Trials@uspto.gov
`571-272-7822
`
`Paper 17
`Entered: October 1, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`ZYXEL COMMUNICATIONS CORPORATION,
`Petitioner,
`
`v.
`
`UNM RAINFOREST INNOVATIONS,
`Patent Owner.
`
`
`IPR2021-00734
`Patent 8,265,096 B2
`
`
`
`Before KRISTEN L. DROESCH, BARBARA A. PARVIS, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b)
`
`
`
`571-272-7822
`
`Paper 17
`Entered: October 1, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`ZYXEL COMMUNICATIONS CORPORATION,
`Petitioner,
`
`v.
`
`UNM RAINFOREST INNOVATIONS,
`Patent Owner.
`
`
`IPR2021-00734
`Patent 8,265,096 B2
`
`
`
`Before KRISTEN L. DROESCH, BARBARA A. PARVIS, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b)
`
`
`
`
`IPR2021-00734
`Patent 8,265,096 B2
`
`I. INTRODUCTION
`A. Background
`ZyXEL Communications Corporation (“Petitioner”) filed a Petition
`(Paper 1, “Pet.”) requesting inter partes review of claims 1–4 and 6–8
`(“challenged claims”) of U.S. Patent No. 8,265,096 B2 (Ex. 1001, “’096
`Patent”). Pet. 1. Concurrently, Petitioner filed a Motion for Joinder
`(Paper 3, “Mot.”) seeking to be joined as a party to Qualcomm, Inc. v. UNM
`Rainforest Innovations, IPR2021-00375 (“Qualcomm IPR”). Petitioner
`timely filed its Motion for Joinder within one month after institution of trial
`in the Qualcomm IPR, as required by 37 C.F.R. § 42.122(b). UNM
`Rainforest Innovations (“Patent Owner”) filed a Preliminary Response
`(Paper 12, “Prelim. Resp.”) to the Petition and an Opposition (Paper 7,
`“Opp.”) to the Motion for Joinder, to which Petitioner filed a Reply
`(Paper 8, “Reply to Opp.”). Pursuant to our authorization, Petitioner filed a
`Reply to the Preliminary Response (Paper 15, “Reply to Prelim. Resp.”) to
`which Patent Owner filed a Sur-reply (Paper 16, “Sur-reply”). We have
`authority and jurisdiction under 35 U.S.C. §§ 6, 314 and 37 C.F.R. § 42.4.
`For the reasons discussed below, we determine institution of inter
`partes review is warranted on the same grounds instituted in the Qualcomm
`IPR, and grant Petitioner’s Motion for Joinder.
`
`B. Real Parties in-Interest
`Petitioner states that ZyXEL Communications Corporation is the real
`party in-interest and further identifies its subsidiary ZyXEL
`Communications Inc., as a possible real party in-interest. See Pet. 2–3.
`
`
`
`2
`
`
`
`IPR2021-00734
`Patent 8,265,096 B2
`Patent Owner states that the University of New Mexico Board of
`Regents is an additional real party in-interest. See Paper 5, 2.
`
`C. Related Matters
`The parties indicate there is an ongoing dispute between Patent Owner
`and Industrial Technology Research Institute (“ITRI”) in New Mexico state
`court, concerning ownership of the ’096 Patent. UNM Rainforest
`Innovations v. Industrial Technology Research Institute, No. D-202-CV-
`2021-02803 (N.M. 2d. Judicial District Court May 4, 2021) (“New Mexico
`state court proceeding”). Paper 9, 1. Petitioner also informs us that ITRI
`filed a civil complaint on January 25, 2021, against UNM and Sino Matrix
`Technology in the Taiwan Hsinchu District Court seeking a declaratory
`judgment that ITRI is the owner of all rights in the ’096 Patent, among other
`patents. See Pet. 4.
`The parties also identify the following matters that they allege may
`affect or be affected by a decision in this proceeding: UNM Rainforest
`Innovations v. ASUSTek Computer, Inc., No. 6:20-cv-00142-ADA (W.D.
