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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`ARENDI S.A.R.L.,
`Patent Owner.
`
`Case No. To Be Assigned
`Patent No. 7,917,843
`
`MOTION FOR JOINDER UNDER 35 U.S.C. § 315(C)
`AND 37 C.F.R. §§ 42.22 AND 42.122(B)
`
` DC: 5374454-1
`
`
`
`Docket No. 032449.0031-US07
`
`
`Inter Partes Review of U.S. Pat. No. 7,917,843
`
`I. STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`
`
`Petitioner Samsung Electronics Co., Ltd. (“Samsung” or “Petitioner”)
`
`respectfully requests joinder pursuant to 35 U.S.C. § 315(c) and 37 C.F.R.§
`
`42.122(b) of the above-captioned inter partes review (“Samsung IPR”) with the
`
`pending inter partes review concerning the same patent captioned Apple Inc.,
`
`Google Inc., and Motorola Mobility LLC v. Arendi S.A.R.L., Case No. IPR2014-
`
`00208 (“Apple/Google IPR”), which was instituted on June 11, 2014 (Paper No.
`
`8). Joinder is appropriate because it will promote efficient resolution of the
`
`validity of the involved patent, and it will not prejudice the parties to the
`
`Apple/Google IPR.
`
`
`
`This Motion for Joinder is timely filed under 37 C.F.R. §§ 42.22 and
`
`42.122(b) as it is submitted no later than one month after the June 11, 2014
`
`institution date of the Apple/Google IPR.
`
`II. STATEMENT OF MATERIAL FACTS
`
`a. On December 2, 2013, petitioners in the Apple/Google IPR
`
`requested inter partes review of claims 1-44 of U.S. Patent No.
`
`7,917,843 (“the ‘843 patent”), citing four grounds of
`
`unpatentability.
`
`b. The Patent Owner (purported to be Arendi S.A.R.L.) submitted
`
`a preliminary response on March 12, 2014 (Paper No. 6).
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`
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`- 1 -
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`Docket No. 032449.0031-US07
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`Inter Partes Review of U.S. Pat. No. 7,917,843
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`c. In a decision dated June 11, 2014 (Paper No. 8), the Board
`
`instituted inter partes review on one of the four requested
`
`grounds, i.e., claims 1, 2, 8, 14-17, 20, 21, 23, 24, 30, 36-39,
`
`42, and 43 as being rendered obvious under 35 U.S.C. § 103(a)
`
`by Pandit (U.S. Patent No. 5,859,636) (“the Pandit Ground”).
`
`d. The Samsung petition that accompanies the present Motion for
`
`Joinder includes only the single ground of unpatentability (the
`
`Pandit Ground) that was instituted in the Apple/Google IPR for
`
`the ‘843 patent.
`
`e. The claim charts in the Samsung petition that accompanies the
`
`present Motion for Joinder are substantially identical to the
`
`claim charts contained in the Apple/Google IPR petition for the
`
`Pandit Ground.
`
`f. The real parties-in-interest for the Samsung IPR were served
`
`with a complaint alleging infringement of the ‘843 patent more
`
`than one year prior to the date of filing the petition in the
`
`Samsung IPR.
`
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`
`
`
`The Leahy-Smith America Invents Act (“AIA”) explicitly provides for
`
`joinder of inter partes review (“IPR”) proceedings. The statutory provision
`
`
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`- 2 -
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`
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`Docket No. 032449.0031-US07
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`governing joinder of inter partes review proceedings is 35 U.S.C. § 315(c) that
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`Inter Partes Review of U.S. Pat. No. 7,917,843
`
`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.
`Although the AIA establishes a one-year bar from the date of service of a
`
`
`
`complaint alleging infringement for requesting inter partes review, the one-year
`
`bar does not apply to a request for joinder under Section 315(c). In particular,
`
`Section 315(b) reads as follows (emphasis added):
`
`(b) PATENT OWNER’S ACTION.--An inter partes
`review may not be instituted if the petition requesting the
`proceeding is filed more than 1 year after the date on
`which the petitioner, real party in interest, or privy of the
`petitioner is served with a complaint alleging
`infringement of the patent. The time limitation set forth
`in the preceding sentence shall not apply to a request for
`joinder under subsection (c).
`
`
`
`- 3 -
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`
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`Docket No. 032449.0031-US07
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`Further, in the case of joinder, the Board has the discretion to adjust the time
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`Inter Partes Review of U.S. Pat. No. 7,917,843
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`period for issuing a final determination in an inter partes review. 35 U.S.C. §
`
`316(a)(11); 37 C.F.R. § 42.100(c).
`
`
`
`In exercising its discretion to grant joinder, the Board considers the impact
`
`of substantive and procedural issues on the proceedings, as well as other
`
`considerations, while being “mindful that patent trial regulations, including the
`
`rules for joinder, must be construed to secure the just, speedy, and inexpensive
`
`resolution of every proceeding.” See Dell Inc. v. Network-1 Security Solutions,
`
`Inc., Case IPR2013-00385, Paper No. 17, July 29, 2013 at 3. The Board should
`
`“also take into account the policy preference for joining a party that does not
`
`present new issues that might complicate or delay an existing proceeding.” Id. at
`
`10.1 Under this framework, joinder of the Samsung IPR with the Apple/Google
`
`IPR is appropriate.
