Paper 11
`Trials@uspto.gov
`571-272-7822
`
`Date Entered: October 2, 2014
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC,
`Petitioner,
`
`v.
`
`ARENDI S.A.R.L.,
`Patent Owner.
`____________
`
`Case IPR2014-01142
`Patent 7,917,843 B2
`____________
`
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`TREVOR M. JEFFERSON, Administrative Patent Judges.
`
`
`BLANKENSHIP, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Inter Partes Review and Joinder
`37 C.F.R. §§ 42.108 and 42.122(b)
`
`
`I. BACKGROUND
`
`
`
`Samsung Electronics Co. Ltd., Samsung Electronics America, Inc.,
`
`and Samsung Telecommunications America, LLC (collectively,
`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`Date Entered: October 2, 2014
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and
`SAMSUNG TELECOMMUNICATIONS AMERICA, LLC,
`Petitioner,
`
`v.
`
`ARENDI S.A.R.L.,
`Patent Owner.
`____________
`
`Case IPR2014-01142
`Patent 7,917,843 B2
`____________
`
`
`Before HOWARD B. BLANKENSHIP, SALLY C. MEDLEY, and
`TREVOR M. JEFFERSON, Administrative Patent Judges.
`
`
`BLANKENSHIP, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Inter Partes Review and Joinder
`37 C.F.R. §§ 42.108 and 42.122(b)
`
`
`I. BACKGROUND
`
`
`
`Samsung Electronics Co. Ltd., Samsung Electronics America, Inc.,
`
`and Samsung Telecommunications America, LLC (collectively,
`
`
`
`
`
`
`IPR2014-01142
`Patent 7,917,843 B2
`
`
`“Petitioner”) filed a petition requesting inter partes review of claims 1, 2, 8,
`
`
`
`14–17, 20, 21, 23, 24, 30, 36–39, 42, and 43 of U.S. Patent No. 7,917,843
`
`B2 (“the ’843 patent”) (Ex. 1001) under 35 U.S.C. §§ 311–319. Paper 1
`
`(Petition, or “Pet.”). With the Petition, Petitioner filed a motion for joinder
`
`(Paper 3, “Mot.”), seeking to join with Apple Inc. v. Arendi S.A.R.L., Case
`
`IPR2014-00208. Arendi S.A.R.L. (“Patent Owner”) filed a preliminary
`
`response (Paper 10, “Prelim. Resp.”), as permitted by 37 C.F.R. § 42.107,
`
`and an opposition to the motion for joinder (Paper 7, “Opp,”). Petitioner
`
`filed a reply to the motion for joinder. Paper 8, “Reply.” We have
`
`jurisdiction under 35 U.S.C. § 314.
`
`
`
`For the reasons that follow, we deny the motion for joinder and do not
`
`institute an inter partes review as to any of the challenged claims of the ’843
`
`patent.
`
`
`Related Proceeding
`
`According to Petitioner, the ’843 patent is involved in the following
`
`lawsuit: Arendi S.A.R.L. v. Samsung Electronics Co., No. 12-1598 (D. Del.).
`
`Pet. 1. The ’843 patent has also been challenged in the following case:
`
`Apple Inc. v. Arendi S.A.R.L., Case IPR2014–00208 (PTAB).
`
`
`
`Prior Art
`
`
`
`
`
`US 5,859,636
`
`Jan. 12, 1999
`
`(Ex. 1005)
`
`Pandit
`
`
`
`2
`
`
`
`
`IPR2014-01142
`Patent 7,917,843 B2
`
`
`
`Asserted Ground of Unpatentability
`
`
`
`Petitioner asserts the following ground of unpatentability (Pet. 4):
`
`
`
`
`
`
`
`Reference
`
`Basis (35 U.S.C.)
`
`Claims
`
`
`Pandit
`
`
`
`
`§ 103(a)
`
`1, 2, 8, 14–17, 20, 21,
`23, 24, 30,
`36–39, 42, and 43
`
`II. ANALYSIS
`
`Decision on Motion for Joinder
`
`Petitioner submits a motion for joinder, under 37 C.F.R. § 42.122,
`
`with IPR2014-00208. The Motion for Joinder was filed within one month
`
`after institution of a trial in IPR2014-00208, as required by 37 C.F.R.
`
`§ 42.122(b).