`Tex.); UNM Rainforest Innovations v. Dell Technologies, Inc., No. 6:20-cv-
`00468-ADA (W.D. Tex.); UNM Rainforest Innovations v. D-Link Corp., No.
`6:20-cv-00143-ADA (W.D. Tex.); UNM Rainforest Innovations v. TP-Link
`Technologies Co., No. 6:19-cv-00428-ADA (W.D. Tex.); UNM Rainforest
`Innovations v. ZyXEL Communications Corp., No. 6:20-cv-00522-ADA
`(W.D. Tex.). See Pet. 3–4; Mot. 3–4; Paper 5, 2; Paper 13, 1. The ’096
`Patent also was asserted in UNM Rainforest Innovations v. Apple Inc.,
`No. 1:20–cv-00351 (W.D. Tex.), which has been dismissed. See Pet. 3 n.2.
`Claims 1–4 and 6–8 of the ’096 Patent were the subject of a petition
`filed in the Qualcomm IPR, on which inter partes review was instituted. See
`3
`
`
`
`
`
`IPR2021-00734
`Patent 8,265,096 B2
`Pet. 4; Mot. 4; Qualcomm IPR Paper 14 (“Decision on Institution,”
`“Qualcomm IPR Dec.”). Claims 1–4 and 6–8 of the ’096 Patent also were
`the subject of a petition filed in Intel Corp. v. UNM Rainforest Innovations,
`IPR2020-01576, which was terminated upon granting a joint motion to
`terminate. See Pet. 3 n.3.
`
`D. The ’096 Patent (Ex. 1001)
`The ’096 Patent relates to methods for constructing frame structures
`for orthogonal frequency-division multiple access (OFDMA) systems. See
`Ex. 1001, 1:16–19.
`
`
`
`4
`
`
`
`IPR2021-00734
`Patent 8,265,096 B2
`Figure 6A of the ’096 Patent is reproduced below:
`
`
`Figure 6A illustrates an OFDMA frame structure supporting high mobility
`and having a scalable bandwidth. See Ex. 1001, 4:1–3, 6:66–7:2. The frame
`structure includes downlink (DL) sub-frame 16-4 and uplink (UL)
`sub-frame 18-4. See id. at 7:5–7. The frame structure includes added
`regions related to zones 3 for high-mobility environments. See id. at 7:2–5.
`In DL sub-frame 16-4, a first added region includes preamble 68, a sub-
`MAP 67–2 and DATA 66-4. See id. at 7:5–7. In UL sub-frame 18-4, a
`5
`
`
`
`
`
`IPR2021-00734
`Patent 8,265,096 B2
`second added region includes DATA 69-3 and 69-6 (zones 3). See id.
`at 7:7–8. DATA 66-4, 69-3, and 69-6 may be allocated for the extended
`OFDMA system under high mobility. See id. at 7:8–10. DL sub-frame 16-4
`is divided according to mapping information in DL-MAP 1, DL-MAP 2, and
`DL-MAP 3, and UL sub-frame 18-4 is divided according to the map
`information in UL-MAPs in DL burst #1 65-1 and/or 65-2. See id. at 7:10–
`14. A portion of the guard band that overlaps data zones 69-1 and 69-2 in
`UL sub-frame 18-4 may be used to transmit data in the extended system.
`See id. at 7:14–17. “As compared to the zones in the data region of the DL
`sub-frame 16-4 or the UL sub-frame 18-4 of the old/legacy system or the
`new/extended system, the placements of the pilot symbols may be denser,
`[and] the OFDMA symbol periods may be shorter . . . in zones 3 of UL
`sub-frame 18-4 or DL sub-frame 16-4 for the extended system under high
`mobility.” Id. at 7:21–27.