`
`
`
`“A motion for joinder should: (1) set forth the reasons why joinder is
`
`appropriate; (2) identify any new grounds of unpatentability asserted in the
`
`
`1 Citing 157 Cong. Rec. S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (“The
`
`Office anticipates that joinder will be allowed as of right - if an inter partes review is
`
`instituted on the basis of a petition, for example, a party that files an identical petition
`
`will be joined to that proceeding, and thus allowed to file its own briefs and make its
`
`own arguments.”) (emphasis added).
`
`
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`- 4 -
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`
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`Docket No. 032449.0031-US07
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`petition; (3) explain what impact (if any) joinder would have on the trial schedule
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`Inter Partes Review of U.S. Pat. No. 7,917,843
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`for the existing review; and (4) address specifically how briefing and discovery
`
`may be simplified.” Id. at 4. Each of these four factors is addressed in turn below.
`
`
`
`
`
`
`a.
`
`
`Factor (1): Joinder is Appropriate in Accordance with the
`Statutory Framework
`
`The Board has authority under the statute to join a properly-filed second IPR
`
`petition to an instituted IPR proceeding. The present Motion for Joinder is timely
`
`filed under § 42.122(b), and the time period set forth in § 42.101(b) does not apply
`
`to the Samsung IPR petition because it is accompanied by the present Motion for
`
`Joinder. 37 C.F.R. § 42.122(b).
`
`
`
`The Samsung IPR petition involves the same patent, the same claims, the
`
`same prior art, and the same single instituted ground (the Pandit Ground) as
`
`involved in the Apple/Google IPR. The claim charts in the Samsung IPR petition
`
`that accompanies the present Motion for Joinder are substantially identical to the
`
`claim charts contained in the Apple/Google IPR petition for the Pandit Ground. As
`
`to the Pandit Ground on which trial in the Apple/Google IPR has been instituted,
`
`the Samsung IPR petition does not present new issues that might complicate or
`
`delay an existing proceeding. Rather, the Samsung IPR Petition adopts the
`
`reasoning and rationale of the Board and the Apple/Google IPR petition as to the
`
`Pandit Ground.
`
`
`
`
`
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`- 5 -
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`
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`Docket No. 032449.0031-US07
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`
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`Moreover, absent joinder, the joint stipulation and corresponding stay
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`Inter Partes Review of U.S. Pat. No. 7,917,843
`
`ordered in the co-pending litigations2 will preclude Samsung from raising in the
`
`District Court an invalidity challenge based on the Pandit Ground instituted in the
`
`Apple/Google IPR. Therefore, joinder is appropriate here to provide Samsung
`
`with the opportunity to participate in the Apple/Google IPR on the instituted Pandit
`
`Ground because Samsung can no longer do so in the District Court proceedings.
`
`
`
`Although the declaration evidence accompanying the Samsung IPR petition
`
`is from a different expert than that in the Apple/Google IPR, the evidence itself
`
`presents no new issues that would complicate or delay the proceeding.3 Moreover,
`
`
`2 Arendi S.A.R.L. v. Samsung Electronics Co., Ltd., Samsung Electronics America,
`
`Inc., and Samsung Telecommunications America, LLC (Civil Action No. 12-1598
`
`(LPS); the “Samsung Litigation”). Other defendants in the Delaware litigations
`
`include LG Electronics, Inc. (C.A. No. 12-1595), Apple Inc. (C.A. No. 12-1596),
`
`Blackberry Limited (C.A. No. 12-1597), Nokia Corp. (C.A. No. 12-1599), HTC
`
`Corp. (C.A. No. 12-1600), Motorola Mobility LLC (C.A. No. 12-1601), Sony
`
`Mobile Communications (USA) Inc. (C.A. No. 12-1602), Google Inc., (C.A. No. 13-
`
`0919), and Yahoo! Inc., (C.A. No. 13-0920).
`
`3 Petitioner is presenting declaration evidence from its own expert in the event that
`
`the petitioners in the Apple/Google IPR settle with the patent owner, and terminate
`
`
`
`- 6 -
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`
`
`Docket No. 032449.0031-US07
`
`as discussed in more detail below with respect to factor (4), Samsung proposes
`
`Inter Partes Review of U.S. Pat. No. 7,917,843
`
`specific ways in which briefing and discovery are simplified in order not to delay
`
`the proceedings or otherwise prejudice the Patent Owner or the petitioners in the
`
`Apple/Google IPR in any discernable way.
`
`
`
`
`
`b.
`
`Factor (2): No New Grounds of Unpatentability
`
`As noted above, the Samsung IPR petition involves the same patent, the
`
`same claims, the same prior art, and the same single instituted ground (the Pandit
`
`Ground) as involved in the Apple/Google IPR. Accordingly, the Samsung IPR
`
`petition does not present any new ground of unpatentability.
