Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 9
`Date: June 7, 2024
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS AMERICA, INC. and SAMSUNG
`ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`COBBLESTONE WIRELESS, LLC,
`Patent Owner.
`____________
`
`IPR2024-00315
`Patent 9,094,888 B2
`____________
`
`
`
`Before BARBARA A. PARVIS, NATHAN A. ENGELS, and
`RUSSELL E. CASS, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`Paper 9
`Date: June 7, 2024
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS AMERICA, INC. and SAMSUNG
`ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`COBBLESTONE WIRELESS, LLC,
`Patent Owner.
`____________
`
`IPR2024-00315
`Patent 9,094,888 B2
`____________
`
`
`
`Before BARBARA A. PARVIS, NATHAN A. ENGELS, and
`RUSSELL E. CASS, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`IPR2024-00315
`Patent 9,094,888 B2
`
`
`Cobblestone Wireless, LLC (“Patent Owner”) is the owner of U.S.
`Patent 9,094,888 B2 (“the ’888 patent”). Paper 5, 1. 1 On November 22,
`2023, T-Mobile USA, Inc., AT&T Services Inc., AT&T Mobility LLC,
`AT&T Corporation, Cellco Partnership d/b/a Verizon Wireless, Nokia of
`America Corporation, and Ericsson Inc. filed a petition for inter partes
`review challenging the patentability of claims 9, 10, 12, 20, 21 and 23 of the
`’888 patent in T-Mobile USA, Inc. et al. v. Cobblestone Wireless, LLC,
`IPR2024-00137 (“the ’137 IPR”). On December 18, 2023, Samsung
`Electronics America, Inc. and Samsung Electronics Co., Ltd. (collectively,
`“Samsung”) filed a Petition for inter partes review challenging the
`patentability of claims 9, 10, 12, 20, 21, and 23 of the ’888 patent. Paper 3.
`In its Petition, Samsung indicated that it intended “to move for joinder” if
`the ’137 IPR is instituted.2 Paper 3, 1. Patent Owner filed a Preliminary
`Response on March 28, 2024 (Paper 7) and Petitioner filed a “Sotera
`Stipulation” (Paper 8) on May 7, 2024.
`We instituted review in IPR2024-00137 on May 22, 2024. On May
`31, 2024, a call was scheduled with the parties in the instant proceeding to
`discuss a schedule relating to Petitioner’s possible Motion for Joinder.
`Ex. 3001. On June 4, 2024, Petitioner emailed the Board to request leave to
`file a motion to join IPR2024-00315 to IPR2024-00137. Ex. 3002.
`Petitioner’s email indicated that
`
`
`1 Herein citations are to papers and exhibits in the instant proceeding, unless
`otherwise noted.
`2 The Petition indicates that “[i]f IPR2024-00135 is instituted, Petitioners
`intend to move for joinder.” Paper 3, 1. We understand this statement to list
`IPR2024-00135 in error because it is IPR2024-00137 that challenges the
`’888 patent.
`
`2
`
`
`
`IPR2024-00315
`Patent 9,094,888 B2
`
`
`[t]he motion to join will agree to take an understudy role and, in
`order to maintain consistency between the proceedings, will
`agree to be bound by both the schedule and the prior art
`stipulation the Petitioners filed in the -00137 proceeding
`(IPR2024-00137, Paper 1 at 62). This stipulation will replace the
`one Samsung filed in the -00315 proceeding (IPR2024-00315,
`Paper 8).
`Id. Petitioner’s email also, “Patent Owner does not oppose joinder of
`IPR2024-00315 with IPR2024-00137, so long as Petitioner is limited to an
`understudy role and agrees to be bound by the [the ’137 IPR] schedule.” Id.
`Petitioner’s email also stated “Patent Owner does, however, ask the Board to
`consider whether Petitioner may withdraw its Sotera stipulation (Paper 8)
`that is already for record including whether Petitioner must seek permission
`from the Court or from the Board to do so.” Id.