`
`E. Illustrative Claims
`Claims 1 and 8 are independent and claims 2–4, 6, and 7 depend
`ultimately from claim 1. Claims 1 and 8 are illustrative and reproduced
`below:
`
`1. A method of constructing a frame structure for data
`transmission, the method comprising:
`generating a first section comprising data configured in a
`first format compatible with a first communication
`system using symbols;
`generating a second section following the first section, the
`second section comprising data configured in a second
`format compatible with a second communication system
`using symbols, wherein the first communication system’s
`symbols and the second communication system’s
`
`
`
`6
`
`
`
`IPR2021-00734
`Patent 8,265,096 B2
`symbols co-exist in one transmission scheme and
`wherein:
`the second format is compatible with the second
`communication system configured to support higher
`mobility than the first communication system, wherein
`each symbol in the second communication system has a
`shorter symbol period than that in the first
`communication system;
`generating at least one non-data section containing
`information describing an aspect of data in at least one of
`the first section and the second section; and
`combining the first section, the second section and the at
`least one non-data section to form the frame structure.
`
`
`8. A method of constructing a frame structure for data
`transmission, the method comprising:
`generating a first section comprising data configured in a first
`format compatible with a first communication system using
`symbols;
`generating a second section following the first section, the second
`section comprising data configured in a second format
`compatible with a second communication system using
`symbols, wherein the first communication system's symbols
`and the second communication system’s symbols co-exist in
`one transmission scheme and wherein the second
`communication system has pilot symbols that are denser than
`those in the first communication system;
`generating at least one non-data section containing information
`describing an aspect of data in at least one of the first section
`and the second section; and
`combining the first section, the second section and the at least one
`non-data section to form the frame structure.
`Ex. 1001, 8:32–54, 9:6–25.
`
`
`
`7
`
`
`
`IPR2021-00734
`Patent 8,265,096 B2
`F. Asserted Challenges to Patentability and Asserted Prior Art
`Petitioner asserts the following challenges to the patentability of
`claims 1–4 and 6–8:
`Claim(s) Challenged
`1–4, 6, 7
`8
`
`35 U.S.C. §1
`103
`103
`
`Reference(s)/Basis
`Talukdar,2 Li3
`Talukdar, Nystrom4
`
`
`
`II. ANALYSIS
`A. Discretion under 35 U.S.C. § 314(a) – in rem proceeding
`Patent Owner contends that the Board should exercise its discretion
`under 35 U.S.C. § 314(a) to deny institution on the basis that Petitioner
`improperly filed the Petition as an in rem proceeding. Prelim. Resp. 4–7.
`Under § 314(a), the Director has discretion to deny institution of an
`inter partes review, and that discretion has been delegated to the Board.
`See 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the
`Director.”); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016)
`(“[T]he agency’s decision to deny a petition is a matter committed to the
`Patent Office’s discretion.”); SAS Inst. v. Iancu, 138 S. Ct. 1348, 1356
`(2018) (“[Section] 314(a) invests the Director with discretion on the
`question whether to institute review . . . .” (emphasis omitted)); Harmonic
`Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is
`permitted, but never compelled, to institute an IPR proceeding.”).
`
`
`
`1 Petitioner challenges patentability under pre-AIA 35 U.S.C. § 103. Pet. 23,
`28, 30.
`2 Ex. 1012, US 2009/0067377 A1, published Mar. 12, 2009 (“Talukdar”).
`3 Ex. 1001, US 2007/0155387 A1, published July 5, 2007 (“Li”).
`4 Ex. 1017, US 2007/0104174 A1, published May 10, 2007 (“Nystrom”).
`8
`
`
`
`
`
`IPR2021-00734
`Patent 8,265,096 B2
`According to Patent Owner, Petitioner “has not filed this Petition as
`an inter partes petition, but instead as an in rem proceeding against the [’096
`P]atent itself.” Id. at 5 (citing Pet. 1 at caption). Patent Owner asserts the
`Petition “violates the explicit requirement of 35 U.S.C. § 311(a), authorizing
`a ‘person who is not the owner of a patent’ to ‘file with the Office a petition
`to institute an inter partes review of the patent.’” Id. (emphasis in original);
`see Sur-reply 1 (similar argument). Patent Owner further argues that
`Petitioner has not met all the necessary prerequisites for institution. See
`Prelim. Resp. 5 (citing 35 U.S.C. § 311(a)); Sur-reply 1 (similar argument).
