Trials@uspto.gov
`571-272-7822
`
`Paper9
`Entered: July 31, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DELL INC.; DELL PRODUCTSLP;
`LENOVO (UNITED STATES) INC.; and
`HP INC.,
`Petitioner,
`
`Vv.
`
`NEODRONLTD.,
`Patent Owner.
`
`IPR2020-0073 1
`Patent 9,024,790 B2
`
`Before MIRIAM L. QUINN, PATRICK M. BOUCHER,and
`SCOTT B. HOWARD,Administrative Patent Judges.
`
`HOWARD,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
`
`
`571-272-7822
`
`Paper9
`Entered: July 31, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DELL INC.; DELL PRODUCTSLP;
`LENOVO (UNITED STATES) INC.; and
`HP INC.,
`Petitioner,
`
`Vv.
`
`NEODRONLTD.,
`Patent Owner.
`
`IPR2020-0073 1
`Patent 9,024,790 B2
`
`Before MIRIAM L. QUINN, PATRICK M. BOUCHER,and
`SCOTT B. HOWARD,Administrative Patent Judges.
`
`HOWARD,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
`
`
`
`IPR2020-00731
`Patent 9,024,790 B2
`
`INTRODUCTION
`
`A. Background and Summary
`
`Dell Inc., Dell Products LP, Lenovo (United States) Inc., and HP Inc.
`
`(collectively, “Petitioner”) filed (1) a Petition to institute an inter partes
`
`review (Paper4, “Pet.”) of claims 1-24 of U.S. Patent No. 9,024,790 B2
`(Ex. 1001, “the ’790 patent’); and (2) a Motion for Joinder (Paper5, “Mot.”)
`
`with Samsung Electronics Co. v. Neodron Ltd., IPR2020-00515 (“Samsung
`
`IPR). Weinstituted an inter partes review of the Samsung IPR on July 1,
`
`2020. Samsung IPR, Paper 8. Neodron Ltd. (“Patent Owner’) did notfile a
`
`Patent OwnerPreliminary Response or an Opposition to Petitioner’s Motion
`
`for Joinder in this proceeding.
`
`.
`
`Wehave authority under 35 U.S.C. § 314(a), which provides that an
`
`. there is a reasonable
`.
`inter partes review maynotbeinstituted “unless .
`likelihood that the petitioner would prevail with respectto at least 1 of the
`
`claims challengedin the petition.” For reasons discussed below,we institute
`
`an interpartes review of claims 1—24 and grant Petitioner’s Motion for
`
`Joinder.
`
`B. Real Parties in Interest
`
`Petitioner identifies Dell Products LP, Dell Inc., Lenovo (United
`States) Inc., and HP Inc. as real parties in interest. Pet. 2. Petitioner also
`identifies Dell Technologies Inc., Lenovo Group Ltd., and Microsoft Corp.
`
`as real parties in interest without admitting that those parties are in fact real
`
`parties in interest. Jd.
`
`C. Related Matters
`
`Theparties identify the following proceedings in which the *790
`
`patent is asserted. Neodron Ltd. v. Dell Technologies, Inc., No. 6:19-cv-
`
`00318-ADA (W.D. Tex.); Neodron Ltd. v. HP Inc., 6-19-cv-00319-ADA
`
`
`
`IPR2020-00731
`Patent 9,024,790 B2
`
`(W.D. Tex.); Neodron Ltd. v. Lenovo Group Ltd. et al, 6-19-cv-00320 (W.D.
`
`Tex.); In the matter of Certain Touch-Controlled Mobile Devices,
`
`Computers, and Components Thereof, Inv. No. 337-TA-1162 (ITC); and
`
`Neodron Ltd. v. Samsung Electronics Co., Ltd., No. 6:19-cv-00398-ADA
`
`(W.D. Tex.). Pet. 3; Paper 7, 2 (Patent Owner’s Mandatory Notices).
`
`Petitioner further identifies a pending inter partes review of the
`
`’790 patent, proceedings asserting U.S. Patent No 8,102,286 (the ’286
`
`patent), which is a parent of the ’790 patent, and an inter partes review
`petition relating to the °286 patent. Pet. 3-4.
`D. Prior Art and Asserted Grounds
`
`Petitioner asserts that claims 1-24 would have been unpatentable on
`
`the following grounds:
`
`
`
`Claim(s) Challenged|35 U.S.C. §' Reference(s)/Basis
`
`
`1, 7, 8, 13, 14, 19-24|102(b)? Jahier?
`
`
`
`1, 2, 5-8, 12-14, 18-|1 93/4) Jahier
`
`
`
`24
`
`
`Jahier, Senk*
`
`
`
`
`4,10, 11, 16, 17
`
`'! The Leahy-Smith America Invents Act (“AIA”) included revisions to 35
`U.S.C. §§ 102, 103 that became effective on March 16, 2013. Because the
`°790 patent issued from an application filed before March 16, 2013, we
`apply the pre-AIA versionsof the statutory bases for unpatentability.