`On June 5, 2024, Judges Parvis and Cass conducted a conference call
`with counsel for both parties to discuss Petitioner’s request to file a motion
`for joinder in the instant case and its desire to withdraw its Sotera stipulation
`(Paper 8). During the call, Patent Owner indicated that it did not plan to file
`an Opposition to Petitioner’s Motion for Joinder, but Patent Owner would
`like the opportunity to file an Opposition to Petitioner’s Motion to Withdraw
`its Sotera stipulation.
`Having heard the parties’ respective arguments, the Board decided to
`authorize Petitioner to file its Motion for Joinder. The Board also determined
`that further briefing regarding Petitioner’s desire to withdraw its Sotera
`stipulation would be helpful in this case and authorized the parties to file
`additional briefing under the following accelerated briefing schedule:
`
`3
`
`
`
`IPR2024-00315
`Patent 9,094,888 B2
`
`
`Paper Authorized
`Petitioner’s Motion for
`Joinder
`Petitioner’s Motion to
`Withdraw its Sotera
`stipulation (Paper 8)
`Patent Owner’s Opposition to
`Petitioner’s Motion to
`Withdraw its Sotera
`stipulation (Paper 8)
`Petitioner’s Reply in Support
`of its Motion to Withdraw its
`Sotera stipulation (Paper 8)5
`
`Page Limit
`Due Date
`No more than 15
`Due June 10,
`pages4
`20243
`Due June 10, 2024 No more than 5 pages
`
`Due June 14, 2024 No more than 5 pages
`
`Due June 18, 2024 No more than 5 pages
`
`
`The Board also directed Petitioner to clearly indicate whether its Motion for
`Joinder is contingent upon its Motion to Withdraw its Sotera stipulation
`(Paper 8).
`
`
`
`
`
`3 The due date differs from a previously-authorized due date of Friday June
`7, 2024.
`4 See Consolidated Trial Practice Guide (“Consolidated Practice Guide”) at
`38, available at https://www.uspto.gov/TrialPracticeGuideConsolidated; see
`also 84 Fed. Reg. 64,280 (Nov. 21, 2019)).
`5 Petitioner’s Reply is limited to responding to arguments in Patent Owner’s
`Opposition.
`
`4
`
`
`
`IPR2024-00315
`Patent 9,094,888 B2
`
`
`ORDER
`
`Accordingly, it is:
`ORDERED that Petitioner’s request to file a motion to join IPR2024-
`00315 to IPR2024-00137 is granted;
`FURTHER ORDERED that Petitioner shall file its motion to join
`IPR2024-00315 to IPR2024-00137 no later than June 10, 2024;
`FURTHER ORDERED that Petitioner may file a motion to withdraw
`its Sotera stipulation (Paper 8) of no more than five (5) pages by June 10,
`2024;
`FURTHER ORDERED that Patent Owner is authorized to file an
`opposition to Petitioner’s motion to withdraw its Sotera stipulation (Paper 8)
`of no more than five (5) pages by June 14, 2024;
`FURTHER ORDERED that Petitioner is authorized to file a reply in
`of no more than five (5) pages by June 18, 2024 and limited to responding to
`Patent Owner’s opposition;
`FURTHER ORDERED that the parties are not authorized to file any
`other papers including that no sur-replies are authorized at this time.
`
`
`
`5
`
`
`
`IPR2024-00315
`Patent 9,094,888 B2
`
`FOR PETITIONER:
`
`James Glass
`Quincy Lu
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`jimglass@quinnemanuel.com
`quincylu@quinnemanuel.com
`
`FOR PATENT OWNER:
`
`Reza Mirzaie
`Amy Hayden
`Neil Rubin
`Qi Tong
`RUSS AUGUST & KABAT
`rmirzaie@raklaw.com
`ahayden@raklaw.com
`nrubin@raklaw.com
`ptong@raklaw.com
`
`6
`
`
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