`
`Patent Owner contends that Petitioner explicitly introduces the issue
`of patent ownership before the Board by filing its Petition effectively as in
`rem, i.e., against the patent itself, instead of against Patent Owner UNM
`Rainforest Innovations (“UNM”). See Prelim. Resp. 6. According to Patent
`Owner, “[a]lthough [Petitioner] has stated that they do not want the PTAB to
`address patent ownership, by proceeding only against the patent itself,
`[Petitioner] has squarely brought the issue of patent ownership into this IPR,
`thereby requiring the PTAB to rule on this issue.” Id.; see Sur-reply 2
`(similar argument). Patent Owner contends that the Board is not authorized
`to adjudicate patent ownership, and does not have jurisdiction because only
`grounds related to 35 U.S.C. §§ 102 or 103 can be raised in an inter partes
`review. See Prelim. Resp. 6–7 (quoting 35 U.S.C. § 311(b)); Sur-reply 2–3
`(similar argument, quoting 35 U.S.C. § 311(b)).
`Petitioner asserts that its Petition does not seek in rem review because
`the cover page clearly states that it is a petition for “INTER PARTES
`REVIEW.” See Reply to Prelim. Resp. 3 (citing Pet. 1 at caption).
`Petitioner further points out that the header of the pages in the Petition is
`
`
`
`9
`
`
`
`IPR2021-00734
`Patent 8,265,096 B2
`titled as “Petition for Inter Partes Review of ’096 Patent (IPR2021-00734).”
`See id. at 4. Petitioner points out that the Petition identifies UNM as the
`current assignee of record for the ’096 Patent and complied with the
`obligation to serve the correspondence address of record for the ’096 Patent.
`See id. (citing Pet. 2, 75). Petitioner asserts that UNM has been an active
`participant in this proceeding. See id. Petitioner argues that, although
`ownership of the patent is in dispute, nothing in the Petition sought to have
`to Board rule on patent ownership, and, “as stated in its reply in support of
`its motion for joinder, [Patent Owner] ‘does not seek to have the Board
`decide the issue of ownership of the ’096 patent.’” Id. at 4 (quoting Reply to
`Opp. 1).
`We do not interpret the Petition’s caption page listing the ’096 Patent
`to be a request for an in rem proceeding. The Petition explicitly requests
`inter partes review of the ’096 Patent. See Pet. 1. We also are persuaded by
`Petitioner’s numerous affirmative statements that Petitioner does not seek to
`have the Board decide the issue of patent ownership. See Reply to Opp. 1;
`Reply to Prelim. Resp. 4; Paper 11, 2. In addition, at least one of
`Petitioner’s subsequent filings in this proceeding has included a caption
`listing Patent Owner. See Reply to Prelim. Resp. Accordingly, we decline
`to exercise discretion to deny institution on the basis asserted by Patent
`Owner.
`We do not consider Patent Owner’s non-responsive and belated Sur-
`reply arguments requesting the Board to decide the patent ownership issue.
`In the Sur-reply, Patent Owner argues for the first time that proper
`compliance with the provisions of 35 U.S.C. §§ 312(a)(5), 313–316 requires
`
`
`
`10
`
`
`
`IPR2021-00734
`Patent 8,265,096 B2
`a determination of who is the patent owner.5 See Sur-reply 1–2. Patent
`Owner contends that Petitioner called this condition precedent into question
`by filing the Petition as an in rem petition against the patent itself and
`confirmed its position by serving the Petition on ITRI, as required by 35
`U.S.C. § 312(a)(5). See id. at 2. In particular, Patent Owner presents for the
`first time the following arguments: (1) the patent ownership “issue must be
`resolved before this IPR can proceed under Title 35;” (2) “[i]f the Board
`decides to proceed with this IPR, the Board must determine who the true
`patent owner is before proceeding;” and (3) “[t]his panel can decide patent
`ownership and confirm UNM’s rightful ownership based on USPTO
`Assignment Records.” Id. (emphasis in original).
