Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper No. 14
`Entered: June 17, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`WINTEK CORPORATION,
`Petitioner,
`
`v.
`
`TPK TOUCH SOLUTIONS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2013-00567
`Case IPR2014-00541
`Patent 8,217,902 B2
`_______________
`
`
`Before JOSIAH C. COCKS and RICHARD E. RICE, Administrative Patent
`Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`
`DECISION
`Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`Paper No. 14
`Entered: June 17, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`WINTEK CORPORATION,
`Petitioner,
`
`v.
`
`TPK TOUCH SOLUTIONS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2013-00567
`Case IPR2014-00541
`Patent 8,217,902 B2
`_______________
`
`
`Before JOSIAH C. COCKS and RICHARD E. RICE, Administrative Patent
`Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`
`DECISION
`Motion for Joinder
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2014-00541
`Patent 8,217,902 B2
`
`
`I. INTRODUCTION
`
`
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`Petitioner, Wintek Corporation (“Wintek”), filed a Motion for Joinder in
`
`connection with inter partes review proceeding IPR2014-00541 pursuant to
`
`37 C.F.R. §§ 22 and 122(b). Paper 3. In the Motion, Wintek requests joinder of
`
`IPR2014-00541 with either related proceeding IPR2013-00567 or related
`
`proceeding IPR2013-00568. All of the noted proceedings involve U.S. Patent No.
`
`8,217,902 B2 (“the ’902 patent”), and each involves the same parties.
`
`
`
`In a separate “Joint Motion To Modify Schedule” (e.g., IPR2014-00541,
`
`Paper 10), the parties jointly requested revised scheduling for the IPR2013-00567
`
`and IPR2013-00568 proceedings. The parties also indicated that, in the event that
`
`trial is instituted in IPR2014-00541, the parties will follow the scheduling set forth
`
`in IPR2013-00567 and IPR2013-00568. E.g., IPR2014-00541, Paper 10, 2. The
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`Joint Motion further indicates that Patent Owner, TPK Touch Solutions Inc.
`
`(“TPK”), does not oppose Wintek’s Motion for Joinder should the Board institute
`
`trial in IPR2014-00541. Id.
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`
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`For the reasons set forth below, we grant Wintek’s Motion for Joinder, to the
`
`extent that we join IPR2014-00541 with IPR2013-00567.
`
`
`
`The statutory provision governing joinder of inter partes review proceedings
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`II. DISCUSSION
`
`is 35 U.S.C. § 315(c), which reads as follows:
`
`(c) JOINDER.--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.
`
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`Case IPR2014-00541
`Patent 8,217,902 B2
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`
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`In a Decision on Institution of Inter Partes Review (IPR2014-00541, Paper
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`13) entered concurrently with this Decision on Motion for Joinder, we determine to
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`institute trial of claims 20, 23, 28, and 30 of the ’902 patent. In that regard, we
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`institute trial on the basis that Wintek has shown a reasonable likelihood of
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`prevailing in its assertion that those claims are unpatentable over Binstead1,
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`Miller2, and Honeywell3. Paper 13, 25. The ’902 patent is involved in each of
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`IPR2014-00541 and IPR2014-00567, as noted above, and there is overlap in the
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`cited prior art in the two proceedings. Wintek’s Motion for Joinder was filed
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`timely, and, as noted above, is not opposed by TPK. We also do not discern
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`prejudice to either party in joining the IPR2014-00541 and IPR2014-00567
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`proceedings. Accordingly, we conclude that the record reflects factors favorable to
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`granting Wintek’s Motion for Joinder.
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`
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`As noted above, the parties have agreed to follow the scheduling set forth in
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`IPR2013-00567, in connection with IPR2014-00541. The scheduling is set forth in
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`the “Revised Due Date Appendix” that is included with the Decision on Joint
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`Motion to Modify Schedule (IPR2013-00567, Paper 21). As set forth in that
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`Decision, TPK’s Patent Owner response to the petition and any motion to amend
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`the patent is due June 20, 2014 (Due Date 1). Due Date 1 is approaching rapidly.
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`Should TPK need additional time to file its Patent Owner response, the parties are
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`reminded that, as was set forth in the original Scheduling Order (IPR2013-00567,
`
`Paper 11), the parties may stipulate to changes in Due Dates 1-3 without
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`authorization from the Board. The parties are encouraged to work together in that
`
`
`1 US 6,137,427 issued October 24, 2000 (Ex. 1005).
`2 US 5,374,787, issued December 20, 1994 (Ex. 1008).
`3 Japanese Patent Application 61-84729, published April 30, 1986 (Ex. 1010)—
`translation Ex. 1011.
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` 3
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`Case IPR2014-00541
`Patent 8,217,902 B2
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`regard. In the event that TPK needs more time, and if the parties cannot stipulate
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`to changes in Due Dates 1-3, the parties should arrange a conference call with the
`
`Board.
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`III. ORDER
`
`
`
`For the foregoing reasons given, it is:
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`ORDERED that Wintek’s Motion for Joinder is granted;
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`FURTHER ORDERED that this proceeding (IPR2014-00541) is joined with
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`IPR2014-00567;
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`FURTHER ORDERD that the Schedule as set forth in the “Revised Due
`
`Date Appendix” that is included with the Decision on Joint Motion to Modify
`
`Schedule (IPR2013-00567, Paper 21) shall hereafter govern the schedule of the
`
`joined proceedings;
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`FURTHER ORDERED that the IPR2014-00541 proceeding is terminated
`
`under 37 C.F.R. § 42.72 and all further filings in the joined proceedings shall be
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`made in IPR2013-00567; and
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`FURTHER ORDERED that the case caption in IPR2012-00567 shall be
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`changed to reflect the joinder with this proceeding in accordance with the attached
`
`example.
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`Case IPR2014-00541
`Patent 8,217,902 B2
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`PETITIONER:
`
`Joseph E. Palys
`Naveen Modi
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
`Joseph.palys@finnegan
`Naveen.modi@finnegan.com
`
`
`
`PATENT OWNER:
`
`Joseph Richetti
`BRYAN CAVE LLP
`joe.richetti@bryancave.com
`
`
`David Bilsker
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`davidbilsker@quinnemanuel.com
`
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`Case IPR2014-00541
`Patent 8,217,902 B2
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`WINTEK CORPORATION,
`Petitioner,
`
`v.
`
`TPK TOUCH SOLUTIONS, INC.,
`Patent Owner.
`_______________
`
`Case IPR2013-00567
`Case IPR2014-00541
`Patent 8,217,902 B2
`_______________
`
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