`—
`Althoughthe Petition only identifies section 103 as a basis for
`unpatentability in the section titled “Precise Relief Requested,” the Petition
`sets forth that claims 1, 7, 8, 13, 14, and 19-24 are either anticipated or
`rendered obvious by Jahier. Compare Pet. 5 (Precise Relief Requested)
`(arguing claims 1, 2, 5-8, 12-14, and 18-24 are obvious) with id. at 19-40
`(arguing claims 1, 7, and 13 are either anticipated or obvious), 46—52
`(arguing Jahier discloses the additional limitations recited in claims 8, 14,
`and 19-24).
`3 US 5,525,908, issued June 11, 1996 (Ex. 1005).
`
`4 US 5,760,715, issued June 2, 1998 (Ex. 1006).
`
`
`
`IPR2020-0073 1
`Patent 9,024,790 B2
`
`
`
`Claim(s) Challenged|35 U.S.C.§! Reference(s)/Basis
`
`
`
`5, 12, 18
`Jahier, QT601615
`
`
`3,9, 15
`
`
`
`
`
`Petitioner also relies on a Declaration of Dr. Benjamin B. Bederson,
`
`Ph.D., filed as Exhibit 1002 (““Bederson Declaration”).
`
`INSTITUTION OF INTER PARTES REVIEW
`
`The Petition in this proceeding asserts the same grounds of
`
`unpatentability as the ones on which weinstituted review in the Samsung
`
`IPR. Compare Pet. 19-69, with Samsung IPR, Paper 8 at 6. Indeed,
`
`Petitioner contendsthat the Petition “is a carbon copyofthe original
`
`Samsung IPR petition in all material respects. The only substantive changes
`are in the introduction to identify the correct Petitioner and the mandatory |
`notices under 37 C.F.R. § 42.8(b).” Mot. 1; see also id. at 5-6,
`
`Patent Ownerdid notfile a Preliminary Responsein the instant
`
`proceeding.
`
`For the same reasonsset forth in ourinstitution decision in the
`
`Samsung IPR, we determinethat the information presented in the Petition
`
`showsa reasonable likelihood that Petitioner would prevail in showing that
`
`claims 1-24 are unpatentable. See Samsung IPR, Paper 8 at 10-17.
`
`Accordingly, we institute an inter partes review on the same groundsas the
`
`ones on which weinstituted review in the Samsung IPR.
`
`> Quantum Research Group QT60161 16 Key QMatrix Keypanel Sensor IC
`Datasheet (2002) (Ex. 1007)
`® US 5,831,597, issued Nov.3, 1998 (Ex. 1008).
`
`
`
`IPR2020-0073 1
`Patent 9,024,790 B2
`
`GRANT OF MOTION FOR JOINDER
`
`Weinstituted trial in the Samsung IPR on July 1, 2020. Samsung
`
`IPR, Paper 8. Petitioner filed a Motion for Joinder on March 30, 2020. Mot.
`
`Thus, Petitioner’s Motion for Joinderis timely because joinder was
`
`requested no later than one monthafter trial was instituted in the Samsung
`
`IPR. See 37 C.F.R. § 42.122(b) (2020).
`
`Thestatutory provision governing joinder in inter partes review
`
`proceedings is 35 U.S.C. § 315(c), which reads:
`
`the
`If the Director institutes an inter partes review,
`Director, in his or her discretion, may join as a party to that inter
`partes review any person whoproperly files a petition under
`section 311 that
`the Director, after receiving a preliminary
`response undersection 313 or the expiration of the time for filing
`such a response, determines warrants the institution of an inter
`partes review undersection 314.
`
`A motion for joinder should (1) set forth reasons why joinderis
`
`appropriate; (2) identify any new grounds of unpatentability asserted in the
`
`petition; (3) explain what impact (if any) joinder would haveonthetrial
`
`schedule for the existing review; and (4) address specifically how briefing
`
`and discovery may be simplified. See Kyocera Corp. v. Softview LLC, Case
`
`IPR2013-00004, Paper 15, (PTAB Apr. 24, 2013).
`
`The Petition in this case asserts the same unpatentability grounds on
`
`which weinstituted review in the Samsung. See Mot. 1—2. Petitionerrelies
`
`“on the same groundsrelying on the sameprior art and evidence, including a
`
`declaration that is from the same expert.” See id.
`
`Indeed,the Petition is
`
`nearly “a carbon copy”ofthe petition filed by the petitioner in the Samsung
`
`IPR. See id. at 1. Thus, this inter partes review does not present any ground
`
`or matter not already at issue in the Samsung IPR.
`
`
`
`IPR2020-0073 1
`Patent 9,024,790 B2
`
`Ifjoinder is granted, Petitioner anticipates participating in the
`
`proceeding in a limited capacity absent termination of the Samsung IPR
`
`petitioner as a party. Mot. 2. Petitioner agrees that “(t]he Samsung
`
`Petitioner will maintain the lead role in the proceedingsso longasit is a
`
`party to the proceedings and is not estopped under § 315(e)(1) [and that]
`
`Petitioner will only assumethe lead role in the proceedings if the Samsung
`
`Petitioner is no longera party to the proceedings or unable to advance
`
`arguments for one or more claims, or grounds, for example, because of
`
`§ 315(e)(1).” Jd. Petitioner further represents that it “will not seek
`
`additional depositions or deposition time, and will coordinate deposition
`
`questioning and hearing presentations with the SamsungPetitioner.” Jd.