`We also do not consider Patent Owner’s motion to stay presented in
`the Sur-reply because it was not authorized. See 37 C.F.R. § 42.20(b);
`Patent Trial and Appeal Board Consolidated Trial Practice Guide
`November 2019 (“CTPG”), 37 (“Generally a motion will not be entered
`without prior Board authorization.”). Patent Owner states: “[i]n this Sur-
`Reply, UNM thus moves to stay pending the State Court’s decision on
`patent ownership.” Sur-Reply 3. According to Patent Owner, “if the Board
`chooses not to determine ownership, this proceeding should be stayed until
`either a final determination of patent ownership is reached, or [Petitioner]
`stipulates that UNM is indeed the patent owner.” Id. at 3; see id. at 4
`(similar argument).
`For the foregoing reasons, we decline to exercise discretion to deny
`institution on the basis that the Petition is an improper request for an in rem
`
`
`5 UNM Rainforest Innovations, nonetheless, makes its appearance as Patent
`Owner. Paper 5, 2.
`
`11
`
`
`
`
`
`IPR2021-00734
`Patent 8,265,096 B2
`proceeding, and also decline to consider Patent Owner’s non-responsive and
`belated Sur-reply arguments and unauthorized motion to stay.
`
`B. Discretion under 35 U.S.C. § 314(a) - parallel District Court proceeding
`Patent Owner argues that we should exercise our discretion and deny
`institution based on the parallel proceeding in UNM Rainforest Innovations
`v. ZyXEL Communications Corporation, No. 6:20-cv-00522 (W.D. Tex.)
`(“parallel ZyXEL District Court proceeding”). See Prelim. Resp. 4–5, 7–13;
`Sur-reply 1.
`In NHK Spring Co. v. Intri-Plex Technologies, Inc., the Board denied
`institution relying in part on § 314(a) because the parallel district court
`proceeding was scheduled to finish before the Board reached a final
`decision. IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential).
`Following NHK, the Board articulated the following factors for
`consideration when determining whether to exercise discretion to deny
`institution in view of a parallel proceeding:
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`3. investment in the parallel proceeding by the court and the
`parties;
`4. overlap between issues raised in the petition and in the
`parallel proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB
`Mar. 20, 2020) (precedential) (“Fintiv”). “These factors relate to whether
`
`
`
`12
`
`
`
`IPR2021-00734
`Patent 8,265,096 B2
`efficiency, fairness, and the merits support the exercise of authority to deny
`institution in view of an earlier trial date in the parallel proceeding.” Id. at 6.
`In evaluating these factors, we take “a holistic view of whether efficiency
`and integrity of the system are best served by denying or instituting review.”
`Id. (citing CTPG 58). We address each of these factors in turn below.
`
`The instant Petition is a “me-too” petition with respect to the
`Qualcomm IPR. Petitioner asserts that the Petition is substantively identical
`to Qualcomm’s petition and relies on substantially the same supporting
`evidence. See Mot. 2, 6–7. Patent Owner does not dispute Petitioner’s
`assertion. See generally Opp. We have reviewed the Petition and it appears
`to be identical to the petition in the Qualcomm IPR with the exception of the
`mandatory notice information and arguments regarding discretionary denial.
`Compare Qualcomm IPR Paper 1, 10–67, with Pet. 12–69.
`
`The issue of whether to exercise our discretion to deny institution of
`inter partes review based on the unpatentability challenges raised in this
`Petition was already addressed and decided in the Qualcomm IPR. See
`Qualcomm IPR Dec. 7–19. Patent Owner presented arguments in its
`preliminary response and sur-reply of that proceeding requesting the Board
`to exercise discretion to deny the petition under § 314(a) and Fintiv. See
`Qualcomm IPR Papers 10, 12. We evaluated all of Patent Owner’s
`arguments, disagreed that it was appropriate to exercise our discretion to
`deny institution, and instituted inter partes review in the Qualcomm IPR.
`See Qualcomm IPR Dec. 7–19.
`
`In the Qualcomm IPR, we determined that the first and second Fintiv
`factors weighed against discretionary denial based on the stay of the
`proceeding in UNM Rainforest Innovations v. Dell Technologies, Inc.,
`
`
`
`13
`
`
`
`IPR2021-00734
`Patent 8,265,096 B2
`No. 6:20-cv-00468-ADA (W.D. Tex.) (“Dell District Court proceeding”).
