Trials@uspto.gov
`571-272-7822
`
`Paper 10
`Entered: May 15, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICSCO., LTD.and
`SAMSUNG ELECTRONICS AMERICA,INC.,
`Petitioner,
`
`Vv.
`
`AFFINITY LABS OF TEXAS, LLC,
`Patent Owner.
`
`Case IPR2015-00821
`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
`DenyingInstitution ofInter Partes Review
`37 CFR. § 42.108
`
`
`571-272-7822
`
`Paper 10
`Entered: May 15, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICSCO., LTD.and
`SAMSUNG ELECTRONICS AMERICA,INC.,
`Petitioner,
`
`Vv.
`
`AFFINITY LABS OF TEXAS, LLC,
`Patent Owner.
`
`Case IPR2015-00821
`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
`DenyingInstitution ofInter Partes Review
`37 CFR. § 42.108
`
`
`
`IPR2015-00821
`Patent 8,532,641 B2
`
`I. INTRODUCTION
`
`SamsungElectronics Co., Ltd. and Samsung Electronics America,
`
`Inc. (collectively, “Petitioner”) filed a Petition (Paper 2, “Pet.” or “current
`Petition”) requesting interpartes review of claims 1-3, 5—7, 9, and 10 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 IPR2014-01181. The Motion for Joinder wasfiled
`within one month after institution oftrial in IPR2014-01181. See 37 C.F.R.
`
`§ 42.122(b). Patent Ownerfiled an Opposition to Petitioner’s Motion for
`
`Joinder (Paper 8, “Opp.’’), and Petitionerfiled a Reply (Paper9, ““Reply”).
`
`For the reasons that follow, we deny Petitioner’s Motion for Joinder.
`
`Wealso denythe current Petition and do notinstitute an inter partes review.
`
`Il. BACKGROUND
`
`Petitioner previously filed threepetitions requesting inter partes
`
`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 IPR2014-01182 we instituted
`review of claims 1—3 and 5—14; and in IPR2014-01184 we instituted review
`of claims 8, 11, 13, and 14. Thus, we haveinstituted review of every
`
`challenged claim of the ’641 patent in at least one proceeding and, for some
`
`claims, in three different proceedings.
`
`Petitioner now requests inter partes review of claims 1—3, 5—7, 9, and
`
`10 of the 641 patent using two new references, Ushiroda and Bork,in
`
`combination with references Ito, Haartsen, Rydbeck, Nokia, and Galensky,
`previously relied upon in 1PR2014-01 181. Pet. 14-46; Motion for Joinder
`2-3. Institution of inter partes review is barred under 35 U.S.C. § 315(b)
`
`whena petition is filed “more than 1 yearafter the date on which the
`
`
`
`IPR2015-00821
`Patent 8,532,641 B2
`
`petitioner, real party in interest, or privy of the petitioner is served with a
`
`complaint alleging infringement of the patent.” Petitioner concedesthatit
`was served with a complaint asserting infringementofthe 641 patent “more
`
`than one year” before the filing date of the current Petition, but contendsthat
`the current Petition is timely in view ofits Motion for Joinder. Pet. 7-8;
`
`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
`
`movingparty, bearing the burden to show that joinder is appropriate.
`
`35 U.S.C. § 315(c); 37 C.F.R. § 42.20(c).
`
`Il. ANALYSIS
`
`Petitioner contends that joinderis appropriate in this case because
`IPR2015-00821 and IPR2014-01181 involve the samepatent, parties, and
`
`counsel, and “Patent Ownerhas already responded to, and the Board has
`
`already analyzedforinstitution, prior petitions challenging every claim now
`
`at issue.in the new Petition.” Motion for Joinder 4. Petitioner further
`
`contendsthat it was not aware of Ushirodaat the timethepetition in
`IPR2014-01181 wasfiled and, in combination with Bork, the two references
`
`resolve anyconcerns the Board had with respect to the references cited in
`
`IPR2014-01181. Jd. at 3, S—6; Reply 5.
`
`Patent Ownerpresents two arguments against joinder. First, Patent
`
`Ownerasserts that the statute does not permit the sameparty to join a
`
`proceeding to whichit is already a party. Opp. 2-3 (citing Skyhawk Techs.
