UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`In the Patent of: Yang, Xiu Zheng, Shulin (TW);
`Ren-Jr Chen, Hsinchu (TW);
`
`
`
`Chang-Lung Hsiao, Hsinchu (TW);
`
`
`
`Pang-An Ting, Fongyuan (TW)
`
`
`
`
`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
`
`
`
`
`
`
`PTAB Case No. IPR2021-00734
`Patent No. 8,265,096 B2
`_____________________
`
`PETITIONER ZYXEL COMMUNICATIONS CORPORATION’S REPLY
`IN SUPPORT OF ITS 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
`_____________________
`In the Patent of: Yang, Xiu Zheng, Shulin (TW);
`Ren-Jr Chen, Hsinchu (TW);
`
`
`
`Chang-Lung Hsiao, Hsinchu (TW);
`
`
`
`Pang-An Ting, Fongyuan (TW)
`
`
`
`
`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
`
`
`
`
`
`
`PTAB Case No. IPR2021-00734
`Patent No. 8,265,096 B2
`_____________________
`
`PETITIONER ZYXEL COMMUNICATIONS CORPORATION’S REPLY
`IN SUPPORT OF ITS MOTION FOR JOINDER UNDER 35 U.S.C.
`§ 315(c), 37 C.F.R. § 42.22, AND 42.122(b)
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`INTRODUCTION ............................................................................................... 1
`I.
`II. JOINDER WOULD NOT RAISE A NEW OR IMPROPER ISSUE INTO
`THE QUALCOMM IPR ............................................................................................ 2
`III. ZYXEL’S MOTION IS NOT PREMATURE .................................................... 4
`IV. CONCLUSION ................................................................................................... 4
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`
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`I.
`
`INTRODUCTION
`ZyXEL Communications Corporation (“ZyXEL” or “Petitioner”) files this
`
`reply in support of Petitioner’s Motion for Joinder Under 35 U.S.C. § 315(c), 37
`
`C.F.R. §§ 42.22, and 42.0122, Paper No. 3 (“Motion”) and in response to “Patent
`
`Owner UNM Rainforest Innovations’ Opposition to Petitioner’s Motion for Joinder”
`
`(“Opposition” or “Opp”), Paper 7. ZyXEL’s Petition for Inter Partes Review of
`
`U.S. Patent No. 8,265,096, IPR2021-00734, Paper 1 (“ZyXEL’s Petition”) does not
`
`raise any issues for the Board to decide beyond those raised in Qualcomm
`
`Incorporated v. UNM Rainforest Innovations, IPR2021-00375, Paper 1 (December
`
`28, 2020) (“Qualcomm’s Petition”), which also seeks inter partes review of U.S.
`
`Patent No. 8,265,096 (“the ’096 patent”). Importantly, and contrary to the primary
`
`argument in the Opposition, ZyXEL’s Motion does not seek to have the Board
`
`decide the issue of ownership of the ’096 patent, and ZyXEL’s Petition does not
`
`raise any additional grounds of unpatentability of the ’096 patent. Rather, the
`
`grounds for invalidity and discussion of those grounds in ZyXEL’s Petition are
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`exactly the same as those in Qualcomm’s Petition. Nevertheless, UNM opposes
`
`joinder, asserting that ZyXEL’s Petition raises an issue of ownership that was not
`
`raised in Qualcomm’s Petition and would be improper before the Board. Opp. at 1.
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`This argument is unfounded, because ZyXEL, in its position as a joined petitioner,
`
`
`
`-1-
`
`
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`does not attempt and will not attempt to introduce the issue of ownership into
`
`Qualcomm’s IPR.1 See Opp. at 2.
`
`UNM also urges the Board to deny the Motion as premature, because the
`
`Board has not yet made an institution decision on the Qualcomm IPR. Opp. at 5.
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`This argument fares no better. ZyXEL’s Motion was filed within the regulatory
`
`deadline set forth under 37 C.F.R. § 42.122(b), and that is all that is necessary.
`
`II.
`
`JOINDER WOULD NOT RAISE A NEW OR IMPROPER ISSUE INTO THE
`QUALCOMM IPR
`As stated in ZyXEL’s Motion and as is apparent from a comparison of
`
`ZyXEL’s Petition with Qualcomm’s Petition, ZyXEL’s Petition relies on the exact
`
`same prior art references, arguments, and expert as those in Qualcomm’s Petition.
`
`In an attempt to create an issue where one does not exist, UNM has latched
`
`onto the fact that ZyXEL’s Petition does not to refer to UNM as “the patent owner.”