`See Qualcomm IPR Dec. 9–10. As to the third Fintiv factor, we determined
`this factor weighed slightly in favor of discretionary denial based on
`determining that the investment of time and effort to date by the parties
`appeared to outweigh the anticipated remaining investment of time and
`effort to bring the Dell District Court proceeding to trial, should it resume.
`See id. at 10–12.
`Regarding the fourth Fintiv factor, we determined that Dell’s
`proposed stipulation mitigated to some degree the concerns of duplicative
`efforts and potentially conflicting decisions, but did not fully allay such
`concerns, and therefore weighed slightly against discretionary denial. See
`Qualcomm IPR Dec. 12–14. As to the fifth Fintiv factor, we determined the
`considerations of this factor weighed slightly in favor of discretionary denial
`based on overlap between the real parties in-interest named in the
`Qualcomm IPR and the defendants in the Dell District Court proceeding.
`See id. at 14–15.
`Regarding the sixth Fintiv factor, we determined the merits of
`petitioner’s patentability challenges appeared sufficient to show a reasonable
`likelihood of prevailing with respect to at least one asserted ground, and,
`therefore, was neutral. See Qualcomm IPR Dec. 15–16. We also
`determined that Patent Owner’s unsupported contention that Petitioner did
`not name all real parties in-interest did not weigh in favor of discretionary
`denial. See id. at 16–17.
`We applied a holistic assessment of the Fintiv factors in the
`Qualcomm IPR and declined to exercise our discretion to deny institution
`under 35 U.S.C. § 314(a). See Qualcomm IPR Dec. 18–19. As a result, as
`
`
`
`14
`
`
`
`IPR2021-00734
`Patent 8,265,096 B2
`explained above, the issue of whether to exercise our discretion to deny
`institution of inter partes review based on the grounds of unpatentability set
`forth in this Petition was decided already in our full analysis of the Fintiv
`factors in the Decision on Institution in the Qualcomm IPR.
`The issue to be decided now is whether to join Petitioner as a party to
`the ongoing inter partes review—not, for example, whether to conduct a
`completely separate inter partes review involving Petitioner. We have
`considered all of the parties’ arguments regarding discretionary denial in this
`proceeding and see no reason to reach a different conclusion than the
`conclusion reached in the Decision on Institution in the Qualcomm IPR. See
`Pet. 7–12; Prelim. Resp. 4–5, 7–13; Reply 1–3; Sur-reply 1.
`Many of Patent Owner’s arguments regarding discretionary denial
`here are substantially the same as those addressed in the Decision on
`Institution in the Qualcomm IPR. Compare Prelim. Resp. 7–12, and Sur-
`reply 1, with Qualcomm IPR Paper 8, 3–13, and Paper 12, 1–4. One
`difference is that Patent Owner’s arguments here advocating discretionary
`denial are based on the parallel ZyXEL District Court proceeding, not the
`Dell District Court proceeding, both of which have been stayed for the same
`reasons. As in the Qualcomm IPR, Petitioner stipulates that it will not
`pursue invalidity of the challenged claims on the same grounds or same
`references at issue in the Petition in the parallel ZyXEL District Court
`proceeding if inter partes review is instituted. See Pet. 10–11. Another
`difference is that Patent Owner here does not raise the same issues that were
`raised in the Qualcomm IPR with respect to the fifth and sixth Fintiv factors,
`namely, that petitioner and defendant are real parties in-interest, and that
`petitioner did not disclose all real parties in-interest. Compare Qualcomm
`
`
`
`15
`
`
`
`IPR2021-00734
`Patent 8,265,096 B2
`IPR Paper 8, 9–11, with Prelim. Resp. 9–11. A final and notable difference
`is that Patent Owner here, but not in the Qualcomm IPR, raises the “in rem”
`proceeding argument as a circumstance to be considered as part of the sixth
`Fintiv factor. Compare Qualcomm IPR Paper 8, 9–11, with Prelim.
`Resp. 10–11.
`In this proceeding, with respect to the sixth Fintiv factor, Patent
`Owner repeats its arguments that the Petition was filed as an in rem
`proceeding and asserts that this circumstance favors denying institution.
