Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 12
`Entered: March 6, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`E-WATCH, INC. and E-WATCH CORPORATION,
`Patent Owner.
`
`
`Case IPR2015-00541
`Patent 7,365,871 B2
`
`
`
`Before JAMESON LEE, GREGG I. ANDERSON, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`CLEMENTS, 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 12
`Entered: March 6, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`E-WATCH, INC. and E-WATCH CORPORATION,
`Patent Owner.
`
`
`Case IPR2015-00541
`Patent 7,365,871 B2
`
`
`
`Before JAMESON LEE, GREGG I. ANDERSON, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`CLEMENTS, 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)
`
`
`
`
`
`
`
`IPR2015-00541
`Patent 7,365,871 B2
`
`
`I.
`
`INTRODUCTION
`
`Samsung Electronics Co., Ltd. and Samsung Electronics America,
`
`Inc. (“Samsung” or “Petitioner”) filed a Petition requesting inter partes
`
`review of U.S. Patent No. 7,365,871 B2 (Ex. 1001, “the ’871 patent”).
`
`Paper 1 (“Pet.”). Concurrently with its Petition, Petitioner filed a Motion for
`
`Joinder. Paper 3 (“Mot.”). The Motion for Joinder seeks to join this
`
`proceeding with HTC Corp. v. e-Watch, Inc., IPR2014-00987 (hereinafter
`
`“HTC IPR”). Mot. 1. (“Mot.”). E-Watch, Inc. and e-Watch Corporation
`
`(“Patent Owner”) indicates that it does not oppose the Motion for Joinder.
`
`Paper 9. Patent Owner did not file a Preliminary Response.
`
`Petitioner in the HTC IPR, HTC Corporation and HTC America, Inc.
`
`(“HTC”) filed a Notice in Response to Motion for Joinder stating HTC did
`
`not oppose joinder based on the representation from Petitioner that it would
`
`have limited participation in the HTC IPR. HTC IPR, Paper 15.
`
`For the reasons explained below, we institute an inter partes review of
`
`claims 1–8 and 12–15 of the ’871 patent and grant Petitioner’s Motion for
`
`Joinder.
`
`II.
`
`INSTITUTION OF INTER PARTES REVIEW
`
`The Petition asserts the same grounds as those on which we instituted
`
`review in the HTC IPR. Pet. 1; Mot. 5–6. On December 9, 2014, we
`
`instituted an inter partes review of claims 1–8 and 12–15 under 35 U.S.C.
`
`§ 103 as obvious over the combination of Wilska1 and Yamagishi-114.2
`
`HTC IPR, Paper 6, 11.
`
`
`
`1 GB 2289555A, issued Nov. 22, 1995 (Ex. 1002, “Wilska”)
`
`2
`
`
`
`IPR2015-00541
`Patent 7,365,871 B2
`
`
`In view of the challenges in the instant Petition and the petition in the
`
`HTC IPR, we institute an inter partes review in this proceeding on the same
`
`ground on which we instituted in the HTC IPR.
`
`III. GRANT OF MOTION FOR JOINDER
`
`The Petition in this proceeding has been accorded a filing date of
`
`January 7, 2015, and, thus, satisfies the requirement that joinder be requested
`
`no later than one month after the institution date of the HTC IPR. See 37
`
`C.F.R. § 42.122(b); Paper 6 (Notice of Filing Date Accorded to Petition).
`
`The Petition in this proceeding sets forth the same ground and
`
`combination of prior art, the same witness declaration, and the same
`
`arguments considered by the Board in instituting trial in the HTC IPR. Mot.
`
`5–6. Per our Order dated February 4, 2015 (Paper 8), Petitioner filed a
`
`redline identifying all differences between the Petition in the instant
`
`proceeding and the Petition in the HTC IPR. Ex. 1010. Petitioner represents
`
`that the Petitions differ only in that the Petition in this case applies claim
`
`constructions adopted by the Board in the Decision on Institution (“Dec.
`
`Inst.”) in the HTC IPR. Mot. 4, n.3 (citing Ex. 1009 at 5–7). We reviewed
`
`the redlined copy of the Petition (Exhibit 1010) and confirmed that the
`
`differences between the two Petitions do not introduce new issues.
