`571-272-7822
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`.
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`Paper 12
`Entered: May 15, 2015
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`- UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA,INC.,
`Petitioner,
`
`Vv.
`
`AFFINITY LABS OF TEXAS, LLC,.
`Patent Owner.
`
`Case IPR2015-00820
`Patent 8,532,641 B2
`
`Before KEVIN F. TURNER, LYNNE E. PETTIGREW,and
`JON B. TORNQUIST, Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
`
`DECISION
`Denying Petitioner’s Motion for Joinder
`37 CFR. § 42.122
`Denying Institution of /nter Partes Review
`37 CFR. § 42.108
`
`
`
`IPR2015-00820
`Patent 8,532,641 B2
`
`I. INTRODUCTION
`
`Samsung Electronics Co., Ltd. and Samsung Electronics America,
`Inc. (collectively, “Petitioner”) filed a Petition (Paper7, “Pet.” or “current
`Petition”) requesting inter partes review of claims 1-3, 5-7, 9, 10, and 12 of
`U.S. Patent No. 8,532,641 (“the ’641 patent”). Petitioner also filed a Motion
`for Joinder (Paper 3, “Motion for Joinder”), requesting that the current
`
`Petition be joined with IPR2014-01184. The Motion for Joinderwasfiled
`within one month afterinstitution oftrial in IPR2014-01184. See 37 C.F.R.
`
`§ 42.122(b). Patent Ownerfiled an Opposition to Petitioner’s Motion for
`
`Joinder (Paper 9, “Opp.”), and Petitioner filed a Reply (Paper 11, “Reply’).
`For the reasons that follow, we deny Petitioner’s Motion for Joinder.
`‘Wealso deny the currentPetition and do notinstitute an interpartes review.
`Il. BACKGROUND
`
`Petitioner previously filed three petitions requesting inter partes
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`review of claims 1—3 and 5—14 of the ’641 patent. In IPR2014-01181 we
`instituted review of claims 8 and 11-14; in 1PR2014-01 182 weinstituted
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`review of claims 1—3 and 5—14; and in IPR2014-01184 weinstituted review
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`of claims 8, 11, 13, and 14. Thus, we have instituted review of every
`challenged claim of the ’641 patent in at least one proceeding and, for some
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`claims, in three different proceedings.
`Petitioner now requests inter partes review of claims 1-3, 5—7, 9, 10,
`and 12 ofthe ’641 patent using a new reference, Hu, in combination with
`references Ahn, Nokia, and Galensky, previously relied upon in IPR2014-
`01184. Pet. 30-59; Motion for Joinder 2-3. Institution ofinter partes
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`review is barred under 35 U.S.C. § 315(b) when a petition is filed “more
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`than 1 year after the date on whichthepetitioner, real party in interest, or
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`
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`IPR2015-00820
`Patent 8,532,641 B2
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`privy of the petitioner is served with a complaint alleging infringement of
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`the patent.” Petitioner concedesthat it was served with a complaint
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`asserting infringement of the ’641 patent “more than one year” before the
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`filing date of the current Petition, but contends that the current Petition is
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`timely in view of its Motion for Joinder. Pet. 7; 35 U.S.C. § 315(b) (noting
`that the time limitation set forth in § 315(b) does not apply to a request for
`joinder under§ 315(c)).
`
`The decision to grant joinderis discretionary, with Petitioner, as the
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`moving party, bearing the burden to show that joinder is appropriate.
`35 U.S.C. § 315(c); 37 C.F.R. § 42.20(c).
`IW. ANALYSIS
`
`Petitioner contendsthat joinder is appropriate in this case because
`IPR2015-00820 and IPR2014-01 184 involve the samepatent, parties, and
`counsel, and “Patent Ownerhas already respondedto, and the Board has
`
`already analyzedfor institution, prior petitions challenging every claim now
`at issue in the new Petition.” Motion for Joinder4. Petitioner further
`contendsthat the Hu reference “was not previously known to Petitioners or
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`presented to the Boardin the prior petitions,” and resolves any concerns the
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`Board had with respect to the references cited in IPR2014-01184. Jd. at 5;
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`Reply5.
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`Patent Ownerpresents two argumentsagainst joinder. First, Patent
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`Ownerasserts that the statute does not permit the same party to join a
`proceeding to which it is already a party. Opp. 3 (citing Skyhawk T.echs.