`Compare Prelim. Resp. 10–11, with id. at 5–6. As explained above in
`Section II.A., we do not interpret the Petition’s caption page listing the ’096
`Patent to be a request for an in rem proceeding, and we are persuaded by
`Petitioner’s numerous affirmative statements that Petitioner does not seek to
`have the Board decide the issue of patent ownership. Therefore, we do not
`consider Patent Owner’s asserted circumstance to weigh in favor of
`exercising discretion to deny institution.
`We have considered the circumstances and facts before us in view of
`the Fintiv factors. Because our analysis is fact-driven and we take a holistic
`view of the factors, no single factor is determinative of whether we exercise
`discretion to deny institution under § 314(a). Based on the record before us,
`the considerations underlying the Fintiv factors when viewed holistically
`lead us to determine that the efficiency and integrity of the system are best
`served by not exercising discretion to deny institution of inter partes review.
`
`C. Institution of Inter Partes Review
`Petitioner asserts that its challenge is substantively identical to
`challenges raised in the Qualcomm IPR. See Pet. 7 (quoting Celltrion, Inc.
`v. Genetech, Inc., IPR2018-01019, Paper 11 at 7, 11–13 (PTAB Oct. 30,
`16
`
`
`
`
`
`IPR2021-00734
`Patent 8,265,096 B2
`2018)). We agree based on our independent review of the Petition, the
`petition filed in the Qualcomm IPR, and the evidence relied on in both
`petitions. Compare Pet. 12–69, and Ex. 1002, with Qualcomm IPR Paper 1,
`10–67, and Ex. 1002.
`We instituted inter partes review of claims 1–4 and 6–8 of
`the ’096 Patent on July 19, 2021, based on the petition filed in the
`Qualcomm IPR. Qualcomm IPR Dec. For the same reasons discussed in the
`Decision on Institution in the Qualcomm IPR, we find Petitioner has
`demonstrated a reasonable likelihood of showing at least one claim of
`the ’096 patent is unpatentable. See id. Accordingly, we find the Petition
`warrants institution of inter partes review of all challenged claims on all
`grounds raised.
`
`D. Motion for Joinder
`Joinder in inter partes reviews is governed by 35 U.S.C. § 315(c),
`which states:
`If the Director institutes an inter partes review, the Director, in
`his or her discretion, may join as a party to that inter partes
`review any person who properly files a petition under section
`311 that the Director, after receiving a preliminary response
`under section 313 or the expiration of the time for filing such a
`response, determines warrants the institution of an inter partes
`review under section 314.
`Procedurally, a motion for joinder must be filed “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) (2019). Petitioner filed its Motion for
`Joinder on March 29, 2021, before the July 19, 2021, Decision on Institution
`in the Qualcomm IPR that Petitioner seeks to join. Mot. 11; Qualcomm IPR
`Dec. Patent Owner contends that the Motion for Joinder should be denied
`
`
`
`17
`
`
`
`IPR2021-00734
`Patent 8,265,096 B2
`because it was nearly three months premature. See Opp. 5. We agree with
`Petitioner that the Motion for Joinder is timely because it was filed no later
`than one month after the institution date of the Qualcomm IPR, which is the
`only timing requirement for a motion for joinder. See Reply to Opp. 4
`(quoting 37 C.F.R. § 42.122(b); Central Security Group – Nationwide, Inc.
`v. Ubiquitous Connectivity, LP, IPR2019-01609, Paper 11 at 8–9 (PTAB
`Feb. 26, 2020); citing Dell Inc. v. Neodron Ltd., IPR2020-00731, Paper 9
`at 5 (PTAB July 31, 2020); see also Mot. 5 (similar argument)).
`To ensure the just, speedy, and inexpensive resolution of every
`proceeding, a motion for joinder should: (1) set forth 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. See Kyocera Corp. v. SoftView LLC,
`IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013); CTPG 76.
