Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 13
`Entered: April 8, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`T-MOBILE USA, INC. and T-MOBILE US, INC.,
`Petitioner,
`
`v.
`
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-00015
`Patent 5,915,210
`
`
`
`Before MIRIAM L. QUINN, MEREDITH C. PETRAVICK, and
`SCOTT A. DANIELS, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 C.F.R. § 42.108
`37 C.F R § 42.122(b)
`
`
`571-272-7822
`
`
`
`
`Paper 13
`Entered: April 8, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`T-MOBILE USA, INC. and T-MOBILE US, INC.,
`Petitioner,
`
`v.
`
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-00015
`Patent 5,915,210
`
`
`
`Before MIRIAM L. QUINN, MEREDITH C. PETRAVICK, and
`SCOTT A. DANIELS, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 C.F.R. § 42.108
`37 C.F R § 42.122(b)
`
`
`
`IPR2015-00015
`Patent 5,915,210
`
`
`I. INTRODUCTION
`T-Mobile USA, Inc. and T-Mobile US, Inc. (“T-Mobile”) filed a
`Petition to institute an inter partes review of claims 1, 10, and 19 of U.S.
`Patent No. 5,915,210 (“the ’210 patent”). Paper 1 (“Pet.”). The Petition was
`accorded a filing date of October 3, 2014. Paper 4. On February 20, 2015,
`T-Mobile filed a Motion for Joinder (“Mot.,” Paper 10) seeking to join this
`proceeding with Apple Inc., v. Mobile Telecommunications Technologies,
`LLC, Case IPR2014-01036 (the “Apple IPR”). Mot. 1. The Apple IPR
`concerns the same patent as at issue here, namely the ’210 patent. We
`instituted trial in the Apple IPR on January 22, 2015. See Apple Inc., v.
`Mobile Telecommunications Technologies, LLC, Case IPR2014-01036,
`Paper 9 (Decision instituting inter partes review).
`Patent Owner, Mobile Telecommunications Technologies, LLC
`(“MTel”), timely filed an Opposition (“Opp.,” Paper 11) to T-Mobile’s
`Motion for Joinder, and T-Mobile, in turn, filed a Reply (Paper 12).
`We have jurisdiction under 35 U.S.C. § 314, which provides that an
`inter partes review may not be instituted “unless . . . there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” For the reasons provided below, we
`(1) institute an inter partes review on all grounds, and (2) grant T-Mobile’s
`Motion for Joinder, subject to the conditions detailed herein.
`II. INSTITUTION OF INTER PARTES REVIEW
`The Petition in this proceeding asserts the same three grounds as those
`asserted in the Apple IPR. Pet. 4. We instituted a trial in the Apple IPR on
`2 grounds:
`
`2
`
`
`
`
`
`IPR2015-00015
`Patent 5,915,210
`
`
`1. Claims 1 and 10 as anticipated by Saalfrank; and
`2. Claim 19 as obvious over Saalfrank and Nakamura.
`Apple v. Mobile Telecommunications Technologies, LLC, Case IPR2014-
`01036, slip op. at 17 (PTAB Jan. 22, 2015) (Paper 9). We exercised our
`discretion in the Apple IPR not to institute a third ground, namely, claims 1,
`10, and 19 as obvious over Witsaman and Bingham. Id.
`MTel waived its Preliminary Response in the Apple IPR (Apple IPR,
`Paper 8), but did file a Preliminary Response in this proceeding. Paper 9.
`MTel’s Preliminary Response in this proceeding (Paper 12) did not provide
`persuasive arguments or evidence that alters our Decision instituting trial in
`the Apple IPR. In other words, institution of trial in this proceeding is based
`upon our consideration of essentially the same issues, directed to the same
`prior art references, already raised and considered in the Apple IPR.
`Accordingly, we institute an inter partes review in this proceeding on the
`same grounds as that on which we instituted trial in the Apple IPR.