`
`LLC v. L&H Concepts, LLC, Case [PR2014-01485, slip op. at 3-4 (PTAB
`
`Mar. 21, 2015) (Paper 13)). Second, Patent Owner contendsthat the Motion
`
`for Joinder should be denied because Petitioner simply is seeking a “second
`
`
`
`IPR2015-00821
`Patent 8,532,641 B2
`
`bite at the apple,” without providing any reasonable explanation as to whyit
`
`did not makeits arguments with respect to the Ushiroda and Bork references
`in an earlier, timely-filed petition. Opp. 5-12.
`With respect to same party joinder, we recognize that different Board
`panels have cometo contrary positions on this issue. See, e.g., Tearget Corp.
`.v. Destination Maternity Corp., Case IPR2014-00508 (PTAB Feb.12, 2015)
`(Paper 31); Skyhawk, slip op. at 3-4. We need not address the issuehere,
`however, because, even if same party joinder is permissible, we are not
`
`persuadedthat joinder is appropriate in this case.
`
`With respect to the substance ofthe joinder request, we agree with
`
`Patent Ownerthat Petitioner provides no reasonedjustification for the delay
`
`in asserting the grounds based on Ushiroda and Bork. In particular,
`
`Petitioner articulates no persuasive reason why, using reasonable efforts, the
`Ushirodareference could not have been identified and relied upon in the
`earlier, timely-filed petitions. See Pet. 18-19 (noting that Ushiroda issued
`
`on April 3, 2001 as U.S. Patent No. 6,212,403); Opp. 12 (asserting that
`
`“Ushiroda is an easily located and accessible U.S. patent” and “Petitioners
`
`. because they relied on Bork in
`.
`were clearly aware of the Bork reference .
`other proceedings against the Patent Owner”). Thus, we do not considerthis
`to be a case of changed circumstances—suchas new claims being asserted
`during district court litigation or new threats of infringement—that would
`makejoinder an equitable remedy. See, e.g., Micro Motion, Inc. v. Invensys
`Sys., Inc., Case IPR2014-01409,slip op. at 14 (PTAB Feb. 18, 2015) (Paper
`14) (citing Microsoft Corp. v. Proxyconn, Inc., Case IPR2013-00109,slip
`op. at 3, S (PTAB Feb. 25, 2014) (Paper 15)).
`
`
`
`IPR2015-00821
`Patent 8,532,641 B2
`
`This appears, instead, to be a case where Petitioner seeks to use our
`
`Decision to Institute in IPR2014-01181 as a guide to remedy deficiencies in
`the earlier filed petition,i.e., a “second bite at the apple.” See Motion for
`Joinder 3 (noting that the Ushiroda reference was located “only after the
`
`institution decision in IPR2014-01181”). Interpreting our rules to allow
`
`Petitioner another chanceto argue the unpatentability of the challenged
`claims would not lead to the just, speedy, and inexpensiveresolution ofthe
`
`proceedings. See 37 C.F.R. § 42.1(b). To the contrary, joinder of the
`
`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 advancedstage of the proceeding in IPR2014—
`
`01181. Petitioner’s desire to present additional grounds directed to claims
`
`already the subject of three prior inter partes review petitions, and directed
`
`to claims currently under review in IPR2014-01182, does notjustify the
`
`additional burden on Patent Owner, the additional costs, or the use of
`judicial resources.
`|
`Based on the foregoing, we are not persuadedthat Petitioner has
`
`demonstrated that joinder is appropriate. Accordingly, we exercise our
`discretion and deny joinder of IPR2015-00821 with IPR2014-01181. The
`
`current Petition is, therefore, time-barred under 35 U.S.C. § 315(b).
`
`IV. ORDER
`
`In consideration of the foregoing,it is hereby:
`
`ORDEREDthatPetitioner’s Motion for Joinder is denied;
`
`FURTHER ORDEREDthatthe Petition is denied and notrialis
`
`instituted.
`
`
`
`IPR2015-00821
`Patent 8,532,641 B2
`
`PETITIONER:
`
`J. STEVEN BAUGHMAN
`GABRIELLEE. 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
`
`
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