Board’s PTABE2E System and provided, via electronic
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`service, to the Petitioner by serving the correspondence address of record as follows:
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`Jonathan I. Detrixhe (jdetrixhe@reedsmith.com)
`Jonah D. Mitchell (jmitchell@reedsmith.com)
`Christine M. Morgan (cmorgan@reedsmith.com)
`Peter J. Chassman (pchassman@reedsmith.com)
`Ismail C. Kuru (ikuru@reedsmith.com)
`Martha Hopkins (mhopkins@sjclawpc.com)
`Victoria Hao (vhao@sjclawpc.com)
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`Dated: April 29, 2021
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`/Jay P. Kesan /
`Jay P. Kesan
`Reg. No. 37,488
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`7
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