`
`The AIA permits joinder of parties in like review proceedings. The
`
`statutory provision governing joinder of inter partes review proceedings is
`
`35 U.S.C. § 315(c), which provides:
`
`(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.
`
`35 U.S.C. § 315(b) bars institution of an inter partes review when the
`
`petition is filed more than one year after the petitioner (or the petitioner’s
`
`real party-in-interest or privy) is served with a complaint alleging
`
`infringement of the patent. 35 U.S.C. § 315(b); 37 C.F.R. § 42.101(b).
`
`However, the one–year time bar does not apply to a request for joinder. 35
`
`3
`
`
`
`
`IPR2014-01142
`Patent 7,917,843 B2
`
`
`U.S.C. § 315(b) (final sentence) (“The time limitation set forth in the
`
`
`
`preceding sentence shall not apply to a request for joinder under subsection
`
`(c).”); 37 C.F.R. § 42.122(b). Petitioner was served with a complaint
`
`asserting infringement of the ʼ843 patent more than one year prior to filing
`
`the Petition. Mot. 2. Thus, absent joinder of this proceeding with IPR2014-
`
`00208, the Petition would be barred.
`
`As a moving party, Petitioner has the burden of proof in establishing
`
`entitlement to the requested relief. 37 C.F.R. §§ 42.20(c), 42.122(b). A
`
`motion for joinder should: (1) set forth the reasons why joinder is
`
`appropriate; (2) identify any new grounds of unpatentability asserted in the
`
`petition; (3) explain what impact (if any) joinder would have on the trial
`
`schedule for the existing review; and (4) specifically address how briefing
`
`and discovery may be simplified. See e.g., Kyocera Corp. v. Softview LLC,
`
`Case IPR2013-00004, slip op. at 4 (PTAB Apr. 24, 2013) (Paper 15); FAQ
`
`H5 on the Board’s website at http://www.uspto.gov/ip/boards/bpai/prps.jsp.
`
`In its Motion, Petitioner asserts that joinder with IPR2014-00208 is
`
`appropriate because the instant Petition “involves the same patent, the same
`
`claims, the same prior art, and the same single instituted ground (the Pandit
`
`Ground)” as involved in IPR2014-00208. Mot. 5. Petitioner submits that
`
`the claim charts in the instant Petition are “substantially identical” to the
`
`claim charts contained in the IPR2014-00208 Petition with respect to the
`
`Pandit ground of unpatentability. Id. Petitioner submits, further, that the
`
`instant Petition “adopts the reasoning and rationale of the Board” and the
`
`IPR2014-00208 Petition such that no new issues are presented that might
`
`complicate or delay an existing proceeding. Id.
`
`4
`
`
`
`
`IPR2014-01142
`Patent 7,917,843 B2
`
`
`
`Petitioner in its Motion does not specify the differences in its Petition
`
`
`
`with respect to the Petition in IPR2014-00208. Nor does Petitioner indicate
`
`what it means by “substantially” identical claim charts. Further, arguments
`
`in the Petition (e.g., Pet. 22–23) rely on the testimony of Dr. Paul C. Clark
`
`(Ex. 1007), who did not offer testimony in IPR2014-00208, thus,
`
`introducing arguments that are not present in IPR2014-00208. This new
`
`evidence (and new arguments) would be introduced into a joint proceeding.
`
`Petitioner in its Motion does not suggest any specific changes to the
`
`schedule in IPR2014-00208. Petitioner, instead, merely alleges that “there
`
`appears to be no discernable impact on the trial schedule” with respect to the
`
`other proceeding. Mot. 7. Nor does Petitioner set forth how briefing and
`
`discovery may be simplified, other than suggesting that it have seven
`
`additional pages for papers filed. Id. at 8. Petitioner, further, submits no
`
`evidence that the petitioner in IPR2014-00208 has agreed to, or will, “work
`
`together” with Petitioner “to manage the questioning at depositions, and
`
`presentations at the hearing, to manage within the time normally allotted,
`
`and to avoid redundancy.” Id.
`
`Petitioner was served with a complaint by Patent Owner alleging
`
`infringement of the ’843 patent on December 4, 2012. Prelim. Resp. 9; Ex.