`Petitioner argues joinder is appropriate in this proceeding because the
`challenges to the claims of the ’096 Patent raised in the Petition and
`Qualcomm’s Petition can be determined in a single proceeding, and
`therefore, will be more efficient and less wasteful. See Mot. 5–6; see also
`id. at 2 (similar argument). Petitioner contends that because 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
`id. at 6 (citations omitted). In support of its arguments, Petitioner asserts
`there are no substantive differences between the Petition and Qualcomm’s
`Petition and the Petition relies on substantially the same supporting evidence
`as the evidence relied upon in the Qualcomm Petition. See id. at 5–6; see
`
`
`
`18
`
`
`
`IPR2021-00734
`Patent 8,265,096 B2
`also id. at 1–2 (similar arguments). Petitioner further asserts that joining
`Petitioner as a party to the Qualcomm IPR would not cause UNM to bear
`any additional burden because UNM must respond to the common
`challenges identified in the Petition and Qualcomm’s Petition regardless of
`joinder, and will only need to respond to one principal set of papers. See id.
`at 7, 10; see also id. at 2 (similar argument). Petitioner further asserts that
`because the Petition includes the identical grounds presented in the
`Qualcomm Petition, there would be no additional burden for the Board,
`Qualcomm, or UNM if Petitioner is joined. See id. at 2.
`Petitioner asserts that the Petition does not raise any new grounds of
`unpatentability because the Petition challenges the claims of the ’096 Patent
`on identical grounds to those raised in the Qualcomm Petition. See Mot. 7
`(citing IPR2021-00375, Paper 2); see also id. at 1–2 (similar arguments).
`Petitioner contends that joinder will not impose any additional burden on the
`Board nor add additional complexity to the case. See id. at 7 (citation
`omitted). Patent Owner opposes Petitioner’s motion and counters that
`joinder will introduce the substantial new issue of UNM’s ownership rights
`of the ’096 Patent into the Qualcomm IPR because Petitioner filed its
`Petition effectively as in rem, i.e., against the patent itself, instead of against
`Patent Owner UNM. See Opp. 1–3. According to Patent Owner, “[u]nder
`similar circumstances where joinder would introduce new issues to the
`existing IPR, the Board typically denies motions for joinder.” See id. at 3
`(quoting Unified Patents Inc., v. C-Cation Technologies, LLC, IPR2015-
`01045, Paper 15 at 7 (PTAB Oct. 7, 2015)). In reply, Petitioner contends
`that its Petition does not raise any issues for the Board to decide beyond
`those raised in Qualcomm’s Petition. See Reply to Opp. 1. According to
`
`
`
`19
`
`
`
`IPR2021-00734
`Patent 8,265,096 B2
`Petitioner, “[i]mportantly, and contrary to the primary argument in the
`Opposition, [Petitioner]’s Motion does not seek to have the Board decide the
`issue of ownership of the ’096 patent, and [the] Petition does not raise any
`additional grounds of unpatentability of the ’096 patent.” Id. (emphasis in
`original). Petitioner further contends that, “in its position as a joined
`petitioner, [it] does not attempt and will not attempt to introduce the issue of
`ownership into Qualcomm’s IPR.” Id. at 1–2.
`For the same reasons as those explained above in Section II.A., we do
`not interpret the Petition’s caption page listing the ’096 Patent to be a
`request for an in rem proceeding, and we are persuaded by Petitioner’s
`numerous affirmative statements that Petitioner does not seek to have the
`Board decide the issue of patent ownership. Accordingly, we agree that
`joining Petitioner to the Qualcomm IPR would not introduce any new issues
`or additional grounds of unpatentability to the Qualcomm IPR.
`Petitioner asserts that joinder will not add any procedural
`complications or delay the progress of resolving the substantive issues
`pending in the Qualcomm IPR because it will not introduce any new prior
`art, expert opinions, or grounds of unpatentability into the Qualcomm IPR.
`See Mot. 8. Petitioner contends that its participation would result in no
`changes to the schedule or otherwise unfairly prejudice UNM. See id.
`According to Petitioner, “[f]or both UNM and Qualcomm, [the] Petition has
`been filed sufficiently early so that joinder would affect neither the potential
`schedule of the inter partes review, nor the costs ass
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