`
`Opp. at 1. This is of no moment. Indeed, UNM did not – and cannot – identify a
`
`single statement, argument, or request in ZyXEL’s Petition that asks the Board to
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`decide the issue of ownership of the ’096 patent, because ZyXEL does not seek to
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`have Board do so in this proceeding. ZyXEL asks the Board to decide only the same
`
`issues of invalidity of the ’096 patent as those raised in the Qualcomm Petition.
`
`
`1 ZyXEL reserves all rights to challenge ownership of the ’096 patent in the ongoing
`district court litigation between UNM and ZyXEL.
`
`-2-
`
`
`
`UNM’s reliance on Unified Patents Inc., v. C-Cation Technologies, LLC,
`
`IPR2015-01045, Paper 15 at 7, is misplaced. There, although Unified Patents’
`
`petition asserted the same invalidity grounds and presented the same arguments as a
`
`petition previously filed by a third party, C-Cation argued in its preliminary response
`
`that Unified Patents had failed to identify all of the real parties in interest. When
`
`Unified Patents sought to join the earlier filed petition, C-Cation argued that joinder
`
`was improper because Unified Patents’ petition introduced an additional issue
`
`beyond that in the earlier-filed petition – one concerning the issue of the identities
`
`of the real parties in interest. The Board agreed with C-Cation and concluded that
`
`introducing the real parties in interest issue into the previously-filed petition would
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`shift “the focus away from the substantive issue to be addressed” and therefore
`
`denied Unified Patents’ motion for joinder.
`
`By contrast, ZyXEL’s Petition has not introduced any real party in interest
`
`issue, and the Unified Patents decision is simply inapposite. To be sure, UNM’s
`
`attempt to apply the rationale of the Unified Patents decision here fails in any event
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`because, as noted above, ZyXEL’s has not introduced ownership as an issue either.
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`Therefore, ZyXEL’s petition does not raise any issue that would shift “the focus
`
`away from the substantive issue to be addressed--the patentability” of claims 1-4 and
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`6-8 of the ’096 patent, and ZyXEL’s Motion is proper. See Unified Patents Inc., v.
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`C-Cation Technologies, LLC, IPR2015-01045.
`
`-3-
`
`
`
`III. ZYXEL’S MOTION IS NOT PREMATURE
`UNM argument that the Motion is premature likewise fails. Opp. at 5-6.
`
`ZyXEL’s motion is timely because it was filed “no later than one month after the
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`institution date” of the Qualcomm IPR. 37 C.F.R. § 42.122(b). Central Security
`
`Group – Nationwide, Inc. v. Ubiquitous Connectivity, LP is instructive. There, the
`
`Board rejected the same argument that UNM makes here and granted a motion for
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`joinder to an IPR proceeding that was not instituted until after the motion for joinder
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`was filed, explaining that § 42.122(b) is “[t]he only timing requirement for a motion
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`for joinder.” Central Security Group – Nationwide, Inc. v. Ubiquitous Connectivity,
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`LP, IPR2019-01609, Paper 11, at 8–9 (P.T.A.B. Feb. 26, 2020); see also Dell Inc. v.
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`Neodron Ltd., IPR2020-00731, Paper 9, at 5 (P.T.A.B. July 31, 2020). UNM does
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`not cite any Board decisions denying a conditional motion for joinder as premature.
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`Accordingly, UNM’s argument is meritless.
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`IV. CONCLUSION
`For the foregoing reasons, ZyXEL respectfully requests that the Board grant
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`its Motion for Joinder.
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`
`
`Dated: May 25, 2021
`
`Respectfully submitted,
`
`/s/ Jonathan I. Detrixhe
`Lead Counsel
`Jonathan I. Detrixhe (Reg. No. 68,556)
`Reed Smith LLP
`101 Second Street
`
`-4-
`
`
`
`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
`
`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
`
`-5-
`
`
`
`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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`-6-
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`
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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
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`that on May 25, 2021, a complete copy of Petitioner’s Reply In Support Of Its Motion
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`For Joinder Under 35 U.S.C. § 315(c), 37 C.F.R. § 42.22, and 42.122(b) was filed
`
`electronically through the Patent Trial and Appeal Board’s PTABE2E System and
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`provided, via electronic service, to UNM Rainforest Innovations by serving the
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`correspondence address of record as follows:
`
`Jay P. Kesan (jkesan@dimuro.com)
`
`Alfonso G. Chan (achan@shorechan.com)
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`
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`Dated: May 25, 2021
`
`Respectfully submitted,
`/s/ 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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`-7-
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`
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