`
`LLC v. L&H Concepts, LLC, Case IPR2014—01485, slip op. at 3-4 (PTAB
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`Mar. 21, 2015) (Paper 13)). Second, Patent Owner contendsthat the Motion
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`for Joinder should be denied because Petitioner simply is seeking a “second
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`
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`IPR2015-00820
`Patent 8,532,641 B2
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`bite at the apple,” without providing any reasonable explanation as to whyit
`did not makeits arguments with respect to the Hu referencein an earlier,
`timely-filed petition. Opp.8, 12.
`|
`With respect to same party joinder, we recognize that different Board
`panels have cometo contrary positions on this issue. See, e.g., Target Corp.
`v. Destination Maternity Corp., Case IPR2014-00508 (PTAB Feb. 12, 2015)
`
`(Paper 31); Skyhawk, slip op. at 3-4. Weneed not addressthe issue here,
`however, because, even if same party joinder is permissible, we are not
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`persuaded that joinder is appropriate in this case.
`With respect to the substance ofthejoinder request, we agree with
`Patent Ownerthat Petitioner provides no reasoned justification for the delay
`in asserting the grounds based on Hu.In particular, Petitioner articulates no
`persuasive reason why, using reasonable efforts, the Hu reference could not
`have been identified and relied upon in the earlier, timely-filed petitions.
`
`See Pet. 33 (identifying Hu as “U.S. Pat. Pub. No. 2006/0262103”); Opp. 12
`
`(noting that Hu is a published U.S. patent application). Thus, we do not:
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`considerthis to be a case of changed circumstances—suchas new claims
`being asserted during district court litigation or new threats of
`infringement—that would make joinder an equitable remedy. See, e.g.,
`
`Micro Motion, Inc. v. Invensys Sys., Inc., Case IPR2014-01409, slip op. at 14
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`(PTAB Feb. 18, 2015) (Paper 14) (citing Microsoft Corp. v. Proxyconn, Inc.,
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`Case IPR2013-00109,slip op. at 3, 5 (PTAB Feb. 25, 2014) (Paper 15)).
`
`This appears, instead, to be a case where Petitioner seeksto use our
`Decisionto Institute in IPR2014-01184 as a guide to remedy deficiencies in
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`the earlier filed petition,i.e., a “secondbite at the apple.” See Motion for
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`Joinder 3 (noting that the Hu reference waslocated “only after the institution
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`
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`IPR2015-00820
`Patent 8,532,641 B2
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`decision in IPR2014-01184”). Interpreting ourrules to allow Petitioner
`another chanceto argue the unpatentability ofthe challenged claims would
`notlead to the just, speedy, and inexpensive resolution of the proceedings.
`See 37 C.F.R. § 42.1(b). To the contrary, joinder ofthe current proceeding
`_ would require Patent Owner to address new arguments and evidence, and
`potentially require additional declarations and witness depositions, all under
`a compressed schedule made necessary to accommodate the more advanced
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`stage of the proceeding in IPR2014-01184. Petitioner’s desire to present
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`additional groundsdirected to claims already the subject of three prior inter
`partes review petitions, and directed to claims currently under review in
`IPR2014-01182, does not justify the additional burden on Patent Owner, the
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`additionalcosts, or the use ofjudicial resources.
`Based on the foregoing, we are not persuadedthat Petitioner has
`demonstrated that joinder is appropriate. Accordingly, we exercise our
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`-
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`discretion and deny joinder of IPR2015-00820 with IPR2014-01184. The
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`current Petition is, therefore, time-barred under 35 U.S.C. § 315(b).
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`IV. ORDER
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`In consideration of the foregoing,it is hereby:
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`ORDEREDthatPetitioner’s Motion for Joinder is denied;
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`FURTHER ORDEREDthatthe Petition is denied and notrial is
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`instituted.
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`
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`IPR2015-00820
`Patent 8,532,641 B2
`
`PETITIONER:
`
`J. STEVEN BAUGHMAN
`GABRIELLE E. HIGGINS
`KATHRYN N. HONG
`ROPES & GRAY LLP
`steven.baughman@ropesgray.com
`gabrielle.higgins@ropesgray.com
`Kathryn.Hong@ropesgray.com
`
`PATENT OWNER:
`
`RYAN SCHULTZ
`THOMAS DESIMONE
`ROBINS KAPLAN LLP
`rschultz@robinskaplan.com
`tdesimone@robinskaplan.com
`
`