`
`
`
`
`
`
`c.
`
`
`Factor (3): Joinder Would Have No Discernable Impact on the
`Trial Schedule for the Apple/Google IPR
`
`Given that the Samsung IPR petition involves the same patent, the same
`
`claims, the same prior art, and the same single instituted ground (the Pandit
`
`Ground) as involved in the Apple/Google IPR, and that Samsung proposes specific
`
`ways in which briefing and discovery are simplified (see Factor (4) below), there
`
`appears to be no discernable impact on the trial schedule for the Apple/Google
`
`IPR. As explained in more detail below for Factor (4), Samsung proposes specific
`
`procedures to simply briefing and discovery that should avoid any material impact
`
`
`out of the joined proceeding prior to a final written decision, and to present non-
`
`redundant rationale further supporting the instituted ground.
`
`
`
`- 7 -
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`
`
`Docket No. 032449.0031-US07
`
`on the trial schedule, or any prejudice to the parties involved in the Apple/Google
`
`Inter Partes Review of U.S. Pat. No. 7,917,843
`
`IPR.
`
`
`
`
`
`c.
`
`Factor (4): Procedures to Simplify Briefing and Discovery
`
`Given that Apple/Google and Samsung will be addressing the identical
`
`ground (the Pandit Ground) for the identical claims, the Board may adopt
`
`procedures similar to those adopted in Cases IPR2013-00385 and IPR2013-00356.
`
`In those cases, the Board ordered the petitioners to file consolidated filings, for
`
`which the first petitioner (here, Apple/Google) was responsible, and allowed the
`
`new petitioner (here, Samsung) to file seven additional pages with corresponding
`
`additional responsive pages allowed to the Patent Owner. IPR2013-00385, Paper
`
`17 at 8; IPR2013-00256, Paper 10 at 8-9. This procedure would minimize any
`
`complication or delay caused by joinder, as the Board recognized in those cases.
`
`
`
`Apple/Google and Samsung can work together to manage the questioning at
`
`depositions, and presentations at the hearing, to manage within the time normally
`
`allotted, and to avoid redundancy. IPR2013-00385, Paper 17 at 9; IPR2013-00256,
`
`Paper 10 at 9-10. Samsung is presenting declaration evidence from its own expert in
`
`the event that the petitioners in the Apple/Google IPR settle with the patent owner,
`
`and terminate out of the joined proceeding prior to a final written decision, and to
`
`present non-redundant rationale further supporting the instituted ground. While
`
`Apple/Google and Samsung rely upon testimony from different experts in their
`
`
`
`- 8 -
`
`
`
`Docket No. 032449.0031-USO7
`
`Inter Partes Review of US. Pat. No. 7,917,843
`
`respective petitions, Samsung will work with Apple/Google to coordinate on expert
`
`testimony to minimize redundancy.
`
`IV. CONCLUSION
`
`For the foregoing reasons, Samsung respectfully requests that its Petition for
`
`Inter Partes Review of US. Patent No. 7,917,843 be instituted, and that the
`
`proceeding be joined with Apple Inc, Google Inc., and Motorola Mobility LLC v.
`
`Arendi S.A.R.L., Case No. IPR2014-00208.
`
`Although Samsung believes that no fee is required for the present Motion for
`
`Joinder, the Director is hereby authorized to charge any fees that may be required to
`
`Deposit Account No. 50-0740.
`
`Date: July 11, 2014
`
`Respectfully submitted,/\\
`I
`
`”17/
`~/cKE7’:«
`
`
`Andrea G. Reiste
`
`By
`
`0.: 36,253
`Registration
`Gregory S. Discher
`Registration No. 42,488
`COVINGTON & BURLING LLP
`
`1201 Pennsylvania Avenue, NW
`Washington, DC 20004-2401
`(202) 662-6000
`Attorneys for Petitioner
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6, I hereby certify that on this 11th day of July 2014, the
`
`foregoing Motion for Joinder Under 35 U.S.C. § 315(0) and 37 C.F.R. §§ 42.22 and
`
`42.122(b) was served by FedEx, a means at least as fast and reliable as EXPRESS
`
`MAIL®, on the following correspondence address of record for patent owner.
`
`Sunstein Kann Murphy & Timbers LLP
`125 Summer Street
`
`Boston MA 02110-1618
`
`A courtesy copy was provided to Counsel for Petitioners in IPR2014-00208:
`
`David L. Fehrman
`
`Mattew A. Smith
`
`dfehrman@mofo.com
`Mehran Arjomand
`marj omand@mofo.com
`Morrison & Foerster LLP
`707 Wilshire Blvd., Suite 6000
`Los Angeles, CA 90017
`
`Date: July 11,2014
`
`smith@tumerboyd.com
`Zhuanjia Gu
`gu@turnerbody.com
`Turner Boyd LLP
`2570 W. El Camino Real, Suite 380
`Mountain View, CA 94040../""‘"‘\
`).,
`czc/Cy ”
`
`
`Registration No.: 36,253
`
`
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