`III. GRANT OF MOTION FOR JOINDER
`An inter partes review may be joined with another inter partes
`review, subject to the provisions of 35 U.S.C. § 315(c), which governs
`joinder of inter partes review proceedings:
`(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 parties review under
`section 314.
`
`As the moving party, T-Mobile bears the burden of proving that it is
`entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder
`3
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`IPR2015-00015
`Patent 5,915,210
`
`should: (1) set forth the reasons joinder is appropriate; (2) identify any new
`grounds of unpatentability asserted in the petition; and (3) explain what
`impact (if any) joinder would have on the trial schedule for the existing
`review. See Frequently Asked Question H5, http://www.uspto.gov/patents-
`application-process/appealing-patentdecisions/trials/patent-review-
`processing-system-prps-0 (last visited April 1, 2015).
`The Petition in this proceeding has been accorded a filing date of
`October 3, 2014 (Paper 4), and the Motion for Joinder was filed on February
`20, 2015. (Mot.). Thus, the Motion for Joinder in this proceeding satisfies
`the requirement of being filed within one month of the date, January 22,
`2015, on which we instituted a trial in the Apple IPR. See 37 C.F.R. §
`42.122(b) (Any request for joinder must be filed, as a motion under § 42.22,
`no later than one month after the institution date of any inter partes review
`for which joinder is requested.).
`In its Motion for Joinder, T-Mobile contends that its “joinder request
`is directed at the same claims, prior art, grounds of unpatentability, and
`arguments instituted in the Apple IPR.” Mot. 2. Specifically, T-Mobile
`requests that we join only the first two grounds with the Apple IPR, and
`permit the present proceeding to continue with respect to the third ground.
`Id. Keeping in mind that T-Mobile only requests the first two already
`instituted grounds be joined in the Apple IPR, T-Mobile represents that
`“joinder is appropriate because it will promote the efficient and consistent
`resolution of the validity of a single patent, will not prejudice the parties to
`the Apple IPR, and will eliminate duplicative filings and discovery as to the
`instituted grounds.” Id. at 2–3. Based on these representations, T-Mobile
`contends that, in the event of joinder, MTel would not be prejudiced, and the
`
`4
`
`
`
`
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`IPR2015-00015
`Patent 5,915,210
`
`Apple IPR schedule would not be affected because the first two “grounds
`contain[] the virtually identical arguments and claim construction sought in
`the Apple Petition.” Id. at 7.
`MTel opposes the Motion for Joinder, arguing that T-Mobile has
`provided no evidence of Apple’s position with respect to joinder or
`corroboration that Apple and T-Mobile are prepared to work together. Opp.
`1–2. Further, MTel argues that it filed a Preliminary Response in the present
`proceeding, but not in the Apple IPR. Id. at 2.
`Based on the present record, we agree that joinder with the Apple IPR
`would promote the efficient resolution of these proceedings. In its Motion
`for Joinder, T-Mobile notes that both proceedings involve the same prior art,
`the same claims, and essentially the same arguments and evidence. T-
`Mobile has brought the same challenges in this proceeding, as in the Apple
`IPR, and joinder simplifies addressing the overlap of the first two grounds.
`We note that this proceeding was filed before we instituted a trial in the
`Apple IPR. Prejudice to MTel in this regard is minimal, because T-Mobile
`did not have the benefit of our analysis and decision for this proceeding. T-
`Mobile’s Petition is, therefore, an independent presentation of the same prior
`art and related evidence addressing the same claims. To the extent there are
`differences in Petitioner’s evidence and arguments regarding claim
`construction and the substantive application of the prior art to the claims,
`resolving these differences in a single proceeding is the most efficient course
`of action. Substantive issues in this IPR would not be unduly complicated
`by joining with the Apple IPR because joinder merely introduces the same
`grounds presented originally in the Apple IPR where all of the prior art is of
`record. In addition, scheduling of the joined proceeding, as set forth below,
`
`5
`
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`
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`IPR2015-00015
`Patent 5,915,210
`
`will occur so as to minimize impact to MTel, yet maintain the current DUE
`DATE 7 (October 15, 2015) for oral hearing. MTel will be able to address
`the overlapping grounds in a single proceeding.