`
`at 3. Because Petitioner expects to participate only in a limited capacity,
`
`Petitioner submits that “joinder will not add any new substantive issues,
`
`delay the schedule, burden deponents, or increase needless filings, any
`
`additional costs on the Patent Owner would be minimal.” Jd.
`
`Patent Ownerdoes not oppose the Motion for Joinder and has not
`
`disputed any of Petitioner’s assertions.
`
`Weagree with Petitioner that joinder with the Samsung IPRis
`
`appropriate under the circumstances. Accordingly, we grant Petitioner’s
`
`Motion for Joinder.
`
`In consideration of the foregoing,it is hereby:
`
`ORDER
`
`ORDEREDthat, pursuant to 35 U.S.C. § 314(a), an inter partes
`
`review of claims 1-24 of the ’790 patentis instituted in IPR2020-00731;
`
`FURTHER ORDEREDthat the Motion for Joinder with IPR2020-
`
`00515 is granted, and Petitioner is joined as a party to IPR2020-00515;
`
`
`
`IPR2020-00731
`Patent 9,024,790 B2
`
`FURTHER ORDEREDthatall furtherfilings by Petitioner and Patent
`
`Owner, except for those which concern a requestfor rehearing of this
`
`decision, shall be made only in IPR2019-00515;
`
`FURTHER ORDEREDthat, subsequentto joinder, the grounds and
`
`claimsfor trial in IPR2019-00515 remain unchanged;
`
`FURTHER ORDEREDthat, subsequent to joinder, the Scheduling
`
`Orderin place for IPR2019-00515 (Papers 9, 10) remains unchanged,
`
`subject to any change already madebystipulation between Patent Owner
`and SamsungElectronics Co., Ltd. and Samsung Electronics America, Inc.
`
`(collectively, “Samsung”’);
`
`FURTHER ORDEREDthat, subsequentto joinder, Petitioneris
`
`boundby every paperfiled by and every representation made by Samsungin
`IPR2020-00515, except for papers and representations regarding settlement
`
`between Samsung and Patent Owner;
`
`FURTHER ORDEREDthatPetitioner shall make no filing and take
`
`no action in the joined proceeding unless (1) Samsungsettles with Patent
`
`Owner, and a Motion to Terminate Samsung from the joined proceeding has
`
`been filed by Samsung,or (2) the filing is a motion to terminate the
`
`proceeding with respectto Petitioner, a settlement agreement between
`Petitioner and Patent Owner, or a request to keep settlement agreement
`
`separate under 37 C.F.R. § 42.74(c);
`
`FURTHER ORDEREDthatPetitioner shall not receive any direct,
`
`cross examination,or redirect time beyond that permitted for Samsung
`alone, undereither 37 C.F.R. § 42.53 or any agreement between Samsung
`
`and Patent Owner;
`
`FURTHER ORDEREDthatthe case caption in IPR2020-00515 shall
`
`be changed in accordance with the attached example; and
`
`
`
`IPR2020-00731
`Patent 9,024,790 B2
`
`FURTHER ORDEREDthat a copy of this Decision shall be entered
`
`into the record of IPR2020-00515.
`
`
`
`IPR2020-0073 1
`Patent 9,024,790 B2
`
`FOR PETITIONER:
`
`Christopher Douglas
`Lauren Bolcar
`ALSTON & BIRD LLP
`Christopher.douglas@alston.com
`Lauren.bolcar@alston.com
`
`James Heintz
`Robert Duergi
`DLA Piper LLP (US)
`Jim.heintz@dlapiper.com
`Robert.duergi@dlapiper.com
`
`Aliza Carrano
`Philip Eklem
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT AND DUNNER, LLP
`Aliza.carrano@finnegan.com
`Philip.eklem@finnegan.com
`
`FOR PATENT OWNER:
`
`Kent Shum
`Neil A. Rubin
`RUSS AUGUST & KABAT
`kshum@raklaw.com
`nrubin@raklaw.com
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`Paper9
`Entered: July 31, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CoO., LTD.;
`SAMSUNG ELECTRONICS AMERICA,INC.;
`DELL INC.; DELL PRODUCTSLP;
`LENOVO (UNITED STATES)INC.; and
`HP INC.,
`Petitioners,
`
`V.
`
`NEODRONLTD.,
`Patent Owner.
`
`IPR2020-00515!
`Patent 9,024,790 B2
`
`1 Dell Inc., Dell Products LP, Lenovo (United States) Inc., and HP Inc. were
`joined as a party to this proceeding via a Motion for Joinder in IPR2020-
`00731.
`
`
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