`
`2002 (Complaint); Ex. 2003 (Proof of Service). Assuming that Petitioner
`
`was not served with a complaint based on alleged infringement of the patent
`
`earlier than December 4, 2012, Petitioner could have filed a petition for inter
`
`partes review of the ’843 patent, prior to the expiration of the one-year time
`
`under 35 U.S.C. § 315(b), but did not do so. Rather, Petitioner filed its
`
`Petition on July 11, 2014. Petitioner indicates that “absent joinder, the joint
`
`stipulation and corresponding stay” ordered in the related district court
`
`5
`
`
`
`
`IPR2014-01142
`Patent 7,917,843 B2
`
`
`actions will preclude Petitioner from raising “an invalidity challenge based
`
`
`
`on the Pandit Ground” instituted in IPR2014-00208. Mot. 6. Petitioner has
`
`not provided a supporting exhibit containing the terms of “the joint
`
`stipulation and corresponding stay.” Petitioner has not demonstrated
`
`sufficiently that the circumstances of this case support joinder.
`
`Petitioner submits that it is presenting declaration evidence from its
`
`own expert “in the event that the petitioners in [IPR2014-00208] settle with
`
`the patent owner, and terminate out of the joined proceeding prior to a final
`
`written decision.” Mot. 8. Petitioner does not indicate, however, why
`
`another expert might be required in the event of settlement by the petitioner
`
`in IPR2014-00208. Petitioner argues, further, that it is submitting the
`
`declaration evidence from its own expert “to present non-redundant rationale
`
`further supporting the instituted ground.” Id. Petitioner does not explain
`
`what might constitute “non-redundant rationale,” nor does it indicate why
`
`such may be needed with respect to IPR2014-00208.
`
`Joinder may be authorized when warranted, but the decision to grant
`
`joinder is discretionary. 35 U.S.C. § 315(c); 37 C.F.R. § 42.122(b). When
`
`exercising that discretion, the Board is mindful that patent trial regulations,
`
`including the rules for joinder, must be construed to secure the just, speedy,
`
`and inexpensive resolution of every proceeding. 37 C.F.R. § 42.1(b). As
`
`indicated in the legislative history, the Board will determine whether to grant
`
`joinder on a case-by-case basis, taking into account the particular facts of
`
`each case. See 157 Cong. Rec. S1376 (daily ed. Mar. 8, 2011) (statement of
`
`Sen. Kyl) (when determining whether and when to allow joinder, the Office
`
`may consider factors including the breadth or unusualness of the claim
`
`scope, claim construction issues, and consent of the patent owner).
`
`6
`
`
`
`
`IPR2014-01142
`Patent 7,917,843 B2
`
`
`
`In view of the facts and circumstances of this case, Petitioner, as
`
`
`
`movant, has not met its burden to show why joinder is appropriate,
`
`consistent with the goal of securing the just, speedy, and inexpensive
`
`resolution of every proceeding. Petitioner’s motion for joinder is, thus,
`
`denied.
`
`
`
`
`
`Denial of Inter Partes Review
`
`Petitioner admits that it was served with a complaint alleging
`
`infringement of the ’843 patent more than one year prior to the date of filing
`
`of the instant Petition. Mot. 2. Accordingly, in view of the denial of the
`
`requested relief of joinder with IPR2014-00208, institution of an inter partes
`
`review as requested by Petitioner is barred by statute. 35 U.S.C. § 315(b);
`
`see also 37 C.F.R. § 42.101(b).
`
`
`
`III. CONCLUSION
`
`For the foregoing reasons, we deny Petitioner’s motion for joinder.
`
`Because Petitioner is barred by 35 U.S.C. § 315(b) from an inter partes
`
`review of the ’843 patent, we do not institute review as to any of the
`
`challenged claims.
`
`
`
`In consideration of the foregoing, it is
`
`IV. ORDER
`
`ORDERED that the motion for joinder is denied; and
`
`ORDERED that the petition is denied as to all challenged claims and
`
`no trial is instituted.
`
`7
`
`
`
`
`IPR2014-01142
`Patent 7,917,843 B2
`
`
`
`
`
`
`
`PETITIONER:
`
`Andrea Reister
`Gregory Discher
`Covington & Burling LLP
`areister@cov.com
`gdischer@cov.com
`
`PATENT OWNER:
`
`Robert M. Asher
`Bruce D. Sunstein
`John Stickevers
`Dorothy Wu
`Sunstein Kann Murphy & Timbers LLP
`rasher@sunsteinlaw.com
`bsunstein@sunsteinlaw.com
`jstickevers@sunsteinlaw.com
`dwu@sunsteinlaw.com
`
`8
`
`
`
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