`IV. SCHEDULING
`The Scheduling Order in the Apple IPR (Paper 10) sets the oral
`hearing for October 15, 2015. Final hearing and final determination shall
`not be delayed by joining the two proceedings. In view of our joinder order
`below, DUE DATE 1 is changed to May 21, 2015. The remaining DUE
`DATES are unchanged. The parties may stipulate to different dates for DUE
`DATES 2 through 5 (earlier or later, but no later than DUE DATE 6). A
`notice of the stipulation, specifically identifying the changed due dates, must
`be promptly filed. The parties may not stipulate to an extension of DUE
`DATES 1, 6, and 7.
`
`
`V. CONCLUSION
`Based on the record before us, we institute an inter partes review in
`IPR2015-00015 and grant T-Mobile’s motion to join that proceeding to
`IPR2014-01036.
`
`
`VI. ORDER
`
`
`In consideration of the foregoing, it is hereby:
`ORDERED that a trial is instituted as to the challenged claims of the
`’210 patent on the following grounds:
`Claims 1 and 10 as anticipated by Saalfrank; and
`Claim 19 as obvious over Saalfrank and Nakamura;
`FURTHER ORDERED that T-Mobile’s Motion for Joinder with
`respect to the two grounds based on Saalfrank is granted, T-Mobile’s
`
`6
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`
`
`IPR2015-00015
`Patent 5,915,210
`
`request to maintain the third ground as a separate proceeding is denied, and
`that all instituted grounds in this proceeding are joined with IPR2014-01036;
`FURTHER ORDERED that the Amended Scheduling Order entered
`in place for IPR2014-01036 (Paper 10), and entered concurrently with this
`decision, does not change the due dates, except for DUE DATE 1, and shall
`govern the joined proceedings;
`FURTHER ORDERED that, unless given authorization by the Board,
`T-Mobile is not permitted to file papers, engage in discovery, or participate
`in any deposition or oral hearing in IPR2014-01036. T-Mobile, however, is
`permitted to appear in IPR2014-01036 so that it may receive notification of
`filings and may attend depositions and oral hearing. Should T-Mobile
`believe it necessary to take any further action, T-Mobile should request a
`conference call to obtain authorization from the Board;
`FURTHER ORDERED that IPR2015-00015 is terminated under
`37 C.F.R. § 42.72 and all further filings in the joined proceeding are to be
`made in IPR2014-01036;
`FURTHER ORDERED that a copy of this Decision be entered into
`the file of IPR2014-01036; and
`FURTHER ORDERED that the case caption in IPR2014-01036 shall
`be changed to reflect joinder with this proceeding in accordance with the
`attached example.
`
`7
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`
`
`IPR2015-00015
`Patent 5,915,210
`
`
`
`For PETITIONER:
`Pierre J. Hubert
`Steven J. Pollinger
`McKOOL SMITH, P.C.
`phubert@mckoolsmith.com
`spollinger@mckoolsmith.com
`01048-21IP403@McKoolSmith.com
`
`For PATENT OWNER:
`John R. Kasha
`Kelly R. Kasha
`KASHA LAW LLC
`John.Kasha@KashaLaw.com
`Kelly.Kasha@KashaLaw.com
`
`
`
`
`8
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`
`
`
`
`IPR2015-00015
`Patent 5,915,210
`
`
`
`
`Example Case Caption for Joined Proceeding
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`and
`T-MOBILE USA, INC. and T-MOBILE US, INC.,
`Petitioners,
`
`v.
`
`MOBILE TELECOMMUNICATIONS TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2015-01036
`Patent 5,915,210
`
`9
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