`
`Petitioner represents in its Motion for Joinder that it “is willing to be
`
`limited to separate filings, if any, of a reasonable number of pages (e.g.,
`
`seven pages) directed only to points of disagreement with HTC with the
`
`understanding that it will not be permitted any separate arguments in
`
`
`
`2 JP H06-176114, issued June 24, 1994 (Ex. 1003, “Yamagishi-114”)
`
`3
`
`
`
`IPR2015-00541
`Patent 7,365,871 B2
`
`furtherance of those advanced in HTC’s consolidated filings.” Mot. 7.
`
`Petitioner represents that “no additional depositions will be needed and
`
`depositions will be completed within ordinary time limits.” Id. Petitioner
`
`represents that it will “coordinate with HTC to consolidate filings, manage
`
`questioning at depositions, manage presentations at the hearing, ensure that
`
`briefing and discovery occur within the time normally allotted, and avoid
`
`redundancies.” HTC does not oppose Samsung’s Motion for Joinder of this
`
`proceeding with the HTC IPR “based on the agreement made by Samsung to
`
`the Board during a conference call on February 3, 2015 for limited
`
`participation by Samsung in the IPR2014-00987 proceeding.” HTC IPR,
`
`Paper 15, 1.
`
`Under the circumstances, we conclude Samsung has demonstrated
`
`that joinder will not unduly complicate or delay the HTC IPR, and therefore,
`
`we grant Samsung’s Motion for Joinder to join this proceeding with the
`
`HTC IPR.
`
`Accordingly, it is
`
`IV. ORDER
`
`ORDERED that IPR2015-00541 is instituted and joined with
`
`IPR2014-00987;
`
`FURTHER ORDERED that the ground on which IPR2014-00987 was
`
`instituted is unchanged, and no other grounds are instituted in the joined
`
`proceeding;
`
`FURTHER ORDERED that the Scheduling Order in place for
`
`IPR2014-00987 (Paper 7) shall govern the joined proceedings;
`
`4
`
`
`
`IPR2015-00541
`Patent 7,365,871 B2
`
`
`FURTHER ORDERED that, if Patent Owner requires a Supplemental
`
`Response to address the Petition filed in IPR2015-00541, Patent Owner
`
`must request a conference call with the Board within five days of this Order;
`
`FURTHER ORDERED that, throughout the joined proceeding, HTC
`
`and Samsung will file any paper, except for a motion that does not involve
`
`the other party, as a single, consolidated filing on behalf of Petitioner, and
`
`HTC will identify each such filing as a consolidated filing;
`
`FURTHER ORDERED that for any consolidated filing made by HTC,
`
`Samsung may file an additional paper, not to exceed three pages, which may
`
`address only points of disagreement with HTC;
`
`FURTHER ORDERED that HTC will conduct the deposition of any
`
`Patent Owner witness taken on behalf of HTC and Samsung, collectively,
`
`and Samsung may not participate in the questioning absent prior approval
`
`from the Board;
`
`FURTHER ORDERED that any requests by any party for additional
`
`deposition time must be brought before the Board;
`
`FURTHER ORDERED that IPR2015-00541 is terminated under 37
`
`C.F.R. § 42.72, and all further filings in the joined proceeding are to be
`
`made in IPR2014-00987;
`
`FURTHER ORDERED that a copy of this Decision will be entered
`
`into the record of IPR2014-00987; and
`
`FURTHER ORDERED that the case caption in IPR2014-00987 shall
`
`be changed to reflect joinder with this proceeding in accordance with the
`
`attached example.
`
`
`
`5
`
`
`
`IPR2015-00541
`Patent 7,365,871 B2
`
`For PETITIONER:
`
`Steven L. Park
`Naveen Modi
`Elizabeth Brann
`PAUL HASTINGS LLP
`stevenpark@paulhastings.com
`naveenmodi@paulhastings.com
`elizabethbrann@paulhastings.com
`
`For PATENT OWNER:
`
`Robert C. Curfiss
`bob@curfiss.com
`
`and
`
`David O. Simmons
`IVC Patent Agency
`dsimmons1@sbcglobal.net
`
`6
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
` HTC CORPORATION and HTC AMERICA, INC.,
`SAMSUNG ELECTRONICS LTD, and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`E-WATCH, INC. and E-WATCH CORPORATION,
`Patent Owner.
`
`
`Case IPR2014-009871
`Patent 7,365,871 B2
`
`
`
`
`
`
`1 Case IPR2015-00541 has been joined with this proceeding.
`
`
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